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
This action is in response to the reply filed March 26, 2026.
Claims 1-2, 4, and 7-8 have been amended.
Claims 1-8 are currently pending and have been examined.
Response to Arguments
The previous rejection under 35 USC 112 has been withdrawn in response to the submitted amendments.
Applicant’s remarks filed March 26, 2026 have been fully considered but they are not persuasive.
Regarding the previous rejection under 35 USC 101, Applicant presented the following argument:
Additionally, Claims 1, 4, and 6-8, which are the pending independent claims, are each amended to recite that the second step creates an operation plan for the hydrogen production facility in a second period that is a future period shorter than the first period by solving a mathematical programming problem to optimize one or more decision variables representing an operation state of the hydrogen production facility for each time in the second period. This subject matter is supported, for example, by paragraph [0029].
In the rejection under 35 U.S.C. § 101, the Official Action states that the claims are directed to the abstract idea of predicting hydrogen demand and operating a hydrogen production facility to meet the predicted demand. In this regard, Applicant respectfully submits that operation of a hydrogen production facility is not an abstract idea, and moreover, even assuming an abstract idea were recited, the operation of a hydrogen facility clearly integrates any such abstract idea into a practical application. Furthermore, in connection with the discussion of Fig. 4, the application describes how the calculation amount can be shortened (and thus the computational load decreased). The invention recited in the amended independent claims therefore clearly integrates the alleged abstract idea with the practical application of improved functionality of the hardware and the software through the use of the specified data and its processing. Withdrawal of the rejection under 35 U.S.C. § 101 is therefore also respectfully requested.
Examiner respectfully disagrees. The identified improvements argued by Applicant are really, at best, improvements to the performance of the abstract idea itself (e.g. improvements made in the underlying business method) and not in the operations of any additional elements or technology. See In re Board of Trustees of Leland Stanford Junior University, 991 F.3d 1245, 1251 (Fed. Cir. 2021) (“[T]he improvement in computational accuracy alleged here does not qualify as an improvement to a technological process; rather, it is merely an enhancement to the abstract mathematical calculation … itself.”); Parker v. Flook, 437 U.S. 584, 591-92 (1978) ("the novelty of the mathematical algorithm is not a determining factor at all").
The specification does not describe a new hydrogen production facility. In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016) (The specification does not describe a new telephone, a new server, or a new physical combination of the two. The specification fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms.) The court in Smart Sys. Innovations reiterated the Court in Alice by stating that claims are necessarily performed in the physical rather than the conceptual, realm … is beside the point. See Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1373 (Fed. Cir. 2017).
Regarding the previous rejection under 35 U.S.C. 102/103, Applicant’s arguments have been considered but are moot in view the new grounds of rejection.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Alice/Mayo Framework Step 1:
Claims 1-3 and 8 recite a tangible article given properties through artificial means and therefore recite a manufacture.
Claims 4-6 recite a combination of devices and therefore recite a machine.
Claims 7 recite a series of steps and therefore recite a process.
Alice/Mayo Framework Step 2A – Prong 1:
Claims 1, 4, and 6-8, as a whole, are directed to the abstract idea of predicting hydrogen demand and operating a hydrogen production facility to meet the predicted demand, which is a mathematical concept, method of organizing human activity, and mental process. The claims recite a mathematical concept because the identified idea is a mathematical calculation by reciting creating an operation plan for a first period by solving a mathematical programming problem, creating an operation plan for a second period by solving a mathematical programming problem, and using an output from the first period as a constraint for the second period. See MPEP 2106.04(a)(2)(I)(C). The claims recite a method of organizing human activity because the identified idea is a fundamental economic principles or practices (including hedging, insurance, mitigating risk) by reciting operating a hydrogen production facility using future demand predictions as operating constraints. See MPEP 2106.04(a)(2)(II)(A). The claims recite a mental process because the identified idea contains limitations that can practically be performed in the human mind (including an observation, evaluation, judgement, or opinion) by reciting planning operations for a future period and using those predictions to as constraints for further predictions. See MPEP 2106.04(a)(2)(III). The mathematical concept, method of organizing human activity, and mental process of “predicting hydrogen demand and operating a hydrogen production facility to meet the predicted demand,” is recited by claiming the following limitations: creating an operation plan in a first period, creating an operation plan in a second period, and using a prediction from the first period as a constraint for the second period. The mere nominal recitation of a processor, a hydrogen production facility, an information processing apparatus, an instruction device, a power conditioner device, a storage battery, a hydrogen storage facility, a fuel cell, and a non-transitory computer-readable medium does not take the claim of the mathematical concept, method of organizing human activity, or mental process grouping. Thus, the claim recites an abstract idea.
Alice/Mayo Framework Step 2A – Prong 2:
Claims 1, 4, and 6-8 recite the additional elements: a processor, a hydrogen production facility, an information processing apparatus, an instruction device, a power conditioner device, a storage battery, a hydrogen storage facility, a fuel cell, and a non-transitory computer-readable medium. These processor, information processing apparatus, and non-transitory computer readable medium limitations are no more than mere instructions to apply the exception using a generic computer component. The hydrogen production facility, instruction device, power conditioner device, storage battery, hydrogen storage facility, and fuel cell limit the field of use by generally linking the identified abstract idea to the hydrogen power field. Taken individually these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Considering the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception does not amount to a practical application of the abstract idea. The claim as a whole does not improve the functioning of a computer or improve other technology or improve a technical field. The claim as a whole is not implemented with a particular machine. The claim as a whole does not effect a transformation of a particular article to a different state. The claim as a whole is not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The claim as a whole merely describes how to generally “apply” the concept of performing power management in a computer environment. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing power management process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim is directed to the abstract idea.
Alice/Mayo Framework Step 2B:
Claims 1, 4, and 6-8 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims recite a generic computer performing generic computer function by reciting processor, information processing apparatus, and non-transitory computer readable medium. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (describing a “processor” as a generic computer component); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (discussing the same with respect to “data” and “memory”). The claims recite the following computer functions recognized by the courts as generic computer functions by reciting processing information (See MPEP 2106.05(d)(II) performing repetitive calculations, Flook; Bancorp Services). The specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): a processor (Specification [0031]), a hydrogen production facility (Specification [0015]), an information processing apparatus (Specification [0017], [0024]), an instruction device (Specification [0063]), a power conditioner device (Specification [0008]), a storage battery (Specification [0066], [0073]), a hydrogen storage facility (Specification [0020]), a fuel cell (Specification [0066]), and a non-transitory computer-readable medium (Specification [0013]). See MPEP 2106.05(d)(I)(2). The claims add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting processor, information processing apparatus, and non-transitory computer readable medium. See MPEP 2106.05(f). The claims limit the field of use by reciting hydrogen production facility, instruction device, power conditioner device, storage battery, hydrogen storage facility, and fuel cell. See MPEP 2106.05(h). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements alone, and in combination, that are sufficient to amount to significantly more than the recited judicial exception.
With regards to Claims 3 and 5, the additional elements do not amount to significantly more than the judicial exception. Regarding claims 3 and 5, the specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): an instruction device (Specification [0063]). See MPEP 2106.05(d)(I)(2). Claims 3 and 5 add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting instructing a device to execute the operation plan. See MPEP 2106.05(f). Claims 3 and 5 recite insignificant extrasolution activity (i.e. mere data gathering, selecting a particular data source or type of data to be manipulated, or an insignificant application) by reciting executing an operation plan. See MPEP 2106.05(g). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the recited judicial exception.
Remaining Claims:
With regards to Claim 2, these claims merely add a degree of particularity to the limitations discussed above rather than adding additional elements capable of transforming the nature of the claimed subject matter. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, the claims as a whole do not amount to significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagino et al. (U.S. P.G. Pub. 2021/0405603 A1), hereinafter Nagino, in view of Tsuzaki et al. (U.S. P.G. Pub. 2014/0303792 A1), hereinafter Tsuzaki.
Claim 1.
Nagino discloses an information processing apparatus comprising
a processor (Nagino [0226], [0230]-[0232]), wherein the processor executes:
a first step of creating an operation plan for a hydrogen production facility in a first period in a future by solving a mathematical programming problem using an operation state of the hydrogen production facility for each time in the first period as a variable (Nagino [0030], [0205] predicting demand amount of a period of time; [0064] generating demand prediction model); and
Regarding the following limitation:
a second step of creating an operation plan for the hydrogen production facility in a second period that is a future period shorter than the first period by solving a mathematical programming problem to optimize one or more decision variables representing an operation state of the hydrogen production facility for each time in the second period,
Nagino discloses a second step of creating an operation plan for the hydrogen production facility in a second period that is a future period shorter than the first period by generating an operation state of the hydrogen production facility for each time in the second period (Nagino [0150] generate operation planning model; [0218] generate a plan to satisfy the predicted hydrogen demand; [0046] operation plan). However, Nagino does not disclose solving a mathematical programming problem to optimize one or more decision variables representing an operation state, but Tsuzaki does (Tsuzaki [0003], [0007] mathematical programming is used to create an operation plan for liquid natural gas tanks based on decision variables, constraints, and an objective function).
The known technique optimizing decision variables using mathematical programming of Tsuzaki, as shown above, is applicable to the system of Nagino as they both share characteristics and capabilities, namely, they are creating operation plans for energy resources. One of ordinary skill in the art would have recognized that applying the known technique of optimizing decision variables using mathematical programming of Tsuzaki to operation planning of energy resources of Nagino would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Tsuzaki to the teaching of Nagino would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such optimizing decision variables using mathematical programming features into operation planning systems. Further, applying optimizing decision variables using mathematical programming to Nagino, would have been recognized by one of ordinary skill in the art as resulting in an improved system that would allow more efficient consideration of constraints on the energy usage.
Nagino, as modified above by Tsuzaki, teaches:
the processor executes the second step more frequently than the first step (Nagino [0203] prediction unit and the planning unit may update the model with respectively different update periods), and
a part of the operation plan created in the first step is used as a constraint condition of the mathematical programming problem in the second step (Nagino [0144], [0152] operation planning model may evaluate under constraint conditions including meeting the predicted demand amount).
Claim 2.
Nagino in view of Tsuzaki teaches all the elements of claim 1, as shown above. Additionally, Nagino discloses:
a hydrogen remaining amount at a time corresponding to an end of the first period obtained in the first step is used as a hydrogen remaining amount at an end of the second period as the constraint condition of the mathematical programming problem in the second step (Nagino [0047], [0180] storage management unit obtains hydrogen produced as well as current hydrogen and decrease storage amount by the amount supplied; [0144], [0152] constraints include storage amount).
Claim 3.
Nagino in view of Tsuzaki teaches all the elements of claim 1, as shown above. Additionally, Nagino discloses:
a step of providing data related to the operation plan created in the second step to a device on the hydrogen production facility side (Nagino [0046], [0223] control unit controls each apparatus of the hydrogen production system).
Claim 4.
Nagino discloses a hydrogen production system comprising:
a hydrogen production facility (Nagino [0020] hydrogen production appartus); and
an information processing apparatus (Nagino [0226], [0230]-[0232]), wherein the information processing apparatus executes:
Nagino in view of Tsuzaki teaches the remaining limitations of claim 4 as shown above in claim 1.
Claim 5.
Nagino in view of Tsuzaki teaches all the elements of claim 4, as shown above. Additionally, Nagino discloses:
an instruction device structured to instruct the hydrogen production facility to produce hydrogen based on data related to the operation plan created in the second step, the data being provided from the information processing apparatus (Nagino [0046], [0223] control unit controls each apparatus of the hydrogen production system).
Claim 7.
Nagino in view of Tsuzaki teaches all the elements of claim 7 as shown above in claim 1.
Claim 8.
Nagino in view of Tsuzaki teaches all the elements of claim 8 as shown above in claim 1.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagino in view of Tsuzaki further in view of Hamaguchi et al. (U.S. P.G. Pub. 2023/0352937 A1), hereinafter Hamaguchi.
Claim 6.
Nagino discloses a power supply system that supplies power to a power grid using power obtained from a renewable energy power generator that generates power using renewable energy, the power supply system comprising:
a power conditioner device structured to adjust power generated by the renewable energy power generator (Nagino [0018] power generation apparatus);
Nagino does not disclose the following limitation, but Hamaguchi does:
a storage battery capable of storing and discharging at least a part of surplus power that is not supplied to the power grid among power adjusted by the power conditioner device (Hamaguchi [0056] energy storage unit stores and releases power in the microgrid);
One of ordinary skill in the art would have been motivated to include a energy storage in connection with renewable generation for hydrogen production in order to further reduce dependence on the grid to produce hydrogen. It would have been obvious to one of ordinary skill in the art before the effective filing date to include an energy storage unit as taught by Hamaguchi in the system of Nagino, since the claimed invention is merely a combination of old elements in the art of operating hydrogen production equipment, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to incorporate the above features and yield predictable result of Nagino’s system with the improved functionality to continue to use renewable sources of energy when the are not available, such as using the battery stored solar at night, to further reduce the reliance on non-renewable grid power.
Nagino discloses:
a hydrogen production facility structured to produce hydrogen by using at least a part of the surplus power that is not supplied to the power grid among the power adjusted by the power conditioner device (Nagino [0020] hydrogen production apparatus);
a hydrogen storage facility capable of storing and releasing hydrogen produced by the hydrogen production facility (Nagino [0021] hydrogen storage apparatus);
a fuel cell structured to generate power using hydrogen released from the hydrogen storage facility (Nagino [0021] demand customer is a hydrogen station that supplies hydrogen to fuel cell vehicles);
a control means structured to control at least an operation of the hydrogen production facility (Nagino [0046], [0223] control unit controls each apparatus of the hydrogen production system; [0226], [0230]-[0232] processor), wherein the control means execute:
a first step of creating an operation plan for the hydrogen production facility in a first period in a future by solving a mathematical programming problem using an operation state of the hydrogen production facility for each time in the first period as a variable (Nagino [0030], [0205] predicting demand amount of a period of time; [0064] generating demand prediction model); and
Regarding the following limitation:
a second step of creating an operation plan for the hydrogen production facility in a second period that is a future period shorter than the first period by solving a mathematical programming problem to optimize one or more decision variables representing an operation state of the hydrogen production facility for each time in the second period,
Nagino discloses a second step of creating an operation plan for the hydrogen production facility in a second period that is a future period shorter than the first period by generating an operation state of the hydrogen production facility for each time in the second period (Nagino [0150] generate operation planning model; [0218] generate a plan to satisfy the predicted hydrogen demand; [0046] operation plan). However, Nagino does not disclose solving a mathematical programming problem to optimize one or more decision variables representing an operation state, but Tsuzaki does (Tsuzaki [0003], [0007] mathematical programming is used to create an operation plan for liquid natural gas tanks based on decision variables, constraints, and an objective function).
The known technique optimizing decision variables using mathematical programming of Tsuzaki, as shown above, is applicable to the system of Nagino as they both share characteristics and capabilities, namely, they are creating operation plans for energy resources. One of ordinary skill in the art would have recognized that applying the known technique of optimizing decision variables using mathematical programming of Tsuzaki to operation planning of energy resources of Nagino would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Tsuzaki to the teaching of Nagino would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such optimizing decision variables using mathematical programming features into operation planning systems. Further, applying optimizing decision variables using mathematical programming to Nagino, would have been recognized by one of ordinary skill in the art as resulting in an improved system that would allow more efficient consideration of constraints on the energy usage.
Nagino, as modified above by Tsuzaki, teaches:
the control means executes the second step more frequently than the first step (Nagino [0203] prediction unit and the planning unit may update the model with respectively different update periods),
a part of the operation plan created in the first step is used as a constraint condition of the mathematical programming problem in the second step (Nagino [0144], [0152] operation planning model may evaluate under constraint conditions including meeting the predicted demand amount), and
the control means controls the hydrogen production facility based on the operation plan created in the second step (Nagino [0046], [0223] control unit controls each apparatus of the hydrogen production system).
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 SCOTT M TUNGATE whose telephone number is (571)431-0763. The examiner can normally be reached Monday - Friday, 9:00 - 4:30 EST.
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/SCOTT M TUNGATE/Primary Examiner, Art Unit 3628
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