DETAILED ACTION
Status of the Application
This communication is a first Office Action Non-Final rejection on the merits in response to the filing of the applicant’s response to the election / restriction filed on 09/10/2025. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This application is a continuation of application 18/792,847 (now US Patent 12,244,147).
Election/Restrictions
Applicant's election with traverse of Species H (Claims 1-16 and new claims 21-26) in the reply filed on 09/10/2025 is acknowledged. After careful consideration, the restriction requirement is hereby withdrawn.
Double Patenting
3. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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4. Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8,18-21 of US Patent 12,244,147.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a twin configurable architecture renewable power plant for high capacity factor servicing of controllable loads in a similar manner without patentable distinguishable features.
Regarding claim 1, claim 1 of US Patent 12,244,147 discloses a system, comprising:
at least one renewable energy source (RES);
at least one energy storage system (ESS) that is electrically coupled to a grid interconnection point of an electric grid and to the at least one RES, and that has an aggregated power capacity that is not more than an aggregated power output capacity of the at least one RES; and a controller that is communicatively coupled with at least one controllable load (CL) and with at least one of the at least one ESS or the at least one RES, the controller configured to control a net load of the at least one CL and to:
provide a first instruction to at least one of the at least one RES or the at least one ESS to provide a first portion of electric power generated by the at least one RES or stored by the at least one ESS to the at least one CL; provide a second instruction to at least one of the at least one RES or the at least one ESS to provide a second portion of electric power to the electric grid; and in response to determining that a grid condition exists without electric power generated by the at least one RES exceeding the aggregated power capacity and the net load of the at least one CL, provide a third instruction to the at least one CL to one of increase or decrease a power demand at the at least one CL (see Claim 1).
Regarding claims 2-11 these claims are unpatentable over claims 2-8,18-21 of
US Patent 12,244,147 since are similar.
Claim Rejections - 35 USC § 102
5. 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 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.
6. 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.
7. Claims 1-16 and 22-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buttgenback et al US PG-Pub (2023/0129279 A1).
Regarding claim 1, Buttgenback et al discloses a system, comprising:
at least one renewable energy source (RES) (Fig. 1, item 110);
at least one energy storage system (ESS) (Fig. 1, item 120) that is electrically coupled to a grid interconnection point of an electric grid (Fig. 1, item 150) and the at least one RES (Fig. 1, item 110) and that has an aggregated power capacity that is not more than the aggregated power output capacity of the at least one RES (Fig. 1, Pootentiar > Poharge + Pgenerate + Pio gria and paragraphs [0051],[0053], [0059] - paragraph [0061],[0107])); and
a controller that is communicatively coupled with at least one controllable load (Fig. 1, item 130), and with the at least one ESS (Fig. 1, item 120), or the at least one RES (Fig. 1, item 110), the controller configured to control a net load profile of the at least one CL such that the net load of the at least one CL and to:
provide a first instruction to at least one of the at least one RES or the at least one ESS to provide a first portion of electric power generated by the at least one RES or stored by the at least one ESS to the at least one CL u (paragraph [0107]);
provide a second instruction to at least one of the at least one RES or the at least one ESS to provide a second portion of electric power to the electric grid (paragraph [0107]), (paragraph [0146]); and
in response to determining that the grid condition exists without the electric power generated by the at least one RES exceeding the aggregated power capacity and the net load of the at least one CL, provide a third instruction to the at least one CL to one of increase or decrease a power demand at the at least one CL (paragraph [0153],
Furthermore, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). (see MPEP 2114).
Furthermore, it has been held that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (See MPEP 2114)).
Regarding claim 2, Buttgenback et al discloses the system of claim 1, wherein the aggregated power output capacity of the at least one RES exceeds a point of grid interconnect (POGI) limit by a factor of between about 3 and about 6 (see Fig 3 and par. [0109], ratio between “inverter output” and “PV” to “POI”).
Regarding claim 3, Buttgenback et al discloses the system of claim 1, wherein the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (see Figs 1-6, par. [0075]-[0079]).
Regarding claim 4, Buttgenback et al discloses the system of claim 1, wherein the system has an associated capacity factor of at least about 60%, and the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (see Fig 1-3, “battery out”).
Regarding claim 5, Buttgenback et al discloses the system of claim 1, wherein a ratio of the power generated by the at least one RES to an aggregate load of the at least one CL is between about 3 and about 6, and the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (160) (see Figs 1-3, ratio between “inverter output” and “PV to electrolyzer”.).
Regarding claim 6, Buttgenback et al discloses the system of claim 1, wherein the controller is further configured to operate the at least one RES or the at least one ESS as at least one of a peaker plant for the electric grid or a provider of ancillary services to the electric grid, and the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (see Figs 1-6 and par. [0075]-[0078]).
Regarding claim 7, Buttgenback et al discloses the system of claim 1, wherein the at least one CL includes a plurality of CLs, the controller is further configured to provide instructions to the plurality of CLs to balance an energy distribution associated with the plurality of CLs, and the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (See Figs 1-2; par. [0076]).
Regarding claim 8, Buttgenback et al discloses the system of claim 1, wherein the at least one CL includes at least one of a data center, an artificial intelligence (AI) training center, a cryptocurrency miner, an electric vehicle (EV) charging station, a vertical farm, a hydrogen production facility, a water treatment plant, an industrial process heater, or a thermal battery (see Figs 1-6 and par. [0014]).
Regarding claim 9, Buttgenback et al discloses the system of claim 1, wherein the controller is further configured to at least one of:cause delivery of power from the electric grid to the at least one CL load;select the first instruction such that a correlation of the at least one CL with the electric grid is changed in response to the first instruction; or select the first instruction such that a correlation of (1) at least one peak of a net load profile associated with the at least one CL, with (2) at least one peak of a net load profile associated with the electric grid is changed in response to the first instruction (see Figs 1-6; par. [0072]-[0074]).
Regarding claim 10, Buttgenback et al discloses the system of claim 1, wherein the first instruction results in a change in a correlation of the at least one CL with the electric grid in response to the at least one first instruction (see Figs 1-6; par. [0072]-[0074]).
Regarding claim 11, Buttgenback et al discloses the system of claim 1, wherein the system is configured to: (1) operate in a first mode as at least one of a baseload, a semi-baseload, a semi-peaker plant, or a peaker plant for the at least one CL, and (2) concurrently with operating in the first mode, operate in a second mode as at least one of a peaker plant, a semi-peaker plant, a semi- baseload, a baseload, or a provider of ancillary services for the electric grid (see Figs 1-6; par. [0122]-[0123]).
Regarding claim 12, Buttgenback et al discloses a non-transitory, processor-readable medium storing instructions that, when executed by a processor (see Figs 1-6 and par. [0023],[0024],[0085],[0160],[0165],[0167]-[0170]), cause the processor to:
control a net load of at least one controllable load (CL) (Fig. 1, item 130);
provide a first instruction to at least one of (1) at least one renewable energy source (RES) (Fig. 1, item 110) or (2) at least one energy storage system (ESS) (Fig. 1, item 120), to cause a first portion of electric power generated by the at least one RES or stored by the at least one ESS to be supplied to the at least one CL (Fig. 1, item 130) (see Figs 1-6, paragraph [0107]);
provide a second instruction to at least one of the at least one RES or the at least one ESS to provide a second portion of electric power to an electric grid (160) (see Figs 1-6, paragraph [0107]), (see Figs 1-6, paragraph [0146]); and
in response to determining that a grid condition exists without electric power generated by the at least one RES exceeding an aggregated power capacity of the at least one ESS and an aggregated power demand of the at least one CL, provide a third instruction to the at least one CL to one of increase or decrease a power demand at the at least one CL (see Figs 1-6, paragraph [0153]).
Regarding claim 13, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (160) (see Figs 1-6,par. [0075]-[0079]).
Regarding claim 14, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, further storing instructions to cause the processor to operate the at least one RES or the at least one ESS as at least one of a peaker plant for the electric grid or a provider of ancillary services to the electric grid (160) (see Figs 1-6 and par. [0075]-[0078]).
Regarding claim 15, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein the at least one CL includes at least one of a data center, an artificial intelligence (AI) training center, a cryptocurrency miner, an electric vehicle (EV) charging station, avertical farm, a hydrogen production facility, a water treatment plant, an industrial process heater, or a thermal battery (see Figs 1-6; par. [0072]-[0074]).
Regarding claim 16, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, further storing instructions to cause the processor to (1) operate in a first mode as at least one of a baseload, a semi-baseload, a semi-peaker plant, or a peaker plant for the at least one CL, and (2) concurrently with operating in the first mode, operate in a second mode as at least one of a peaker plant, a semi-peaker plant, a semi-baseload, a baseload, or a provider of ancillary services for the electric grid (160) (see Figs 1-6; par. [0122]-[0123]).
Regarding claim 22, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein providing the first instruction results in a change in a correlation of the at least one CL with the electric grid in response to the first instruction (see Figs 1-6; par. [0072]-[0074]).
Regarding claim 23, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein a ratio of the power generated by the at least one RES to an aggregate load of the at least one CL is between about 3 and about 6 (see Figs 1-6, ratio between “inverter output” and “PV to electrolyzer”.).
Regarding claim 24, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein:
a ratio of the power generated by the at least one RES to an aggregate load of the at least one CL is between about 3 and about 6 (see Figs 1-3, ratio between “inverter output” and “PV to electrolyzer”.), and
the grid condition is associated with at least one of a price of power associated with the electric grid, a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (160) (see Figs 1-6, par. [0075]-[0079]).
Regarding claim 25, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, further storing instructions that, when executed by the processor, cause the processor to at least one of:
cause delivery of power from the electric grid (160) to the at least one CL load;
select and execute the first instruction such that a correlation of the at least one CL with the electric grid is changed in response to the first instruction; or select the first instruction such that a correlation of (1) at least one peak of a net load profile associated with the at least one CL, with (2) at least one peak of a net load profile associated with the electric grid is changed in response to execution of the first instruction (see Figs 1-6; par. [0072]-[0074]).
Regarding claim 26, Buttgenback et al discloses the non-transitory, processor-readable medium of claim 12, wherein the at least one CL includes a plurality of CLs, the non-transitory, processor-readable medium further storing instructions that, when executed by a processor, cause the processor to:
provide instructions to the plurality of CLs to balance an energy distribution associated with the plurality of CLs (See Figs 1-2; par. [0076]), and
the grid condition is associated with at least one of a price of power associated with the electric grid (160), a price of ancillary services associated with the electric grid, a curtailment associated with the electric grid, a congestion price associated with the electric grid, or a decongestion value associated with the electric grid (160) (see Figs 1-3, ratio between “inverter output” and “PV to electrolyzer”.).
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the cited prior art of record in the 892-form attached.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALFONSO PEREZ BORROTO whose telephone number is (571) 270-1714. The examiner can normally be reached on 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rexford Barnie can be reached on (571) 272-7492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALFONSO PEREZ BORROTO/Primary Examiner, Art Unit 2836