Ex Parte Uselton

Patent Trial and Appeal Board

Jan 28, 2019

13269246 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/269,246 10/07/2011
134318 7590 01/30/2019
Baker Botts L.L.P./Lennox
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Robert B. Uselton
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.
018635.0436 3547
EXAMINER
PEREZ BERMUDEZ, Y ARITZA H
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. USELTON
Appeal2018-000386
Application 13/269,246
Technology Center 2800
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks our review of the
Examiner's decision to reject claims 1-3, 9-12, 18-24, and 29-35 under 35
U.S.C. § 101.
We have jurisdiction over this appeal. 35 U.S.C. § 6.
1 Appellant identifies the real party in interest as Lennox Industries, Inc.
App. Br. 1.
Appeal2018-000386
Application 13/269,246
BACKGROUND
According to the disclosure, renewable energy systems, such as those
designed to capture solar or wind energy, "typically connect straight back to
the electrical distribution panel near the electrical service entrance and
kilowatt-hr meter." Spec. ,r 2. In such installations, a Renewable Energy
Credit (REC) meter, also known as a "revenue grade meter," is also
"installed and captures the amount of renewable energy generated" by the
system. Id. Reading the REC meter concurrently with a "kilowatt-hr meter"
is not problematic if such meters are co-located, but is inconvenient if the
meters are separated by distance, or, in larger systems requiring multiple
REC meters, the meters are widely distributed. Id. ,r 3.
The invention is said to improve upon the state of the art by providing
"a distributed energy metering module, a method of measuring distributed
renewable energy[,] and a distributed renewable energy system." Id. ,r,r 3--4.
The claimed module, method, and system are purported to "provide a
revenue grade renewable energy metering capability for a population or
collection of distributed power inverters that generate renewable energy
output power and provide corresponding output energy data thereby
qualifying for electric utility Performance Based Incentives (PBis)." Id.
,r 17. Such metering "eliminates a need for a separate, dedicated, high-
accuracy REC kilowatt-hour meter." Id.
Independent claim 1, directed to a distributed energy metering
module, is illustrative of the claimed subject matter and is copied below with
key limitations emphasized:
1. A distributed energy metering module, comprising:
a data aggregating unit configured to receive output
energy data from a population of distributed power inverters
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Application 13/269,246
connected to an array of renewable energy generators, the data
aggregating unit employing an input power data connection
coupled to the population of distributed power inverters through
associated branch circuit distribution wiring of an electrical
service entrance and corresponding renewable distribution
energy wirmg;
a data processing unit configured to calculate a revenue
grade output energy for the population of distributed power
inverters based on a tolerance probability characteristic of the
output energy data; and
a display unit operable to display the revenue grade output
energy; and
wherein the tolerance probability characteristic of an
accuracy of the output energy data corresponds to applying the
Central Limit Theorem to predict a mean and standard deviation
of the accuracy of the output energy data from 30 or more
distributed power inverters.
App. Br. 13 (emphases added).
OPINION
On appeal, the Examiner maintains the rejection of claims 1-3, 9-12,
18-24, and 29-35 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter. Ans. 2-15; Final 2-5.
Claims 1-3, 9-12, 18-24, 30, 33, and 34
We begin with claim construction. Each of independent claims 1, 9,
and 21 requires the calculation of revenue grade energy in the data
processing unit to be "based on a tolerance probability characteristic of the
output energy." App. Br. 13-15. These independent claims then go on to
recite - in a "wherein" clause - a mathematical calculation corresponding to
"the tolerance probability characteristic of an accuracy of the output energy
data." Id. ( emphasis added). There is no antecedent basis in independent
claims 1, 9, and 21, however, for this phrase. Thus, it is unclear what "the
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Application 13/269,246
tolerance probability characteristic of an accuracy of the output energy data"
recited in the wherein clauses of claims 1, 9, and 21 has to do with the other
limitations recited in these claims.
Under these circumstances, independent claims 1, 9, and 21 fail to
specifically recite how the revenue grade output energy is calculated, i.e.,
what precise mathematical calculation the "tolerance probability
characteristic of the output energy data" is based upon. As such, claims 1, 9,
and 21 do not reasonably apprise the skilled artisan of their scope.
Thus, we determine that claims 1, 9, and 21 are indefinite under 3 5
U.S.C. § 112, second paragraph, and newly reject these claims, as well as
claims 2, 3, 10-12, 18-20, 22-24, 30, 33, and 34, dependent therefrom.
Because claims 1-3, 9-12, 18-24, 30, 33, and 34 are indefinite, we
are unable to reach the Examiner's subject matter eligibility rejection under
35 U.S.C. § 101 for these claims.
Claims 29, 31, 32, and 35
Claim 29 recites:
A distributed renewable energy system, comprising:
a renewable energy generating module including an array
of renewable energy generators connected to a population of
distributed power inverters; and
a distributed energy metering module, including:
a data aggregating unit that receives output energy
data from the population of distributed power inverters,
and
a data processing unit that calculates a revenue
grade output energy from the output energy data based on
a tolerance probability characteristic of the output energy
data;
wherein the tolerance probability characteristic of the
output energy data for a summation sample set size of at least
2 5 0 distributed power inverters corresponds to a probability
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Application 13/269,246
distribution having about a 95 percent confidence level of not
over reporting the revenue grade output energy by more that [ sic,
than] 0.2 percent based on 99 percent of the population of
distributed power inverters having an accuracy of 5 percent of
nominal.
App. Br. 15-16 (emphases added).
We determine claim 29 is also indefinite under 35 U.S.C. § 112,
second paragraph, but for different reasons than those provided for claims 1,
9, and 21. Namely, the "wherein" clause only provides "the tolerance
probability characteristic of the output energy for a summation sample size
of at least 250 distributed power inverters." App. Br. 16. The body of the
claim, however, does not require the presence of "at least 250 distributed
power inverters," but rather recites a "population" of such inverters. Id. at
15. Thus, in the event that there are less than 250 distributed power
inverters in the energy system recited in claim 29, the claim fails to
specifically recite what precise mathematical calculation the "tolerance
probability characteristic of the output energy data" is based upon.
Furthermore, even assuming that at least 250 distributed power
inverters were required in the energy system, it is not clear what
mathematical calculation is encompassed by the language "a probability
distribution having about a 95 percent confidence level of not over reporting
the revenue grade output energy by more tha[ n] 0 .2 percent based on 99
percent of the population of distributed power inverters having an accuracy
of 5 percent of nominal" as recited in claim 29. Based on the discussion in
the Specification, having approximately 250 distributed power inverters
alone is sufficient to "achieve a 95 percent probability that the system does
not over report by more than ... 0 .2 percent" the reported energy output.
Spec. ,r 51 ( explaining "[ f]or larger populations of distributed power
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Application 13/269,246
inverters, there is a sample size [i.e., 'around 250'] for which it is no longer
necessary to derate (i.e., under report) the reported energy output"). See also
id. ,r 52 ("At a sample size of 250, the probability of meeting the revenue
grade requirement approaches 95 percent.").
Thus, we determine that independent claim 29 is indefinite under 35
U.S.C. § 112, second paragraph, and newly reject this claim, as well as
claims 31, 32, and 35, dependent therefrom.
Because claims 29, 31, 32, and 35 are indefinite, we are unable to
reach the Examiner's subject matter eligibility rejection under 35 U.S.C.
§ 101 for these claims.
DECISION
We newly reject claims 1-3, 9-12, 18-24, and 29-35 under 35 U.S.C.
§ 112, second paragraph as being indefinite.
Because these claims are indefinite, we are unable to reach the 35
U.S.C. § 101 subject matter eligibility rejection.
37 C.F.R. § 4I.50(b)
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
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Application 13/269,246
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
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