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 .
Interview
Multiple calls were made to Attorney Ming Choy requesting an interview to clarify the 112 issues however no return call was received.
Response to Arguments
Regarding the Objection to the Drawings, Applicant’s argument that the provided annotated Figure provided in the Remarks provides “example support”. Although the annotations are appreciated, they are indeed necessary to be included in the actual Drawings and not just in the response to Arguments. Either the claims should be amended to recite the components as disclosed or the Figures corrected to add the terminology used in the claims (ie sense terminal, control circuitry, detection circuitries).
The previous 112 rejections are withdrawn however new 112 rejections have been necessitated by the amendments.
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, the following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Said claimed first, second, third, fourth, fifth, sixth transistors.
Said claimed sense terminal.
Control circuitry.
Detection circuitries.
Said third transistor “configurable” to provide a first voltage at the sense terminal responsive to a second voltage at the switching terminal.
The depicted “To 211” is essential to understand the invention yet it is unclear how said “To 211” connects to 211 as best understood represented in Figure 2. Figure 2 shows the transistors 208, 210 as controlled by gate drivers via said control circuitry 202 whereas this is not the case in Figure 4. Therefore there is a disconnect between Figure 4 and Figure 2 that requires clarification by adding the circuitry intended by “To 211” of FIGURE 4 in order to understand the invention.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The Specification fails to teach the claimed “third GaN transistor coupled between the switching terminal and a sense terminal, the third GaN transistor configurable to provide a first voltage at the sense terminal responsive to a second voltage at the switching terminal”.
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.
Claim 1-30 is 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.
The disclosure failed to teach “a third GaN transistor coupled between the switching terminal and a sense terminal, the third GaN transistor configurable to provide a first voltage at the sense terminal responsive to a second voltage at the switching terminal”.
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As provided by the annotated Figure of Page 6 of the 5/4/2026 Remarks, the third transistor does indeed provide a first voltage at the location labeled in the Annotated Figure 4 as sense terminal, however said third transistor control connects to the Charge Pump 418 and has no connection to the switching terminal making “responsive” to the voltage at the sense terminal new matter as this is not shown nor taught.
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 1, 2, 3, 6 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.
The claim term “configurable” is unintelligible as to what structure is intended to be added to the claim and appears to be a placeholder for indeed essential structure in the claim.
Regarding Claim 1, it is unclear nor is it taught how and what structure is “configurable” for said third transistor to provide a first voltage at the sense terminal responsive to a second voltage at the switching terminal.” Transistors are simple device that provide a switched open and closed function. The positively recited structure of claim 1 is simply three transistors. The claim then attempts to improperly claim the narrative operation of the circuit via voltages produced within the generically claimed “apparatus” without reciting the interconnecting structure to produce said voltage.
Nor does actual taught structure as best shown in annotated Figure 4 located on page 6 of applicant’s 5/4/2026 Remarks. Notably missing from the Figure is any “configurable” means of the third transistor (406) responsive to switch from a (second) voltage at the switching terminal. The gate of third transistor 406 is controlled via current source 416 and charge pump 418, nor of which are recited in the claim nor connected to “switching terminal” 209.
Regarding Claims 2, 3, and 6
First, it is unclear what structure is intended to be added by the claim term “configurable”. Second, the resulting claim is inappropriately narrative in attempting to replace and omit required structure by the narrative claim term “configurable” followed by the desired circuit operation (ie voltages).
Because of the great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim(s), it is not proper to reject the present claim(s) on the basis of prior art. (See MPEP 2173.06 and In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962).
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 DANIEL CAVALLARI whose telephone number is (571)272-8541. The examiner can normally be reached Mon-Fri 0900-18:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rexford Barnie can be reached at (571)272-7492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL CAVALLARI/Primary Examiner, Art Unit 2836
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