DETAILED ACTION
This Final Office Action is in response to the arguments and amendments filed May 8, 2026.
Claims 21, 30, and 39 have been amended.
Claims 21-40 are currently pending and have been considered below.
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 .
Response to Arguments
In response to the arguments filed May 8, 2026 on pages 9-10 regarding the amended claim language, specifically that the amendments are directed towards eligible subject matter.
Examiner respectfully disagrees.
Examiner first notes that while discussion was centered on the discussed elements in the interview, no agreement was reached regarding the eligibility. The proposed amendments during the interview were towards the providing a setting and elements of discussion were provided in terms of applying the setting. Examiner notes that based on considered that the entered amendments are high level that are not indicative of eligible subject matter based on further consideration. Examiner notes that the eligibility of the similar application [18/166836] provides a specific application beyond the determination step utilizing the MEF values and other steps. There was a distinct and applicable step that provided a technical interaction (within the ‘836 was applying the determined value to the operation of the battery) that provided the claim as eligible with respect to 35 USC 101. The pending application claims are merely describing providing and applying the instruction, but there is no specificity towards the generated setting in terms of the battery implementation that was provided in the similar ‘836 application which was considered transformative into a practical application. In short, the similar application provides more specificity in terms of the determination and application of the setting for the battery and the pending claims above merely provide an idea of a solution based on being more high level in discussion and specific claim limitations as currently written. As such, claims 21-40 are maintaining the 35 USC 101 rejection, as considered above in light of the amended claim language.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards non-eligible subject matter.
In terms of Step 1, independent claims 21, 30, and 39 are directed towards (as represented by claim 21), “receive a plurality of values indicative of a marginal emission factor (MEF) of electricity provided by a provider of electricity coupled with a battery; identify, within a subset of the plurality of values, a highest value of the plurality of values of the subset; identify, within the subset, a lowest value of the plurality of values of the subset; and determine a carbon offset to achieve using the battery based on a difference between the highest value adjusted for a loss in energy corresponding at least to electricity transmission associated with the battery and the lowest value”. The claims are describing receiving information and determining an offset value based on the identified highest and lowest values of the received information. The claims are directed towards a mathematical calculation. The determination step is providing the calculation based on a difference between the highest and lowest identified values. As such, claim 21 is directed towards an abstract idea under the mathematical concept grouping.
Further, the claim is describing a collection of information and high level analysis that a person would be able to do with pen and paper. A person could receive information, identify highest and lowest values and provide an offset based on a difference between the highest and lowest value. As such, the claim is also directed towards an abstract idea under the mental process grouping.
Examiner notes that the eligibility of the similar application [18/166836] provides a specific application beyond the determination step utilizing the MEF values and other steps. There was a distinct and applicable step that provided a technical interaction (within the ‘836 was applying the determined value to the operation of the battery) that provided the claim as eligible with respect to 35 USC 101. The pending application claims are merely receiving information and determining with no technical interaction aspect that was provided in the similar ‘836 application which was considered transformative into a practical application.
Step 2(a)(II) considers the additional elements in terms of being transformative into a practical application. The additional elements of claim 21 is, “A system to determine a greenhouse gas mitigation potential of an asset, the system comprising: a data processing system comprising one or more processors to (claim 21); by a data processing system (claim 30); A non-transitory computer-readable medium having processor readable instructions, such that, when executed, cause one or more processors to (claim 39); provide a setting for the battery according to a charge period and a discharge period determined using the carbon offset; and apply the setting to operate the battery according to the charge period and the discharge period”. The system elements and computer aspects are described in the originally filed specification [43-51]. The computer elements are described as tools to implement the abstract idea. The system and processing elements are not directed towards a technical improvement. In terms of the elements that are providing and applying a setting, the specification describes these limitations in paragraphs [40-46 and 73]. The limitations are directed towards an idea of a solution. The claims provide no restriction or limitation on accomplishing the result in terms of applying the setting. This includes technical improvement aspects or utilization of generic/human interaction aspects. As such, the claims are reciting the idea of a solution that is not directed toward additional elements that are transformative into a practical application. As such, the additional elements are not directed towards additional elements that are transformative into a practical application. Refer to MPEP 2106.05(f).
Examiner notes that the eligibility of the similar application [18/166836] provides a specific application beyond the determination step utilizing the MEF values and other steps. There was a distinct and applicable step that provided a technical interaction (within the ‘836 was applying the determined value to the operation of the battery) that provided the claim as eligible with respect to 35 USC 101. The pending application claims are merely describing providing and applying the instruction, but there is no specificity towards the generated setting in terms of the battery implementation that was provided in the similar ‘836 application which was considered transformative into a practical application.
Step 2(b) considers the additional elements in terms of being significantly more than the identified abstract idea. The additional elements of claim 21 is, “A system to determine a greenhouse gas mitigation potential of an asset, the system comprising: a data processing system comprising one or more processors to (claim 21); by a data processing system (claim 30); A non-transitory computer-readable medium having processor readable instructions, such that, when executed, cause one or more processors to (claim 39) provide a setting for the battery according to a charge period and a discharge period determined using the carbon offset; and apply the setting to operate the battery according to the charge period and the discharge period”. The system elements and computer aspects are described in the originally filed specification [43-51]. The computer elements are described as tools to implement the abstract idea. The system and processing elements are not directed towards a technical improvement. In terms of the elements that are providing and applying a setting, the specification describes these limitations in paragraphs [40-46 and 73]. The limitations are directed towards an idea of a solution. The claims provide no restriction or limitation on accomplishing the result in terms of applying the setting. This includes technical improvement aspects or utilization of generic/human interaction aspects. As such, the claims are reciting the idea of a solution that is not directed toward additional elements that are significantly more than the identified abstract idea. As such, the additional elements are not directed towards additional elements that are significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
Dependent claims 22, 31, and 40 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claim is directed towards, “identify a time period corresponding to the subset of the plurality of values, the time period including a time duration in which the battery is charged by the provider and discharged to a load; and provide for display the carbon offset corresponding to the time period”. The claim is further describing the identification of information that is utilized to calculate (mathematical calculation) and high level analysis (mental process). The claim further provides a display that further describes the mental process (collect, analyze, and display). Further, in terms of the displaying step, the processor is providing the display that is considered above and based on the specification is merely a tool to implement the abstract idea. As such, the claim is not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 23 and 32 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “determine the loss in energy based at least on an amount of energy provided by the provider to the battery during the battery charge and an amount of energy provided by the battery to a load during the battery discharge”. The claims are further describing the identified abstract ideas in terms of the determination step based on amount of energy (mathematical calculation) and high level analysis (mental process). There are no further additional elements beyond those identified above. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 24 and 33 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “identify the highest value within a first time interval in which the battery is discharged; identify the lowest value within a second time interval in which the battery is charged; and determine the carbon offset according to a MEF offset determined corresponding to a time period in which the battery is charged and discharged”. The claims are further describing the identified abstract ideas in terms of the identification and determination steps that provide further aspects of the calculation (mathematical calculation) and another element of collecting and high level analyzing information (mental process). There are no further additional elements beyond those identified above. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 25 and 34 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “identify a first subset of the plurality of values within a first time interval, the first subset comprising the highest value, each value of the first subset exceeding a first threshold; identify a second subset of the plurality of values within a second time interval, the second subset comprising the lowest value, each value of the second subset exceeded by a second threshold lower than the first threshold; generate a first value corresponding to the first subset reduced by a value corresponding to the loss in energy; and determine the carbon offset according to a MEF offset based on a difference between the highest value and the lowest value”. The claims are further describing the identified abstract ideas in terms of the identification and determination steps that provide further aspects of the calculation (mathematical calculation) and another element of collecting and high level analyzing information (mental process). There are no further additional elements beyond those identified above. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claims 26 and 35 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “generate a value corresponding to the loss in energy, the value indicative of the percentage of electricity dissipated during the battery charge and the battery discharge; and determine the carbon offset based at least on the difference between the highest value reduced using the value corresponding to the loss in energy and the lowest value; and provide for display to a user device the carbon offset”. The claims are further describing the identified abstract ideas in terms of the determination steps that provide further aspects of the calculation (mathematical calculation) and another element of collecting, high level analyzing information, and displaying (mental process). Further, in terms of the displaying step, the processor is providing the display that is considered above and based on the specification is merely a tool to implement the abstract idea. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 27 and 36 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “receive a first subset of the plurality of values from a first source on an electrical grid coupled with the provider and a second subset of the plurality of values from a second source on the electrical grid; modify the first value to conform a format of the first value to a format of the second value; and generate the plurality of values including the modified first value and the second value”. The claims are further describing the identified abstract ideas in terms of the receiving and determination (generation) steps that provide further aspects of the calculation (mathematical calculation) and another element of collecting and high level analyzing information (mental process). While the claim describes modifying the format of the value, there is no additional element or technical aspect providing the modification. Further, a person would be able to modify values within a format with pen and paper. There are no further additional elements beyond those identified above. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 28 and 37 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “determine the carbon offset corresponding to a time period that includes a time duration in which the battery is charged by the provider and discharged to a load; and provide the carbon offset for display to a user device”. The claims are further describing the identified abstract ideas in terms of the determination steps that provide further aspects of the calculation (mathematical calculation) and another element of high level analyzing information and displaying (mental process). Further, in terms of the displaying step, the processor is providing the display that is considered above and based on the specification is merely a tool to implement the abstract idea. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
Dependent claim 29 and 38 are further directed towards the identified abstract idea and not directed towards further additional elements identified above. The claims are directed towards, “determine the carbon offset corresponding to a time period of one of: a day, a week, a month or a year; and provide the carbon offset corresponding to the time period for display”. The claims are further describing the identified abstract ideas in terms of the determination steps that provide further aspects of the calculation (mathematical calculation) and another element of high level analyzing information and displaying (mental process). Further, in terms of the displaying step, the processor is providing the display that is considered above and based on the specification is merely a tool to implement the abstract idea. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified above. Refer to MPEP 2106.05(f).
The claimed invention is describing an abstract idea without additional elements that are significantly more or transformative into a practical application. Therefore, claims 21-40 are rejected under 35 USC 101 for being directed towards non-eligible subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW CHASE LAKHANI whose telephone number is (571)272-5687. The examiner can normally be reached M-F 730am - 5pm (EST).
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/ANDREW CHASE LAKHANI/Primary Examiner, Art Unit 3629
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