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
2. Applicant’s arguments, see remarks page 2, filed 12/09/2025, with respect to the rejection(s) of Claims 1-20 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 have been fully considered as follows:
Applicant’s Argument:
Applicant argues on page 2, of the remarks, filed on 12/09/2025, regarding the rejection(s) of Claims 1-20 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, that “In response, Applicant herewith amends claims 1 and 11, wherein the features of claim 5 are incorporated into claim 1, and the features of claim 15 are incorporated into claim 15. Thus, claims 1 and 11 further recite that "the health rating is based on the following: amount of time of operation, amount of time of conducting current over a predetermined amplitude, amount of time of operating with a temperature over a predetermined value, number of overload trips, number of high interrupting capacity (HIC) trips, and number of mechanical operations of the air gap".
Applicant respectfully submits that it is now clear how the status of the health rating of the solid-state circuit breaker is determined, that is by considering the referenced parameters.
Further, Applicant has reviewed all claims and corrected informalities, typographical errors and other language errors.
It is respectfully requested to withdraw the claims rejections under 35 U.S.C. $112.
Examiner Response:
Applicant’s arguments, see page 2 (stated above), filed 12/09/2025, with respect to the rejection(s) of Claims 1-20 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 have been fully considered and is partially persuasive. Because applicant has amended the claims and added the limitation which makes the claim limitation, “a health rating” clear. Therefore, the rejection of Claims 1-20 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, as applied to the Non-Final Office Action mailed on 9/10/2025 has been partially withdrawn as set forth below.
However, the limitation, “health data, and counter data or timer data” is still not clear. It is not clear what data is considered as the health data and counter or timer data and how the data is retrieved in the memory or how the heath data or counter data is calculated and when the data are calculated. Therefore, the limitation is still unclear. Claims 1-3, 6-13 and 16-20 are still 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 as set forth below. See the rejection set forth below.
Applicant’s arguments, see remarks page 2-9, filed 12/09/2025, with respect to the rejection(s) of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1 have been fully considered as follows:
Applicant’s Argument:
Applicant argues on page 3, of the remarks, filed on 12/09/2025, regarding the rejection(s) of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, that “It is respectfully submitted that the Examiner's rejection fails to articulate a proper motivation to combine Freer and Yang that would have been apparent to one of ordinary skill in the art at the time of the invention. As stated in MPEP $2143, "rejections based on 35 U.S.C. $103 must rest on a factual basis with these facts being interpreted without hindsight reconstruction of the invention from the prior art." The Examiner's conclusory statement that one would combine these references "because Yang teaches to include at least one semiconductor switching device provides fast switching speed, minimum arcing, less moving parts etc." mischaracterizes the nature of these references and relies on impermissible hindsight reconstruction.”
Examiner Response:
Applicant’s arguments, see remarks page 3 (stated above), filed 12/09/2025, with respect to the rejection(s) of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, as applied to the Non-Final Office Action mailed on 9/10/2025 have been fully considered and is not persuasive.
Freer discloses circuit breakers, and more particularly to systems, methods, and devices for prognostic and health monitoring systems for circuit breakers (Paragraph [0002] Line 1-4). However Freer does not disclose about the switch in the circuit breaker. Yang teaches a solid-state circuit breaker configured to discharge and dissipate a recovery voltage associated therewith an inductive load (Column 1 Line 9-12). Both Freer and Yang discloses circuit breaker for health monitoring and to dissipate a recovery voltage which is one type of monitoring health. Therefore, both references disclose circuit breakers and Yang discloses semiconductor switch which for fast switching speed, minimum arcing, less moving parts etc., to provide a simplified design which enables a solid-state circuit breaker to safely discharge high recovery voltage generated by an inductive load. Therefore, by replacing switch of the circuit breaker in Freer with the semiconductor switch as disclosed by Yang increases the efficiency of the circuit breaker and reduces the internal fault in the circuit breaker which helps to monitor the health of the circuit breaker. Therefore, it increases the efficiency of monitoring the heath. Applicant’s argument that the Examiner's rejection fails to articulate a proper motivation to combine Freer and Yang that would have been apparent to one of ordinary skill in the art at the time of the invention is not persuasive. Applicant’s argument about improper hindsight reasoning is therefore not persuasive.
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary Skill at the
time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392; 170 USPQ 209 (CCPA 1971).
Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is "hindsight" because "express" motivation to combine the references is lacking. However, there is no requirement that an "express, written motivation to combine must appear in prior art references before a finding of obviousness." See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness.
Applicant’s Argument:
Applicant argues on page 3-4, of the remarks, filed on 12/09/2025, regarding the rejection(s) of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, that “Freer is expressly directed to "prognostic and health monitoring systems for circuit breakers" (Freer, paragraph [0002]) where the monitoring system is an external apparatus……….
In contrast, Yang is directed to a completely different problem and solution. Yang teaches a solid-state circuit breaker specifically configured to discharge and dissipate recovery voltage associated with an inductive load (Yang, column 1, Lines 9-12). Yang's primary focus is on using…….
The Examiner has not explained why one of ordinary skill in the art, faced with Freer's external monitoring system designed for conventional circuit breakers, would be motivated to integrate this monitoring approach into Yang's fundamentally different solid-state circuit breaker (Remarks-Page 3) architecture. These references address different problems and teach different solutions. Freer addresses the problem of monitoring the health of existing conventional circuit breakers to predict failure and schedule maintenance (paragraph [0016]). Yang addresses the problem of safely discharging recovery voltage in solid-state circuit breakers when switching inductive loads (column 1, Lines 28-35). There is no suggestion in either reference to combine an external monitoring system designed for conventional breakers with a solid-state circuit breaker designed for voltage recovery handling.
Moreover, Freer teaches away from integrating monitoring functionality directly into the circuit breaker itself. Freer's entire architecture is based on a separate controller 404 with PHM engine 406 that monitors circuit breakers as external devices. As stated in MPEP § 2145, "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Here, Freer's consistent teaching of an external monitoring system would discourage one skilled in the art from attempting to integrate such monitoring into the circuit breaker itself, particularly into a solid-state architecture.
The Examiner's statement regarding "fast switching speed, minimum arcing, less moving parts" as motivation is merely a general statement of advantages of solid-state switching and does not explain why one would combine these particular references. This reasoning could apply to any combination of a monitoring system with any solid-state device, which is precisely the type of generalized motivation prohibited by KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398 (2007) (Remarks-Page 3).
…….
Claim 1 requires a specific operational sequence: the microprocessor must (1) determine that the health rating is below a predetermined value, (2) in response, send a poor health rating message to the end user via smartphone APP and start a counter or timer, (3) determine whether the counter comprises a predefined value or the timer is expired, (4) if expired, turn the solid-state circuit breaker off and inhibit it from being turned on, (5) send an OFF/disabled alert message, and (6) if not expired, increment or decrement the counter or timer. This sequence implements an automatic end-of-life enforcement mechanism that provides a grace period (monitored by the counter/timer) between initial poor health detection and final disabling of the circuit breaker Remarks-Page 4).”
Examiner Response:
Applicant’s arguments, see remarks page 3-4 (stated above), filed 12/09/2025, with respect to the rejection(s) of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, as applied to the Non-Final Office Action mailed on 9/10/2025 have been fully considered and is partially persuasive.
Freer discloses circuit breakers, and more particularly to systems, methods, and devices for prognostic and health monitoring systems for circuit breakers (Paragraph [0002] Line 1-4). However Freer does not disclose about the switch in the circuit breaker. Yang teaches a solid-state circuit breaker configured to discharge and dissipate a recovery voltage associated therewith an inductive load (Column 1 Line 9-12). Both Freer and Yang discloses circuit breaker for health monitoring and to dissipate a recovery voltage which is one type of monitoring health.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
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In response to Applicant’s argument that there is no suggestion to combine the references, the Examiner recognizes that references cannot be arbitrarily combined and that there must be some reason why one skilled in the art would be motivated to make the proposed combination of primary and secondary references. In re Nomiya, 184 USP'Q 607 (CCPA 1975). However, there is no requirement that a motivation to make the modification be expressly articulated. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971). References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 945 (CCPA) 1969.
Therefore, applicant’s argument, “Moreover, Freer teaches away from integrating monitoring functionality directly into the circuit breaker itself.” is not persuasive.
Applicant’s argument in page 4 of the remarks that, “claim 1 requires a specific operational sequence: the microprocessor must (1) determine…………….” is persuasive. Because applicant has amended the claims and added the limitation which makes the steps clear and which overcomes the present rejection of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, as applied to the Non-Final Office Action mailed on 9/10/2025. Therefore, the rejection of Claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Freer et al. (Hereinafter, “Freer”) in the US Patent Application Publication Number US 20170184675 A1 in view of Yang in the US Patent Number US 11398724 B1, as applied to the Non-Final Office Action mailed on 9/10/2025 has been withdrawn. However, claim limitations are not clear as explained below and therefore Claims 1-3, 6-13 and 16-20 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 pre-AIA the applicant regards as the invention, as set forth below. See the rejection set forth below.
For expedite prosecution Applicant is invited to call to discuss the present rejection also if any further clarification needed and to discuss any possible amendment to overcome the references to make the claims allowable.
Status of the Claims
Claims 1-3, 6-13 and 16-20 set forth in the amendment submitted 12/09/2025 form the basis of the present examination.
Claim Rejections - 35 USC § 112
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 1-3, 6-13 and 16-20 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “retrieve saved health data and the at least one counter and/or the timer data from the memory, determine a status of a heath rating of the solid-state circuit breaker being based on the health data, the alert data and counter and/or the timer data by comparing the heath rating to a threshold.” The limitation, “health data, and counter data or timer data” is still not clear.
It is not clear what data is considered as the health data and counter or timer data and how the data is retrieved in the memory or how the heath data or counter data is calculated and when the data are calculated. It is not clear from where the health data and timer data is calculated. It is not clear how the health rating is calculated. Therefore, the limitation is not clear.
It is not clear what “poor a health rating message” means. Which message is considered as the poor heath rating. Therefore, claim limitation is not clear.
Claim 1 recites, “determine- if whether the counter is at comprises a predefined value and/or the timer is expired;
…..
in response to the counter is not comprising the predefined value and/or the timer not being expired, increment or decrement the at least one counter and/or the timer.”. The meaning of the language is not clear. It is not clear what timer is being expired means. How the timer is expired measures and what parameter is used and also it is not clear how it is determined that the counter comprises a predefined value. It is not clear how the predefined value is determined. Is it any specific value that is stored in the memory or any other value? Therefore, the claim limitation is still not clear.
Clarification is required so that the scope of the claim is clear.
Claims 2-3, 6-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by virtue of their dependence from claim 1.
Independent Claim 11 is 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 pre-AIA the applicant regards as the invention, because of the same reason as stated above.
Claims 12-13 and 16/20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by virtue of their dependence from claim 11.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
LICHAUER (US 20210226437 A1) discloses, “SOLID STATE CIRCUIT INTERRUPTER WITH SOLID STATE INTERLOCKING MECHANISM-[0001] The disclosed concept relates generally to circuit interrupters, and in particular, to circuit interrupters with a solid-state interlocking mechanism. [0019] FIG. 1 is a diagram of a solid state circuit breaker 10 in accordance with an example embodiment of disclosed concept. The solid state circuit breaker 10 may be part of a larger system including additional circuit breakers, solid state and/or mechanical circuit breakers, such as the system shown in FIG. 2. [0020] The solid state circuit breaker 10 is structured to be electrically connected between a power source and a load 12 via LINE and LOAD conductors 2, 4. An upstream circuit breaker may be disposed between the power source and the solid state circuit breaker 10. The solid state circuit breaker 10 is structured to trip open or switch open to interrupt current flowing to the load 12 in the case of a fault condition (e.g., without limitation, an overcurrent condition) to protect the load 12, circuitry associated with the load 12, as well as the components within the solid state circuit breaker 10. [0021] The solid state circuit breaker 10 includes a solid state switch 100, an electronic trip unit 200, an operating mechanism 300, a sensor 400, and mechanical contacts 500. The solid state switch 100 includes solid state switching elements (e.g., without limitation, metal-oxide-semiconductor-field-effect-transistors (MOSFETs), insulated-gate bipolar transistors (IGBTs)) that are structured to turn-on and turn-off (i.e., open and close) to allow or interrupt current flowing to the load 12. The solid state switch 100 is electrically coupled to the load 12 and the electronic trip unit 200. [0022] The electronic trip unit 200 is structured to control the solid state switch 100 to open and close and also controls the operating mechanism 300 to trip open the mechanical contacts 500 based on a signal from the sensor 400. The electronic trip unit 200 may include a processing unit that may include a processor and a memory. The processor may be, for example and without limitation, a microprocessor, a microcontroller, or some other suitable processing device or circuitry-However LICHAUER does not disclose determine- if whether the counter is at comprises a predefined value and/or the timer is expired; ….. in response to the counter is not comprising the predefined value and/or the timer not being expired, increment or decrement the at least one counter and/or the timer.”
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 NASIMA MONSUR whose telephone number is (571)272-8497. The examiner can normally be reached 10:00 am-6:00 pm.
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, Eman Alkafawi can be reached at (571) 272-4448. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NASIMA MONSUR/Primary Examiner, Art Unit 2858