Detailed Action
Acknowledgements
1. This communication is in response to the original application No. 18/967,276 filed on 12/3/2024.
2. Claims 1-20 are currently pending and have been fully examined.
3. For the purpose of applying prior art, PreGrant Publications will be referred to
using a four digit number within square brackets, e. g. [0001].
Notice of Pre-AIA or AIA Status
4. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuation
5. This application is a continuation application of U.S. application no. 17/918,110 filed on October 10, 2022, now U.S. Patent 12,182,888 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Applicant’s claim for the benefit of U.S. provisional patent application 63/094,335 filed 10/20/2020 under 35 U.S.C. 119(e) is acknowledged.
Double Patenting
6. 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.
7. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,182,888.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broadening claims where language from the issued patents has been removed while retaining the allowable subject matter. Therefore, each of the issued patents anticipate the present claims.
8. Claim 1 of the issued patent 12,182,888 recites:
1. A method for managing an energy supply chain and preventing falsely asserted clean energy transactions, comprising the following steps:
connecting, by a control system comprising a user interface, with one or more distributed ledger(s) and one or more preferred energy source(s) comprising preferred energy generation hardware; wherein the control system comprises computer hardware, software and a secure metering device (SMD), and wherein the SMD comprises a crypto-processor and a tamper- resistant housing enveloping said crypto-processor; and
recording, by the control system comprising the user interface, on said one or more distributed ledger(s) data related to preferred energy transactions between at least one buyer of preferred energy and at least one seller of preferred energy;
monitorring, with the aid of the SMD, a report on an amount of energy by at least one of the one or more preferred energy source(s);
generating, with the aid of the SMD, a report on an amount of energy produced by at least one of the one or more preferred energy source(s);
generating, with the aid of the SMD, at least one unique device identification key pair(s);
storing said at least one unique device identification key pair(s) only on the SMD; and
preventing, with the aid of the SMD, the reading, copying or removal of the at least one unique device identification key pair(s), while other data held within said SMD is removable from said SMD.
9. Claim 1 of the instant application recites:
1. A method for managing an energy supply chain and controlling clean energy transactions, comprising the following steps: connecting, by a control system, comprising a local computer system on the premises of a local clean energy facility, with a network and one or more clean energy source(s) comprising clean energy generation hardware; wherein the control system comprises computer hardware, software and a secure metering device (SMD), and wherein the SMD comprises an identifier generator and a tamper-resistant housing enveloping said indentifier generator; and
recording, by the control system comprising the user interface, on said network, data related to clean energy transactions between at least one buyer of clean energy and at least one seller of clean energy;
monitorring, with the aid of the SMD, an amount of energy produced by at least one of the one or more clean energy source(s); generating, with the aid of the SMD, a report on an amount of energy produced by at least one of the one or more clean energy source(s);
generating, with the aid of the SMD, at least one unique device identifier;
storing said at least one unique device identifier exclusively on the SMD; and
preventing, with the aid of the SMD, the reading, copying or removal of the unique identifier, while other data held within said SMD is removable from said SMD.
In reviewing the differences between the claims, it is noted that with regard to the operations that are claimed in claim 1 of the instant application and claim 1 of the issued patents, the instant application is reworded but is essentially claiming the same thing recited in the issued patent. The wording change in the instant application does not factor in to the claim scope and therefore, for practical purposes is the same operation.
Therefore, it is clear that the claim of the patent anticipates the claims of the instant application and as such necessitates a rejection under the judicial doctrine of obvious-type double patenting.
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to
Applicant’s disclosure.
Kato et al. US 8,667,286
According to one embodiment, encrypted secret identification information (E-SecretID) and the key management information (FKB) are read from a memory device. Encrypted management key (E-FKey) is obtained using the key management information (FKB) and index information (k). The index information (k) and the encrypted management key (E-FKey) are transmitted to the semiconductor memory device. An index key (INK) is generated using the first key information (NKey) and the received index information (k). The encrypted management key (E-FKey) is decrypted using the index key (INK) to obtain management key (FKey), which is transmitted to the host device.
Any inquiry concerning this communication or earlier communication from the examiner should be directed to Mr. Dante Ravetti whose telephone number is (571) 270-3609. The examiner can normally be reached on Monday - Thursday 9:00am-5:00pm.
If attempts to reach examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. John Hayes may be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is (571) 270-4609.
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/DANTE RAVETTI/Primary Examiner, Art Unit 3697 10/16/2025