NON-FINAL OFFICE ACTION
This Non-final office action addresses U.S. Application No. 18/395,086, which is a reissue application of U.S. Application No. 16/146,086 (the “086 Application”), entitled “SWITCH-TIMING IN A SWITCHED-CAPACITOR POWER CONVERTER”, which issued as U.S. Patent No. 10,374,512 (the “512 Patent") on April 6, 2019.
BRIEF SUMMARY OF THE PROCEEDING
Broadening: The instant application is file after two years of issue of the 512 Patent. However, more than one reissue application has been filed for the 512 Patent. The reissue applications are a reissue Application Ser. No. 17/396,023 (“023 Reissue Application”) filed August 6, 2021, now U.S. Patent No. RE49767 (“RE49767 Patent”) and the present application. The present application is a continuation reissue application of the 023 Reissue Application.
Examiners note that Applicant's intent to broaden was indicated in the Parent Application, i.e., 023 Reissue Application (see claim 34 filed August 6, 2021). Additionally, the 023 Reissue Application was filed within two years of the date of issue of the 512 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 512 Patent is not involved in litigation.
AMENDMENT
Applicant filed the reissue application on December 22, 2023, which included a preliminary amendment (the "2023 Preliminary Amendment"). In the 2023 Preliminary Amendment, Patent claims 1-20 were canceled, claims 21-40 were added, and specification was amended to modify 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 512 Patent issued with claims 1-20.
As of the date of this Office Action, the status of the claims is:
Patent claims 1-20 were canceled.
New claims 21-40 were added.
Accordingly, claims 21-40 are subject to the examination of this instant reissue application. Of these, claims 20 and 31 are independent claims.
PRIORITY
Examiners acknowledge that the present application is a reissue of the 512 Patent that issued from 086 Application. The 086 Application is a continuation-in-part of application No. 13/837,796, filed on March 15, 2013, now Patent No. 8,724,353.
CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend 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).
OBJECTION TO AMENDMENT
37 C.F.R. §1.173 (in part)
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c) ). Matter added by reissue on compact discs must be preceded with "U" and end with "/U" to properly identify the material being added.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendment to claims 21-40 provided in the 2023 Preliminary Amendment is objected to because they are not compliant with §1.173, which requires an explanation of support for the claim changes. The 2023 Preliminary Amendment does not address any of the changes of the original patented claims 1-20 via the presentation of new claims 21-40 and Examiners find no statement of support for any of the new claims 21-40. Appropriate correction is required in response to this Office action and will be required in any future response by Applicant. Specifically, Applicant is required to identify how the newly added claims 21-40 differ from the patented claims 1-20 and further provide a proper explanation of support for the newly added claims. Moreover, since all claims 21-40 are new with respect to the 512 Patent, they should provide status identifiers, i.e. (New). See MPEP §1453. Appropriate correction is required.
37 CFR §3.73(c) STATEMENT
The Statement under 37 C.F.R. §3.73(c) filed on December 22, 2023 (hereinafter “2023 3.73(c) Statement”) is objected to because: After reviewing the instant reissue application, Examiners find that the 2021 3.73 (c) Statement does not identify all Reel/Frame Number of the assignment record. The assignee showing of ownership must be in compliance with 37 CFR 1.172. See MPEP §1410.01. The below Assignment: Reel/Frame 66514/0234 is missing from the 2023 3.73(c) Statement. Applicant is required to provide a new statement under 37 C.F.R. §3.73(c) properly identifying the assignment records.
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CONSENT
37 C.F.R. §1.172 Reissue Applicant.
(a) The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c).
As noted above, the 2023 3.73(c) Statement is acknowledged but is not proper to establish ownership in the 512 Patent that Applicant is attempting to reissue herein. That is, assignees seeking consent to reissue must establish all ownership of the 512 Patent to be issued. Accordingly, Applicant (assignee) is required pursuant to §1.172 to provide a proper statement of ownership in order to provide a proper consent to this reissue application.
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 December 22, 2023 ("2023 Reissue Declaration”) is acknowledged. However, Examiners object to the 2023 Reissue Declaration on the basis that Examiners find the 2023 Reissue Declaration fails to state a proper error in the claims on which to base this reissue.
Examiners find that the 2023 Reissue Declaration outlines an error as follows:
“U.S. Patent No. 10,374,512 claims less than the Patentee had the right to claim. The claims, specifically claim 1, fail to recite features related to "a clocked operation to implement a time interval during which signals with respect to the first and second plurality of switches are non-overlapping." The failure to provide claims directed to the clock operation render U.S. Patent No. 10,374,512 wholly or partially inoperative or invalid. New claims, specifically claims 34-41 correct this error by seeking to claim the clocked operation.”
However, Examiners find the 2023 Reissue Declaration is merely a copy of the reissue declaration from the Parent Reissue Application (i.e., 023 Reissue Application/RE49767 Patent) and thus note this filing is sufficient to get a filing date for the present reissue application. However, use of a parent prior reissue declaration does not satisfy the statement of error for the present reissue application. Specifically, Examiners do not find that the error statement provided therein is applicable to the present reissue application. See MPEP 1451. Furthermore, there is no claim 41 in the present reissue application as indicated in the 2023 Reissue Declaration.
Accordingly, Applicant has two options to correct this objection:
Applicant is required to file a new reissue declaration which identifies a claim Applicant seeks to broaden and states a new error being corrected in this reissue application that has not before been corrected by the preceding reissue patent (i.e., RE49767 Patent).
Alternatively, If Applicant intends on relying on the same error that was already corrected in the RE49767 Patent, then Applicant is required to state how this same error is being corrected in a different way/manner in this reissue application from how it was corrected in the RE49767 Patent. Since Applicant has not provided a proper reissue declaration on the record in this reissue application, Applicant must file a new reissue declaration with a statement of error with respect to the 512 Patent identifying "a single word, phrase, or expression" from the 512 Patent that was in error that rendered the 512 Patent invalid or inoperative.
OBJECTION TO SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 C.F.R. §1.75(d)(1) and MPEP §608.01(o). Correction of the following is required: the specification is required to be amended to provide proper antecedent basis for “a first driver”, “a second driver”, “a third driver” and “a fourth driver”. Examiner is unable to find any specific references to “the first driver”, “the second driver”, “the third driver” and “the fourth driver” now included in claims 21-30.
OBJECTION TO THE DRAWINGS
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, limitations “a second driver coupled to a first switching element and configured to derive power from one of the first pump capacitors”, “a fourth driver coupled to a second switching element and configured to derive power from one of the second pump capacitors” (claim 21), “another one of the first gate drivers is powered from the second charge-transfer path”, “another one of the second gate drivers is powered from the first charge-transfer path” (claim 31) and “a first Zener diode coupled between a gate of the first switching element and an output terminal of the switched-capacitor power-converter” and “a second Zener diode coupled between a gate of the second switching element and an output terminal of the switched-capacitor power-converter” (claim 35) must be shown or the features canceled from the claims. No new matter should be entered. Corrected drawing sheets in compliance with 37 C.F.R. §1.173 are required in reply to the Office action to avoid abandonment of the application. If the changes are not accepted by the Examiners, the Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
REJECTIONS – 35 U.S.C. §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 21-30 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.
Claim 21 recites “a second driver coupled to a first switching element and configured to derive power from one of the first pump capacitor” and “a fourth driver coupled to a second switching element and configured to derive power from one of the second pump capacitor”, which Examiners find lacks a written description and thus is new matter in the 512 Patent. Specifically, if considered a low voltage driver 34 connected to A0a, or a high voltage driver 35 connected to A7a or a low voltage driver 34 connected to B2a as a second driver limitation, and a capacitor C3A or C1A as a first pump capacitor limitation, then limitation “derive power from one of the first pump capacitor” is not seen in Fig. 9 (or any figure). Similar with a fourth driver limitation, if considered a low voltage driver 34 connected to B0a, or a high voltage driver 35 connected to B7a or a low voltage driver 34 connected to A2a as a fourth driver limitation, and a capacitor C3B or C1B as a second pump capacitor limitation, then limitation “derive power from one of the second pump capacitor” is not seen in Fig. 9 (or any figure).
Dependent claims 22-30 are rejected by the deficiencies of independent claim 21.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 21: It is unclear what element is referred as “a second driver” and “a fourth driver”. Insofar as understood, Fig. 9 shows a high voltage driver 35 connected to B7a can be seen as a first driver limitation coupled to positive and negative terminals of a first voltage-following capacitor (Ca), and a high voltage driver 35 connected to A7b can be seen as a third driver limitation coupled to positive and negative terminals of a second voltage-following capacitor (Cb). Which element is represented as the second driver and the fourth driver? In order to avoid any confusion, Applicant is required to particularly point out how these limitations read on the circuit arrangement of the drawings.
Claims 22, 26 and 27 contain “the second driver” and “the fourth driver” limitation are similarly rejected as claim 21.
Dependent claims 23-25 and 28-30 are rendered indefinite by the deficiencies of independent claim 21.
Regarding claim 31, it is unclear what element is referred as “another one of the first gate drivers is powered from the second charge-transfer path”. If considered a high voltage driver 35 connected to B7a or A7a as a plurality of first gate drivers limitation, and transistors M1A, M3A as first switches limitation, wherein one of the first gate driver (35 connected to B7a) is seen coupled to positive and negative terminals of a first capacitor (Ca). Thus, another one of the first gate drivers limitation have to be a low voltage driver 34 connected to A0a or B2a, then limitation “another one of the first gate drivers is powered from the second charge-transfer path” is not seen in Fig. 9 (or any figure). Moreover, it is also unclear what element is referred as “another one of the second gate drivers is powered from the first charge-transfer path”. If considered a high voltage driver 35 connected to A7b or B7a as a plurality of second gate drivers limitation, and transistors M1B, M3B as second switches limitation, wherein one of the second gate driver (35 connected to A7b) is seen coupled to positive and negative terminals of a second capacitor (Cb). Thus, another one of the second gate drivers limitation have to be a low voltage driver 34 connected to A2b or B0b, then limitation “another one of the second gate drivers is powered from the first charge-transfer path” is not seen in Fig. 9 (or any figure). In order to avoid any confusion, Applicant is required to particularly point out how this limitation reads on the circuit arrangement of the drawings.
Claim 33 is similarly rejected as claim 31. It is unclear what element is referred as “the another one of the first gate drivers” and “the another one of the second gate drivers”. In order to avoid any confusion, Applicant is required to particularly point out how this limitation reads on the circuit arrangement of the drawings.
Regarding claim 35: It is unclear what element is referred as “a first Zenner diode connected between a gate of the first switching element and an output terminal of the switched-capacitor power-converter”. As noted in claim 31, the first switching element can be seen as M1A or M3A, thus if considered either Zenner diode connected to VI in the top of Fig. 9 or Zenner diode connected to V1a as a first Zenner diode limitation, then both of these Zenner diodes do not seen connected between the first switching element M1A or M3A and an output terminal of the switched-capacitor power converter. Similarly with limitation “a second Zenner diode connected between a gate of the second switching element and the output terminal of the switched-capacitor power-converter”. As noted in claim 31, the second switching element can be seen as M1B or M3B, thus if considered either Zenner diode connected to VI in the top of Fig. 9 or Zenner diode connected to V1b as a second Zenner diode limitation, then both of these Zenner diodes do not seen to connected between the second switching element M1B or M3B and the output terminal of the switched-capacitor power converter. In order to avoid any confusion, Applicant is required to particularly point out how this limitation reads on the circuit arrangement of the drawings.
Dependent claims 32, 34, 36-40 are rendered indefinite by the deficiencies of independent claim 31.
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/ Defective Declaration:
Claims 21-40 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 2023 Reissue Declaration is set forth in the discussion above in this Office action.
2/ Defective Consent
Claims 21-40 and this reissue application as a whole are rejected as being based upon a defective consent under 35 U.S.C. §251. Because Examiner finds that Applicant (assignee) has not properly established ownership of the 512 Patent in the 2023 3.73(c) Statement as provided above, Applicant (assignee) has not properly consented to this reissue application.
3/ New matter:
Claims 21-30 and this application as a whole are rejected under 35 U.S.C. §251 because Applicant has introduced new matter in this reissue application. The nature of the new matter is discussed above in the new matter rejection under 35 U.S.C. §112 above.
ALLOWABLE SUBJECT MATTER
While claims 21-40 are rejected under 35 U.S.C. §251 and/or under 35 U.S.C. §112 as provided above, these claims are nevertheless allowable over the prior art of record herein.
Regarding claim 21, the prior art references are not seen to specifically teach a details of a plurality of gate drivers , i.e., “a first driver coupled to positive and negative terminals of a first voltage following capacitor in the first phase, a second driver coupled to a first switching element and configured to derive power from one of the first pump capacitors; a third driver coupled to positive and negative terminals of a second voltage- following capacitor in the second phase; and a fourth driver coupled to a second switching element and configured to derive power from one of the second pump capacitors” in combination with “a plurality of first switches” and “a plurality of second switches”.
Dependent claims 22-30 include patentable subject matter for the same reasons as independent claim 21 from which they depend.
Regarding claim 31, the prior art references are not seen to specifically teach “a plurality of first gate drivers configured to respectively facilitate one or more state transitions of the first switches by providing corresponding gate voltages, wherein one of the first gate drivers is coupled to positive and negative terminals of a first capacitor in the first phase, and another one of the first gate drivers is powered from the second charge-transfer path” and “a plurality of second gate drivers configured to respectively facilitate one or more state transitions of the second switches by providing corresponding gate voltages, wherein one of the second gate drivers is coupled to positive and negative terminals of a second capacitor in the second phase, and another one of the second gate drivers is powered from the first charge-transfer path” in combination with “a plurality of first switches” and “a plurality of second switches”.
Dependent claims 32-40 include patentable subject matter for the same reasons as independent claim 31 from which they depend.
As allowable subject matter has been indicated, Applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
INFORMATION DISCLOSURE STATEMENT
The Information Disclosure Statements filed December 22, 2023, March 4, 2024 and September 29, 2025 have been considered. In accordance with MPEP § 1406, Examiners have reviewed and considered the prior art of record in the original prosecution of the 512 Patent. Applicant(s) are reminded that a listing of the information of record in the original prosecution of the 512 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 512 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 21-40 are rejected.
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