DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-8 filed April 17, 2024 are pending and are hereby examined.
Claim Rejections - 35 USC § 101
3. 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.
4. Claim 8 is directed to a transitory signal (i.e. computer readable medium) as it recites “a computer program” rather than a "non-transitory storage medium . . . .” Transitory signals are defined according to the "Microsoft Press Dictionary Definition" or "IEEE Definition". According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "transitory signals" are neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter. In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007)(slip. op. at 18).
5. Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
6. Step 1 Statutory Category: Claims 1-6 are directed to a method, claim 7 is directed to a system, all of which are statutory. Claims 1-7 are statutory classes of invention, however claim 8 is not statutory (as addressed above).
7. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 7, and 8 recite an abstract idea of data processing using certification information.
The independent claims 1, 7, and 8 recite the following limitations which fall under commercial or legal interactions:
…
certification data receiving processing of receiving certification data related to a reduction amount of greenhouse gas from…;
deposit receiving processing of receiving a deposit signal indicating deposit property deposited from… separately from the certification data, the deposit signal being transmitted in association with the certification data;
communication processing of transmitting a storage request of the certification data and deposit processing necessary for the storage request to the…;
recording processing of receiving information of a purchaser of the certification data and recording the information of the purchaser in association with the certification data;
amortization processing of storing, in the… amortization information indicating amortization of the certification data in association with the certification data when receiving an amortization command of the certification data; and
deposit reimbursement processing of reimbursing the deposit property associated with the certification data to the… when the amortization information is stored.
8. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, data processing using certification information falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
9. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claim as a whole merely recites data processing using certification information with generally recited computer elements such as a computer, recorder terminal, distributed database, and network, which in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for data processing using certification information. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
10. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a computer, recorder terminal, distributed database, and network to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
11. Regarding dependent claims 2-3 and 6, although these claims recite a generally recited distributed database, these claim merely narrow the abstract idea of data processing using certification information, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
12. Regarding dependent claim 4, although this claim recites a generally recited recorder terminal, this claim merely narrows the abstract idea of data processing using certification information, and this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
13. Regarding dependent claim 5, although this claim recites a generally recited recorder terminal and distributed database, this claim merely narrows the abstract idea of data processing using certification information, and this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
14. Therefore, the limitations of the claims, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Claim Interpretation
15. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
16. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
17. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
18. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
19. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
20. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
21. Such claim limitation(s) is/are: “certification data receiving unit”, “deposit receiving unit”, “communication processing unit”, “recording unit”, “amortization unit”, and “deposit reimbursement unit” in claim 7.
22. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
23. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
24. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
25. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
26. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
27. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cooner (US 2020/0027096) in view of Conner (US 2021/0314143).
28. Re Claims 1, 7, 8: Cooner discloses comprising:
by a computer connected to a recorder terminal and a distributed database through a network, executing (see [01542] blockchain technical trading architecture, [1556] cloud-computer based environment):
certification data receiving processing of receiving certification data related to a reduction amount of greenhouse gas from the recorder terminal (see [0375] ISO-1064-3 standard based certification);
deposit receiving processing of receiving a deposit signal indicating deposit property deposited from the recorder terminal separately from the certification data, the deposit signal being transmitted in association with the certification data (see [1079] buffer account, [1223] buffer pool);
communication processing of transmitting a storage request of the certification data and deposit processing necessary for the storage request to the distributed database (see [1082] online registry system to record issuance);
recording processing of receiving information of a purchaser of the certification data and recording the information of the purchaser in association with the certification data (see [1082] online registry system to record issuance);
amortization processing of storing, in the distributed database, amortization information indicating amortization of the certification data in association with the certification data when receiving an amortization command of the certification data (see [1082] online registry system to record issuance).
However, Cooner fails to disclose the following. Meanwhile, Conner teaches:
deposit reimbursement processing of reimbursing the deposit property associated with the certification data to the recorder terminal when the amortization information is stored (see [0157] deposits).
From the teaching of Conner, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Cooner’s use of IOT technology in energy management systems for generating carbon credits with Conner’s teaching of deposit reimbursement processing in order for “… trading carbon credits using a cryptocurrency market platform (see Conner Abstract).”
29. Re Claim 2: Cooner discloses comprising referring to the distributed database and not recording the certification data when the same data as the received certification data is recorded in the recording processing (see [1317-1320] policies to prevent double issuance).
30. Re Claim 3: Cooner discloses comprising referring to the distributed database and not changing the certification data when the amortization information is associated with the certification data in the recording processing (see [0925, 0933] recording documents and validation/verification of evidence).
31. Re Claim 4: Cooner discloses wherein the certification data includes information on an amount of the greenhouse gas, and the amortization command includes information on the amount to be amortized and information on the purchaser who holds the amount, in the amortization processing, a part of the certification data is amortized on the basis of the amount included in the amortization command, and in the deposit reimbursement processing, when all the amount included in the certification data are amortized, the deposit property associated with the certification data is reimbursed to the recorder terminal (see [01095] unit of exchange, quantity, and report, [1081-1082] online registry system).
32. Re Claim 5: Cooner discloses comprising:
further executing code issuing processing of issuing a code associated with the certification data and transmitting the code to the recorder terminal;
receiving an input of the code in the amortization processing, and storing the amortization information in the distributed database only when the code matches the code associated with the certification data included in the amortization command (see [0182] transactions tracked on ACR, [1318] reductions do not reside currently one more than one registry).
33. Re Claim 6: Cooner discloses comprising storing a transfer history of the certification data in the distributed database in the recording processing (see [1081, 1082] transfer history).
Examiner Notes
34. The Examiner suggests incorporating dependent claims 2-5 together into the independent claims. The Examiner suggests clarifying the following terms: amortization, certification data, what exactly a deposit is (of what exactly), a storage request (of what exactly), deposit property.
35. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
Conclusion
36. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Krichene (A model of the indirect losses from negative shocks in production and finance, NPL) is found to be the most pertinent NPL prior art.
37. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
38. 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) at http://www.uspto.gov/interviewpractice.
39. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627