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 Application
Claims 1-3 have been examined in this application. Thiscommunication is the first action on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted onJune 27, 2025. The submission is in compliance with the provisions of37 CFR 1.97. Accordingly, the information disclosure statement isacknowledged and has been considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are: “planner” and “estimator in Claim 1, serving as a generic placeholder that is followed by their function.
Because this/these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites a “planner” and “estimator” coupled with functional language. Pursuant to the 112(f) interpretation of a “planner” and “estimator”, there is a lack of support for resolving the hardware necessary to implement these generic placeholders in the specification, namely components such as a processor or non-transitory memory.
Therefore, Claim 1 is rejected as failing to comply with the description requirement under 35 USC 112(a).
Claims 2-3 depend from Claim 1 and inherit these deficiencies, and are also rejected under 35 USC 112(a).
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a “planner” and “estimator”, followed by functional language reciting functions performed by these components. These limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
paragraph, because they are generic placeholders coupled with functional
language without reciting sufficient structure to achieve the claimed
function or to modify the generic placeholder. However, the written
description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure,
material, or acts to the function. Therefore, the claim is
indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be
interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35
U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it
expressly recites what structure, material, or acts perform the entire
claimed function, without introducing any new matter (35 U.S.C.
132(a)); or
(c) Amend the written description of the specification such that it clearly
links the structure, material, or acts disclosed therein to the function
recited in the claim, without introducing any new matter (35 U.S.C.
132(a)).
If applicant is of the opinion that the written description of the
specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one
of ordinary skill in the art would recognize what structure, material, or acts
perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it
expressly recites the corresponding structure, material, or acts for
performing the claimed function and clearly links or associates the
structure, material, or acts to the claimed function, without introducing
any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or
acts, which are implicitly or inherently set forth in the written
description of the specification, perform the claimed function. For
more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and
2181.
Claims 2-3 inherit these deficiencies from Claim 1, and therefore are
similarly rejected under 35 USC 112(b).
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to [judicial exception] without significantly more.
101 Analysis – Step 1
The claims are directed to an apparatus. Therefore, the claim is directed to at least one of the four statutory categories.
101 Analysis – Step 2A
Regarding Prong 1 of the Step 2A analysis in the MPEP, the claims are to be analyzed to determine whether they recite subject matter that is directed to a judicial expectation, namely a law of nature, a natural phenomenon, or one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent Claim 1 includes limitations that recite an abstract idea and will henceforth be used as a representative claim for the 101 rejection until otherwise noted. Claim 1 recites:
An operation planning system for planning operation of a transport ship that collects energy from a plurality of floating bodies that store energy by generating power while automatically sailing, the operation planning system comprising: an estimator configured to estimate a storing time, which is a time at which energy stored in each of the plurality of floating bodies reaches a predetermined amount; and a planner configured to generate an operation plan of the transport ship such that operation time of the transport ship approaches the storing time, wherein the operation time is sum of a first time, a second time and a third time, the first time is a time required for the transport ship to collect energy from the plurality of floating bodies, the second time is a time required for the transport ship to deliver energy at a port, the third time is a time required for the transport ship to travel between a point, at which the transport ship collects energy from the plurality of floating bodies, and the port, wherein the planner sets a number of the plurality of floating bodies according to the first time.
The examiner submits that the foregoing bolded limitation(s) constitute an abstract idea because under its broadest reasonable interpretation, the claim covers a mental process and certain method of organizing human activity.
"planning operation of a transport ship…", "estimate a storing time…", “generate an operation plan such that operation time of the transport ship approaches the storing time”, “sets a number of the plurality of floating bodies… recite abstract ideas - namely, mental processes that could be
performed by a human with a pen and paper, per the MPEP, merely adapting them into the context of a technological environment with computing parts does not preclude them from being abstract.
“generate an operation plan…”, “sets a number of the plurality of floating bodies” recites a certain method of organizing human activity. As the broadest reasonable interpretation of transport ship operation and planning pertains to instructing a human operator of the ship, we consider this to recite a means of managing personal behavior.
Accordingly, the claim recites at least one abstract idea.
Claims 2-3 recite at least one abstract idea by virtue of their dependency from Claim 1.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the MPEP, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into practical application. As noted in the MPEP, it must be determined whether any additional elements in the claim beyond the judicial exception integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements, such as merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a practical application.
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
An operation planning system for planning operation of a transport ship that collects energy from a plurality of floating bodies that store energy by generating power while automatically sailing, the operation planning system comprising: an estimator configured to estimate a storing time, which is a time at which energy stored in each of the plurality of floating bodies reaches a predetermined amount; and a planner configured to generate an operation plan of the transport ship such that operation time of the transport ship approaches the storing time, wherein the operation time is sum of a first time, a second time and a third time, the first time is a time required for the transport ship to collect energy from the plurality of floating bodies, the second time is a time required for the transport ship to deliver energy at a port, the third time is a time required for the transport ship to travel between a point, at which the transport ship collects energy from the plurality of floating bodies, and the port, wherein the planner sets a number of the plurality of floating bodies according to the first time.
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
As it pertains to Claim 1, the additional elements in the claims include “An operation planning system”, “an estimator”, “a planner” When considered in view of the claim as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional elements are generic computing components, as the additional elements are interpreted pursuant to rejections under 35 USC 112(f) above, that are merely used as a tool to perform the recited abstract idea and/or do no more than generally link the use of the recited abstract idea to a particular technological environment or field of use under Step 2A Prong Two. The heart of the claim lies with the mental process of planning and the method of organizing the human behavior of the people involved in steering the ship. That generic computing components are present is secondary to these abstract ideas at the heart of the claims.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05).
Accordingly, the additional limitation(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing abstract ideas.
Claim 2 does not recite additional elements beyond those found in Claims from which they depend.
Claim 3 recites “each of the plurality of floating bodies stores energy as hydrogen”, but these components are not part of what comprise the claimed planning apparatus, and therefore do not represent additional elements to the claims or integrate the recited abstract ideas into a practical application.
101 Analysis – Step 2B
Regarding Step 2B of the MPEP, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to generic computing components that are merely used
as a tool to perform the recited abstract idea and/or do no more than
generally link the use of the recited abstract idea to a particular
technological environment or field of use. Further, looking at the additional
elements as an ordered combination adds nothing that is not already
present when considering the additional elements individually.
For analogous reasoning as above, Claims 2-3 do not integrate the abstract ideas recited into a particular application per Step 2A Prong II or amount to significantly more under Step 2B.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stephens(US 20250012515 A1) discloses a system directed towards collecting energy at offshore locations, but does not teach scheduling the replacement of the tank containers according to the times claimed in Applicant’s application. Optimal Scheduling for Integrated Energy-Mobility Systems Based on Renewable-to-Hydrogen Stations and Tank Truck Fleets(Ban et al, 2022) tackles scheduling hydrogen pickup, but lacks the offshore setting and doesn’t optimize according to each of the plurality of hydrogen collectors reaching a predetermined amount, but rather the individual capacity of the plurality of containers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE L XIE whose telephone number is (571)272-7102. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rutao Wu can be reached at 571-272-6045. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE XIE/Examiner, Art Unit 3623
/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623
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