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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/15/2024, 11/26/2024, 2/13/2025, 6/14/2026, and 7/22/2026 were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 157-163 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
157. A method of determining the location of at least one solar device using a machine comprising a GPS system, an inspection camera, and a distance sensor or range finder, comprising:
determining a location of said machine using said GPS system;
determining an angle at which an inspection camera is inspecting said solar device;
determining a distance from said machine to said solar device using said distance sensor or range finder; and
calculating a location of said solar device using said location of said machine, said angle at which said inspection camera is inspecting said solar device, and said distance from said machine to said solar device.
Step 1: The claim recites a method for determining location of at least one solar device. Thus, the claim is to a process, which is a statutory category of invention
Step 2A, Prong One: The limitations of “determining a location of said machine…”, “determining an angle at which an inspection camera is inspect…”, and “determining a distance from said machine…” each fall into the “mental process” group of abstract ideas, because the determining could practically be performed in the human mind. Further, the limitation of “calculating a location of said solar device…” falls into the “mental process” group of abstract ideas, because the calculating could practically be performed in the human mind. Note that even if most humans would use a physical aid (e.g., pen and paper or calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of the limitations.
Step 2A, Prong Two: Besides the abstract ideas, the claim recites additional elements of a GPS system, an inspection camera, and a distance sensor or a range finder. Each of these are additional elements which are configured to carry out the above limitations, i.e., they are tools that are used to perform the determinations and calculations. Even when viewed in combination, these additional elements do not integrate the recited judicial exceptions into a practical application and the claim is directed to the judicial exception.
Step 2B: The claim as a whole does not amount to significantly more than the recited exceptions. The additional elements are extra-solution activity, which for purposes of Step 2A Prong Two were considered insignificant. The limitations therefore remain insignificant extra solution activity even upon reconsideration. Thus, the limitations do not amount to significantly more. Even when considered in combination, these additional elements represent mere tools for applying an exception and insignificant extra-solution activity, which does not provide an inventive concept. The claim is not eligible.
Note: Dependent claims 158-163 do not provide additional elements which would amount to significantly more than the abstract idea and therefore are not eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 144-156 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11, and 13 of copending Application No. 19/391,634 (reference application). Please see chart below for comparison between independent claim 144 of the instant patent application and independent claim 1 of the US Patent Application No. 19/391,634.
Instant Patent Application
US Patent Application No 19/391,634
Notes
144. (new) A method of inspecting one or more solar modules, comprising:
1. (original) A method of inspecting one or more solar modules using an airborne machine, comprising:
The instant application does not specifically state using an airborne machine but “flying and/or hovering” from the body of the claim makes it clear that the machine is airborne
by a machine that is flying and/or hovering, inspecting
respective backsides of a first plurality of solar modules visually and/or thermally.
by a machine that is flying and/or hovering, inspecting
respective backsides of a first plurality of solar modules visually and/or thermally.
same
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and application 19/391,634 teach inspecting backsides of solar modules using a flying and/or hovering machine; however, the instant patent application failing to specifically use an airborne machine does not make the instant patent application patentably distinct from the application 19/319,634.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 157-163 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeong (US PGPub 2022/0077820).
As to claim 157
Jeong discloses a method of determining the location of at least one solar device (solar photovoltaic panels; see paragraph 0096, lines 4-5) using a machine (unmanned aerial vehicle (UAV) 400, see Fig. 3) comprising a GPS system (GPS unit 420, see Fig. 3), an inspection camera (camera unit 410, see Fig. 3), and a distance sensor or range finder (sensor system 260, see Fig. 2), comprising:
determining a location of said machine using said GPS system (see paragraph 0104, lines 1-3);
determining an angle at which an inspection camera is inspecting said solar device (see paragraph 0233, lines 1-3);
determining a distance from said machine to said solar device using said distance sensor or range finder (see paragraph 0059, lines 1-4); and
calculating a location of said solar device using said location of said machine, said angle at which said inspection camera is inspecting said solar device, and said distance from said machine to said solar device (see paragraph 0098, lines 1-8 and paragraph 0099, lines 1-11).
As to claim 158
Jeong discloses the method of claim 157, wherein said solar device is a solar module (see paragraph 0096, lines 4-5).
As to claim 159
Jeong discloses the method of claim 157, wherein said distance sensor or range finder comprises a LiDAR sensor (see paragraph 0059, lines 1-3).
As to claim 160
Jeong discloses the method of claim 157, wherein said distance sensor or range finder comprises an AI range finder (see paragraph 0059, lines 1-3).
As to claim 161
Jeong discloses the method of claim 157, wherein said at least one solar device comprises a plurality of solar devices, and wherein while said machine is at said location, said method is performed on each of said plurality of solar devices (see paragraph 0098, lines 1-8).
As to claim 162
Jeong discloses the method of claim 161, wherein said location is a first location, and further comprising performing said method on each of said plurality of solar devices while said machine is at a second location different than said first location (see paragraph 0286, lines 1-9).
As to claim 163
Jeong discloses the method of claim 157, wherein said method is performed while said machine flies close to the ground and/or hovers (see paragraph 0198, lines 2-5).
Allowable Subject Matter
Claims 144-156 are allowable over the prior art and would be allowed with resolution to the above Double Patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Jeong discloses a method of inspecting one or more solar modules (solar photovoltaic panels; see paragraph 0096, lines 4-5), comprising:
by a machine (unmanned aerial vehicle (UAV) 400, see Fig. 3) that is flying and/or hovering (see paragraph 0198, lines 2-5), inspecting a first plurality of solar modules visually and/or thermally (see paragraph 0005, lines 1-5).
However, Jeong fails to specifically disclose the machine flying and/hovering, inspecting respective backsides of the plurality of solar modules. Accordingly, independent claims 144, 153, and the claims which depend upon them are allowable over the prior art and would be in condition for allowance with a time filed Terminal Disclaimer to obviate the Double Patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J. Brown whose telephone number is (571)272-5932. The examiner can normally be reached Monday-Thursday from 5:30am-4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at (571)272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Brown/
Primary Examiner, Art Unit 2115
