DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
The status of the claims as amended/presented in the response received 10/22/2025, is as follows:
- Claims 1-5, 7-18 and 20 are pending.
- Claims 1, 11 and 16 have been amended.
- Claims 6 and 19 have been canceled.
Response to Arguments
Applicant's arguments filed 10/22/2025 in regards to the rejection of claims 1-20 under 35 USC 112(a) have been fully considered but they are not persuasive.
In the submitted remarks, the applicant states:
“The Applicant respectfully submits, a person having ordinary skill in
the art, would understand that a value of inductance calculated in accordance with the described embodiments itself is reflective of actuator position. In support of this contention, the Applicant provides the Affidavit under 37 CFR 132 of the inventor, David Porter. In application, one might create a table or ranges of inductance values such that given a calculated or determined inductance value, an actuator position may be ascertained.”
The examiner disagrees. The examiner’s position is not that a person having ordinary skill in the art wouldn’t understand that a value of inductance is reflective of the actuator’s position. The examiner’s position is that Specification fails to describe the manner by which the calculated inductance is linked to the actuator position in a way to determine that the position is open or closed. Specifically, how a single measurement of impedance calculated from a voltage and current variation over time is manipulated/used to arrive at an indication of the actuator position being opened or closed.
The examiner has carefully reviewed the submitted Affidavit submitted by inventor Mr. David Porter. Page 2 of the Declaration states:
“4. It is my belief, based on my experience and knowledge of the field, that a person of ordinary skill in the art at the time of the invention would have understood how to implement this method. Specifically, such a person would be familiar with:
- The use of Rogowski coils to measure di/dt directly;
- The principles of magnetic reluctance and its effect on inductance;
- The stable magnetic path differences between open and closed actuator positions;
- The use of short-duration voltage pulses (e.g., PWM signals) that do not actuate the device but allow for inductance measurement.
5. The application describes in detail how the inductance varies between the open and closed positions due to differences in the magnetic path, particularly the air gap. It also provides a schematic (FIG, 4) and signal graphs (FIG, 5) illustrating how the measurement is performed and how the inductance is derived from the voltage and current data.
6. Therefore, it is my opinion that the claimed method does not require undue
experimentation and would be readily understood and implemented by a person of ordinary skill in the art using known techniques and components.”
While the examiner agrees that a person having ordinary skill in the art would understand the technical aspects listed above (paragraph 4), the examiner points out that the rejection is based on the lack of description regarding how the technical aspects mentioned are relied upon to discern the actual position of the actuator. Specifically, how a single measurement of impedance calculated from a voltage and current variation over time is manipulated/used to arrive at an indication of the actuator position being opened or closed. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention
Furthermore, the examiner respectfully points out that the rejection under 35 USC 112(a) is not based on a lack of enablement (which factors undue experimentation), but rather because 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.
Furthermore, in page 1 of the Remarks, the applicant argues:
“In application, one might create a table or ranges of inductance values such that given a calculated or determined inductance value, an actuator position may be ascertained”.
It appears the applicant’s position is that a table of values may be created from measurements or calculations of inductance corresponding to an open and closed position. Furthermore, it appears the applicant believes said values may be stored and later used to ascertain the current actuator position being open or closed. The examiner respectfully disagrees. Creating such a table would require measurements or calculations are performed and recorded with previous knowledge of the actual actuator’s position (being open or closed) so as to correlate inductance values to an open or closed position. As explained in paragraph 0004 of the Specification, the switching devices may be located underground and would not appear accessible to take measurements and create such table. Again, the Specification is silent about how one would go about doing this. That is, the Specification is silent about how such table may be created without direct access to the actuator and knowledge of its position to correlate to the inductance values.
Applicant’s arguments with respect to the applicability of the prior art of record in view of the claim amendments have been considered but are moot because the new ground of rejection. 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).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such claim limitation(s) is/are:
means for applying a voltage signal of a known voltage to the actuator over a predetermined period (as recited in claim 16)
means for calculating the inductance at about 75% of the period using the voltage and the change in current over time at a predetermined time during the period (as recited in claim 16)
means for determining a position of the actuator being in an open or closed position based upon the calculated inductance (as recited in claim 16)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof:
means for applying are interpreted to cover a three-phase inverter as described in paragraph 0019 of the Specification.
The examiner notes that the Specification doesn’t describe a corresponding structure to cover the recited “means for calculating the inductance” or the recited “means for determining a position of the actuator being in an open or closed position based upon the calculated inductance”. For example, paragraph 0019 states “additional circuitry and processing can be provided to calculate the inductance”, but fails to describe what the circuitry is so as to allow a person having ordinary skill in the art to identify it and its equivalents.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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 16-18 and 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16, the claim limitations “means for calculating the inductance using the voltage and the change in current over time at a predetermined time during the period” and “means for determining a position of the actuator being in an open or closed position based upon the calculated inductance” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph for the reasons explained in paragraph 7 above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure doesn’t contain description of any structure that performs the functions as recited in the claims. For example, paragraph 0019 states “additional circuitry and processing can be provided to calculate the inductance”, but fails to describe what the circuitry is or how the circuitry would determine the position of the actuator being in an open or closed position based upon the calculated inductance, so as to allow a person having ordinary skill in the art to ascertain the scope of the claims. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 17-18 and 20 are also rejected as they inherit the deficiencies in claim 16 noted above.
Claim Rejections - 35 USC § 112(a)
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 1-5, 7-18 and 20 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 1 recites a method including the step: “determining an open or closed position of the actuator based upon a value of the calculated inductance”.
Claim 11 recites a method including the step: “determining a position of the actuator as open or closed based upon the calculated inductance and determining the vacuum interrupter is in the open or closed position based upon a determined position of the actuator”.
Claim 16 recites a system comprising means for: “determining a position of the actuator as being in an open or closed position based upon the calculated inductance.”
First, the examiner notes the disclosed method involves applying a voltage to the actuator “without causing enough force to move the position of the actuator in either the open or closed direction.”
Second, the Specification describes a method for calculating a single value of inductance (by dividing the inputted voltage by the change of current measured over time), while keeping the actuator from moving from its current position.
In view of the first and second points above, it appears the determination is based on a single value of inductance. However, it doesn’t appear possible to discern the position of the actuator with only a single calculated value of inductance. How would a user be able to discern the actuator position if there is no second value of inductance (open or closed) to compared the calculated inductance against? How would a user be able to identify that the calculated inductance corresponds to the open or closed position? Although paragraph 0018 explains the “inductance of the actuator.. will be different for the open and closed positions”, without a reference value (for example, a second calculated inductance corresponding to the actuator switched to the second state), it’s not possible to identify the position with only a single value of inductance. Moreover, performing a second calculation doesn’t appear possible without moving the position of the actuator.
It would appear necessary to have access to the values of inductance that corresponds to the open or the closed position of the actuator in advance, so that the single calculated inductance may be compared to and correlated to the respective position, or to allow a second calculation of inductance in the switched state to be used as reference or value to compare against. However, neither one of these options or any other alternatives is described in the Specification.
Claims 2-8, 10, 12-15, 17-18 and 20 are also rejected as they inherit the deficiencies noted above.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
All recitations in claim 14 are present in independent claim 11. Thus, the claim fails to further limit the subject matter of the claim upon which it depends. It appears the applicant intended to identify claim 14 as canceled, in the same way claims 6 and 19 are. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 4, 7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over the Japanese publication JP 11-153247A by Li Long-Jang (Li hereafter). A copy of the foreign document and partial translation are provided with this Office Action.
In terms of claim(s) 1 Li teaches a method for determining a position of a magnetic actuator (paragraph 0005 of the translation), the method comprising:
applying a voltage signal of a known voltage to the actuator over a predetermined period (voltage Vcoil is inputted to the solenoid coil 38, see paragraph 0024 in page 8 of the translation and Figure 6);
determining a change in current over time during the period when the voltage signal is applied to the actuator (using sensor 76, shown in Figure 6);
calculating the inductance of the actuator using the voltage and the change in current over time at a predetermined time during the period (paragraph 0024, line 14); and
determining an open or closed position of the actuator based upon a value of the calculated inductance (paragraph 0024, lines 14-15, paragraph 0027).
Li is silent about the inductance of the actuator being calculated at about 75% of the period. However, it appears that the choice of timing for calculating the inductance is aimed at optimizing the process by allowing for the parameters measured and used in the calculation inductance to settle, so as to avoid using fluctuating values. Such optimization of the calculation timing amounts to routine experimentation in a manner as to optimize the conditions of the method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to perform the calculation of inductance towards the end of the period of the voltage signal being applied (or about 75% of the period), in order to optimize the process by allowing for the parameters measured and used in the calculation of inductance to settle, so as to avoid using fluctuating values.
As to claim 3, Li teaches the method according to claim 1, wherein applying a voltage signal (Vcoil) includes applying a pulse width modulation (PWM) signal (outputted by PWM amplifier 74). Although Li is silent about the pulse width modulation signal having a duty cycle of 25%, and the period being 1.04ms, such optimization of the duty cycle and period duration amounts to routine experimentation in a manner as to optimize the conditions of the apparatus/method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to experiment with duty cycle percentages and period durations in order to achieve an optimal result from the calculations.
As to claim 4, Li teaches the step of determining a change in current over time includes measuring the current over time (using sensor 76, shown in Figure 6);
As to claim 7, Li teaches the magnetic actuator is part of a “switching device” that “switches” a valve (interpreted as fluid switch) from an open to a closed position and viceversa.
As to claim 9, Li’s switching device is associated with a transformer (any arbitrarily chosen transformer that is involved in the process of generating a current or voltage used in the method steps recited in claims 1 or 7). The examiner notes the recitation “wherein the switching device is associated with a transformer in an electrical circuit” doesn’t describe a particular step of using a transformer in the method recited in claim 7. The claim also doesn’t necessitate the presence of a transformer. As long as the prior art teaches in combination the method steps recited in claims 7 and 1, the prior art teaches the claim.
As to claim 10, Li teaches the position of the actuator provides an indication of whether the switch is open or closed (paragraph 0025, lines 7-11 and paragraph 0027).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of in view of the US Patent US No. 7,239,490 by Benke et al. (Benke hereafter).
In terms of claim 5, Li substantially teaches all of the claimed elements as discussed above, including mentioning determining a change in current over time includes using a current sensor (Fig. 6, unit 76). However, Li doesn’t explicitly mention the current sensor is a Rogowski coil.
Benke teaches in Figure 4, the use of a Rogowski coil as a current sensor (col. 5, line 10).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of using Rogowski coils as current sensors as taught by Benke, in the device/system/method of Li, in order to provide a contactless means for detecting current that is less intrusive than ohmic means, minimizing the effect of said measurement on the measured signal.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of the US Patent US No. 9,620,316 by Gentsch et al. (Gentsch hereafter).
In terms of claim 8, Li substantially teaches all of the elements disclosed above, except for explicitly mentioning the switch is a vacuum interrupter.
Vacuum interrupters controlled by magnetic actuators are however, well known in the art. For example, Gentsch teaches in figure 1, a vacuum interrupter controlled by a magnetic actuator. The actuator switching positions so as to control the state of the vacuum interrupter (see col. 4, lines 3-12).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of magnetic actuators controlling vacuum interrupters as taught by Gentsch, in the device/system/method of Li, in order to gain the advantage of applying the method of detection to a vacuum interrupter, allowing a user to verify the position of the interrupter remotely.
Claim(s) 11, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Benke and further in view of Gentsch.
In terms of claim(s) 11 and 14, Li teaches a method comprising the steps of:
applying a voltage signal of a known voltage to the actuator over a predetermined period (voltage Vcoil is inputted to the solenoid coil 38 through means 74, see paragraph 0024 in page 8 of the translation and Figure 6);
determining a change in current over time during the period when the voltage signal is applied to the actuator (using sensor means 76, shown in Figure 6);
calculating the inductance of the actuator using the voltage and the change in current over time at a predetermined time during the period (paragraph 0024, line 14); and
determining the position of the actuator as open of closed based upon the calculated inductance and determining the vacuum interrupter is in the open or closed position based upon a determined position of the actuator (paragraph 0024, lines 14-15, paragraph 0027).
Li substantially teaches all of the claimed elements as discussed above, including mentioning the determining a change in current over time includes using a current sensor (Fig. 6, unit 76). However, Li doesn’t explicitly mention the current sensor is a Rogowski coil.
Benke teaches in Figure 4, the use of a Rogowski coil as a current sensor (col. 5, line 10).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of using Rogowski coils as current sensors as taught by Benke, in the device/system/method of Li, in order to provide a contactless means for detecting current that is less intrusive than ohmic means, minimizing the effect of said measurement on the measured signal.
Li in view of Benke, substantially teaches all of the elements disclosed above, except for explicitly mentioning the magnetic actuator whose position is detected, being a controller for a vacuum interrupter associated with a transformer in an electrical circuit.
Vacuum interrupters controlled by magnetic actuators are however, well known in the art. For example, Gentsch teaches in figure 1, a vacuum interrupter controlled by a magnetic actuator. The actuator switching positions so as to control the state of the vacuum interrupter (see col. 4, lines 3-12).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of magnetic actuators controlling vacuum interrupters as taught by Gentsch, in the device/system/method of Li in view of Benke, in order to gain the advantage of applying the method of detection to a vacuum interrupter, allowing a user to verify the position of the interrupter remotely.
Lastly, Li is silent about the inductance of the actuator being calculated at about 75% of the period. However, it appears that the choice of timing for calculating the inductance is aimed at optimizing the process by allowing for the parameters measured and used in the calculation inductance to settle, so as to avoid using fluctuating values. Such optimization of the calculation timing amounts to routine experimentation in a manner as to optimize the conditions of the method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to perform the calculation of inductance towards the end of the period of the voltage signal being applied (or about 75% of the period), in order to optimize the process by allowing for the parameters measured and used in the calculation of inductance to settle, so as to avoid using fluctuating values.
As to claim 13, Li teaches the method according to claim 11, wherein applying a voltage signal (Vcoil) includes applying a pulse width modulation (PWM) signal (outputted by PWM amplifier 74). Although Li is silent about the pulse width modulation signal having a duty cycle of 25%, and the period being 1.04ms, such optimization of the duty cycle and period duration amounts to routine experimentation in a manner as to optimize the conditions of the apparatus/method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to experiment with duty cycle percentages and period durations in order to achieve an optimal result from the calculations.
As to claim 15, Li’s switching device is associated with a transformer (any arbitrarily chosen transformer that is involved in the process of generating a current or voltage used in the method steps recited in the preceding claims). The examiner notes the recitation “wherein the switching device is associated with a transformer in an electrical circuit” doesn’t describe a particular step of using a transformer in the method recited in claim 11. Also, the claim also doesn’t necessitate the presence of a transformer. As long as the prior art teaches in combination the method steps recited in claim 11, the prior art teaches the claim.
In terms of claim(s) 16, Li teaches a system comprising:
means for applying a voltage signal of a known voltage to the actuator over a predetermined period (source inputting voltage Vcoil to the solenoid coil 38, see paragraph 0024 in page 8 of the translation and Figure 6);
a current measuring unit (sensor 76, shown in Figure 6) determining a change in current over time during the period when the voltage signal is applied to the actuator,
means for calculating the inductance using the voltage and the change in current over time at a predetermined time during the period (paragraph 0024, line 14); and
means for determining a position of the actuator as being in an open or closed position based upon the calculated inductance (paragraph 0024, lines 14-15).
Li substantially teaches all of the claimed elements as discussed above, including mentioning determining a change in current over time includes using a current sensor (Fig. 6, unit 76). However, Li doesn’t explicitly mention the current sensor is a Rogowski coil.
Benke teaches in Figure 4, the use of a Rogowski coil as a current sensor (col. 5, line 10).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of using Rogowski coils as current sensors as taught by Benke, in the device/system/method of Li, in order to provide a contactless means for detecting current that is less intrusive than ohmic means, minimizing the effect of said measurement on the measured signal.
Furthermore, Li in view of Benke, substantially teaches all of the elements disclosed above, except for explicitly mentioning the magnetic actuator whose position is detected, being a controller for a vacuum interrupter associated with a transformer in an electrical circuit.
Vacuum interrupters controlled by magnetic actuators are however, well known in the art. For example, Gentsch teaches in figure 1, a vacuum interrupter controlled by a magnetic actuator. The actuator switching positions so as to control the state of the vacuum interrupter (see col. 4, lines 3-12).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of magnetic actuators controlling vacuum interrupters as taught by Gentsch, in the device/system/method of Li in view of Benke, in order to gain the advantage of applying the method of detection to a vacuum interrupter, allowing a user to verify the position of the interrupter remotely.
Lastly, Li is silent about the inductance of the actuator being calculated at about 75% of the period. However, it appears that the choice of timing for calculating the inductance is aimed at optimizing the process by allowing for the parameters measured and used in the calculation inductance to settle, so as to avoid using fluctuating values. Such optimization of the calculation timing amounts to routine experimentation in a manner as to optimize the conditions of the method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to perform the calculation of inductance towards the end of the period of the voltage signal being applied (or about 75% of the period), in order to optimize the process by allowing for the parameters measured and used in the calculation of inductance to settle, so as to avoid using fluctuating values.
As to claim 18, Li teaches the system according to claim 16, wherein applying a voltage signal (Vcoil) includes applying a pulse width modulation (PWM) signal (outputted by PWM amplifier 74). Although Li is silent about the pulse width modulation signal having a duty cycle of 25%, and the period being 1.04ms, such optimization of the duty cycle and period duration amounts to routine experimentation in a manner as to optimize the conditions of the apparatus/method disclosed by the prior art. As MPEP 2144.05, section II explains:
In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”)
A person having ordinary skill in the art would have found it obvious to experiment with duty cycle percentages and period durations in order to achieve an optimal result from the calculations.
As to claim 20, the vacuum interrupter of Li in view of Benke and Gentsch, is associated with a transformer (any arbitrarily chosen transformer that is involved in the process of generating a current or voltage). The examiner notes the recitation “wherein the vacuum interrupter is associated with a transformer in an electrical circuit” doesn’t necessitate the presence of a transformer. The claim doesn’t require the vacuum interrupter to “comprise” a transformer, only that the vacuum interrupter is “associated with one”. As long as the prior art teaches in combination the vacuum interrupter recited in claim 16, and the vacuum interrupter is capable of being “associated” with a transformer, the prior art teaches the claim.
Conclusion
It’s noted that the prior art of record doesn’t teach alone or in combination the subject matter recited in claims 2, 12 or 17. However, the claims are rejected under 35 USC 112(a) and/or 35 USC 112(b) as explained above.
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.
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/RICHARD ISLA/Primary Patent Examiner, Art Unit 2858 December 17, 2025