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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The amendments made have raised a new issue under 35 USC 112 as discussed further below.
Claim Objections
Claim 13 is objected to because of the following informalities:
CLAIM 13:
In line 12, after “least” delete “to”.
Appropriate correction is required.
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.
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.
Claims 13, 15-17, 22, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In re Claim 13, the final paragraph describes a controller that receives health information associated with at least one of the switches of the first converters and the second converters and then reconfigures operation of at least one of the first and second converters in response. However, there is not teaching in the application as originally filed to support this feature. Paragraphs 30-40 of the original specification describe a controller (150/250) receiving health information of various switches present in a solid state circuit breaker as seen in Figures 1 and 2 and reconfiguring operation of the solid state breaker as a result. Paragraph 84 teaches that a system as seen in Figure 8 comprising the first converters and second converters, each with solid state switches, and as described in claim 13 may be preceded by said solid state breaker. However, there is no teaching in the application as originally filed of a controller receiving health information associated with of any of the switches of the first and second converters.
Claims 15-17, 22, and 23 are rejected due to their dependence on claim 13.
In further re Claims 22 and 23, as discussed above, there is no teaching in the original application of the controller bypassing or reconfiguring operation of any of the converters in response to any health information (voltage, temperature) of any of the switches of the first and second converters.
The claims have been addressed as best as possible below.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 13 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keister et al (11,370,314) in view of Wagoner et al (2013/0107601).
In re Claims 13 and 15-17, Keister teaches a system as seen in Figure 8 comprising: an enclosure (810, col 11 lines 4-10); a plurality of first converters (840, col 12 lines 22-27) adapted within the enclosure to receive grid power at a distribution grid voltage (col 6 lines 6-9) and convert the distribution grid voltage to at least one second voltage (col 12 lines 28-39), each of the plurality of first converters comprising a first plurality of solid state switches (col 12 lines 25-27 and col 4 lines 34-56); at least one high frequency transformer (820, col 12 line 39) adapted within the enclosure, the at least one high frequency transformer coupled to the plurality of first converters to receive the at least one second voltage (col 12 lines 35-39); a plurality of second converters (860, col 13 lines 43-45) adapted within the enclosure and coupled to an output of the at least one high frequency transformer to receive the at least one second voltage and convert the at least one second voltage to at least a third voltage (col 13 lines 33-50), the second converters comprising a second plurality of solid state switches (col 4 lines 34-56); and a dielectric fluid adapted within the enclosure, the dielectric fluid to provide dielectric isolation and wherein the plurality of first converters, the at least one high frequency transformer, and the plurality of second converters are immersed within the dielectric fluid so that the converters and transformer are provided with insulation (in re claim 17) (col 11 lines 19-45).
Keister does not specifically teach that the solid state switches are adapted on a circuit board as bare dies via solder bumps or bond wires.
Wagoner teaches immersing solid state switches (136 and 150) of converter devices (128 and 130) in a liquid 228 (paragraphs 41-43 and 46). Wagoner teaches that the solid state switches are each implemented as dies 202 that are coupled to a circuit board 204 via soldering (paragraph 41) to dissipate heat from the semiconductor switches into the liquid (paragraph 43).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to implement the solid state switches of the first and second converters of Keister as dies soldered onto a circuit board as taught by Wagoner since Wagoner teaches a suitable arrangement for immersing said solid state switches in a dielectric fluid.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER JAY CLARK whose telephone number is (571)270-1427. The examiner can normally be reached Monday - Friday, 10:00am - 6:00pm EST.
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/CHRISTOPHER J CLARK/Examiner, Art Unit 2838
/THIENVU V TRAN/ Supervisory Patent Examiner, Art Unit 2838
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