Ex Parte Greiner et al

Patent Trial and Appeal Board

Jun 22, 2016

12679156 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/679, 156 03/19/2010
27350 7590 06/24/2016
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Martin Greiner
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007P20376 3713
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/24/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
boxsa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN GREINER, CLEMENS HOFFMANN, and
CLAUS KERN
Appeal2014-002072 1
Application 12/679,156
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the Final rejection of claims 26-33 and 35-53.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a decentralized energy network.
Spec. 1, 11. 6-8.
Claim 26 is illustrative:
1 Appellants identify Siemens Aktiengesellschaft as the real party in
interest. Br. 1.
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Application 12/679,156
26. A decentralized energy network, comprising:
a plurality of energy consumption units and/or
energy generation units;
a plurality of agents, with at least one of said
plurality of agents assigned to each said energy consumption
and/ or energy generation unit;
said plurality of agents being networked together in
such a way to enable each one of said plurality of agents to
communicate with other said agents in the energy network; and
a local energy exchange unit through which said
plurality of agents negotiate monetary transactions during an
operation of the energy network, and
wherein a distribution of energy in the energy network is
based at least partly on the monetary transactions negotiated
between said agents.
Claims 26-33 and 35-53 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 26-33 and 35-53 are rejected under 35 U.S.C. § 101 as
reciting unpatentable subject matter.
Claims 26-31, 35--40, 43--45, 49, 51, and 52 are rejected under 35
U.S.C. § 103(a) as unpatentable over Maturana (US 2005/0034023 Al, pub.
Feb. 10, 2005) and Malme (US 2002/0019802 Al, pub. Feb. 14, 2002).
Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Winter (US 2006/0265323 Al, pub. Nov. 23, 2006).
Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Troxell (US 2007 /0124026 Al, pub. May 31, 2007).
Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Felt (US 2002/0138735 Al, pub. Sept. 26, 2002).
Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Booth (US 2003/0063723 Al, pub. Apr. 3, 2003).
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Claim 46 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Abdelaziz (US 2012/0079368 Al, pub. Mar. 29,
2012).
Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Foster (US 2005/0004858 Al, pub. Jan. 6, 2005).
Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, Foster, and Ristanovic (US 7,343,360 Bl, iss. Mar. 11,
2008).
Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maturana, Malme, and Smith (US 6,785,592 Bl, iss. Aug. 31, 2004).
We AFFIRM.
ANALYSIS
Rejection under 35 U.S. C. § 112, Second Paragraph
We are persuaded by Appellants' arguments that the claim language is
not indefinite, based on, among other things, descriptions in the
Specification. Br. 3-5.
The Examiner asserts that the term "energy network" is indefinite
because it is "so broad." Final Act. 7. We disagree. The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the [S]pecification." Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). By the Examiner's own
admission (Final Act. 7), the Examiner's concerns are a matter of claim
breadth, not indefiniteness. "Breadth is not indefiniteness." In re Gardner,
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427 F.2d 786, 788 (1970). Additionally, the term is part of the preamble,
and the body of the claim defines the bounds of the energy network.
In the same vein, the Examiner asserts that the term "plurality of
agents" is indefinite because it could encompass humans, software, or
hardware. Final Act. 8. Once again, however, a broad claim term such as
"agent" does not render a claim indefinite if the ordinary artisan would
understand the meaning. Here, "agents" is construed according to the
ordinary and customary meaning of "one who is authorized to act for or in
the place of another." See Merriam-Webster Online Dictionary, last
retrieved on June 20, 2016 at http://www.merriam-
webster.com/dictionary/agent. The "another" in the claims and
Specification is the energy generation and consumption units.
The Examiner also asserts that the claim terms "energy consumption
units" and "energy generation units" are indefinite because, according to the
Examiner, it is unclear whether the terms are "output power of engines
and/ or electric power motors production," a "unit of measurement," or
"software per se." Final Act. 7-8. We disagree that those claim terms are
directed to any of them. The Specification describes examples of "energy
generation units" to include "photovoltaic plants, wind turbines, Sterling
engines and so-called CHP plants (CHP =Combined Heat and Power)," and
"energy consumption units" as "private households, commercial consumers
(such as office buildings, public baths, etc.), and industrial consumers."
Spec. 8, 11. 10-17. None of these are "output power of engines and/or
electric power motors production," a "unit of measurement," or "software
per se." Indeed, we discern that the ordinary and customary meaning of
these terms are things that generate or consume energy, respectively,
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because a "unit" is "a single thing, person, or group that is a part of
something larger" (see Merriam-Webster Online Dictionary, last retrieved
on June 20, 2016 at http://www.merriam-webster.com/dictionary/unit). An
"energy generation unit" is, thus, a thing that generates energy. This is
consistent with the examples provided in the Specification. See Spec. 8, 11.
10-17.
In light of the aforementioned express construction and descriptions in
the Specification, we determine that the ordinary artisan in the energy
generation and distribution field would not consider energy generating or
consumption units to be "units of measurement." Indeed, we note that the
Examiner has not set forth adequate evidence or analysis in support of the
asserted "unit of measurement" interpretation. Also, software per se, as
abstract statements of logic, cannot generate or consume energy, as set forth
in the Specification, so we do not construe the units as encompassing
software per se. There further is inadequate analysis and evidence to limit
the recited energy generation and consumption to engines and electric
motors.
The Examiner asserts that there is no antecedent basis for the term
"said agents," and asserts that it should be changed to match the previously-
recited "plurality of agents." Final Act. 2. We determine, however, that one
of ordinary skill would understand that "plurality of agents" is a sufficient
antecedent basis for any further reference to any "agents," because "plurality
of' indicates more than one.
The Examiner next indicates confusion over which statutory category
of invention is claimed, but settles on "apparatus." Final Act. 9. Appellants
do not object to this finding, and neither do we because, for example, our
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above construction of "energy consumption units" and "energy generation
units" indicate that the recited "energy network" is made up of physical
components. Id. at 2. Thus, we determine that independent claim 26, and its
dependent claims, are directed to an apparatus and, thus, the rejection on this
basis is moot.
The Examiner asserts further that there is no antecedent basis for the
introduction of "a monitoring unit" in claim 3 9 (Final Act. 14 ). The term,
however, appears to be properly introduced in that claim with the article "a,"
and so we are unclear as to the basis for the assertion that there is no
antecedent basis.
The Examiner asserts that there is no antecedent basis for the term
"group" in claim 40 (Id.), which recites "selected from the group consisting
of." This is, however, a proper, commonly-accepted claim format for a
Markush group, so there is no antecedent basis problem. See MPEP
§ 2173.05(H) ("A Markush claim is commonly formatted as: "selected from
the group consisting of A, B, and C.").
The Examiner asserts that there is no antecedent basis for "said unit"
in claim 43. (Final Act. 15). We determine, however, that one of ordinary
skill would understand that the term refers to the management unit that is the
subject of the claim.
The Examiner asserts that there is no antecedent basis for the term
"the energy distribution" in claim 47. Final Act. 16. We determine,
however, that one of ordinary skill would understand that the term refers to
"distribution of energy" in claim 26.
The Examiner asserts that there is an omitted "achieving a negotiated
agreement" step in independent claim 53. Final Act. 19. The step appears to
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be recited as "said plurality of agents negotiate monetary transactions during
an operation of the energy network," which is part of the embedded
language drawn from independent claim 26.
The remainder of the Examiner's rejections (Final Act. 9-19) merely
repeat the same issues of claim breadth and antecedent basis, and are found
incorrect for the same reasons set forth above.
For these reasons, we do not sustain the rejection of claims 26-33 and
35-53 as indefinite.
Rejection under 35 U.S. C. § 1 OJ
We are persuaded by Appellants' argument that the claims are not
directed to unpatentable subject matter. Br. 3-5. Principally, the Examiner
asserts that the claims are non-statutory because they encompass humans
and software per se.
As an initial matter, however, in disagreement with Appellants, we
find no definition or description in the Specification limiting the term
"agent" to exclude humans or software from within the scope of "agent."
Even if the claimed agents in the system of claim 26 were human or
software, however, this does not indicate that the claimed network would be
claiming only a human, or only software per se, as insinuated by the
Examiner, because other elements of the network, such as energy
generating/ consuming units, are also present. The Examiner has not
asserted, for example, that energy generating and consuming units are also
humans, such that nothing but human beings are being claimed. See Final
Act. 19-20. Plus, we determined above that the recited energy generating
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and consumption units are not software per se, which indicates that the claim
also does not exclusively claim software per se.
The Examiner, thus, has not set forth adequately that the scope of the
claimed network could encompass only humans and/or entirely software per
se, which arguably would not be directed to statutory subject matter.
Instead, the analysis merely asserts that humans or software could be
elements in the network. See Final Act. 19-28. This alone, however, does
not indicate the claim recites unpatentable subject matter, as claims regularly
include human activity and/or software components.
As to claim 53, the Examiner advances the idea that the independent
method claim is merely an abstract idea (though no such abstract idea is
identified), merely applies a law of nature (though no law is identified), is
merely software, and ambiguously combines a method with a network.
Final Act. 19-28. The analysis merely sets out conclusory assertions, but
does not establish a prima facie case that the claimed method is an abstract
idea or application of a law of nature. See Alice Corp. Pty. Ltd. v CLS Bank
Intl., 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)). In addition, the
claim clearly recites that it is a method that provides a network. This does
not render the class of invention as ambiguous, because it is a method.
For these reasons, we do not sustain the rejection of claims 26-33 and
35-53 under 35 U.S.C. § 101.
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Rejection under 35 U.S.C. §' 103(a)
Appellants argue all claim rejected under 35 U.S.C. § 103(a) as a
group (Br. 5-8), so we select claim 26 as representative. See 37 C.F.R.
§ 41.37( c )(1 )(vii).
We are not persuaded by Appellants' argument that Maturana fails to
disclose a local energy exchange unit. Br. 5---6; see also Br. 7-8. The
Examiner does not rely on Maturana for this feature, but instead relies on
Malme. Final Act. 30.
We are not persuaded by Appellants' argument that "[n]othing in
Malme fairly points to anything that could be read on a 'local energy
exchange unit,' as claimed." Br. 6-7.
A "local energy exchange unit" is described in Appellants'
Specification, and explains that agents can "access" the unit (Spec. 9, 11. 1-
3), and that the unit "represents a switching unit for supply and demand of
the individual [agents] which buy or sell energy in exchange for money."
Spec. 9, 11. 16-19. Malme discloses computer servers (Malme, para. 46)
where producers and consumers bid and contract for energy (Malme, paras.
33, 36, 39), and, thus, corresponds properly to a switching unit for supply
and demand-driven purchases and sales of energy between agents, as
claimed.
We are also not persuaded by Appellants' argument that the Examiner
has not set forth a reason to substitute Maturana's "distributed" exchange
with Malme's "local" exchange. Br. 7. The Federal Circuit has stated that
"rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
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Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418. Here, the Examiner set forth articulated reasoning with rational
underpinning, asserting the following: "Both Maturana and Malme are
directed toward buying and selling energy with [an] energy exchange.
Malme teaches the motivation of presenting a means for local surplus energy
to be sold. It would have been obvious to one of ordinary skill in the art at
the time of the invention to apply a known technique to a known device to
yield predictable results as Malme teaches the motivation of presenting a
means for local surplus energy to be sold." Final Act. 30-31. We are
unpersuaded of error in that rationale for modification. The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. KSR 550 U.S. at 416. The
Court further stated that if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417.
For these reasons, we sustain the rejection of claims 26-33 and 35-53
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the rejection of claims 26-33 and 35-53 under 35
U.S.C. § 112, second paragraph.
We REVERSE the rejection of claims 26-33 and 35-53 under 35
U.S.C. § 101.
We AFFIRM the rejection of claims 26-33 and 35-53 under 35
U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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