DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10/07/2024 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 05/29/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,402,862 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because: the person who signed the terminal disclaimer is not the applicant, patentee or an attorney or agent of record. 37 CFR 1.321(a) and (b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11402862. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite a tap changing regulator comprising a plurality of regulator stages disposed in cascade.
Instant Application 17/856,248
Conflicting Patent US 11402862
1. A tap changing regulator comprising a plurality of regulator stages disposed in series cascade, and a set of input taps for each stage of the cascade, each stage having its own series injection transformer to regulate an output; a set of taps in a first regulator stage, the set of taps comprising a number of taps that are selectively engagable in respective on-off modes to effect a number of regulation steps in the first regulator stage; wherein a ratio of the number of regulation steps to the number of taps in the set of switches in the stage is greater than 1:1.
1. A tap changing regulator comprising a plurality of regulator stages disposed in series cascade, and a set of input taps for each stage of the cascade, each stage having its own series injection transformer to regulate an output; a set of switches in a first regulator stage, the set of switches comprising a number of switches that are selectively engageable in respective on-off modes to effect a number of regulation steps in the first regulator stage; wherein a ratio of the number of regulation steps to the number of switches in the set of switches in the stage is greater than 1:1.
2. The regulator of claim 1 wherein the ratio is greater than 2:1.
2. The regulator of claim 1 wherein the ratio is greater than 2:1.
3. The regulator of claim 1 wherein the ratio is greater than 4:1.
3. The regulator of claim 1 wherein the ratio is greater than 4:1.
Allowable Subject Matter
Claims 4-7 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: please see the office action dated 07/11/2024 for reasons for allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2009/0140705, US 6087738, US 5825164, US 5408171, US 4673888, US 4623834, and US 11402862 all fail to teach or disclose the limitations indicated above.
Examiner's Note:
Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAKAISHA JACKSON whose telephone number is (571)270-3111. The examiner can normally be reached on M-F 8:00-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA LEWIS can be reached on 571-272-1838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LaKaisha Jackson/
Examiner, Art Unit 2838