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 .
DETAILED ACTION
Status of Claims
Claims 1-5 and 7-15 are pending and claims 16-18 are new.
Response to Arguments
Applicants’ arguments regarding the 11 rejection of the claims have been considered but are not persuasive.
Applicant argues:
The Office previously withdrew the § 101 rejection based on the previous amendment; now he has reasserted this rejection. Applicant respectfully traverses this rejection for at least the reasons set forth below.
MPEP 2106.07(a) provides that a subject matter eligibility rejection "must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond." MPEP 2106.07(a) further provides that "[a] subject matter eligibility rejection should point to the specific claim limitation(s) that recites (i.e., sets forth or describes) the judicial exception" and that "[w]hen the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it falls within one of the groupings of abstract ideas."
The Office asserted that the claims are "directed toward the financial practice of arbitrage, as applied to the electrical power industry and specifically to electric vehicles." Office Action, page 2. The Office asserted that "the underlined limitations represent certain methods of organizing human activity, fundamental economic principles because the claims recite the concept of arbitrage." Office Action, page 3. The claim text reproduced in the rejection at pages 2 to 3 recites transmission of permission information "when a power sale price corresponding to a predetermined electrical energy of a battery of a vehicle is equal to or higher than a power purchase price corresponding to the predetermined electrical energy." Office Action, pages 2-3. The underlining in the Office Action identifies exactly which language the Examiner treated as the judicial exception, and that underlined transmit clause reciting the price comparison does not appear in claim 1. The Office Action itself acknowledges that "Claim 1 is amended." Office7 Action, page 2.
Claim 1 recites that the controller transmits "in response to satisfying a predetermined condition corresponding to a predetermined electrical energy of a battery of a vehicle, permission information to a charging/discharging apparatus to enable discharge of the predetermined electrical energy from the battery to a power grid." Claim 1 recites no power sale price, no power purchase price, no comparison between prices, no commercial or legal interaction, and no fundamental economic principle or practice. The Office identifies no limitation of claim 1 that falls within any grouping of abstract ideas enumerated in MPEP 2106.04(a)(2). Because claim 1 does not recite any price or price comparison, the arbitrage characterization rests on limitations absent from claim 1.
The prosecution history confirms this conclusion. The Final Office Action dated June 8, 2026, states that "Applicants' arguments regarding the 101 rejection(s) have been considered and are persuasive." Final Office Action, page 2. That same Final Office Action quotes claim 1 at pages 3 to 4 as reciting "in response to satisfying a predetermined condition corresponding to a predetermined electrical energy of a battery of a vehicle." The eligibility of the "predetermined condition" language now recited by claim 1 was therefore already resolved in favor of Applicant, and the present rejection reinstates § 101 only against the superseded price comparison language that does not appear in claim 1.
The rejection fails to establish a prima facie case because the rejection does not point to the specific claim limitations of claim 1 that allegedly recites the judicial exception and does not explain why those limitations fall within an enumerated grouping of abstract ideas, as MPEP 2106.07(a) instructs.
Office response:
Although the claim limitations are misrepresented in the previous office action (claim limitations that were canceled by amendment on 5/13/26 were represented in the present claims), the subject matter of the present claims is not substantially different.
On 5/13/26 the applicant made the flowing amendments:
(Currently Amended) A server apparatus comprising:
a communication interface; and
a controller configured to:
communicate using the communication interface; and
transmit, in response to satisfying a predetermined condition corresponding to a predetermined electrical energy of a battery of a vehicle a charging/discharging apparatus to enable discharge of the predetermined electrical energy from the battery to a power grid.
The final rejection of 6/8/26 withdrew the 101 rejection because the claims no linger recited the elements that the examiner considered arbitrage however, the examiner issued a new rejection under 112(a) for lack of written description of “satisfying a predetermined condition and predicting and determining satisfaction of the predetermined condition” as the examiner concluded that the specification did not disclose what the predetermined condition is.
The applicant responded to the 112 rejection and identified the predetermined condition as “the power sale price corresponding to the predetermined electrical energy being equal to or higher than the power purchase price corresponding to the predetermined electrical energy” as disclosed in para. 0007 of the as-filed specification.
In the subsequent advisory action of 7/30/26 the Office withdrew the 112 and 103 rejections based on the applicant’s arguments and amendments but indicated that the applicant’s explanation of the 112 rejection merited reinstatement of the 101 rejection therefore the 101 rejection, and the reasoning behind it should not come as a surprise since the claims essentially recite the same subject matter as before the amendments of 5/13/26. The only difference being the additional “receive” limitation.
Applicant argues:
Even assuming arguendo, that claim 1 recites a judicial exception, the rejection fails to properly evaluate whether claim 1 integrates any such exception into a practical application under Step 2A Prong Two. Claim 1 recites that the controller transmits "permission information to a charging/discharging apparatus to enable discharge of the predetermined electrical energy from the battery to a power grid." This claim language recites transmission of permission information to a specific apparatus, the charging/discharging apparatus, and recites that the permission information enables discharge of the predetermined electrical energy from the battery to a power grid. The specification discloses that the charger/discharger 148 includes "a switch for opening and closing the connection of the power line to a power load 15 in the community or to the grid 18" and "can switch the switch, in response to an instruction from the control apparatus 140, to charge the battery 128 of the vehicle 12 with electricity supplied from the grid 18 or to supply electricity discharged from the battery 128 of the vehicle 12 to the power load 15 or to the grid 18." As-Filed Specification, paragraph [0028]. The specification further discloses that "the control apparatus 140 receives the power discharged from the battery 128 of the vehicle 12 by the charger/discharger 148 and transmits it to the grid 18." As-Filed Specification, paragraph [0043]. Claim 1 therefore recites transmission of permission information that enables a physical transfer of electrical energy out of a vehicle battery and into a power grid through a specific apparatus.
The Office asserted only that "the server apparatus is generically recited such that it is not a particular machine and the claims include a charging/discharging apparatus, a battery and a power grid." Office Action, page 3. The Office failed to evaluate the considerations set forth in MPEP 2106.04(d), including whether claim 1 implements a judicial exception with a particular machine integral to the claim, whether claim 1 effects a transformation or reduction of a particular article to a different state or thing, or whether claim 1 applies the exception in some other meaningful way beyond generally linking use to a technological environment. The Office failed to evaluate these considerations individually or in combination. Applicant respectfully submits that claim 1 integrates any alleged exception into a practical application because the permission information transmitted to the charging/discharging apparatus enables discharge of the predetermined electrical energy from the battery to a power grid, thereby effecting a physical result through a specific apparatus.
Office Response:
The claims recite: a controller…to transmit…permission information to a charging/discharging apparatus to enable discharge…
The controller is an additional element as indicated in the Office action (part of the server). The specification at 0017-0022 discloses that the controller includes one or more processors, one or more dedicated circuits, or a combination thereof, and that the processor is a general purpose processor. Therefore, the controller is generically recited.
The charging/discharging apparatus is also an additional limitation and is not disclosed as anything other than a general charging/discharging apparatus. The specification at 0028 discloses the components of the charging/discharging station being a connector, feeder cable, a switch for opening and closing the connection of then power line to a power load in the community or the grid, a battery or capacitor for storing energy, and the like. Per step 2A Prong two the charge/discharge apparatus is an additional element which enables the transfer of energy based on the permission and the satisfied condition. The charge/discharge apparatus is merely a tool for enabling the transfer of an asset, and confines the abstract idea to the sale of electrical power from a vehicle to the grid as indicated in para. 0013 of the specification and confirmed by the applicant in the response of 7/23/26. Additionally, the charging/discharging apparatus does not positively recite an action but only “enables” discharge. As a whole and in combination, the additional limitations merely confine the abstract idea to a particular environment using generic components.
Applicant argues:
USPTO Subject Matter Eligibility Example 45, Controller for Injection Mold, addresses product claims reciting a controller. Claims 2 and 4 of Example 45 are eligible at Prong Two because using the information obtained via the judicial exception to control the apparatus in a particular way is an "other meaningful limitation" that integrates the exception into the overall control scheme. Eligibility in Example 45 did not turn on the controller being anything other than generic, because Example 45 expressly treats the recited controller as recited so generically that it represents no more than mere instructions to apply the exception, while the claim as a whole is nonetheless eligible by virtue of the limitation controlling the apparatus. Example 45 further notes that mere physicality or tangibility of an additional element is not a relevant consideration in the eligibility analysis. The controller of claim 1 transmits permission information to a charging/discharging apparatus and thereby enables discharge of the predetermined electrical energy from the battery to a power grid, so the alleged generic recitation of the server apparatus cannot carry the rejection.
Office Response:
The applicant appears to assert that the claims are meaningful because the information obtained by the abstract idea is used to control the apparatus as in Example 45 claims 2 and 4.
The Office explains in example 45 claim 2 that:
Limitation (d) does not merely link the judicial exceptions to a technical field, but instead adds a meaningful limitation in that it employs the information provided by the judicial exceptions (the calculated percentage of the extent of cure) to control the operation of the injection molding apparatus. As explained in the specification, because the claimed controller opens the mold and ejects the molded polyurethane at the time when the target percentage of cure is reached, the claimed controller avoids the technical problems associated with undercure and overcure, which would otherwise negatively affect the cured polyurethane’s strength and wear performance. Further, a person of ordinary skill in the art would recognize that limitation (d), in combination with the other claim limitations, reflects the technical advantages described in the specification. The claim as a whole thus improves upon previous controllers used in this technical field of injection molding. Further, using the information obtained via the judicial exception to take corrective action and control the injection molding apparatus in a particular way is an “other meaningful limitation” that integrates the judicial exception into the overall control scheme and accordingly practically applies the exception, such that the claim is not directed to the judicial exception.
The Office asserts that the charging/discharging apparatus does not perform any particular operation as it only “enables” discharge. Additionally, neither the claims nor the specification provide a technical solution to a technical problem as does claim 2.
Claim 4 is eligible under similar rationale and the claims are also unlike those of claim 4 for the same reasons.
Applicant argues:
USPTO Subject Matter Eligibility Example 46, Livestock Management, confirms that eligibility does not depend on the claim reciting that the physical act occurs. Claim 2 of Example 46 is eligible even though none of the limitations of that claim encompass actually dispensing the salt and minerals, because the combination of the control signal limitation and the feed dispenser invokes the "other meaningful limitation" consideration and thereby integrates the abstract idea into a practical application. The interpretation of Example 46 claim 2 further establishes that because claim 2 is a system claim, the broadest reasonable interpretation requires the structure for performing the recited function to be present even though the function only needs to occur if a condition precedent is met. Claim 1 is an apparatus claim, so the conditional language "in response to satisfying a predetermined condition" does not deprive the transmission of permission information to the charging/discharging apparatus of patentable weight, and eligibility of claim 1 does not depend on claim 1 reciting that the discharge itself occurs.
Office response:
The Office explains claim 2 of example 46:
Limitation (d) specifies that the monitoring component automatically sends a control signal to the feed dispenser to dispense a therapeutically effective amount of supplemental salt and minerals mixed with the feed when the analysis results for the animal indicate that the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany. Thus, limitation (d) does not merely link the judicial exceptions to a technical field, but instead adds a meaningful limitation in that it can employ the information provided by the judicial exception (the mental analysis of whether the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany) to operate the feed dispenser. As explained in the specification, automatically identifying aberrant behavioral patterns and operating farm equipment based on such identification avoids the need for the farmer to evaluate the behavior of each animal in the herd on a continual basis, and then manually take appropriate action for each animal exhibiting aberrant behaviors. Limitation (d) in combination with the feed dispenser enables the control of appropriate farm equipment based on the automatic detection of grass tetany, which goes beyond merely automating the abstract idea. Using the information obtained via the judicial exception to take corrective action such that the monitoring component is operable to control the feed dispenser in a particular way is an “other meaningful limitation” that integrates the judicial exception into the overall livestock management scheme and accordingly practically applies the exception, such that the claim is not directed to the judicial exception.
Accordingly, the applicant’s assertion that eligibility does not depend on reciting that the discharge itself occurs is unpersuasive as the eligibility explanation of claim 2 of Example 46 states that the information is used to control the feed dispenser.
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.
Claim(s) 1-5 and 7-18 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):
1. A server apparatus comprising:
a communication interface; and
a controller configured to:
communicate using the communication interface;
transmit, in response to satisfying a predetermined condition corresponding to a predetermined electrical energy of a battery of a vehicle, permission information to a charging/discharging apparatus to enable discharge of the predetermined electrical energy from the battery to a power grid; and
receive a request for discharging that includes identification information identifying a user and the vehicle, and an electrical energy to be discharged.
The underlined limitations represent certain methods of organizing human activity, fundamental economic principles because the claims recite the concept of arbitrage.
This judicial exception is not integrated into a practical application because the claims add by including the use of a server apparatus to execute the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the server apparatus, also similarly generically recited. The claims merely apply the concept of arbitrage to the field of electric vehicle power charging and discharging. The applicant admits, in response to a 112 rejection, that the predetermined condition is the language that was canceled and replaced by the satisfying a predetermined condition language, i.e., when a power sale price…is equal to or higher than a power purchase price…, therefore the thrust of the claim is the same and the abstract idea is the same. The concept of arbitrage is merely applied to a particular technology/environment and so the additional elements do not meaningfully limit the claims, prove an improvement to the server, technology or technological field, as a whole and in combination.
Per step 2B prong two, the analysis is similar to step 2A but takes into account any additional limitations that may not be well-understood, routine and conventional. In the present case there are no limitations that the examiner has identified as insignificant extra-solution activity that require further analysis here and the only additional limitations are the server and its components and the charging/discharging station which merely receives permission information.
As a whole and in combination the claims merely comprise the abstract idea implemented by computer in a particular environment.
The remaining claims merely narrow the abstract idea by performing determinations of when to discharge power and at what prices.
Claims 2 and 15 narrows the discharging by transmitting a plan.
Claims 3, 5 and 7 narrow the determination of satisfaction of the predetermined condition.
Claim 5 narrows the power sale prices.
Claim 8 introduces an optional terminal apparatus for communicating with the controller, adding to the concept of using the words “apply it”.
Claim 9 narrows the permission information.
Claim 10 recites the discharge action but this action is similar to executing a sale and merely narrows the abstract idea.
Claim 11 narrows the predetermined condition and the power purchase price.
Claims 12-14 narrow the predetermined condition, and deriving the power sale price.
Claim 15 merely narrows the data being transmitted, narrowing the abstract idea.
Claim 16 recites a switch of the charging/discharging apparatus that opens and closes a connection to a power line between the charging/discharging apparatus and the power grid. Per Step 2A this is an additional limitation that recites a generic device for performing the abstract idea (arbitrage/selling power back to the grid at a higher price). The step 2B analysis is the same.
Claim 17 is the opposite of claim 1 where the power price is less than what was paid for it, no sale I allowed to occur. This narrows the abstract idea.
Claim 18 narrows the sale based on supply and demand of the community in which the charging/discharging apparatus is locate, narrowing the abstract idea.
As a whole and in combination, the claims comprise the abstract idea with the words apply it and are therefore patent-ineligible.
Conclusion
THIS ACTION IS MADE FINAL. 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 WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM E RANKINS/ Primary Examiner, Art Unit 3694
