Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
1. This office action, in response to the amendment filed 3/4/2026, is a final office action.
Response to Amendment and Arguments
2. Claims 1 and 11 are amended to add additional limitations. Applicant’s remarks state Hofmeister does not disclose an intrinsically safe endpoint field device for receiving IS power as stated in the remarks on pages 7-9. The examiner agrees that Hofmeister does not disclose the claimed limitations. Paragraph 0024 of Hofmeister discloses gateway 102 is configured to be located within Zone 2, Division 2, or non-hazardous environment 112. Paragraph 0025 of Hofmeister discloses safe side circuitry 120 may… power the antenna 104 using power received from the non-intrinsically safe power source 128. Figure 2 shows the gateway 120 receiving the power from the NIS power source 128 and providing a hazardous side power circuit signal output 150. The previous rejections under 35 USC 103 are withdrawn.
3. Applicant states the previous double patenting rejection does not disclose the limitations of the claims on page 11 of the remarks. Applicant states Ocko fails to disclose redundant ports configured to enable network traffic separation for different traffic classifications and high availability. The examiner disagrees. Ocko discloses the network traffic routing device and method shown in figure 6. The network interface comprises a plurality of ethernet ports. The interface includes a plurality of Ethernet ports allowing for redundant network connections to both the production server and the network to which client systems are connected as stated in paragraph 0040. Paragraph 0040 further discloses the Ethernet ports are connected to a network processor, which can be any device adapted to examine and coordinate network communications traffic, that is used to analyze and route network packets. This processing will enable traffic separation since the traffic is separated and routed to different receivers. Applicant submits that Sadwick fails to disclose a digital isolator chip configured to galvanically isolate the galvanically isolated digital inputs and galvanically isolate digital outputs. However, the combination of references in the double patenting rejection discloses the recited features. As stated in the rejection, the device of the combination of the reference and Ocko discloses one or more galvanically isolated digital inputs coupled to the APL IP interface and configured for coupling one or more external digital circuits to the IS endpoint field device via the APL IP interface; and one or more galvanically isolated digital outputs coupled to the APL IP interface and configured for coupling the one or more external digital circuits to the IS endpoint field device via the APL IP interface in claim 11 of the reference. The combination of the reference and Ocko does not disclose a digital isolator chip for carrying out this isolation. Sadwick discloses an invention utilizing isolation techniques as stated in paragraph 0074. Sadwick states the present invention may also be isolated using other isolating techniques including but not limited to, optoisolators, optocouplers, digital isolators, digital galvanic isolators, digital to analog isolators, analog to digital isolators including but not limited to galvanic and/or optical isolation, etc. as stated in paragraph 0074. Sadwick discloses these isolating techniques can all be used as isolating techniques and are therefore interchangeable. The digital circuit comprising the digital galvanic isolators will constitute a digital isolator chip. The combination shows a digital isolator chip configured to isolate digital inputs and outputs. The double patenting rejections are stated below.
4. A new drawing objection is stated below.
Drawings
5. 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 recited an intrinsically safe (IS) endpoint field device, comprising “at least one Ethernet-APL switch” recited in claim 1 must be shown or the feature canceled from the claims. No new matter should be entered. Figure 2 shows the APL switch 214 and the endpoint field devices 210. However, figure 2 does not show the APL switch 214 is a component of the intrinsically safe endpoint field device as recited in claim 1. APL switch 214 is a component that is external to the field devices 210. The APL switch 214 is coupled to the IS bridge device 206 which is then coupled to the field devices 210. Therefore, figure 2 does not show the field device comprising at least one Ethernet-APL switch.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1, 3, 6, 7, 9-11, 13, 16, 17, 19 and 20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-12 and 17-21 of copending Application No. 18/484,027 (reference application) in view of Ocko et al (US 2012/0266234) in view of Sadwick (US 2019/0021154). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference disclose each of the recited limitations as well as additional limitations.
Regarding claim 1 of the instant application, the reference discloses the recited features in claims 1, 2, 10 and 11. Claim 10 recites comprising at least one physical APL 10BaseT1 port connecting the field device to an APL switch. Claim 2 discloses the IS field device comprises an IS APL connection providing power to the field device. The IS connection will provide the IS power. The reference discloses the device and method as stated above. The combination does not disclose at least one Ethernet-APL switch; and a plurality of redundant physical Ethernet-APL 10BaseT1L ports connecting the IS endpoint field device to an industrial network via at least one Ethernet-APL switch, the at least one Ethernet-APL switch coupled to the redundant ports and, the redundant ports configured to enable network traffic separation and high availability.
Ocko discloses the network traffic routing device and method shown in figure 6. The network interface comprises a plurality of ethernet ports. The interface includes a plurality of Ethernet ports allowing for redundant network connections to both the production server and the network to which client systems are connected as stated in paragraph 0040. Paragraph 0040 further discloses the Ethernet ports are connected to a network processor, which can be any device adapted to examine and coordinate network communications traffic, that is used to analyze and route network packets. This processing will enable traffic separation since the traffic is separated and routed to different receivers. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the plurality of Ethernet ports and systems of Ocko into the device and method of the reference to increase traffic flow and improve the function of the device. The combination of the reference and Ocko discloses a plurality of redundant physical Ethernet-APL 10BaseT1L ports connecting the IS endpoint field device to an industrial network via at least one Ethernet-APL switch, the redundant ports configured to enable network traffic separation and high availability.
The device of the combination of the reference and Ocko does not expressly disclose a digital isolator chip configured to galvanically isolate the galvanically isolated digital inputs and galvanically isolated digital outputs. Sadwick discloses an invention utilizing isolation techniques as stated in paragraph 0074. Sadwick states the present invention may also be isolated using other isolating techniques including but not limited to, optoisolators, optocouplers, digital isolators, digital galvanic isolators, digital to analog isolators, analog to digital isolators including but not limited to galvanic and/or optical isolation, etc. as stated in paragraph 0074. Sadwick discloses these isolating techniques can all be used as isolating techniques and are therefore interchangeable. The digital circuit comprising the digital galvanic isolators will constitute a digital isolation chip. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the different isolating techniques of Sadwick such as the digital isolators and the digital galvanic isolators for the isolation of the combination of the reference and Ocko. It is well known that digital circuits can provide higher data rates, lower power consumption and longer life than some other circuits.
Regarding claim 3, the combination discloses wherein the redundant ports are configured to enable network traffic separation based on different classifications of traffic from the industrial network to the IS endpoint field device (Ocko: Paragraph 0040: The interface includes a plurality of Ethernet ports allowing for redundant network connections to both the production server and the network to which client systems are connected. The Ethernet ports are connected to a network processor, which can be any device adapted to examine and coordinate network communications traffic, that is used to analyze and route network packets. Different classifications of traffic is separated based on the desired destination for the traffic.).
Regarding claim 6 of the instant application, the reference discloses the recited features in claim 1, 10, 11 and 18.
Regarding claim 7 of the instant application, the reference discloses the recited features in claim 8.
Regarding claim 9 of the instant application, the reference discloses the recited features in claim 9.
Regarding claim 10 of the instant application, the reference discloses the recited features in claim 10.
Regarding claim 11 of the instant application, the reference discloses the recited features in claims 12, 18, 21 and 10. Claim 10 recites comprising at least one physical APL 10BaseT1 port connecting the field device to an APL switch. Claim 18 discloses the IS field device comprises an IS APL connection providing power to the field device. The IS connection will provide the IS power. The reference discloses the device and method as stated above. The combination does not disclose the APL IP interface having a plurality of redundant physical Ethernet-APL 10BaseT1L ports, connecting at least one Ethernet-APL switch to the plurality of redundant physical Ethernet-APL 10BaseT1L ports connecting the APL IP interface to an industrial network via the plurality of redundant physical Ethernet-APL 10BaseT1L ports, the redundant ports configured to enable network traffic separation and high availability.
Ocko discloses the network traffic routing device and method shown in figure 6. The network interface comprises a plurality of ethernet ports. The interface includes a plurality of Ethernet ports allowing for redundant network connections to both the production server and the network to which client systems are connected as stated in paragraph 0040. Paragraph 0040 further discloses the Ethernet ports are connected to a network processor, which can be any device adapted to examine and coordinate network communications traffic, that is used to analyze and route network packets. This processing will enable traffic separation since the traffic is separated and routed to different receivers. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to combine the plurality of Ethernet ports and systems of Ocko into the device and method of the reference to increase traffic flow and improve the function of the device. The combination of the reference and Ocko discloses a plurality of redundant physical Ethernet-APL 10BaseT1L ports connecting the IS endpoint field device to an industrial network via at least one Ethernet-APL switch, the redundant ports configured to enable network traffic separation and high availability.
The method of the combination of the reference and Ocko does not expressly disclose a digital isolator chip configured to galvanically isolate the galvanically isolated digital inputs and galvanically isolated digital outputs. Sadwick discloses an invention utilizing isolation techniques as stated in paragraph 0074. Sadwick states the present invention may also be isolated using other isolating techniques including but not limited to, optoisolators, optocouplers, digital isolators, digital galvanic isolators, digital to analog isolators, analog to digital isolators including but not limited to galvanic and/or optical isolation, etc. as stated in paragraph 0074. Sadwick discloses these isolating techniques can all be used as isolating techniques and are therefore interchangeable. The digital circuit comprising the digital galvanic isolators will constitute a digital isolation chip. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the different isolating techniques of Sadwick such as the digital isolators and the digital galvanic isolators for the isolation of the combination of the reference and Ocko. It is well known that digital circuits can provide higher data rates, lower power consumption and longer life than some other circuits.
Regarding claim 13, the combination discloses wherein the redundant ports are configured to enable network traffic separation based on different classifications of traffic from the industrial network to the IS endpoint field device (Ocko: Paragraph 0040: The interface includes a plurality of Ethernet ports allowing for redundant network connections to both the production server and the network to which client systems are connected. The Ethernet ports are connected to a network processor, which can be any device adapted to examine and coordinate network communications traffic, that is used to analyze and route network packets. Different classifications of traffic is separated based on the desired destination for the traffic.).
Regarding claim 16 of the instant application, the reference discloses the recited features in claim 18.
Regarding claim 17 of the instant application, the reference discloses the recited features in claim 19.
Regarding claim 19 of the instant application, the reference discloses the recited features in claim 20.
Regarding claim 20 of the instant application, the reference discloses the recited features in claim 17. The layer 0 device is an edge device.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Claims 4, 5, 9, 14, 15, 19, 21 and 22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-12 and 17-21 of copending Application No. 18/484,027 (reference application) in view of Ocko et al (US 2012/0266234) in view of Sadwick (US 2019/0021154) further in view of Garcia et al (US 2022/0263717). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference disclose each of the recited limitations as well as additional limitations.
Regarding claims 4, 5, 14, 15, 21 and 22, the combination of the reference, Ocko and Sadwick discloses the device and method stated above. The combination does not disclose connecting the APL IP interface to an industrial network via at least one Ethernet-APL switch and supplying Power over Data Lines (PoDL) to the APL IP interface via the at least one Ethernet-APL switch and wherein connecting the APL IP interface to the industrial network via the at least one Ethernet-APL switch comprises connecting the APL IP interface connects to the at least one Ethernet-APL switch via two-wire intrinsically safe Ethernet (2-WISE) 10BaseT1L.
Garcia discloses two wire Ethernet network has in particular the property that both power and data can be transmitted via the two wire cable. All field switches connected to a power switch and in turn all subscriber devices connected to these field switches define a two wire Ethernet network. The field switch is intrinsically safe as stated in paragraph 0008. Paragraph 0009 discloses the two wire Ethernet network has a specified protocol and one or more different higher level network protocols above the physical layer protocol specified for these network protocols, e.g., an APL (Advanced Physical Layer). Paragraph 0019 discloses An APL based Ethernet system is formed. APL is standardized in IEEE 802.3cg (10BASE-T1L) and is applicable to both simple and complex sensors with two wire feeding.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Garcia into the device and method of the combination of the reference, Ocko and Sadwick. Utilizing the standard will allow the device and method to perform well in most environments and minimize errors and other issues.
Regarding claims 9 and 19, the combination of the reference, Ocko and Sadwick discloses the device and method stated above. The combination does not disclose wherein the industrial network protocols are configured to operate the IS endpoint field device as an OPC-UA/FX server with publish/subscribe support for OPC-UA/FX clients.
Garcia discloses two wire Ethernet network has in particular the property that both power and data can be transmitted via the two wire cable. All field switches connected to a power switch and in turn all subscriber devices connected to these field switches define a two wire Ethernet network. The field switch is intrinsically safe as stated in paragraph 0008. Paragraph 0009 discloses the network protocols of the higher layers of the OSI model are Ethernet protocols such as OPC-UA. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the Ethernet protocol for the Ethernet network such as OPC-UA as taught by Garcia in the Ethernet network in the device and method of the combination of the reference, Ocko and Sadwick. Using known Ethernet protocols will reduce the costs and complexity of the device and method.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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 KEVIN M. BURD whose telephone number is (571)272-3008. The examiner can normally be reached 9:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chieh Fan can be reached at 571-272-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M BURD/Primary Examiner, Art Unit 2632 5/18/2026
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