FINAL OFFICE ACTION
This final office action addresses U.S. Application No. 18/423,943, which is a broadening reissue application of U.S. Application No. 16/820,405 (hereinafter the “405 Application"), entitled OVERCURRENT PROTECTION BASED ON ZERO CURRENT DETECTION, which issued as U.S. Patent No. 11,251,709 (hereinafter the “709 Patent").
The status of the claims is as follows:
Claims 1-24 are pending and examined herein.
Claims 1-24 are rejected.
I. STATUS OF APPLICATION/CLAIMS
Applicant filed an amendment on May 11, 2026 (hereinafter the “May 2026 Amendment”) in response to the non-final Office action mailed November 7, 2025 (hereinafter the “2025 NF Action”). In the May 2026 Amendment, claims 1, 2, 5-19 were amended, claims 3, 4, and 20 were unchanged and new claims 21-24 were added. Along with the May 2025 Amendment, Applicant also filed a new reissue declaration (hereinafter the “2026 Reissue Declaration”). Therefore, claims 1-24 are pending and will be examined herein.
In view of the amendments to the claims in the May 2026 Amendment and the 2026 Reissue Declaration, all grounds of objection and rejection provided in the 2025 NF Action are withdrawn. Nevertheless, the amendments to the claims in the May 2026 Amendment necessitate new grounds of objection and rejection provided in this Office action.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue of the 405 Application. Examiners further acknowledge the claim that the 405 Application is a continuation of U.S. Patent Application No. 16/378,529, filed April 8, 2019, which issued as U.S. Patent No. 10/166,147, which is a continuation of U.S. Patent Application No. 16/190,794, filed November 14, 2018, now abandoned.
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 (in part) Reissue specification, drawings, and amendments.
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(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 amendments to the claims provided in the May 2026 Amendment are first objected to because they are not compliant with §1.173 and MPEP §1453, which requires proper markings as provided above. Specifically, since claims 21-24 are new with respect to the original patent, i.e., the 709 Patent, they should be fully underlined, all of the claim numbers, status identifiers and text. See MPEP §1453 (V)(C).
The May 2026 Amendment is also objected to because Applicant has not provided any “explanation of support for the claim changes.” Specifically, Examiners find no discussion of the claim changes and the support in the specification for making those changes. Such an explanation goes to the merits of the original patent requirement and written description.
Appropriate corrections are required in response to this Office action and any further non-compliance will not held in abeyance.
IV. 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).
V. CLAIM 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 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.
V.A. New Matter/Written Description Rejections
Claims 15-20, 23 and 24 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claims contain 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.
Claims 15-20, 23 and 24 (via claim 15) have been amended from those patented to recite that “the first source having one or more discontinuous regions, a second GaN-based switch comprising a second gate and a second source, the second source disposed in one of the one or more discontinuous regions…”
However, Examiners do not find support for such a feature in the specification or drawings of the 709 Patent. As stated by Applicant, support for the claims comes from FIGS. 40 and 41, of which FIG. 41 is reprinted below. See preliminary amendment filed January 26, 2024, page 7. However, Examiners first do not find a single source region 41110S having more than one discontinuous, rather FIG. 41 illustrates only a single
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709 Patent FIG. 41
discontinuous region. Furthermore, Examiners do not find any disclosure that the second source region is disposed in more than one discontinuous region. Accordingly, Examiners are unable to find written description support from both the drawings the specification of the features of the claims as recited. Furthermore, Examiners find Applicant has not identified any support for such amendments in the May 2026 Amendment. Therefore, Examiners conclude that to now state the first source region has more than one discontinuous region and the second source region located in these more than one discontinuous regions lacks a written description in the specification of the 709 Patent and is new matter.
V.B. Indefiniteness Rejections
Claims 15-20, 23 and 24 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. These claims recite “the first source having one or more discontinuous regions, a second GaN-based switch comprising a second gate and a second source, the second source disposed in one of the one or more discontinuous regions…” However, as noted above, Examiners are unable to find a disclosure or drawing of such a feature. Furthermore, Examiners are unable to determine how a single second source region can be located in two or more discontinuous regions in the first source region. What possible shape of first source would define multiple discontinuous regions with a second source located in all the discontinuous regions? Examiners find this recitation is either not possible or does not make sense. Thus, Examiners are unable to determine what structures is implied by this recitation or even how the specification of the 709 Patent and thus conclude claims 15-20, 23 and 24 requiring these features are indefinite.
VI. REJECTIONS – 35 U.S.C. §251
35 U.S.C. §251 Reissue of defective patents.
(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.
VI.A. Rejection Based on New Matter
Claims 1-24 and this application as a whole are rejected under 35 U.S.C. §251 as being based upon new matter added into this reissue application. The nature of the new matter is set forth in the discussion above in this Office action in the rejection under 35 U.S.C. §112.
VII. OBJECTION TO DRAWINGS
The drawings are objected to under 37 C.F.R. §1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations that “the first source having one or more discontinuous regions, a second GaN-based switch comprising a second gate and a second source, the second source disposed in one of the one or more discontinuous regions…” as recited in claim 15 must be shown or the features canceled from the claims. Specifically, the scope of this claim wherein the first source has more than one discontinuous region and the second source is disposed in this more than one discontinuous region. This objection to the drawings involves the same new matter issue as discussed above in the rejection under 35 U.S.C. §112(a). 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. No new matter should be entered.
VIII. ALLOWABLE SUBJECT MATTER
While claims 1-14 and 21 are rejected under 35 U.S.C. §251 above, Examiners find they are allowable over the prior art. Regarding these claims, they are allowable in view of the amendments to these claims provided in the May 2026 Amendment.
The Examiners further find that because claims 15-20, 23 and 24 are indefinite under 35 U.S.C. §112(b) as outlined above, it is impossible to properly construe claim scope at this time. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Accordingly, because Examiners do not understand the scope of these claims, the allowability cannot be determined until the indefiniteness is overcome.
IX. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 709 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.
X. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XI. CONCLUSION
Claims 1-24 are rejected.
Applicant's substantial amendments provided in the May 2026 Amendment necessitated the new grounds of objection and 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 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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.
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 to KENNETH WHITTINGTON whose telephone number is (571)272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
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.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights