DETAILED ACTION
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 .
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. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “switching element” in claims 3-4 and 7-8.
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.
The specification fails to clearly describe the corresponding structure of “switching element.” Note that the “switching element” is designated by reference numeral 53 as illustrated in Fig. 2. However, such is simply a schematic drawing and does not clearly delineate the structural metes and bounds of limitation as required under 35 U.S.C. 112(f). See corresponding rejections below under 35 U.S.C. 112(a) & (b).
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
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 3-4 and 7-8 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. “Switching element” has been interpreted under 35 U.S.C. 112(f) as set for the above. However, since the specification fails to describe the corresponding structure as required under the statute, Applicant has failed to demonstrate full possession of the metes and bounds of the invention as claimed.
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 1-8 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.
As per claims 3-4 and 7-8, claim limitation “switching element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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. 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.
In addition:
Claim 1 recites the limitation “to be…” in line 3 of the claim. This limitation appears to refer to an action to be performed in the future, rendering the metes and bound of the claim unclear. The Examiner suggests amending this limitation to read “configured to be…” in order to tie the limitation directly to the structure of the switch.
For the record, it is noted that claim 1 also recites the limitations “a voltage detection circuit to detect a voltage and output a voltage signal…” at line 5, and “a switch switching circuit to output” at line 7, and “a central processing unit to output…” at line 11. For purposes of examination, these limitations have been interpreted as the recites structure being configured to perform the respective function. However, as written it is unclear whether the structure should be understood as being “configured to” or “configurable to.” For purposes of clarity, the Examiner suggests Applicant amend each of these instances so that “to” is changed to “configured to”.
Claims 2-4 are also rejected since they depend from claim 1.
Claim 2 recites “a switch different from the switch.” The use of “switch” for both instances renders the claim unclear. The Examiner suggests amending claim 1 such that the recitation of “a switch” instead reads “a first switch,” (and the further recitation in claim 1 to read “the first switch”) and amending the limitation in claim 2 to read “a second switch different from the first switch.”
Claim 3 recites “a switch connected to the switching element.” It is unclear whether this switch recited in claim 3 is meant to be the same or different from the switch of claim 1. Appropriate clarification and correction are required.
Similar to claim 1, claim 5 recites the limitation “to be…” in line 3 of the claim. This limitation appears to refer to an action to be performed in the future, rendering the metes and bound of the claim unclear. The Examiner suggests amending this limitation to read “configured to be…” in order to tie the limitation directly to the structure of the switch.
Also similarly for the record, it is noted that claim 5 also recites the limitations “a voltage detection circuit to detect a voltage and output a voltage signal…” at line 5, and “a switch switching circuit to output” at line 7, and “a central processing unit to output…” at line 10. For purposes of examination, these limitations have been interpreted as the recites structure being configured to perform the respective function. However, as written it is unclear whether the structure should be understood as being “configured to” or “configurable to.” For purposes of clarity, the Examiner suggests Applicant amend each of these instances so that “to” is changed to “configured to”.
Claims 6-8 are also rejected since they depend from claim 5.
Claim 6 recites “a switch different from the switch.” The use of “switch” for both instances renders the claim unclear. The Examiner suggests amending claim 5 such that the recitation of “a switch” instead reads “a first switch,” (and the further recitation in claim 5 to read “the first switch”) and amending the limitation in claim 6 to read “a second switch different from the first switch.”
Claim 7 recites “a switch connected to the switching element.” It is unclear whether this switch recited in claim 7 is meant to be the same or different from the switch of claim 5. Appropriate clarification and correction are required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda (JP2018-105557 A).
As per claim 1, Ikeda discloses an air conditioner including an indoor unit 200 and an outdoor unit 1 (Figs. 1-2; etc.), the air conditioner comprising:
a switch 7 to be in one of a short-circuit state or a released state according to a switching signal to be supplied (para. 0003; Fig. 2; etc.);
a voltage detection circuit (9, 28) to detect a voltage and output a voltage signal indicating a voltage value obtained by the detection (Fig. 1);
a switch switching circuit 18 to output a switching signal for causing the switch to be in the released state in a case where a value indicated by the voltage signal output from the voltage detection circuit to the switch abnormally rises (para. 0014 re. voltage abnormally rises); and
a central processing unit 21 to output a driving signal for driving the switch switching circuit to the switch switching circuit, wherein
the switch 7, the voltage detection circuit (9, 28), and the switch switching circuit 18 are disposed in the outdoor unit 1 (Figs. 1-2; etc.), and
the voltage signal is output to the switch switching circuit without passing through the central processing unit (Fig. 1; etc.).
Ikeda does not explicitly teach the determination that the voltage abnormally rises involving comparison to a threshold. However, it is considered a simple control expedient that would have been obvious to one of ordinary skill in the art at the effective filing date of the application to compare the voltage to a threshold for the simple purpose of distinguishing between what is considered normal and what is considered abnormal.
As per claim 2, Ikeda further discloses the system further comprising a switch 8 different from the switch 7.
As per claim 5, Ikeda an air conditioner including an indoor unit 200 and an outdoor unit 1 (Figs. 1-2; etc.), a switch 7 to be in one of a short-circuit state or a released state according to a switching signal to be supplied (para. 0003; Fig. 2; etc.);
a voltage detection circuit (9, 28) to detect a voltage and output a voltage signal indicating a voltage value obtained by the detection (Fig. 1);
a switch switching circuit 18 to output a switching signal for causing the switch to be in the released state in a case where a value indicated by the voltage signal output from the voltage detection circuit to the switch abnormally rises (para. 0014 re. voltage abnormally rises); and
a central processing unit 21 to output a driving signal for driving the switch switching circuit to the switch switching circuit, wherein
the voltage signal is output to the switch switching circuit without passing through the central processing unit (Fig. 1; etc.).
Ikeda does not explicitly teach the determination that the voltage abnormally rises involving comparison to a threshold. However, it is considered a simple control expedient that would have been obvious to one of ordinary skill in the art at the effective filing date of the application to compare the voltage to a threshold for the simple purpose of distinguishing between what is considered normal and what is considered abnormal.
Also, Ikeda teaches wherein the switch 7, the voltage detection circuit (9, 28), and the switch switching circuit 18 are disposed in the being in the outdoor rather than the indoor unit. However, moving the components from the outdoor unit to the indoor unit would have been obvious to one of ordinary skill in the art at the effective filing date of the application as a simple rearrangement of existing parts that not affecting the basic functioning of the system.
As per claim 6, further comprising a switch 8 different from the switch 7.
Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda in view of Nevo (US 6522033 B1).
As per claims 3 and 7, Ikeda does not teach wherein the switch switching circuit includes a voltage comparator connected to the voltage detection circuit, a switching element that is connected to the voltage comparator and receives a signal from the voltage comparator, and a switch connected to the switching element. Nevo teaches a switching unit comprising a voltage comparator 21 connected to a voltage detection circuit, a switching element K that is connected to the voltage comparator and receives a signal from the voltage comparator, and a switch 30 connected to the switching element (col. 4, lines 16-27; Fig. 1; etc.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly provide these features to the switching circuit of Ikeda for the same purpose of effectively determining the voltage and controlling the opening/closing of the switch accordingly.
Allowable Subject Matter
Claims 4 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As per claims 4 and 8, there is no teaching or motivation in the art to further modify the system of Ikeda wherein in a case where the voltage comparator determines that a voltage indicated by the voltage signal output from the voltage detection circuit is an overvoltage, the voltage comparator is turned on, and even if the driving signal output from the central processing unit is a signal that turns on the switching element, the switching element is turned off.
Cited Prior Art
The following references not applied in the rejections above are considered pertinent to Applicant’s disclosed invention.
Evans et al. (US 2008/0054082 A1) teachers a climate control system including responsive controllers comprising outdoor unit controller 130, relays 62 &64, processor 60, voltage sensor 80, etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
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/MARC E NORMAN/Primary Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763