DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 22, 2025 has been entered.
Response to Arguments
Applicant's arguments filed with the RCE have been fully considered but they are not persuasive.
At the outset, the Examiner notes that the Applicant’s first switch is an photocoupler (S1; see specification par 138). This is exactly what is disclosed by Ohashi (134; col. 8, line 57). The Applicant, however, premises their argument with “Office Action appears to equate the photo-coupler of Ohashi to the claimed ‘first switch’” and “at best, Ohashi discloses controlling the photo-coupler (the alleged claimed ‘first switch’)…” (Remarks, page 9, emphasis added). If the parties cannot even agree on basic facts, and the Applicant is going to present easily disprovable arguments, then it calls into question the veracity of their remaining arguments.
In the Remarks, the Applicant essentially quotes the entirety of the amended limitations without any substantive discussion of why the claim language recites structure that distinguishes over the prior art. This does not satisfy their burden of proof to over the prima facie case of obviousness that has been presented. MPEP §2145. The art rejection is maintained, as expanded upon below.
The amended limitations also do not have written description support in the originally filed specification. The “converter part” is shown in the Applicant’s figures 7A-C as item 263. It passively receives an AV ON/OFF signal (see bottom right of the figure). The converter part is not “configured to provide” this signal – an unclaimed electronic circuit does this. “configured to provide” implies an output or a source – no such structural feature exists in the converter part.
Further, the converter part is not “configured to [] determine” the state of the electronic apparatus (or even the logic level of the multimedia signal). The converter part has a first switch (S1) – that is it – and the first switch is already claimed, so the “configured to determine” structure would need to mapped to something else. There is no circuitry to sense, analyzer or “determine” anything about the incoming signal. The first switch toggles ON/OFF depending on the binary logic (HIGH/LOW) of the signal – there is no separate “determination”.
There is no converter part circuitry, upstream of the first switch, to “provide” or “determine” anything. The only thing that is disclosed is a conductor that is directly connected between the signal input and the first switch. The same analysis applies to method claim 11.
Regarding the art rejection, the following analysis illustrates that the disputed issue is actually about the name of the incoming signal.
The Applicant discloses that the multimedia signal is a binary logic signal to control the state of the first switch (ON/OFF, HIGH/LOW)(see specification, par 138).
Ohashi discloses its first switch is controlled by a binary logic (col. 10, lines 48-51; col. 11, lines 45-50). There is no difference between the Applicant’s multimedia signal logic (HIGH/LOW) and Ohashi’s power signal logic. The signal may be sent for different reasons – but the claim is directed to the power supply that reacts to the signal (not to how/why/when the signal is created in the first place).
The Applicant’s first switch is then connected to a BJT base terminal, so that the first switch can selectively bias the BJT to be on (or off) to selectively connect the PFC controller to a power source. This is exactly the same as what is disclosed by Ohashi. The Applicant does not dispute otherwise. And Ohashi is modified by Tanaka to have the power source be a transformer tertiary winding (also not disputed).
Therefore, the only apparent difference between the Applicant’s intended system and Ohashi is the name of the incoming signal. The source of the signal is not claimed. The Applicant’s claims are limited to the power supply circuitry of figure 7 – the “electronic device”, that performs the various functions (multimedia, lighting) and then determines which logic state to output as the AV signal, is not claimed. The structure/functionality for how this unclaimed electronic device would control the AV signal logic does not further limit the structure of the power supply itself. From the power supply’s point of view, it is receiving a HIGH or LOW signal to command its first switch to take one of its two possible switch states. The name of the incoming signal does not further the structure or functionality of the power supply. Thus, the claims are obvious over the prior art.
If the Applicant disagrees, they are requested to explain how the name of the multimedia signal imparts any narrowing structure into the power supply (see figure 7). This should include a discussion of where/how the multimedia signal is created (i.e. acknowledge or rebut that its source is external to the claimed apparatus and, therefore, excluded from the scope of the claim).
Also, in any reply, the Applicant is requested to explain the meaning of amended limitations and provide citations to the specification for written description support and assistance in understanding how the language should be interpreted.
The obviousness rejection is maintained. New §112(a) written description rejections are provided below.
Claim Rejections - 35 USC § 112
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.
Claims 1-5 and 11-13 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.
For claim 1: the application as originally filed does not provide written description support for the amended limitations in claim 1 of the converter part being “configured to: [] provide a multimedia signal to the first switch, the multimedia signal being changed according to …” and “configured to: [] determine whether the electronic apparatus is performing … based on a state of the multimedia signal”.
First, the “electronic apparatus”, that performs the multimedia and/or lighting functions, is not being claimed. While the preamble of claim 1 recites “electronic apparatus”, the body of the claim is clearly limited to a power supply (see specification paragraph 132 which defines figure 7 as “a power supply” of an electronic apparatus).
The power supply includes an electrical conductor to passively receive the AV signal. The logic state of the AV signal is dependent on a determination made, in the unclaimed electronic device, of what function the electronic device is performing. The power supply generally, and the converter part specifically, are not part of this determination.
This can be seen in the Applicant’s figures 7A-C. The power supply includes an input (at the bottom right) to receive the AV signal. There is no circuitry at this input port to “provide” or “determine” anything. It’s just a passive conductor. Further support for this interpretation can be found in that the claim already recites a first switch (thus, it can’t be part of how the converter part is “configured to” do other things) and the specification discloses that the converter part has two options: 1) the AV signal input is connected to the first switch; 2) the AV signal passes through a NOT gate before being connected to the first switch (see paragraph 137). No NOT gate is claimed; therefore, the claim is directed to the first option. The direct connection from the AV input to the first switch (S1) precludes the presence of any circuitry that is “configured to provide” or “configured to determine” anything about this signal.
The Applicant’s originally filed specification provides support for, at best, a NOT gate to change the logic of the incoming AV signal. But the Applicant is not claiming this. The amended language of claim 1 attempts to give the converter part more circuitry/functionality than they have disclosed it including.
There is no evidence of record to show that the Applicant had, in their possession at the time of filing the application, a converter part that is configured to “provide” a signal that it is receiving from somewhere else or to “determine” anything about the signal before it reaches the first switch.
For the purpose of the art rejection of the claims, the “configured to provide” will be interpreted as any standard electrical conductor that transfers (provides) a signal from one of its ends to the other. And the “configured to determine” will be interpreted as a redundant limitation to the control terminal of the first switch.
Claims 2-5 are similarly rejected as they depend from, and inherit the deficiencies of claim 1.
For claim 11: the specification does not provide written support for the limitations of “providing a multimedia signal to the first switch” and “determining whether the electronic apparatus is performing …” As discussed above, the originally filed application only discloses a passive conductor to transfer the incoming AV signal from the converter part input to the first switch. No actions are taken on this signal.
Claims 12-13 are similarly rejected as they depend from, and inherit the deficiencies of claim 11.
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.
Claims 1-5 and 11-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
For claim 1: the claim is indefinite because it recites “a converter part [] configured to: [] set the first switch to a first state” and “set the first switch to a second state”. To the contrary, the first switch “sets” itself. It receives an input voltage (HIGH or LOW) and its internal doping reacts to this voltage to either be “on” or “off”. There is no circuitry that “sets” the first switch – nothing commands it to be on/off – it just reacts to the incoming signal by itself.
The claim is indefinite because it implies the presence of some external control over the first switch – that there is some other circuit in the converter part that executes control over the first switch to “set” it to different states.
The Applicant may consider reciting language such as “wherein the first switch is configured to turn on in response to …”.
Claims 2-5 are similarly rejected as they depend from, and inherit the deficiencies of claim 1.
For claim 11: the claim is indefinite because it recites “wherein the controlling of the PFC part comprises: [] setting a first switch …”. As discussed above, there is no control of the first switch to “set” it – the first switch reacts to incoming signal levels to be on or off.
The Applicant may consider reciting language such as “receiving a multimedia signal and connecting the multimedia signal to a first switch” and “the first switch turns on in response to the multimedia signal being a logic HIGH and turns off in response to the multimedia signal being a logic LOW” and “the first switch outputs a control signal that selectively operates a second switch to control whether power from the transformer is applied to a PFC control circuit…”.
Claims 12-13 are similarly rejected as they depend from, and inherit the deficiencies of claim 11.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-5, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi (US 6,462,980) in view of Tanaka (US 2012/0001599).
With respect to claim 1, Ohashi discloses an electronic apparatus (fig 1-3; col. 7-12 – the electronic apparatus is an unclaimed intended use limitation) comprising:
a transformation part (106) configured to convert AC power into DC power;
a PFC part (110) comprising a PFC circuit (everything within 110, except 126) and a PFC control circuit (126), the PFC part being configured to perform a PFC function while the (unclaimed) electronic apparatus is performing a lighting function (col. 11, lines 37-50) and to prevent performing the PFC function while the electronic apparatus is performing a multimedia function (col. 10, lines 51-65); and
a converter part (everything to the right of 110) comprising a transformer (142) and a first switch (134), the converter part being configured to:
control a voltage output from the PFC part by using the transformer to supply power through an output terminal of the converter part (because Ohashi outputs power from the converter “by using” the transformer, it satisfies the requirements for controlling the PFC output voltage);
provide a multimedia signal to the first switch (signals from 68/136 are “provided” through the conductor to the first switch), the multimedia signal being changed (not claimed – passive voice) according to whether the (unclaimed) electronic apparatus is performing one of the multimedia/lighting functions;
determine whether the electronic apparatus is performing at least one of the multimedia/lighting functions, based on a state of the multimedia signal (Ohashi’s first switch “determines” if the incoming signal is H or L);
set the first switch a first state based on a determination that the electronic apparatus is performing the multimedia function (col. 8-9, bridging paragraph – low load usage is interpreted as “multimedia function”); and
set the first switch to a second state based on a determination that the electronic apparatus is performing the lighting function (col. 8-9, bridging paragraph – high load usage is interpreted as a “lighting” function),
wherein the PFC part is configured to control whether power is applied to the PFC control circuit based on a state of the first switch (the on/off of 134 biases BJT 132 to provide/deny the PFC control circuit operating power),
wherein the PFC control circuit is configured to control the PFC circuit based on whether the power is applied to the PFC control circuit (col. 10, lines 57-61), and
wherein the PFC control circuit is configured to control the PFC circuit based on a state between a power terminal of the PFC control circuit and a ground voltage (obvious that the operating voltage potential applied to 126 via 132 is relative to “ground”), the state between the power terminal and ground voltage being different based on whether the first switch is on the first state (PFC off - the voltage difference is low – an open 132 would essentially provide 0v to the PFC control part, which is the same potential as ground) or the second state (PFC on - the voltage difference is high – a closed 132 would provide a voltage potential sufficiently high, relative to ground, to induce current flow into the control part to cause it to operate).
The “electronic apparatus” is an intended use limitation that does not breathe life into the claim. MPEP §2111.02(II). The entirety of the body of claim 1 is directed to the power supply that is “for” an electronic apparatus. The power supply, as discussed above in the §112(a) rejection, passively receives a multimedia signal with binary logic (HIGH or LOW). What the binary signals represent does not further limit the structure of the power supply. That the electronic apparatus is doing something (multimedia or lighting function), and decides to change its multimedia signal logic, does not impart narrowing structure into the power supply.
Further support for this can be found in that there are no components to execute a multimedia function or a lighting function. There is no claimed source for the multimedia signal – it only exists at the input to the power supply.
Ohashi discloses a PFC control circuit that receives a binary logic control signal. The HIGH/LOW of this signal controls the on/off state of the first switch, which then controls the on/off state of the BJT to selectively provide operating power to the PFC controller. When the PFC controller is not operating, the PFC part is bypassed.
Ohashi obviously discloses that its electronic apparatus is designed to provide operating power for a computer and its functions (see fig 2-3; the power supply circuit 54 is what’s shown in figure 1). Ohashi discloses that the control of the first switch is “based on” the operating state of the computer (see Table 3 in col. 11; at least, col. 11, lines 31-32). Any one of these states that results in the first switch moving to the first state is interpreted as a lighting function. Any other of these states that results in the first switch moving to the second state is interpreted as a multimedia function. The Applicant does not address or dispute this interpretation and, thus, it is presumed to be correct.
Ohashi discloses selectively providing operating power to the PFC control part, but does not expressly disclose that this operating power comes from the transformer (Ohashi figure 1 shows that the operating power comes from a point upstream of the transformer). Tanaka discloses an electronic apparatus (fig 1; all text) comprising:
a transformation part (BD11) configured to convert AC power into DC power;
a PFC part (K11) comprising a PFC circuit (everything within K11, except C11) and a PFC control circuit (C11); and
a converter part (K12) comprising a transformer (Td11), the converter part being configured to:
control a voltage output from the PFC part by using the transformer to supply power through an output terminal of the converter part (because Tanaka outputs power from the converter “by using” the transformer, it satisfies the requirements for controlling the PFC output voltage);
wherein the PFC part is configured to control whether the power from the transformer is applied to the PFC control circuit (by controlling Sc11; see schematic of figure 1), and
wherein the PFC control circuit is configured to control the PFC circuit based on whether the power from the transformer is applied to the PFC control circuit (the PFC control circuit can obviously only power its PFC circuit if it is powered – the source of the power does not affect the logic statement).
Tanaka discloses a selectively switchable power supply for a PFC control part, where the power (voltage potential) comes from the tertiary winding of the converter transformer. In the combination, this would be a third winding connected to Ohashi’s transformer 142 (this rejection does not require modifications to transformer 114).
Ohashi and Tanaka are analogous to the claimed invention because they are from the same field of endeavor, namely PFC control circuits with switchable power inputs. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Ohashi to have the power source for the PFC control part (126) come from a tertiary winding of transformer 142, as taught by Tanaka. The motivation for doing so would have been to the substitution of equivalent power supplies, with a reasonable expectation of success.
Both options (Ohashi and Tanaka) illustrate how a reliable source of DC power can be used to operate the PFC control part. Where the DC power is derived from (Ohashi 114 primary; Tanaka converter transformer [which would be Ohashi 142 tertiary winding]) does not affect the underlying functionality of selectively providing operating power/voltage to the control part.
With respect to claim 2, Ohashi discloses the first switch (134) is coupled to a base of a BJT (132), which is coupled between the power terminal of the PFC control circuit (top left of 126) and the (Tanaka) transformer of the converter part.
As noted above in the art rejection of claim 1, the combination replaces the source of operating power for the Ohashi PFC control part (126). This means that the Ohashi BJT (132) would have its emitter connected to the Tanaka tertiary winding of 142 (through a resistor 112).
With respect to claim 4, Ohashi discloses wherein the PFC part is further configured, based on the electronic apparatus performing the lighting function, to:
supply the power to the PFC control circuit based (by closing 132; col. 11, lines 36-50); and
transmit the DC power to the converter part through the PFC circuit (col. 11, lines 49-50, “As a result, the PFC controller 126 is actuated”).
With respect to claim 5, Ohashi discloses the first switch comprises a photocoupler (134).
With respect to claims 11 and 13, Ohashi and Tanaka combine to disclose the apparatus necessary to complete the recited method steps, and the references are analogous, as discussed above in the art rejections of claims 1 and 4, respectively.
Claims 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi in view of Tanaka and Zhang (US 2010/0080026).
With respect to claim 3, Ohashi discloses the electronic apparatus of claim 2, but does not expressly disclose a bypass. Zhang discloses an electronic apparatus (fig 1; par ) comprising:
a transformation part (D3) configured to convert AC power into DC power;
a PFC part (Q1, L1, D1 and 54) comprising a PFC circuit (Q1, L1, D1) and a PFC control circuit (54); and
a bypass circuit (D4 and/or D5) configured to bypass the PFC circuit.
When combined, modified Ohashi teaches wherein the PFC part is further configured, based on the electronic apparatus performing the multimedia function, to:
cut off a supply of power to the PFC control circuit (col. 10, lines 31-61), and
stop an operation of the PFC circuit (by opening 132; col. 10, lines 57-61) to transmit the DC power to the converter part through the (Zhang) bypass circuit).
Ohashi and Zhang are analogous to the claimed invention because they are from the same field of endeavor, namely PFC circuits. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Ohashi to include a bypass, as taught by Zhang. The motivation for doing so would have been to reduce operating losses by bypassing the PFC when the input is higher than the output, as is commonly known in the art.
It also appears that Tanaka discloses a PFC bypass (at least switches Sb12, Sb13 and Sb14; par 49-52). The art rejection maintains its citations to Zhang solely because this reference was already part of the art rejection. The Applicant should consider the Tanaka bypass in any reply.
With respect to claim 12, Ohashi, Tanaka and Zhang combine to disclose the apparatus necessary to complete the recited method steps, and the references are analogous, as discussed above in the art rejections of claim 3.
Conclusion
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/ADI AMRANY/Primary Examiner, Art Unit 2836