DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 4
II. Priority 4
III. Other Proceedings 4
IV. Pertinent Prosecution History 5
V. Claim Status 6
VI. Reissue Requirements 7
VII. Reissue Oath/Declaration 8
VIII. Claim Objections 9
IX. Claim Interpretation 10
A. Lexicographic Definitions 11
B. 35 U.S.C. § 112 6th Paragraph 11
X. Claim Rejections – 35 U.S.C. § 112 12
A. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 12
(1) Enablement 12
B. 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph 16
XI. Claim Rejections – 35 USC § 103 19
A. Claims 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (Japanese Publication No. JP 11-234963) (“Shinohara”) in view of Kramer et al. (European Publication No. EP 1283589 A2) (“Kramer”), and further in view of Zhang et al. (Chinese Publication No. CN 2607649 Y) (Machine Generated Translation of Zhang - “ZhangMGT”), and further in view of Yokoyama et al. (U.S. Patent No. 6,731,563) (“Yokoyama”), and further in view of Brinkmann (German Publication No. DE 29607354 U1). 20
B. Claims 26-29 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (Japanese Publication No. JP 11-234963) (“Shinohara”) in view of Zhang et al. (Chinese Publication No. CN 2607649 Y) (Machine Generated Translation of Zhang - “ZhangMGT”), and further in view of Brinkmann (German Publication No. DE 29607354 U1). 30
C. Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (Japanese Publication No. JP 11-234963) (“Shinohara”) in view of Zhang et al. (Chinese Publication No. CN 2607649 Y) (Machine Generated Translation of Zhang - “ZhangMGT”) and Brinkmann (German Publication No. DE 29607354 U1), as applied to claims 26-29 and 32 above, and further in view of Kramer et al. (European Publication No. EP 1283589 A2) (“Kramer”). 38
D. Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (Japanese Publication No. JP 11-234963) (“Shinohara”) in view of Zhang et al. (Chinese Publication No. CN 2607649 Y) (Machine Generated Translation of Zhang - “ZhangMGT”) and Brinkmann (German Publication No. DE 29607354 U1), as applied to claims 26-29 and 32 above, and further in view of Kramer et al. (European Publication No. EP 1283589 A2) (“Kramer”). 39
XII. Claim Rejections – 37 CFR 42.73(d)(3)(i) 41
XIII. Response to Arguments 58
A. Claim Objection(s) 58
B. 35 U.S.C. § 251 Rejections 59
(1) Oath/Declaration Issue 59
(2) Broadening Issue 59
C. 35 U.S.C. § 112, Second Paragraph, Rejections 59
D. 35 U.S.C. § 103 Rejections 60
(1) Claims 19-25 60
(2) Claims 26-29 and 32 60
XIV. Conclusion 61
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Applicant filed the instant reissue application 17/210,938 (“‘938 Reissue Application”) on 24 March 2021 for U.S. Application No. 11/158,961 (“‘961 Application”), filed 22 June 2005, now U.S. Patent No. 7,816,631 (“‘631 Patent”), issued 19 October 2010, which claims foreign priority to German Patent Application No. 10 2004 030 457, filed 24 June 2004 (“DE ‘457”) and German Patent Application No. 20 2004 009 926 U, filed 24 June 2004 (“DE ‘926”).
Thus, the Examiner concludes that for examination purposes the instant ‘938 Reissue Application has an effective filing data of 24 June 2004, which is the filing date of both the DE ‘457 and DE ‘926 Applications.
Other Proceedings
Five (5) IPRs were filed for the ‘631 Patent, of which two were instituted and a final written decision issued. The final written decisions were in IPR2019-01223 and IPR2019-01224 and resulted in an IPR certificate cancelling claims 1-18 (“IPR Certificate”). While the present claims are not exactly the same as those cancelled, it should be understood that the Board’s findings in those proceedings remain highly persuasive authority, the Examiner largely follows the Board’s reasoning in IPR2019-01223, and the Examiner will not likely go against such findings absent an appeal.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘938 Reissue Application on 24 March 2021. The Examiner finds that the instant ‘938 Reissue Application included a preliminary amendment (“Mar 2021 Preliminary Amendment”) to the claims (“Mar 2021 Claim Amendment”). The Mar 2021 Claim Amendment included an amendment: canceling all of original claims 1-18; and adding new claims 19-32.
Based upon the IPR Certificate, the Office issued an “Order to Show Cause” on 04 October 2023 (“2023 Order to Show Cause”) for Applicant giving Applicant a non-extendible period of two (2) months to file a petition under 37 CFR 1.182 showing that either (1) the reissue claims are narrower than those claims that were canceled by the inter partes review certificate (including any existing patent claims and any claims added during the inter partes review) and/or denied entry during the inter partes review for failure to establish that such claim would be patentable, or that (2) the criteria for presenting claims that are broader than the scope of the claims canceled by the inter partes review certificate are satisfied by the claims of the reissue application (i.e., (a) the broader claims in the reissue application can be patentable, despite the fact that the claims in the inter partes review are not; and (b) the broader claims in the reissue application could not have been presented in the inter partes review trial).
On 04 December 2023, Applicant filed a petition under 37 CFR §1.182 in response to the 2023 Order to Show Cause (“2023 Petition to Show Cause”).
On 26 December 2023, the Office issued a Petition Decision granting the 2023 Petition to Show Cause and asserting that prosecution of the instant ‘938 Reissue Application will proceed (“2023 Petition Decision”).
The Office issued a non-Final Office action on 07 March 2025 (“March 2025 Non-Final Office Action”). In particular, the Mar 2025 Non-Final Office Action provided rejections for claim 19-32 (“Rejected Claims”) under 35 U.S.C. §§ 103, 112, 251, and 37 CFR 42.73(d)(3)(i).1
On 07 August 2025, Applicant filed a Response to Non-Final Office Action (“Aug 2025 Response”). The Aug 2025 Response contained: “Remarks,” a new Oath/Declaration (“Aug 2025 Oath/Declaration”), and “Amendments to the Claims” (“Aug 2025 Claim Amendment”) including: canceled original2 claims 1-18; amended new3 claims 19, 26, 27 and 32; and new4 claims 20-25 and 28-31.
Claim Status
The Examiner finds that the claim status in the instant ‘938 Reissue Application is as follows:
Claim(s) 1-18 (Original and canceled)
Claim(s) 19, 26, 27 and 32 (New and amended)
Claim(s) 20-25 and 28-31 (New)
Thus, the Examiner concludes that claims 19-32 are pending in the instant ‘938 Reissue Application. Claims 19-32 are examined (“Examined Claims”).
Reissue Requirements
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘631 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The Examiner notes that Amendment practice for Reissue Applications is NOT the same as for non-provisional applications. See MPEP §§ 1413 and 1453. Reissue application amendments must comply with 37 CFR 1.173, while non-provisional application amendments must comply with 37 CFR 1.121. Particularly,
Manner of making amendments under 37 CFR 1.173:
All markings (underlining and bracketing) are made relative to the original patent text, 37 CFR 1.173(g) (and not relative to the prior amendment).
For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets, and the added matter must be underlined. See 37 CFR 1.173(d).
For amendments to the drawings, any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. See 37 CFR 1.173(d)(3).
The Examiner further notes that all amendments to the instant ‘938 Reissue Application must comply with 37 CFR 1.173(b)-(g).
Reissue Oath/Declaration
The Examiner finds that the Aug 2025 Oath/Declaration states,
Each of the claims of the '631 Patent was too broad in using the open end “comprising” transitional phrase. New claim 19 uses teh more closed eneded “consisting essentially of” phrase. Claim 19 also is narrowing in requiring the choke to have a protection grade of IP65, and Claim 26 is narrowing in requiring another electronic component of the inverter in the second chamber to comprise a casting that provides a protection grade of IP65 to the another electronic component
(Aug 2025 Oath/Declaration). While the Aug 2025 Oath/Declaration states that the instant ‘938 Reissue Application is a narrowing application that is correcting a particular error, the Aug 2025 Oath/Declaration is defective because it has typographical errors, as is indicated above. In addition, since the error related to changing “comprising” to “consisting essentially of” is no longer relevant to the instant ‘938 Reissue Application, the Examiner finds that the error statement is further defective.
While, the outlying issue are present in the Aug 2025 Oath/Declaration, the Examiner finds that the error statement with respect to claim 26 is a sufficient error statement. Thus, the Examiner finds that the Aug 2025 Oath/Declaration is compliant.
Claim Objections
MPEP § 1453 states,
pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for all changes made in the claim(s), whether insertions or deletions). The failure to submit an explanation will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c)).
(MPEP § 1453; emphasis added). The Examiner finds that Applicant has not provided any sufficient explanation of support for at least the amendments to claims 19, 26, 27 and 32 instantly provided in the Aug 2025 Claim Amendment, as set forth in 37 CFR 1.173(c).
Moreover, the Aug 2025 Claim Amendment does not comply with 37 CFR 1.173(b) and is objected to because the indicated new claims in the Aug 2025 Claim Amendment are not underlined in their entirety (i.e., claim number, claim status identifier and claim limitations), as set forth in 37 CFR 1.173(d). (See MPEP § 1453).
In addition, the Aug 2025 Claim Amendment does not comply with 37 CFR 1. 173(b)(2), (d) and is objected to because:
The Examiner finds that the removed subject matter in the Aug 2025 Claim Amendment seems to be indicated by “double-bracketing” and the added subject matter seems to be indicated by “double-underlining” (See Aug 2025 Claim Amendment at claims 19, 26, 27 and 32). In reissue applications, for amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets (i.e., single-bracketing; emphasis added), and the added matter must be single-underlined. See 37 CFR 1.173(d).
Appropriate correction is required.
The Examiner further asserts that a claim amendment filed after final not complying with 37 CFR 1.173(c) will not be entered. (MPEP § 1453.II)
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation (“BRI”).
However, the ‘631 Patent will expire in September 2026 so if the ‘938 Reissue Application examination continues that long the standard will change to the ordinary and customary meaning standard set forth Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). However, the Examiner determines that all constructions herein would be the same under the Phillips standard.
Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. (See MPEP § 2111.01(IV)). After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner, the Examiner finds that he is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his/her own lexicographer. (Id.)
35 U.S.C. § 112 6th Paragraph
A second exception to giving words in the claims their ordinary and customary meaning is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 6th paragraph. See MPEP § 2181 et seq.
The Examiner finds that because the Examined Claims do not recite “step,” “means” or a claim term used as a substitution for “means” (i.e. a generic placeholder for “means”), the Examined Claims fail Prong (A) as set forth in MPEP §2181. Because the twenty-six (26) Examined Claims fail Prong (A) as set forth in MPEP §2181 I., the Examiner concludes that all Examined Claims do not invoke 35 U.S.C. §112, 6th paragraph. See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential).
Claim Rejections – 35 U.S.C. § 112
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
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.
Enablement
Claims 19-32 are rejected under 35 USC § 112, first paragraph as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability or unpredictability in the art;
(F) The amount of direction or guidance presented by inventor;
(G) The existence or absence of working examples; and
(H) The quantity of experimentation necessary.
See In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP §2164.01(a).
In particular claims 19 and 26 recites, e.g.,
“[a]n inverter having a protection grade, consisting of: …”
However, based on the Wands factors discussed below, the claimed subject matter noted directly above is not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Specifically, the Examiner finds that claims 19 and 26 now recite the closed-ended transitionally phrase of “consisting of.” In this light, the claim excludes any element, step, or ingredient not specified in the claim. (MPEP § 2111.03.II). Thus, as set forth below, the claims are deemed as failing to comply with the enablement requirement.
Regarding factor (A), the Examiner finds the breadth of claims 19 and 26 implies a particular structure of an inverter having connections for the electronic components between the various sealed and isolated chambers for providing the inverter functionality which is simply not recited in the disclosure, yet which includes all known and unknown inverter configurations for connecting the electronic components between the various sealed and isolated chambers for providing the inverter functionality. The claim language imposes no limits as to particular structures for connecting the electronic components between the various sealed and isolated chambers or providing the inverter functionality, thus, the claim alleges to cover all devices, circuitry, etc. and ways of performing the claimed inverter functionality.
Regarding factor (B), the Examiner finds the nature of the invention requires specific undisclosed structure and circuitry for connecting the electronic components between the various sealed and isolated chambers to provide an inverter functionality which are elements not disclosed nor linked to the claim language. No further disclosure of for example what structure and circuitry for connecting the electronic components between the various sealed and isolated chambers for providing the inverter functionality is provided such that one could configure all encompassed inverters to perform the recited inverter functionality. No structure and/or circuitry is provided for connecting the electronic components between the various sealed and isolated chambers to provide an inverter functionality.
Regarding factors (C) and (D), the Examiner finds that the invention is directed to an inverter with a housing having a cooling unit for cooling the electronic and/or electric components of the inverter. (‘631 Patent at c.1, ll.13-15). The Examiner finds that the state of the prior art is the “[i]nverters are well known in the art” and “include a housing for accommodating the electric and/or electronic components.” (Id. at c.1, l.19-20). Furthermore, even though inverters are known in the art, the Examiner finds that inverters require structure and circuitry for connecting the electronic components between the various sealed and isolated chambers to provide an inverter functionality. Thus, the Examiner finds that the invention is complex, particularly to what specific structure, circuitry, etc. is utilized and to how the specific functions are performed (e.g., connecting the electronic components between the various sealed and isolated chambers to provide inverter functionality - converting DC power that is input to the inverter to AC power).
Regarding factors (F) and (G), the Examiner further finds that minimal direction and guidance, if any, with regard to the scope of the claims, was provided by the inventors regarding particular structure of the connections for the electronic components between the various sealed and isolated chambers for providing the inverter functionality. In particular, regarding the structure of the inverter, and connections of various components thereof, the inventors disclosed,
[i]nverters are well known in the art.
(‘631 Patent at c.1, ll.19); and
[i]t is therefore them object of the invention to provide an inverter of the type mentioned above….
(Id. at c.1, ll.35-36). As shown above, Applicant describes the concept of an inverter, but there is no guidance with respect to what structure and circuitry for connecting the electronic components between the various sealed and isolated chambers that produces the inverter functionality result. Furthermore, there are no details in the specification of what connections and/or circuitry is required so as to obtain the specific output desired by the inventors. This is similar to the issue of In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976), “where there was no indication in the specification as to whether the parts represented by boxes were ‘off the shelf’ or must be specifically constructed or modified for applicant’s system. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant.” See MPEP § 2164.06(a)I.
Regarding factor (G), the Examiner additionally finds that Applicant has not provided sufficient working examples via the specification. Specifically, as noted above, the specification is silent as to any structure necessary for providing the inventive and specific inverter structure/functionality as recited in the claims 19 and 26. Thus, the Examiner finds the specification fails to disclose any suitable and sufficient working examples to perform the specific inverter structure/functionality without undue experimentation.
Regarding factor (H), the Examiner additionally finds that no modification of known inverter circuits are disclosed nor is any structure, circuitry, etc. provided which would enable one of ordinary skill in the art to perform the claimed structure/functionality without undue experimentation. As such the quantity of experimentation required to make and use the invention in reliance on the disclosure provided is undue.
In view of the forgoing, the Examiner finds generally unbounded circuit elements directed to a complex invention for which no working elements have been provided commensurate with the scope of the claims. Based on the Wands factors noted above, the Examiner concludes that the 631 Patent does not reasonably enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. The Examiner submits that the inverter in claims 1 would encompass any and all circuit structures for achieving its functional result, including those which were not what the inventors had invented. As such, claims 19 and 26 are rejected under 35 USC § 112, first paragraph, for lacking an enabling disclosure commensurate with the scope of the claims.
Claims 20-25 and 27-32 are rejected in light of their dependency from amended original independent claims 19 and 26.
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph
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 19-32 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 pre-AIA the applicant regards as the invention.
With respect to the limitations of claim 19, the Examiner finds that claim 19 recites the limitation,
first and second electronic components located in the first chamber and at least one choke of the inverter located in the second chamber
(Aug 2025 Claim Amendment at claim 19; emphasis added). The Examiner finds that claim 19 and 26 further recite variations including “the at least one choke” and “the at least one choke of the inverter.” It is unclear and indefinite to how many “at least one choke” components are included in the claims. Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements. The Examiner recommends that Applicant amend all of “the at least one choke” to – the at least one choke of the inverter –. The claims will be examined as such.
Claims 20-25 are similarly rejected based on their dependency from independent claim 19.
Claims 26-32 are objected to because of the following informalities:
With respect to the limitations of claim 26, the Examiner finds that claim 26 recites the limitation,
first electronic components of the inverter and second electronic components of the inverter located in the first chamber and another electronic component of the inverter located in the second chamber
(Aug 2025 Claim Amendment at claim 26; emphasis added). The Examiner finds that claims 26-31 further recite variations including a separate “another electronic component of the inverter,” “the another component,” “the another electronic component” and “the another electronic component of the inverter.” It is unclear and indefinite to how many “another electronic components” are included in the claims. Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements. The Examiner recommends that Applicant amend all of “the another component,” “the another electronic component” and the separate “another electronic component of the inverter” to – the another electronic component of the inverter –. The claims will be examined as such.
Claims 27-32 are similarly rejected based on their dependency from independent claim 26.
With respect to the limitations of claims 19 and 26, the Examiner finds that claim 19 recites the limitations,
wherein the at least one choke of the inverter comprises a casting providing a protection grade of IP65 to the at least one choke,
(Aug 2025 Claim Amendment at claim 19; emphasis added); and
and the casting of the at least one choke of the inverter in the second chamber providing a protection grade of IP65
(Id.; emphasis added). Similarly, claim 26 recites the limitations,
wherein the another electronic component of the inverter in the second chamber comprises a casting providing a protection grade of IP65 to the another electronic component
(Aug 2025 Claim Amendment at claim 26; emphasis added); and
the casting of another electronic component of the inverter in the second chamber providing the protection grade of IP65 to the another component
(Id.; emphasis added). The Examiner finds that the claim requirement “IP65” seems to be a standard for “Ingress Progression.” (See “IP Rated Enclosures Explained,” The Enclosure Company, 2015 [retrieved on 08/26/2025]. Retrieved from the Internet: <URL: https://www.enclosurecompany.com/ip-ratings-explained.php> (“IP Ratings Explained”). The Examiner finds that standards may change over time. From this perspective, the Examiner finds that it is unclear and indefinite to the metes-and-bounds of the claims requirement of IP65.
Claims 19-25 and 27-32 are similarly rejected based on their dependency from independent claims 19 and 26.
Claim 32 recites the limitation: "the at least another electronic component of the inverter" in lines 2-3; and “the cooling body” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections – 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (Japanese Publication No. JP 11-234963) (“Shinohara”)5 in view of Kramer et al. (European Publication No. EP 1283589 A2) (“Kramer”), and further in view of Zhang et al. (Chinese Publication No. CN 2607649 Y) (Machine Generated Translation of Zhang - “ZhangMGT”), and further in view of Yokoyama et al. (U.S. Patent No. 6,731,563) (“Yokoyama”), and further in view of Brinkmann (German Publication No. DE 29607354 U1).
With respect to the limitations of claim 1, and
[19] [a]n inverter having a protection grade, consisting of:
an inverter housing comprising an interface wall, a first chamber on a first side of the interface wall, and a second chamber on a second side of the interface wall,
wherein the interface wall forms an interface creating a thermal contact between the first chamber and the second chamber,
The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. (MPEP § 2111.03.II).
From this perspective, the Examiner finds that Shinohara, in Figures 1(a)-(c) shows an inverter housing 5 that cools inverter 3. (Shinohara at ¶¶ [0011], [0015], [0016]). The housing has two chambers 5e, 5f separated by an interface wall 10 that forms a thermal contact interface between the chambers. (Id. at ¶¶ [0013]-[0014], [0021]-[0022], [0025]-[0026], [0029]). Furthermore, to the extent that there may not explicitly be shown the wall “creating thermal contact” between the chambers, there will necessarily be some amount of thermal contact between the chambers via the wall, as there is no perfect thermal insulator, particularly at the time of the invention.
Note that at times the rejection refers to things in Fig. 1(b) and at times to things in 1(c), and they are said to be different embodiments. But Shinohara explicitly states that the partition wall can also be used in Fig. 1(c). (Id. at ¶¶ [0025]-[0026]). The text refers to Figs. 2(b) and 2(c), but this is a clear typographical error as explained in the Declaration of Jonathan R. Wood (“Wood Declaration”), ¶ 120, since Fig. 2(b) has no wall.
the first chamber being sealed dust tight and protected against splash water, the second chamber being open to ambient atmosphere,
In this regard, Shinohara discloses the first chamber 5e being “hermetically sealed” therefore a person of ordinary skill in the art would understand it being sealed dust tight and protected against splash water. (Shinohara at ¶ [0021]). The second chamber 5f has air vent Shinohara and is therefore open to ambient atmosphere. (Id. at ¶ [0022]).
first and second electronic components located in the first chamber and at least one choke of the inverter located in the second chamber, wherein the first components and the choke are in thermal contact with the interface wall,
In this regard, Shinohara discloses an inverter 3 in the first chamber. It is against the wall, so in thermal contact with the wall. It is not explicit that inverter 3 has “first and second electronic components” but this part is deemed inherent. An inverter is not a single electronic component, it is multiple things that together do its function. If “inverter 3” was merely a single electrical component, Shinohara would have called it that, just as it referred to the transformer 12 and resistor 11 that are potentially on the other side. Shinohara, by calling it an “inverter” is at least implying that it is more than one thing, not a single thing like a resistor. Additionally, Shinohara refers to other electrical components like control circuitry that may be disposed “along with the inverter 3.” (Id. at ¶ [0022]). These other electrical components may be “disposed in the other space” with the inverter. (Id. at ¶ [0026]). So even if the inverter alone was not first and second components, at least the control circuitry and the inverter could be considered first and second components as claimed. Shinohara also teaches that some components of the inverter, such as transformers, may be in the second chamber. (Id. at ¶ [0023]).
While Shinohara discloses the limitations as set forth above including placing a transformer in the second chamber, Shinohara is silent to utilizing a choke coil instead of a transformer.
However, utilizing a choke coil instead of a transformer is a power supply configuration is known in the art. The Examiner finds that Yokoyama, for example, teaches a power supply configuration that utilizes a choke coil instead of a transformer. (Yokoyama at c.5, ll.22-29).
The Examiner finds that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to incorporate a choke coil instead of a transformer as described by Yokoyama in the inverter of Shinohara.
A person of ordinary skill in the art would be motivated to incorporate a choke coil instead of a transformer, since it provides a mechanism to reduce the amount of area required to mount a large capacity power supply. (Id.) In other words, such a modification would provide an inverter which can provide a power supply that would not include a size bottleneck for constructing the inverter, thereby increasing the overall efficiency of the inverter. (Id.)
Similarly, because these two power supplies were art-recognized equivalents at the time the invention was made, a person of ordinary skill in the art would have found it obvious to substitute the transformer in Shinohara with the choke coil. Moreover, the Examiner finds that simple substitution of one known element for another would obtain predictable results. That is, the substitution of one known element (choke coil) for another (transformer) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of a choke coil for a transformer for would have yielded predictable results, namely, reducing the mounting area/footprint required to provide the power supply.
Yokoyama does not show the location of the choke coil, so there is not a teaching that it is in thermal contact with the partition wall; the transformer of Shinohara is on the floor of the housing, and as shown above Yokoyama treats these things similarly, so teachings as to the transformer would apply to the choke.
However, Kramer teaches placing a transformer on the wall dividing the transformer from more sensitive electronics in an inverter, i.e. in thermal contact with the wall. As seen in the Figure 7a, Kramer describes an inverter in which the transformer 100 is on one side of a dividing wall 6 (along with cooling fins 8), and electronics controlling the inverter are on the opposite side of the wall (and thus are cooled by the cooling fins). (Kramer at ¶¶ [0006]-[0007], [0013], [0016]-[0022], [0038]-[0039], [0043], [0045], [0047], [0055], [0057]). The transformer and the cooling fins are cooled by airflow from a cooling unit. (Id. at Abstract (“transformer and heat-sink may be cooled by the same cooling stream”); ¶¶ [0006], [0011], [0013], [0017], [0038]; claim 1.) Positioning the transformer adjacent to the cooling fins on the wall allows the transformer to be cooled by the air passing over the cooling fins, and also allows the transformer to be cooled in part by the cooling fins, as well. (Id. at ¶ [0017]).
It would have been obvious to mount the choke coil of Shinohara and Yokoyama on the partition wall, along with the cooling fins (as shown in Kramer), instead of on the floor of the housing, as shown in Shinohara. The use of Kramer’s placement of the transformer in Shinohara and Yokoyama is nothing more than the use of a known technique (having the transformer located on the partition wall) to improve a similar device (Shinohara and Yokoyama’s inverter housing) in the same way (allowing the transformer to be cooled by both the fan and the heat sink). MPEP 2143 I.C. A person of ordinary skill would have appreciated the benefit of Kramer’s technique – a transformer mounted on the wall can be cooled by both the cooling fins and the airflow. Further, that person would have appreciated that the benefit would apply to Shinohara, given the similarities between the devices, as both relate to the cooling of power-supply electronics, with inverter electronics in the sealed chamber cooled by cooling fins located outside of the chamber, on the other side of a wall of the chamber. A skilled artisan also would recognize that the transformer location of Kramer would operate in Shinohara and Yokoyama to advantageously cool the choke coil in the same manner as it operates in Kramer – the transformer is cooled both by the airflow passing over the cooling fins, and the cooling fins themselves.
Again, this specific teaching is to the location of the transformer, but the Examiner finds that the teaching as to transformer location also applies to the choke coil. Again, Yokoyama considers these to be similar, discussing them broadly in the same sentence with no distinction when considering their location. Furthermore, both are at their basic structural level windings around a core, so treating them the same for the purpose of heat dissipation location would make sense to a person skilled in the art. It therefore would have been obvious to locate the choke as claimed for the same reasons as the transformer, to advantageously cool it as taught by Kramer.
wherein the first and second electronic components and the at least one choke are configured together to convert DC power that is input to the inverter to AC power to be output from the inverter,
In this regard, an inverter, by definition, converts DC power that is input to AC power at the output. Applicant of course recognizes this, as this feature is not found in the specification, but is now added to the claims. The Examiner does not make a rejection for new matter because a person of ordinary skill in the art would recognize that the inverter described in the specification operates this way. However, this also means that a person of ordinary skill in the art would understand Shinohara’s inverter to operate this way. Furthermore, to the extent that applicant argues that Shinohara does not operate this way, applicant would essentially be admitting that this unsupported limitation is not inherent in the specification and thus has a 112 first paragraph problem.
To the extent that there could possibly be inverters that do not do this, Shinohara is silent as to this feature. But the examiner takes Official Notice that inverters typically operate this way. It would have been obvious to a person of ordinary skill in the art that Shinohara’s inverter, described generically as an inverter, should be applicable to the normal and common definition of inverter.
a heat sink having cooling fins located in the second chamber and extending through the interface wall to make thermal contact with the first electronic components of the inverter,
In this regard, Shinohara has a cooling body that is a heat sink 2 with cooling fins 1 in the second chamber. (Shinohara at ¶ [0016]). In Fig. 1(c) it connects with the inverter 3 via the partition wall 10. Unless the partition wall is a perfect insulator, then the heat sink is necessarily in thermal contact with first electronic components of the inverter; the examiner is not aware of any materials with zero thermal conductivity. The heat sink is also “attached to the inverter” in ¶ [0012] and is deemed to inherently provide some thermal contact with the inverter.
While Shinohara discloses the limitations as set forth above including the heat sink with cooling fins providing thermal contact with the inverter, Shinohara, Yokoyama and Kramer is silent to the heat sink extending through the interface wall to make thermal contact with the first electronic components of the inverter.
However, an inverter comprising a heat sink extending through the interface wall to make thermal contact with the first electronic components of the inverter is known in the art. The Examiner finds that Brinkman teaches, for example, an inverter 1 in sealed housing 2 with a wall 4. (Brinkman at p.3; see Figure). One side of the wall inside the chamber has inverter power components 8 and the chamber is sealed to IP65. (Id. at p.3). A cooling element 3 extends through wall 4 onto the other side of a wall, via cooling element projection 6, making thermal contact with the power components. (Id. at p.3; also see claims 2, 4). That is, the cooling element extends through the interface wall in a sealed protected housing to make thermal contact with the power components of the inverter.
It would have been obvious to apply Brinkmann’s teaching to Shinohara, Yokoyama and Kramer as the use of a known technique to improve similar devices in the same way. (See MPEP 2143 I.C). Shinohara, Yokoyama and Kramer has a base device like that claimed, with heat sink and cooling fins on one side of the partition wall in an open chamber, but arguably the heat sink with cooling does not extend through the interface wall to make thermal contact with the electronic components of the inverter that are in the sealed chamber. Brinkmann shows this configuration, that the cooling member on the other side may extend through the interface wall to make thermal contact through the wall into the sealed chamber. It would have been obvious to do this as the thermal contact allows the heat sink to also apply to things on the sealed inside, while maintaining that seal to keep those parts connected. The result of the combination would have been predictable because a person of ordinary skill would clearly understand how the thermal path of Brinkmann would occur if implemented in Shinohara, Yokoyama and Kramer, it is all spelled out in the references.
wherein the at least one choke of the inverter comprises a casting providing a protection grade of IP65 to the at least one choke,
In this regard, the Examiner finds that the utilization of IP65 as a protection grade is indefinite. (See § X.B, supra). In this light and to advance prosecution by providing art rejections even though this claim is indefinite, the Examiner construes a “protection grade of IP65” as being a protection grade that is dust tight and protects against water projected by a nozzle. (See IP Ratings Explained at 1-2).
From this perspective, while Shinohara, Yokoyama, Kramer and Brinkmann teaches and/or renders obvious the limitations as set forth above, Shinohara, Yokoyama, Kramer and Brinkmann is silent to the protection grade of the choke being IP65.
However, ZhangMGT teaches that it was known in the art prior to the invention that transformers were available being cast into a whole body by an epoxy resin 7. ( ZhangMGT at Abstract; p.2; claim 1; see Figure 1). In addition, the Examiner finds that the transformer cast into a whole body of resin would provide a protection grade for the casting that is dust tight and protects against water projected by a nozzle. Moreover, the Examiner finds that ZhangMGT teaches such a casting of a transformer in an epoxy body increases mechanical strength, provides a compact structure and improves the safety and reliability of the transformer. (Id. at Abstract; p.2).
In this light, transformers and chokes are both very similar structures, windings around a core, but transformers have an additional winding. They would get protected in a very similar way, and the teachings as to a transformer are deemed to be applicable as well to a choke. It should also be noted that applicant does not actually explain in the specification how to cast a choke have an IP65 protection grade. This would therefore not be enabled unless it was already within the knowledge of a person of ordinary skill in the art.
Thus, it would have been obvious to a person of ordinary skill in the art that the designer of the system might wish to cast the choke coil winding in an epoxy resin as described by ZhangMGT to ensure more safety and reliability to the components while still permitting cooling of such parts by ambient air. Essentially, the designer can determine whatever safety grade is warranted in designing their system.
a first opening in a first outer wall of the second chamber, and a second opening in a second outer wall of the second chamber, and
a fan in the second chamber configured to force an air flow through the first opening, across the cooling fins, and through the second opening,
In this regard, Shinohara discloses a fan 8 in the wall of the second chamber that blows air across the fins of the heat sink, out the air vent holes 7. (Shinohara at ¶¶ [0016]-[0017], [0023]-[0024]). The fan and vent holes are first and second openings in first and second walls.
wherein the protection grade of the inverter as a whole results from:
the first chamber being sealed dust tight and protected against splash water, and
the casting of the at least one choke of the inverter in the second chamber providing a protection grade of IP65.
In this regard, the structural parts of the claim (chamber sealed, IP65 rating of another component) are taught or disclosed by the references as above. The result, that the protection grade of the inverter “results from” these things, is likewise met.
With respect to the limitations of claims 20 and 21, and
[20] wherein the first outer wall of the second chamber and the second outer wall of the second chamber are different outer walls (claim 20); and
[21] wherein the first outer wall and the second outer wall of the second chamber are opposing outer walls of the second chamber (claim 21).
The Examiner finds, again, that the fan 8 and air vent holes 7 of Shinohara are shown to be in different and opposing outer walls.
With respect to the limitations of claim 22, and
[22] wherein the first chamber excludes an air flow movement device;
In this regard, the Examiner finds that Shinohara shows no air flow movement device in the first chamber.
With respect to the limitations of claim 23, and
[23] wherein the fan is configured to move air across both the at least one choke and the cooling fins in the second chamber;
In this regard, the Examiner finds that Shinohara discloses that the fan moves air across the cooling fins and the other electrical components in the second chamber. (Shinohara at ¶ [0023]). Again the choke is deemed obvious as part of these other components like the transformer in rejecting claim 19 above. (See § XI.A.(1), supra).
With respect to the limitations of claims 24 and 25, and
[24] wherein all components of the inverter are protected against dirt and water, and wherein all components except for those themselves having a protection grade of IP65 are disposed in the first chamber being sealed dust tight and protected against splash water (claim 24); and
[25] wherein all components disposed in the second chamber comprise a protection grade of IP65 (claim 24).
In this regard, as above in rejection claim 19, it would have been obvious to make components in the second chamber, such as transformers or chokes, have a protection grade of IP65 so that they may be protected even though that chamber is open to