Determining Patent Subject Matter Eligibility (or Ineligibility), PTO Must Consider All Limitations

The USPTO Patent Trial and Appeal Board (“PTAB”) overruled a patent examiner’s rejection under 35 U.S.C. sec. 101 that the claimed invention for an energy transaction plan which controls the charging, discharging, and storing operations of an electric vehicle charging station was ineligible patent subject matter. The PTAB found that the examiner failed to consider the claim “as a whole” and the limitation which expressly requires the “starting, conducting, and ending charging of the electric vehicle charging transaction” and the generated energy transaction plan using a computer processor “to control all aspects of the charging, discharging, and storing operations with the electric vehicle.” Ex parte Hafner, Case No. 2015-2200, (USPTO Patent Trial and Appeal Board, May, 2017). (Available Here)

The PTAB directed the examiner to consider the Memorandum by Andrew Hirshfeld, Deputy Commissioner for Patent Examination Policy, dated June 25, 2014, that examiners were to “[c]onsider the claim as a whole by considering all claim elements, both individually and in combination.” The PTAB stated that an examination of the claim as a whole was not done here. Claim 1, for example, is replete with limitations, none of which are specifically treated. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012), claim limitations thereby “transform[ing]” the claim into a patent-eligible invention; see also Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354-55 (2014).

For example, Claim 1 recited “starting, conducting, and ending charging of the electric vehicle charging transaction using the processor in the computer configured to execute the generated energy transaction plan to control all aspects of the charging, discharging, and storing operations with the electric vehicle.”

The PTAB stated “This limitation expressly requires the ‘starting, conducting, and ending charging of the electric vehicle charging transaction’ and the generated energy transaction plan is the software which the processor in the computer executes in order ‘to control all aspects of the charging, discharging, and storing operations with the electric vehicle.’”

In its entirety, Claim 1 recited: A computer implemented method of generating an energy transaction plan for controlling aspects of an electric vehicle charging transaction, the computer implemented method comprising:

[1] identifying, by a processor in the computer, an electric vehicle associated with a charging station and a set of principals associated with a charging transaction for the electric vehicle, wherein a principal in the set of principals is an entity having an interest in the charging transaction for the electric vehicle including an owner and an operator [sic] the electric vehicle and wherein the charging transaction is a transaction associated with at least one of charging the electric vehicle, storing electric power in an electric storage mechanism associated with the electric vehicle, and de-charging the electric vehicle;

[2] receiving charging transaction information, by the processor in the computer, wherein the charging transaction information comprises requirements, constraints, and preferences applicable to the charging transaction, wherein the preferences comprise at least one user selected preference having a type specified as one of static, effective until an associated preference changes; dynamic, requiring user input of a value in real time; and temporary, effective for a predetermined period of time, with the preferences used to manage, govern, and control one or more aspects of the electric vehicle charging transaction so as to minimize, maximize, or optimize the aspects, and further the preferences are maintained in a vehicle preference service comprised of a software component for creating, managing, storing, requesting, updating, deleting, and retrieving the preferences according to the energy transaction plan; identifying, by the processor in the computer, a weighting value associated with each preference, wherein the weighting value indicates a priority of each preference relative to other preferences and determines an extent to which an associated preference is minimized, maximized, or optimized;

[3] generating, by the processor in the computer, an energy transaction plan to control all aspects of the charging, discharging, and storing operations with the electric vehicle based on the charging
transaction information, wherein the energy transaction plan comprises an identification of the electric vehicle, an identification of a principal in the set of principals to pay for the charging transaction, an identification of at least one electric power provider associated with the charging transaction, an owner of the charging station, charging transaction time driven event sequences that indicate the electric flow direction relative to the electric vehicle and rate of flow at each of a time mark and that specifies start and end times for the charging transaction and controls each of charging, discharging, and storing operations with the electric vehicle, and includes terms of the charging transaction to account for each of charging, discharging, and storing electric power, and further the energy transaction plan maximizes, minimizes, or optimizes each preference in accordance with the weighting value assigned to each preference, to control charging, discharging, and storing electric power; and

[4] starting, conducting, and ending charging of the electric vehicle charging transaction using the processor in the computer configured to execute the generated energy transaction plan to control all aspects of the charging, discharging, and storing operations with the electric vehicle.

The Examiner determined that claims 1-25 are “deemed to claim an abstract idea (generating a plan).” According to the Examiner, “generating an energy transaction plan based upon various attributes, including requirements, constraint and preferences, is a basic economic or administrative practice.” The PTAB disagreed and overruled the examiners Section 101 rejection.

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