NON-FINAL OFFICE ACTION
This Non-final office action addresses U.S. Application No. 18/130,559, which is a reissue application of U.S. Application No. 14/529,267 (the “267 Application”), entitled “ELECTRONIC SWITCH HAVING AN IN-LINE POWER SUPPLY”, which issued as U.S. Patent No. 9,418,809 (the “809 Patent") on August 16, 2016.
PRIORITY
Examiners acknowledge that the present application is a reissue of the 809 Patent that issued from 267 Application. The present application is a continuation reissue of U.S. Patent Application Serial No. 15/998,628 (the “628 Application”), filed August 16, 2018, which also is a reissue of the 809 Patent. The 267 Application is a divisional application of U.S. application No. 12/751,324 (the “324 Application”) filed March 31, 2010, now U.S Patent No. 8,922,133 (the “133 Patent”). Examiners further acknowledge the claim of priority to U.S. Provisional Application No. 61/172,511, filed April 24, 2009, and a Provisional Application No. 61/226,990, filed Jul. 20, 2009.
BRIEF SUMMARY OF THE PROCEEDING
Broadening: The instant application is file after two years of issue of the 809 Patent. However, more than one reissue application has been filed for the 809 Patent. The reissue applications are the present application and the 628 Application. Examiners note that Applicant's intent to broaden was indicated in the 628 Application (see claim 22 filed 8/16/2018). The 628 Application was filed within two years of the date of issue of the 809 Patent. Accordingly, a broadened claim can be presented in this continuation reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012). See also MPEP 1412.03IV.
Patent Term: Based upon and updated review of the file record Examiners find that the Patent term has not expired.
Litigation: Base upon Examiners review of the file itself, Examiners find that the 809 Patent is not involved in litigation.
AMENDMENT
Applicant filed the reissue application on April 4, 2023 which included a preliminary amendment (the "2023 Preliminary Amendment"). In the 2023 Preliminary Amendment, Patent claims 1-21 were canceled, new claims 22-36 were added, and the specification was amended to change the cross-noting information. The 2023 Preliminary Amendment has been considered and entered. This action is in response to the 2023 Preliminary Amendment.
STATUS OF CLAIMS
The 302 Patent issued with claims 1-21.
As of the date of this Office Action, the status of the claims is:
Patent claims 1-21 were canceled.
New claims 22-36 were added.
Accordingly, claims 22-36 are subject to the examination of this instant reissue application. Of these, claims 22, 27 and 32 are independent claims.
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.
A. 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). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
B. Claim Interpretation Under 35 U.S.C. §112(6th ¶)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(6th ¶) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(6th ¶) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2) Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(6th ¶). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(6th ¶), as found above, the next step is to determine the corresponding structure as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find that claims 22-26 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Each such limitation will be discussed in turn as follows.
B1. FL #1: “control circuitry” (Claims 22-26)
A first means-plus-function phrase is recited in claims 22-26, which recites “control circuitry” or hereinafter FL #1. Examiners determine that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiners find that FL #1 in claim 22 recites:
“control circuitry to: receive a first input to change the state of an operatively coupled light from an OFF state to an ON state responsive to receipt of the first input; initialize a first timer having a first duration; initialize a second timer, the second timer having a second duration greater than the first duration; responsive to expiration of the first timer, cause a bidirectional semiconductor switch (BSS) coupled in parallel with a controllably conductive device (CCD) to transition to an electrically conductive state; and responsive to expiration of the second timer, transition the CCD to an electrically conductive state, thereby providing power to an operatively coupled electrical load device; and receive a second input to change the state of the operatively coupled light from the ON state to the off state responsive to receipt of the second input; initialize a third timer having a third duration; initialize a fourth timer, the fourth timer having a fourth duration greater than the third duration; responsive to expiration of the third timer, cause the CCD to transition to an electrically non-conductive state thereby removing power from the operatively coupled electrical load device; and
responsive to expiration of the fourth timer, transition the BSS to an electrically non-conductive state.”
(B1)(a) Claim Phrase FL #1 Functional
Examiners find that FL #1 is functional. Examines find this limitation recites combination of generic structures of control circuitry along with special functions which require at least some special programming. Examiners find FL #1 is functional on the basis of the special functions being performed by the control circuitry.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the function within FL #1 will have its ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(6th ¶) because "means ... for" type language is recited. While the FL #1 uses the term control circuitry, Examiners find this term is being used as a generic structure, but a control itself is not a sufficient structure for performing the special functions. Thus, while FL #1 does recite some structure, i.e., a control circuitry, this structure alone are not sufficient structures for performing the entire function of FL #1.
In view of the forgoing findings, Examiners find that while control circuitry implies some structure, i.e., a generic control, Examiners find nothing in the specification, prosecution history or the prior art to construe “control circuitry” in FL #1 as the name of a sufficient structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Specifically, Examiners are relying on WIT2 as discussed above. Rather Examiners find that control circuitry merely used in a generic sense as a nonce term equivalent to means as a generic base structure in association with special functions. Accordingly, Examiners do not find that the simple use of control circuitry is a sufficient structure for performing the claimed special functions recited in FL #1 and thus conclude FL #1 invokes interpretation under §112(6th ¶).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(6th ¶), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the entirety of FL #1, the corresponding structure for FL#1 is both hardware structure and algorithm structure. The hardware structure is the controller 214 (shown in Fig. 2) which could be a microcontroller, a programmable logic device (PLD), a microprocessor, an application specific integrated circuit (ASIC), or a field-programmable gate array (FPGA).
See Fig. 2 and the following paragraph from the specification:
“The relay 210 and the bidirectional semiconductor switch 212 are independently controlled by a controller 214. For example, the controller 214 may be a microcontroller, but may alternatively be any suitable processing device, such as a programmable logic device (PLD), a microprocessor, an application specific integrated circuit (ASIC), or a field-programmable gate array (FPGA). The controller 214 is coupled to SET and RESET terminals (e.g., SET and RESET coils) of the relay 210 for causing the relay to become conductive and non-conductive, respectively. Specifically, the controller 214 generates a relay-set control signal V.sub.RLY-SET for driving the SET coil and a relay-reset control signal V.sub.RLY-RESET for driving the RESET coil. The controller 214 also provides a BSS-drive control signal V.sub.BSS-DRIVE to the a control input of the bidirectional semiconductor switch 212 via a gate drive circuit 216 for rendering the bidirectional semiconductor switch conductive.” (col. 8, lines 49-65)
Fig. 2 below shows the controller 214:
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The algorithm structure is shown in Figs. 8-10. Figs. 8-10 are reproduced below:
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Figs. 8-10 of the 809 Patent.
However, Examiners are unable to find any specific disclosure or discussion that “the second timer having a second duration greater than the first duration”, and “the fourth timer having a fourth duration greater than the third duration”.
In view of these findings, pursuant to 35 U.S.C. §112 (6th ¶), FL #1 in claim 22 (and its dependent claims) will be limited to the corresponding structures discussed and shown in Figs. 2 and 8-10.
B2. FL #2: “control circuitry” (Claims 32-36)
FL #2 recites “control circuitry” similar to FL #1, thus, FL #2 also invokes 35 U.S.C. §112(6th ¶) in the same manner as FL #1.
C. Conclusion of Claim Interpretation
FL #1 and FL #2 will be interpreted under 35 U.S.C. §112(6th ¶) as provided above.
REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The reissue declaration filed February 5, 2026 ("2026 Reissue Declaration”) is acknowledged. However, Examiners object to this error statement on the basis that Examiners find the 2026 Reissue Declaration fails to state a proper error in the claims on which to base this reissue.
A proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the 384 Patent, and how it renders the original patent wholly or partly inoperative or invalid. See MPEP §1414(II).
Examiners find that the error statement merely states:
“The reissue continuation broadens the original subject matter by eliminating the requirement for overcurrent protection, are
directed to previously unclaimed subject matter, and claim different statutory classes of subject matter than previously claims.”
Examiners do not find this error statement sufficient under the rules. Examiners find this statement does not specify any language in the original claims in error, which is being corrected by the presentation of new added claims 22-36.
Furthermore, Applicant is reminded that during prosecution of the 324 Application had specifically elected Group I includes claims 1-26 and 54-57: the bidirectional semiconductor switch rendered conductive when the magnitude of the DC supply voltage reaches a maximum DC supply voltage threshold and rendered non-conductive when the magnitude of the DC supply voltage drops to a minimum DC supply voltage threshold. The 324 Application issued as the 133 Patent with claims directed to Group I. Consequently, Groups II-IV were non-elected embodiment from the restriction requirement during prosecution of the 324 Application, which are directed to a different statutory class of invention (i.e., overcurrent condition or overtemperature condition). The 267 Patent issued as the 809 Patent with claims directed to Groups II-IV. Thus, any reissue of the 809 Patent must be limited to Groups II-IV.
In this reissue application of the 809 Patent, Examiners find that claims 22-26 are directed to the invention elected in Group I. Thus, Examiners find Applicant is attempting to shift the claims from Groups II-IV to Group I.
Based on In re Orita, Applicant is not permitted to recover Group I in this reissue application. Rather, to pursue any claims directed to Group I, Applicant must file a reissue of the 133 Patent, where such invention was specifically elected. See MPEP §1412.01(II) (“non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application”).
Accordingly, the 2026 Reissue Declaration filed with this application is defective because the error which is relied upon to support the reissue application, is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Therefore, in accordance with 35 U.S.C. §251 and 37 C.F.R. §1.175, Applicant is required to provide a new declaration with a statement of error with respect to 809 Patent identifying a claim Applicant seeks to broaden, and identifying “a single word, phrase, or expression” from the patent claims that is in error and stating how this error renders the 809 Patent partially or wholly inoperative or invalid.
REJECTIONS – 35 U.S.C. §112
The following is a quotation 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.
New Matter Rejection:
Claims 22-36 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention, and thus is new matter herein.
Each of independent claims 22, 27, 32 recite “the second timer having a second duration greater than the first duration” and “the fourth timer having a fourth duration greater than the third duration”. However, Examiners are unable to find support for such limitations in the 809 Patent. Following a careful review of the specification of the 809 Patent, Examiners are unable to find any specific disclosure or discussion that “the second timer having a second duration greater than the first duration”, and “the fourth timer having a fourth duration greater than the third duration”.
Examiners only find in the specification of the 809 Patent “a controller operable to measure a charging time required to charge the output capacitor, and to determine if an overload condition is occurring if the length of the charging time is less than a predetermined charging time threshold” (col. 4, lines 38-42) and “Accordingly, the time period between any two consecutive pulses of the charging current I.sub.CHRG is less than the period T.sub.HC of a half cycle (e.g., approximately ten milliseconds for a 50-Hz power source), and thus the frequency of the pulses of the charging current I.sub.CHRG is greater than the twice the line voltage frequency (e.g., approximately 100 Hz), so as avoid visible flickering in the lighting load 104.” (col. 11, lines 13-19)
In view of the forgoing findings, Examiners determine that the 809 Patent does not provide written description support for the new limitation of “the second duration greater than the first duration” and “the fourth timer having a fourth duration greater than the third duration”. Examiners do not find a disclosure in the 809 Patent regarding both of these limitations. Rather Examiners only find the length of the charging time is less than a predetermined charging time threshold and the frequency of the pulses of the charging current is greater than the twice the line volage frequency. Accordingly, Examiners conclude that to now recite that “the second duration greater than the first duration” and “the fourth timer having a fourth duration greater than the third duration” is generating based on the above limitations lacks a clear written description and thus is new matter herein.
REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251(a):
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
1/ Rejection Based on Defective Reissue Declaration: Claims 22-36 and this reissue application as a whole are rejected as being based upon a defective reissue declaration under 35 U.S.C. §251 as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2026 Reissue Declaration is set forth in the discussion above in this Office action.
2/ Rejection Based on New Matter: Claims 22-36 and this reissue application as a whole are rejected as being based on new matter under 35 U.S.C. §251. The nature of the rejection based on new matter is set forth in the discussion above in this Office action.
3/ Claims 22-36 are rejected as being based on lack of any defect in the original patent under 35 U.S.C. §251.
As noted above, during prosecution of the 324 Application, Applicant had specifically elected Group I includes claims 1-26 and 54-57: the bidirectional semiconductor switch rendered conductive when the magnitude of the DC supply voltage reaches a maximum DC supply voltage threshold and rendered non-conductive when the magnitude of the DC supply voltage drops to a minimum DC supply voltage threshold. The 324 Application issued as the 133 Patent with claims directed to Group I. Consequently, Groups II-IV were non-elected embodiment from the restriction requirement during prosecution of the 324 Application, which are directed to a different statutory class of invention (i.e., overcurrent condition or overtemperature condition). The 267 Patent issued as the 809 Patent with claims directed to Groups II-IV. Thus, any reissue of the 809 Patent must be limited to Groups II-IV.
In this reissue application of the 809 Patent, Examiners find that claims 22-26 are directed to the invention elected in Group I. Thus, Examiners find Applicant is attempting to shift the claims from Groups II-IV to Group I.
Based on In re Orita, Applicant is not permitted to recover Group I in this reissue application. Rather, to pursue any claims directed to Group I, Applicant must file a reissue of the 133 Patent, where such invention was specifically elected. See MPEP §1412.01(II) (“non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application”). Accordingly, claims 22-36 are rejected as being based on lack of any defect in the original patent as set forth herein.
A reissue applicant's failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.
INFORMATION DISCLOSURE STATEMENT
The Information Disclosure Statements filed April 23, 2023 have been considered. In accordance with MPEP § 1406, Examiners have reviewed and considered the prior art of record in the original prosecution of the 809 Patent. Applicant(s) are reminded that a listing of the information of record in the original prosecution of the 809 Patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation to apprise the Office of any prior or concurrent proceedings in which the 809 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
INFORMATION MATERIAL TO PATENTABILITY
Applicant(s) are reminded that they “have a continuing duty under 37 CFR §1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP §1418.” - MPEP § 1406.
CONCLUSION
Claims 22-36 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed MY TRANG TON whose telephone number is (571) 272-1754. The Examiner can normally be reached on 7:00am - 6:00pm, Monday - Thursday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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Signed:
/MY TRANG TON/ Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/ Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights