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 .
Response to Arguments
Applicant’s arguments, see Pre-Appeal Brief filed 1/20/2026, have been fully considered and are persuasive. All of the prior rejections have been withdrawn.
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 16-20, 22-23, 25-26, 37-39 and 42-43 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.
Claim 16 recites the limitations "the first data flow signal" and “the data flow signal” It is unclear whether these relate to the same signal. For the purposes of examination, examiner will interpret “the data flow signal” as “the first data flow signal.”
Claim 16 requires “the first OR-gate adapted to supply the first data flow signal from the communication circuit to the overvoltage protector in response to the value not exceeding the threshold value to transfer the data flow signal from the mobile part to the primary conductor system, the first OR-gate adapted to activate the overvoltage protector in response to the value exceeding the threshold value”.
However, an OR gate operates such that the output is high when any one of its inputs is high regardless of the state of the other inputs. This appears to teach away from the recited limitation above. Clarification is requested as to how the output of an OR gate can perform the recited functionality based solely on its claimed inputs and output.
For the purposes of examination, Examiner will interpret “the first OR-gate” to be identical in scope to “a first logic circuit including an OR gate”.
Claims 16-20, 22-23, 25-26, 37-39 and 42-43 recite “and/or”. However, it is unclear what is meant by this term since “or” encompasses the scope of “and”. For the purposes of examination, Examiner will interpret all instances of “and/or” as “or”.
For claims 28-29, Examiner believes that the term “actuator” is being interpreted outside of its ordinary meaning (i.e., a device that converts energy into motion). See page 11 of Applicant’s Specification where a controller is used as an actuator.
For the purposes of examination, Examiner will interpret the scope of “actuator” in the claims to be identical to “circuit element”.
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.
Claim(s) 16-26, 28-29, 34-44 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al (US 2020/0274402).
For claim 16, Hwang teaches an installation (Figures 1 and 5), comprising:
a primary conductor system (1, Figure 1);
a mobile part (C2, L2, M1-M4 , Figure 5) movable relative to the primary conductor system ([28]) and including a secondary winding (L2) connected to capacitors (Covp, Cm), forming an oscillating circuit (as understood by examination of Figure 5), the primary conductor system adapted to inductively transfer electric power to the secondary winding of the mobile part (as understood by examination of Figure 1);
a first comparison device (271);
a sensor (2700, 2702) adapted to capture a value of a physical variable (voltage) arranged on the mobile part (VRECT) and adapted to provide a signal to the first comparison device (at the non-inverting input), the first comparison device adapted to generate an output signal (CLAMP1) depending on a result of a comparison of the value with a threshold value (VREFL);
an overvoltage protector of the mobile part (M1, M2) adapted to be activated and/or deactivated depending on an actuation signal (COMM_mod);
a communication circuit (circuit not shown which generates COMM_IN) adapted to generate a first data flow signal (COMM_IN) to be transferred from the mobile part to the primary conductor system ([29]);
a first logic gate adapted to generate the actuation signal (273), the first logic gate including a first input connected to the communication circuit and a second input connected to the first comparison device sensor (as understood by examination of Figure 5), the communication circuit adapted to supply the first data flow signal to the first input of the first logic gate (as understood by examination of Figure 5), the first comparison device sensor adapted to supply the output signal to the second input of the first logic gate (as understood by examination of Figure 5), the first logic gate adapted to supply the first data flow signal from the communication circuit to the overvoltage protector in response to the value not exceeding the threshold value to transfer the data flow signal from the mobile part to the primary conductor system (as understood by examination of Figure 5), the first logic gate adapted to activate the overvoltage protector in response to the value exceeding the threshold value (as understood by examination of Figure 5).
Hwang fails to teach that the first logic gate is an OR gate.
However, examiner takes official notice that one having ordinary skill would understand that a functionally equivalent circuit for an AND gate can be made by an OR gate having inverted inputs and an inverted output.
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to substitute Hwang’s AND gate 273 with a first inverter, second inverter, third inverter and an OR gate as recited above since the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
For claim 17, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the primary conductor system includes a primary wining and/or a primary conductor (10) arranged in an elongated manner in the installation (as understood by examination of Figure 1).
For claim 18, modified Hwang teaches the limitations of claim 16 as cited above but fails to teach the specific frequency as claimed.
However, any person having ordinary skill in the art who knows that the claimed ranges can be easily set by selecting specific values for the elements of Figures 1 and 5.
Thus, before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to set Hwant’s alternating current frequency within the claimed ranges since creating the claimed relationships would only involve routine "design optimization", which has been held to be within the ordinary capabilities of a person having ordinary skill in the art. Applicant should note In re Aller, 105 USPQ 233 (1955) where it was held that optimizing particular values is obvious to a person of ordinary skill in the art (who would easily be able to set different values within the range of possible values in order to arrive at the best value by simple experimentation). Note also that the Aller holding is consistent with the Supreme Court decision in KSR International v. Teleflex, Inc., 82 USPQ2d 1385 (2007) which also discussed the obviousness of "design optimization" where a reference is silent on such optimized values.
Also, note MPEP 2144.05-II-A and 2144.05-III-A which state:
In re Williams, 36 F.2d 436, 438 (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.”).
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)…+
… In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) (“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”)
For claim 19, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the physical variable includes temperature, voltage, and/or current (voltage, see rejection of claim 16 above).
For claim 20, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
a voltage provided to the primary conductor system and/or current impressed into the primary conductor system is modulated with a second data stream ([28]).
For claim 21, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
a voltage provided to the primary conductor system is modulated with a second data stream for transfer of a second data stream from the primary conductor system to the mobile part ([5], [28]).
For claim 22, modified Hwang teaches the limitations of claim 20 as cited above and further teaches:
the second data stream is filtered out and/or demodulated from a curve of a current flowing through the secondary winding captured by a sensor or from a curve of a level for voltage induced in the secondary winding or for a voltage occurring at the oscillating circuit captured by a sensor ([5], [28]).
For claim 23, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the overvoltage protector of the mobile part includes a controllable switch and/or a triac adapted to detune the oscillating circuit and/or short circuit at least a partial region of the oscillating circuit (M1, M2).
For claim 24, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the capacitors are connected in series with the secondary winding to form a series circuit (as understood by examination of Figure 5).
For claim 25, modified Hwang teaches the limitations of claim 24 as cited above and further teaches:
an AC/DC converter (four diodes within 2) having a DC-side connection (right side) and an AC-side connection (left side), and a smoothing capacitor connected in parallel to the DC-side connection (CRECT), the series circuit arranged and/or connected at the AC-side connection of the AC/DC converter, the DC-side connection adapted to feed a consumer (via Vout).
For claim 26, modified Hwang teaches the limitations of claim 23 as cited above and further teaches:
the partial region is determinable and/or determined by a connecting element including a variably equipable bridge, a switch, and/or a bridge equipped on a printed circuit board (as understood by examination of Figure 5).
For claim 28, modified Hwang teaches the limitations of claim 23 as cited above and further teaches:
the mobile part includes an actuator (circuit which generates OVP_CTR) adapted to feed an actuation signal to the controllable switch (OVP_CTR), the actuator being connected to one or more sensors ([35]).
For claim 29, modified Hwang teaches the limitations of claim 23 as cited above and further teaches:
the actuator is adapted to generate the actuation signal dependence on a values of physical variables of the mobile part captured by the sensor (voltage, as understood by examination of Figure 5 and [35]).
For claim 34, modified Hwang teaches the limitations of claim 25 as cited above and further teaches:
the sensor is adapted to capture a value of a voltage applied at the DC-side or AC-side connection of the AC/DC converter (as understood by examination of Figure 5).
For claim 35, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the sensor is adapted to detect a value of current flowing through the secondary winding (via the voltage corresponding to the current, as understood by examination of Figure 5).
For claim 36, modified Hwang teaches the limitations of claim 24 as cited above and further teaches:
the sensor is adapted to capture a value of the current entering or exiting the DC-side connection of the AC/DC converter (via the voltage corresponding to the current, as understood by examination of Figure 5).
For claim 37, modified Hwang teaches the limitations of claim 24 as cited above and further teaches:
the actuator has a second comparison device (circuit which generates OVP_CTRL) adapted to compare a value of a physical variable of the mobile part captured by the sensor with a threshold value ([35]), the actuator adapted to generate the actuation signal for the controllable switch in dependence on an output signal of the second comparison device and/or in dependence on a result of the comparison (as understood by examination of Figure 5).
For claim 38, modified Hwang teaches the limitations of claim 24 as cited above and further teaches:
the actuator is adapted to monitor a value of a physical variable of the mobile part (voltage) captured by the sensor for exceeding of an impermissible level of deviation from a setpoint value ([35]), and the actuator is adapted to generate an actuation signal for the controllable switch in dependence on an output signal of the monitoring and/or in dependence on a result of the monitoring ([35]).
For claim 39, modified Hwang teaches the limitations of claim 24 as cited above and further teaches:
the actuator is adapted to monitor for an impermissibly high level of deviation from a functional relationship and/or a proportionality of values captured by the sensor ([35]).
For claim 40, modified Hwang teaches the limitations of claim 39 as cited above and further teaches:
the actuator is adapted to generate an actuation signal for the controllable switch in dependence on a result of the monitoring (OVP_CTRL).
For claim 41, modified Hwang teaches the limitations of claim 39 as cited above but fails to teach a second OR gate as claimed.
However, Examiner takes official notice that a two input OR gate can provide the same function as an inverter if one of the inputs is permanently tied low.
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to implement the inverters used within the equivalent AND gate discussed in the rejection of claim 1 using an OR gate as cited above since the particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The modified version of Hwang as defined above teaches:
a second OR-gate (OR gate used to implement one of the inverters which invert the input signal to the first OR gate) adapted to feed an output signal to the first OR-gate.
For claim 42, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
a method of operating an installation as recited in claim 16, in which electrical power is transferrable from a primary conductor system of the installation to a secondary winding of a mobile part of the installation (as discussed in the rejection of claim 16 above), the mobile part being movable relative to the primary conductor system (as understood by examination of Figures 1 and 5), the secondary winding being connected to capacitors to form an oscillating circuit that feeds a rectifier having an output voltage that is supplied to a consumer (as understood by examination of Figures 1 and 5), comprising:
capturing values of physical variables of the mobile part (voltage);
monitoring the captured values for an impermissibly high level of deviation from a functional relationship and/or from a proportionality (via a threshold); and
depending on a result of the monitoring, detuning the oscillating circuit and/or short-circuiting at least a partial region of the oscillating circuit (as understood by examination of Figure 5).
For claim 43, modified Hwang teaches the limitations of claim 16 as cited above and further teaches:
the detuning and/or the short-circuiting includes supplying an activation pulse to a triac that places the triac into a conducting state, and by a frequency of an alternating current impressed into the primary conductor system being so high that the triac only transitions to a blocking state after an effective current value of the alternating current has disappeared (due to the use of “or” in claim 42, this limitation is being applied to the “short-circuiting” while Hwang teaches detuning).
For claim 44, modified Hwang teaches the limitations of claim 42 as cited above but fails to teach the specific frequency as claimed.
However, any person having ordinary skill in the art who knows that the claimed ranges can be easily set by selecting specific values for the elements of Figures 1 and 5.
Thus, before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to set Hwant’s alternating current frequency within the claimed ranges since creating the claimed relationships would only involve routine "design optimization", which has been held to be within the ordinary capabilities of a person having ordinary skill in the art. Applicant should note In re Aller, 105 USPQ 233 (1955) where it was held that optimizing particular values is obvious to a person of ordinary skill in the art (who would easily be able to set different values within the range of possible values in order to arrive at the best value by simple experimentation). Note also that the Aller holding is consistent with the Supreme Court decision in KSR International v. Teleflex, Inc., 82 USPQ2d 1385 (2007) which also discussed the obviousness of "design optimization" where a reference is silent on such optimized values.
Also, note MPEP 2144.05-II-A and 2144.05-III-A which state:
In re Williams, 36 F.2d 436, 438 (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.”).
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)…+
… In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) (“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”)
For claim 46, modified Hwang teaches the limitations of claim 39 as cited above but fails to teach a second OR gate as claimed.
However, Examiner takes official notice that a two input OR gate can provide the same function as an inverter if one of the inputs is permanently tied low.
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to implement the inverters used within the equivalent AND gate discussed in the rejection of claim 1 using an OR gate as cited above since the particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The modified version of Hwang as defined above teaches:
a second OR-gate (OR gate used to implement one of the inverters which invert the input signal to the first OR gate) adapted to feed an output signal to the first OR-gate.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faveluke (US 6,469,907).
For claim 27, modified Hwang teaches the limitations of claim 23 but fails to teach an SMD.
Faveluke teaches a transistor including a SMD component arranged on a PCB having a metal carrier on which a thermally conductive insulation layer is disposed, on a side facing away from the metal carrier, conductive tracks for contacting the SMD component are disposed on the insulation layer (col. 1, lines 23-37).
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to implement Hwang’s switches such that they include SMD component arranged on a PCB as claimed since the particular known technique of implementing a transistor was recognized as part of the ordinary capabilities of one skilled in the art, as evidenced by Faveluke.
Allowable Subject Matter
Claims 30-33 and 45 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL CALRISSIAN PUENTES whose telephone number is (571)270-5070. The examiner can normally be reached M-F 9-6:30 (flex).
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, Taelor Kim can be reached at (571) 270-7166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C PUENTES/Primary Examiner, Art Unit 2836
Prosecution Insights