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 .
This non-final office action is responsive to Applicants' RCE filed on 02/26/26. Claims 1-22 are presented for examination and are pending for the reasons indicated herein below.
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.
Continued Examination Under 37 CFR 1.114A 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 02/26/26 has been entered. Response to Arguments
Applicant's arguments filed 02/26/26 have been fully considered but they are not persuasive.
Applicant argues:
The rejections are premised on an undefined and shifting meaning of OSS compensation. The Examiner never articulates what OSS means in this application and never reconciles its reading with the specification definition that only stationary side means no compensation components are provided on the rotating side. See Paragraph [0027]. The Examiner maps OSS to the LCC network 174 in a different reference while at the same time relying on that same reference's rotating side compensation hardware. That approach reads OSS as if it tolerated rotating side compensation elements which contradicts the applicant's lexicography and thus fails under the broadest reasonable interpretation in light of the specification standard.
The anticipation analysis for the apparatus claims replaces the required from the stationary side rotating side compensation with a conclusory statement that a primary side capacitor in the cited figure provides power to the rotor. Providing power transfer is not the claim requirement. The claims require that the first OSS element on the stationary side performs the rotating side compensation from the stationary side and the specification explains that this excludes any rotating side compensation components. See Paragraphs [0027], [0037], and [0056]. The Examiner does not identify where the cited reference discloses that arrangement and does not explain how a system that includes a rotating side compensation network can still meet the only stationary side requirement. To the extent the office action labels the selection of values as "implicit" or "inherent," that is insufficient because the Examiner must show that the missing functional limitation is necessarily present and not merely probably or possibly present.
Where an Examiner attempts to establish that a claim limitation that is not explicitly disclosed in the prior art is nevertheless inherently present in the prior art, the Examiner must provide evidence or reasoned argument why the missing claim limitation is "inherently" present in the prior art.
For a product or apparatus claim, where a prior art reference discloses a claimed product/apparatus but does not disclose a claimed physical property or functional operation of the claimed product/apparatus, the prior art reference can anticipate or render obvious the claimed product/apparatus with claimed physical properties or functional operation only if the Examiner can establish that the claimed physical property or functional operations is inherently present in the prior art. Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) (prior art inherently disclosed a claimed DNA sequence because it was necessarily present in a known process).
Examiner respectively disagrees: The rotor, would never be able to rotate without proper power transfer and thus, renders the limitation inherent as having the same function disclose in the prior art on record. In response to applicant's argument that the references fail to show certain features of applicant' s invention, it is noted that the features upon which applicant relies (i.e., “the specification explains that this excludes any rotating side compensation components”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. The only stationary side has been interpreted as an LCC circuit, no further detail has been provided in the claim and thus, the claimed structure is analogous to that of the reference use on record. Any skilled designer would naturally select the component values as a routine step, because those values are inherent to making the circuit operate as intended. This makes it an inherent part when designing a circuit.
Applicant argues:
Because the pending claim are apparatus claims that include functional operations performed by the claimed apparatus, the most instructive court precedent are cases that evaluate whether the prior art inherently discloses claimed functional operations performed by a claimed apparatus. In Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314 (Fed. Cir. 2003), Hewlett-Packard (HP) sued Mustek for patent infringement, asserting a patent related to a scanner apparatus with an automatic digital correction feature that improved image quality. Mustek argued that the patent was invalid because a prior art reference inherently disclosed the claimed apparatus. The claimed scanner included automatic correction of digital image distortion, which the prior art scanner did not explicitly describe. Mustek argued that any prior art scanner must have inherently performed the same function (correcting distortion), even if the feature was not explicitly mentioned in the reference. The Federal Circuit rejected Mustek's inherency argument because the prior art scanner did not necessarily perform the claimed automatic correction function.
The mere possibility that a prior art device could perform the function was not sufficient to establish inherency. Inherency requires that the feature is necessarily present in the prior art, not just potentially present. In Honeywell Int'l Inc. v. Hamilton Sundstrand Corp. (Fed. Cir. 2006), an electroplating apparatus claim was upheld as valid because the prior art did not inherentlyDKT22 disclose the claimed functional features. This case involved a patent related to auxiliary power units (APUs) for aircraft, which use an electroplating process in their compressor surge control system. Honeywell sued Hamilton Sundstrand for infringement, while Hamilton Sundstrand argued that the patent was invalid based on inherency in prior art. The claimed invention included a system that dynamically adjusted the flow of compressed air in response to operating conditions to prevent compressor surge. Honeywell's patented APU design used electroplated components to create a specific feedback loop that improved performance. The prior art APU designs did not explicitly disclose this feedback mechanism. The defendant argued that prior APU systems must have inherently performed the same function, even if the feedback mechanism was not explicitly disclosed. They claimed that any compressor system would naturally exhibit some form of air regulation and surge control. The Federal Circuit rejected the inherency argument because the prior art did not necessarily include the claimed feedback loop and dynamic surge control system. The mere fact that prior APUs regulated air to some extent did not mean they inherently performed the claimed feedback adjustments in the same way. If prior art does not require the claimed function to operate, then inherency cannot be assumed.
Examiner respectively disagrees: See paragraph 125, paragraph 126, with paragraph 130, disclose the function of circuit shown in figure 4. The goal of the circuit is to supply DC power from 170 converted it into AC power, transfer the AC power from a primary side to a secondary side of the transformer 100 to eventually rotate the rotor of the motor of 180.
Applicant argues:
Thus, for the foregoing reasons, it is respectfully submitted that the anticipation rejections in the outstanding FOA are in error to the extent they argue that an apparatus claim that defines physical components and associated functional limitations can be rendered obvious by one or more references that teach the claimed physical components but teach nothing about the claimed associated functional limitations. Inherency cannot be based on possibilities or assumptions. If a prior art apparatus does not necessarily function as claimed, the prior art does not teach the claimed function.
Examiner respectively disagrees: The claim does not recite any specific distinctions from the claimed invention and the prior art used on record.
Applicant argues:
In the interest of advancing prosecution, and without agreeing to the propriety of the outstanding anticipation rejections, Applicant has further amended the independent claims to define that one or more features of a first OSS compensation element are selected and configured to provide from the stationary side a rotating side compensation function. Claim 2 clarifies that the features include the value of the first OSS element and that this value is selected so the element contributes to the rotating side compensation function.
Examiner respectively disagrees: The claim does not specify how these values are being selected. Thus, using broadest reasonable interpretation, it is interpreted that these values are selected during the design process in order to optimize the circuit towards design requirements. And it is understood to one of ordinary skill in the art that this is a routine step when designing any circuit.
Applicant argues:
Claim 3 further narrows the scope by requiring that the selected value causes the first OSS element to contribute to substantially all of the rotating side compensation provided to the rotating side. The amendments to method claims 11-13 substantially track the amendments to claims 1-3.
These amendments reinforce that the claims require the rotating side compensation to originate and be effected from the stationary side through deliberate selection and configuration of the first OSS element. Raminosoa relies on a rotating side compensation network physically implemented on the secondary side and does not disclose that a primary side element is selected and configured to perform the rotating side compensation from the stationary side. The added requirement in claim 3 that the selected value provides substantially all of the rotating side compensation makes the distinction even sharper because Raminosoa's architecture divides compensation between primary and secondary networks. Under a proper reading of the amended claims, Raminosoa does not disclose every element as arranged because its rotating side compensation is not performed from the stationary side and it retains rotating side compensation hardware.
Examiner respectively disagrees: The values of the reference use on record can also be interpreted to be selected in order to optimize the function of transferring power from the DC source to the motor to perform the function of rotating the rotor. In this case the rotor is the load of this device, see 180.
Applicant argues:
For an obviousness rejection to be proper, the Examiner must meet the burden of establishing that all elements of the invention are disclosed in the prior art; that the prior art relied upon, or knowledge generally available in the art at the time of the invention, must provide some suggestion or incentive that would have motivated the skilled artisan to modify a reference or combined references. In re Fine, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988). "A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). To find obviousness, the Examiner must "identify a reason that would have prompted a person of ordinary skill in the art in the relevant field to combine the elements in the way the claimed new invention does." Id. Reconsideration and withdrawal of these rejections are respectfully requested.
The obviousness rejection of claim 22 further underscores the errors in the anticipation analysis. It concedes that the primary reference does not omit a rotating side compensation network and then adds a secondary reference to delete it for reasons of simplicity and reliability. That position conflicts with the anticipation theory of the independent apparatus claims and with the applicant's defined meaning of only stationary side. It also lacks an articulated explanation tying the proposed modification to the specific functional requirement that the stationary side element provide the rotating side compensation from the stationary side as taught in Paragraphs [0028], [0045], and [0056]. Without a clear construction of OSS in light of Paragraph [0027] and without evidence that the cited art discloses or renders obvious the claim specific requirement that rotating side compensation is provided from the stationary side the rejections are in error.
Examiner respectively disagrees: The 103 rejection is not in any way admitting that the primary reference does not supply power in order to rotate the rotor of the motor, rather, omitting a filter from any circuit involves routine practice as long as the filter was not a requirement to supply power to the load.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2,7,10-12,17 and 20-21 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raminosoa et al. (US 20210358686 A1)
Regarding claim 1. Ram teaches an electric drive motor system [system of fig 4] comprising: a stationary-side [static side fig 4, left to transformer]; and a rotating-side [rotary side of fig 4]; wherein the stationary-side comprises an only-stationary-side (OSS) compensation network [174 in fig 4, ¶149];
and wherein one or more features [values assigned to the electrical components] of a first OSS compensation [174 Cp1, fig 26] element of the OSS compensation network are selected and configured [values are selected to bring circuit towards design requirements] to provide, from the stationary-side [174 is on the stationary side], a rotating-side compensation function [180].
Regarding claim 2. Ram teaches the system of claim 1, wherein; the one of more features comprise a value of the first OSS compensation element;
And the value is selected such that the first OSS compensation element contributes to the rotating-side compensation function [limitation is interpreted as modifying a specific value which would better align the circuit towards design requirements, and thus, this limitation is implicit in Ram giving the function of fig 4].
Regarding claim 7. Ram teaches the system of claim 2, wherein the first OSS compensation element comprises a first OSS capacitive compensation element [174 Cp1, fig 26].
Regarding claim 10. Ram teaches the system of claim 1, wherein: the stationary-side comprises a stator having stationary-side windings [¶41]; the rotating-side comprises a rotor having rotating-side windings [¶41]; the stationary-side windings are operable to wirelessly transfer alternating current (AC) excitation signals to the rotating-side windings [using transformer in fig 4]; the OSS compensation network is operable to provide excitation signals to the stationary-side windings [i.e. signals from LCC]; the rotating-side compensation function is applied to the wireless transfer of the AC excitation signals to the rotating-side windings [i.e. power transfer];
the first OSS compensation element comprises a first OSS capacitive compensation element [174 Cp1, fig 26]; the OSS compensation network further comprises an inductive element [Lp1 of 174 in fig 26] coupled through a node [T node configuration in fig 26] that branches to a capacitive element [174 Cp2, fig 26] and the first OSS capacitive compensation element; and the first OSS capacitive compensation element is serially coupled to the stationary-side windings [as shown in fig 6].
Regarding claim 21. Ram teaches the system of claim 1, wherein the compensation network comprises an inductor-capacitor-capacitor (LCC) network [¶149].
Regarding method claims 11-12, 17, 20, note that under MPEP 2112.02, the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device "inherently performs the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed Cir. 1986). Therefore the previous rejections based on the apparatus will not be repeated.
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 of this title, 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.
Claim 22 rejected under 35 U.S.C. 103 as being unpatentable over Ram in view of Stephens et al. (US 20160079862 A1)
Regarding claim 22. Ram teaches the system of claim 1, However, Ram does not explicitly mention wherein the rotating-side does not include a compensating network.
Stephens teaches wherein the rotating-side does not include a compensating network [see secondary side equivalent to rotor side with not resonant circuit].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to omit a resonance compensation circuit as shown in Stephens in order to reduce complexity, improve reliability and avoid unwanted energy loses.
Allowable Subject Matter
Claims 3-6, 8-9, 13-16, 18-19 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if the claim objections stated above were overcome.
Examiner Note
The examiner cites particular columns and lines numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan Perez whose telephone number is (571)272-8837. The examiner can normally be reached on Mon.-Fri. (7:30 – 5:00).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Crystal Hammond, can be reached on (571) 270-1682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/BRYAN R PEREZ/Examiner, Art Unit 2838