DETAILED ACTION
Status of Claims
Claims 1-11 were canceled and claims 12-31 have been added via a preliminary amendment filed on 30 May 2025. Accordingly, claims 12-31 are pending. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, filed on 26 March 2025, is a continuation of application 17/945,145, and is now US Patent No. 12,288,255. Application 17/945,145, filed 15 September 2022 is a continuation of PCT/JP2021/008719, filed 05 March 2021, which claims foreign priority to 2020-050115, filed 19 March 2020, claims foreign priority to 2020-088924, filed 21 May 2020, and claims foreign priority to 2021-017719, filed 05 February 2021.
Claim Interpretation
Regarding claims 12-31, clauses such as “no specific asset information” in representative claim 12, are very broad and, as such may be interpreted as not further limiting the limitation:
determining there is no specific asset information from among all items of asset information indicating the first intermediary agent as an owner, wherein the specific asset information includes a transaction status of not transferred and the usage amount.
Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Gulack, 703F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d1057, ___, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d1267, ___, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). See MPEP § 2111.05.
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,
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent No. 12,288,255 (application 17/945,145), . Although the claims are not identical, they are not patentably distinct from each other because the claim of the instant application is broader than the claim of the patent.
Claim Objections
Claims 30 and 31 are objected to because the preamble should begin with “The non-transitory computer readable medium of claim 29, …”. Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 12-31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 12, 21 and 29, the representative limitation:
determining there is no specific asset information from among all items of asset information indicating the first intermediary agent as an owner, wherein the specific asset information includes a transaction status of not transferred and the usage amount;
is vague and indefinite in that it is not clear if the specific asset information refers to information on a “first asset of a plurality of assets”, or information on “any asset of a plurality of assets”. In view of the previous limitation:
receiving usage information including a usage amount of electricity which is an asset being used by a consumer, transmitted from a smart meter of the consumer;
perhaps an asset refers to energy produced by a particular production method, vis-a-vie Applicant’s specification page 2, lines 5-30. Correction is required.
Moreover, the Examiner finds that because particular claims are rejected as being indefinite under 35 U.S.C. § 112(b), it is impossible to properly construe claim scope at this time (See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) “Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though the claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Claims 13-20, 22-28, 30 and 31 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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 12-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 12-18 and 20 are directed to an “apparatus” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of transferring ownership of an asset which is grouped under fundamental business practice of creating a contractual relationship.
in prong one of step 2A (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]). Claims recite:
receiving usage information including a usage amount of electricity which is an asset being used by a consumer, transmitted from a …. consumer;
determining there is no specific asset information from among all items of asset information indicating the first intermediary agent as an owner, wherein the specific asset information includes a transaction status of not transferred and the usage amount;
transmitting, to the second intermediary server, a first request for changing the owner of asset information, the first request including an available amount based on the usage amount, and
the first intermediary agent as a new owner of electricity to be transferred to the consumer;
transmitting, to a blockchain, a second request for changing the ownership of the asset information, the second request including the consumer as a new owner of electricity; and
in response to receiving, from the blockchain, a response indicating that the transaction status of the asset information is changed from not transferred to transferred, transmitting a response indicating completion of the change of the ownership to the smart meter.
Accordingly, the claim recites an abstract idea (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]), the additional elements of the claim such as:
a memory; and
circuitry, connected to the memory,
smart mete;
a first intermediary server,
a second intermediary server, and
a blockchain
represent the use of a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than link a computerized system to the method steps corresponding to automating the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of transferring ownership of an asset using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 13-18 and 20 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 12-18 and 20 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of transferring ownership of an asset.
Accordingly, none of the dependent claims add a technological solution to the fundamental business practice in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claim 18 otherwise styled as a system, claims 21-28 styled as a method, and claims 29-31 styled as a non-transitory computer readable medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Additional Comments
The closest prior art of record is Gokhale et al (WO 2019141511 A1) in view of Mayne et al (US Pub. No. 20190164236 A1).
Gokhale teaches a system and method for managing the distribution of energy using a decentralized, distributed ledger network that enables secure peer-to-peer energy transactions, allows consumers and prosumers to set their energy buying and selling preferences, and facilitates a reduction in the overhead cost of producing and distributing electricity via Smart Contracts [0008]. .The electricity distribution system includes a peer-to-peer decentralized ledger network and a plurality of distributed ledger nodes in communication within the peer-to-peer decentralized ledger network. A processor is programmed to schedule at least one of supply of electricity from one of a plurality of available energy sources to an on-site load based on predetermined demand parameters and delivery of electricity generated by a distributed energy resource (DER) to an external load based on predetermined supply parameters.
Mayne teaches apparatus, systems and methods to measure and tag specific amounts of electricity produced by power plants and match them with volumes of electricity consumed by end-users. Individual units of electricity production will be represented by blockchain tokens to ensure the transparency, incorruptibility and efficiency of the system [0020]. His disclosure allows end-users to directly express their preferences for specific forms of energy production (e.g. renewable energy production); allows energy distribution companies – i.e. retailers - link their electricity supply to specific forms and sources of production and deliver tangible proof of provenance of the specific amounts of energy sold to end-users; and allows energy companies that both produce electricity and sell it to end-users to deliver tangible proof of provenance of the energy they have produced and sold to end-users [Id.].
Regarding claims 14, 23 and 31, the prior art of record does not teach:
determining a particular production method of the plurality of production methods based on a renewable energy usage ratio of electricity to be transferred to the consumer, and based on the total usage amount of the electricity, wherein the renewable energy usage ratio is a ratio of electricity produced from renewable energy used by the consumer to a total amount of electricity used by the consumer.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Walden et al: “CRYPTOGRAPHIC KEY SYSTEM AND METHOD”, (US Pub. No. 20200014536 A1).
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
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