DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a first Office Action on the merits.
Claims 1-20 are currently pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 5, 8, 12, 15, and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category (MPEP 2106.03). The claim recites a method including steps for identifying recommended batteries and power generation systems. Thus, the claim is a process, which is a statutory category of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Limitations identified as reciting a judicia exception include: “determining a recommended battery for the vehicle and a recommended power generation system for real property based on the mobility data and the energy consumption data”. Under its broadest reasonable interpretation, the claims “determination” is an observation or evaluation based on obtained information. These observations or evaluations are acts that can be practically performed in the human mind. Such mental observations or evaluations fall within the “mental processes” grouping of abstract ideas set forth in the 2019 PEG. Section I, 84 Fed. Reg. at 52.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicia exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application (MPEP 2106.4(d)).
The claim recites the additional elements of “receiving, via a power management apparatus, mobility data…”, “receiving, via the power management apparatus, energy consumption data from one or more power consuming systems…”, and “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface of the power management apparatus”.
The additional elements of “receiving…mobility data” and “receiving…energy consumption data” are insignificant extra-solution activities that amount to mere data gathering incidental to the limitation. The additional element of “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface” is recited so generically as to be mere extra-solution activity (See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alston S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). Further, the “power management apparatus” is also recited as such a high level of generality as to amount to no more than a generic computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer components does not affect the analysis (see MPEP 2106.5(I)).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim (MPEP 2106.05). Additional elements identified in prong two of step 2A were considered insignificant extra-solution activities (mere data gathering and generic presentation of collected and analyzed data). The recitation of mere data gathering is recited at a high level of generality, and as disclosed in the specification, is also well-known. Similarly, merely displaying data is also well-known. These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Consequently, for the reasons discussed above, the additional elements individually, or in combination with the judicial exception, do not provide an inventive concept. (Step 2B: NO).
The claim is not eligible.
Regarding claim 8:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category (MPEP 2106.03). The claim recites an apparatus, which falls in a statutory category of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Limitations identified as reciting a judicia exception include: “determining a recommended battery for the vehicle and a recommended power generation system for real property based on the mobility data and the energy consumption data”. Under its broadest reasonable interpretation, the claims “determination” is an observation or evaluation based on obtained information. These observations or evaluations are acts that can be practically performed in the human mind. Such mental observations or evaluations fall within the “mental processes” grouping of abstract ideas set forth in the 2019 PEG. Section I, 84 Fed. Reg. at 52. It should be noted that recitation of a processor and memory in this claim does not negate the mental nature of the limitation because the claim here merely uses the processor and memory as tools to perform the otherwise mental process.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicia exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application (MPEP 2106.4(d)).
The claim recites the additional elements of “a memory”, “a processor coupled to the memory”, “receiving, via a power management apparatus, mobility data…”, “receiving, via the power management apparatus, energy consumption data from one or more power consuming systems…”, and “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface of the power management apparatus”.
The additional elements of “a memory” and “a processor” are mere generic computer components recited at a high level of generality. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer components does not affect the analysis (see MPEP 2106.5(!)).
The additional elements of “receiving…mobility data” and “receiving…energy consumption data” are insignificant extra-solution activities that amount to mere data gathering incidental to the limitation. The additional element of “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface” is recited so generically as to be mere extra-solution activity (See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alston S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim (MPEP 2106.05). Additional elements identified in prong two of step 2A were considered insignificant extra-solution activities (mere data gathering and generic presentation of collected and analyzed data) and generic computer components. The recitation of mere data gathering is recited at a high level of generality, and as disclosed in the specification, is also well-known. Similarly, merely displaying data is also well-known. These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Consequently, for the reasons discussed above, the additional elements individually, or in combination with the judicial exception, do not provide an inventive concept. (Step 2B: NO).
The claim is not eligible.
Regarding claim 15:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category (MPEP 2106.03). The claim recites a computer-readable storage medium, which falls in a statutory category of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Limitations identified as reciting a judicia exception include: “determining a recommended battery for the vehicle and a recommended power generation system for real property based on the mobility data and the energy consumption data”. Under its broadest reasonable interpretation, the claims “determination” is an observation or evaluation based on obtained information. These observations or evaluations are acts that can be practically performed in the human mind. Such mental observations or evaluations fall within the “mental processes” grouping of abstract ideas set forth in the 2019 PEG. Section I, 84 Fed. Reg. at 52. It should be noted that recitation of a processor and memory in this claim does not negate the mental nature of the limitation because the claim here merely uses the processor and memory as tools to perform the otherwise mental process.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicia exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application (MPEP 2106.4(d)).
The claim recites the additional elements of “a processor”, “receiving, via a power management apparatus, mobility data…”, “receiving, via the power management apparatus, energy consumption data from one or more power consuming systems…”, and “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface of the power management apparatus”.
The additional elements of “a memory” and “a processor” are mere generic computer components recited at a high level of generality. Further, the “power management apparatus” is also recited as such a high level of generality as to amount to no more than a generic computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer components does not affect the analysis (see MPEP 2106.5(I)).
The additional elements of “receiving…mobility data” and “receiving…energy consumption data” are insignificant extra-solution activities that amount to mere data gathering incidental to the limitation. The additional element of “displaying an identifier of the recommended battery and an identifier of the recommended power generation system via a user interface” is recited so generically as to be mere extra-solution activity (See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alston S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim (MPEP 2106.05). Additional elements identified in prong two of step 2A were considered insignificant extra-solution activities (mere data gathering and generic presentation of collected and analyzed data) and generic computer components. The recitation of mere data gathering is recited at a high level of generality, and as disclosed in the specification, is also well-known. Similarly, merely displaying data is also well-known. These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Consequently, for the reasons discussed above, the additional elements individually, or in combination with the judicial exception, do not provide an inventive concept. (Step 2B: NO).
The claim is not eligible.
Dependent claims 5, 12, and 19 do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea. Claims 5, 12, and 19 are directed to insignificant extra solution activities of data gathering.
Allowable Subject Matter
Claims 2-4, 6, 7, 9-11, 13, 14, 16-18, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
NAKAJIMA et al, US 2021/0004882, teaches a method, comprising: receiving, via a power management apparatus (400), mobility data comprising movements of a vehicle (100) from one or more systems associated with the vehicle (i.e., driving history information, including vehicle travel distance [0009] [0069] [0079]); determining a recommended battery for the vehicle based on the mobility data [0134]; and displaying an identifier of the recommended battery via a user interface of the power management apparatus [0134] [0178] [0179] [0199] [0200].
RONNING et al, US 2005/0080641, teaches a method of selecting a battery for a vehicle including obtaining information relating to the usage of the vehicle and identifying a recommended battery for the vehicle based on the information relating to the usage of the vehicle [abstract] [0022] [0045].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A GUDORF whose telephone number is (571)270-7607. If the Examiner cannot be reached by telephone, she can be reached through the following e-mail address: laura.gudorf@uspto.gov. The examiner can normally be reached on M-F 6:00-4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham, can be reached at telephone number (571)272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/LAURA A GUDORF/Primary Examiner, Art Unit 2876
Prosecution Insights