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
Applicants' arguments filed January 20, 2026 have been fully considered but they are not persuasive.
“The reply by the applicant [] must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office Action.” 37 CFR 1.111(b) (emphasis added). The Applicants state that the claim have been amended to address the 112 rejections, but there is no corresponding explanation to distinctly point out how. The minor amendment to claim 1 (adding a microprocessor) does not address the substance of the 112(b) rejection. The claim is indefinite because it is unclear how claim 1 can both claim the combiner box and how it controls its internal structure while also omitting the recitation of that internal structure. This rejection cannot be overcome without addressing it and explaining how the scope of the claim satisfy the “particularly point out and distinct claim” requirements of §112(b).
Regarding the art rejection, “if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case.” MPEP §2145. The Applicants’ comments regarding the obviousness rejection does not satisfy this burden. The Applicant conclude that “Neither reference teaches or suggests a combiner box that interfaces between a grid and EVSE” (Remarks, page 6) without acknowledging that the grid and EVSE aren’t claimed. The claim is limited to the combiner box – what it is intended to be connect between is not further limiting to its structure. “providing grid power is available” does not require that the combiner box has any interface to the grid. At best it is a sensor output. “send a signal” does not require that the combiner box has any interface to the EVSE. At best the claim ends at the transmission of the signal/data (signal reception is not a claimed limitation).
The Applicants then provide a quotation of the entirety of claim 1 (Remarks, pages 6-7). Quoting the entire claim is not an argument that points out any supposed errors. The remarks do not acknowledge, let alone address and rebut, any of the claim interpretations made by the Examiner.
The Applicants then contend that “Zhang also does not disclose a controller configured in this manner, as its switching [] occurs automatically through relay operation” (Remarks, page 7). This position has no merit, as Zhang paragraph 4 explicitly discloses a control device to control when the individual converters are activated or deactivated. This control device is a generic “microprocessor arrangement”, as claimed.
The Applicants contend that Zhang “does not involve sending any signal to [EVSE].” (remarks, page 7). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The entire purpose of the obviousness rejection is to modify Zhang, with the teachings of Hsieh, to include this outgoing signal.
Regarding claim 15, Zhang does disclose a microprocessor arrangement to control when its converters are disabled and enabled (par 4).
The Applicants do not separately argue for the patentability of the dependent claims.
The art rejections are maintained.
The objection to the title is withdrawn. The §112(b) rejections of claims 4-5 and the §112(d) rejection of claim 9 are withdrawn.
Election/Restrictions
Amended claim 9 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the claim has been amended to recite the EVSE, which creates a “system” (both the combiner box and the EVSE) that defines Invention II (elected without traverse).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 9 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 1-9 rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: how the combiner box is “configured”.
Claim 1 only recites a generic microprocessor. The claim lists an intended a source (grid), an intended load (EVSE) and the hypothetical functionality of controlling four converters. None of the combiner box structure is claimed (namely how its converters are connected to the box input and output). What an EVSE does with the signal (enable/disable converters, power a home energy system) does not further limit the structure of the combiner box itself. There is no indication in the claim of what structure is required to make the combiner box actually configured as claimed to provide any useful circuit.
First, the grid power is not claimed. The claim only requires that the combiner box completes a function “provided grid power is available”. There are no electrical connections of the combiner box to the grid (or any AC source) and no sensors or data inputs to receive an indication that grid power is available. The grid power (available or not) is not used or connected to any part of the rest of the system. It's just that some functionality (that does not have corresponding structure to realize it actually happening) just needs to be somehow “available”.
Second, the claim is silent as to how the combiner box routs grid power to the EVSE during normal times. The combiner box does not have any power inputs or outputs to illustrate how it routes power between the grid and EVSE (see applicants’ fig s1-2). The claim is limited to a microprocessor enabling or disabling converters, but the converters aren’t connected to anything and don’t provide their power to anywhere. The claimed control over the combiner box converters is meaningless if they are just random converters with no outputs.
Third, the “send a signal” limitation is omitting any structural details. The combiner box is not defined as having any communication circuitry. And, even if it did, the substance of an outgoing signal is not a structural limitation for how the signal was created.
Fourth, what an intended destination does with the signal does not further limit the structure of the combiner box itself. That the EVSE has a reserve power source or that this reserve power source is “configured to provide power to start the home energy system” and the timing for “when” this happens is irrelevant – it is a description of an unclaimed component that has no discernable electrical connection to the combiner box itself (receiving the signal is not the same as defining electrical connections between the grid, converters, and vehicle).
The Applicants do not dispute any of these findings or interpretations; thus, they are presumed to be correct.
Claims 2-9 are similarly rejected as they depend from, and inherit the deficiencies of, claim 1.
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.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (US 2022/0376548) in view of Hsieh (US 2020/0379536).
With respect to claim 1, Zhang discloses a home energy system (intended use limitation that does not breathe life into the claim)(fig 1-3; page 1) comprising:
a combiner box (figure 1) including a microprocessor arrangement (par 4, “control device”) configured to, provided grid power (from 111) is available to the combiner box and the combiner box is connected with electric vehicle supply equipment, disable a main power converter (AVR1, 13 and/or 14 are a “main” converter – they are disabled in par 7) of the combiner box, enable a reserve power converter of the combiner box (16 is enabled; par 7),
wherein the reserve power source (not claimed) is configured to provide power to start the home energy system when the grid power is unavailable (the Zhang battery/reserve is sized to satisfy its designer’s load needs – thus, it is “configured to provide power” an undefined load, as claimed).
The scope of the claim is limited to the combiner box itself. The “home energy system”, the use of “system” and the electric vehicle supply equipment (EVSE) are not distinct claimed limitations. Additionally, the reserve power source is not a distinct claimed limitation (even though it appears to be intended as part of the combiner box). The structure within the body of claim 1 is directly entirely to the combiner box and its processor (output control to enable a reserve converter, output control to disable a main converter, send a signal). MPEP §2111.02(II).
The home energy system is an intended use limitation. It is mentioned in the body, but only as a description as the load that is intended to be powered by the reserve power source (which is also not claimed). The home energy system has no connection or relationship to the combiner box itself. It is mentioned only as a sizing/scaling description of how big/small the unclaimed reserve source should be (sufficiently large to start the system). Thus, the presence of “home energy system” in the body of the claim does not overcome the intended use analysis.
Further, the use of “system” in the preamble is a misnomer, as the claim is directed to one device (the combiner box). None of the grid, the EVSE, or the home are being claimed. Thus, there claim is not directed to a plurality of different devices to create a “system”.
The EVSE is external to the combiner box. It would appear that it would be connected downstream of the combiner box (see Applicants’ figs 1-2), to receive output power from the combiner box, but the claim does not recite this (despite the Examiner’s notice that such structure is missing). The claim does not recite “an EVSE” as an introductory clause, as the Applicants have indicated they intend to do for the structure over which they are seeking patent protection (see line 2 of claim 1- “a combiner box configured to…”). The language of the claim indicates that the EVSE is the intended destination for the signal. But the structure of the combiner box would end at the transmission/outputting of this signal – this structure is not affected by where the signal goes, how it is received/demodulated, or any actions its message induces. Describing the intended effect of the signal on the EVSE does not require that the EVSE is distinctly claimed. Effectively, the send half of the claim (everything after “send a signal” in line 5) is unclaimed intended use language.
Further support for this interpretation is found in the use of “such that”, which is descriptive of an effect (not limiting structure). This interpretation was presented during the Restriction Requirement (5/29/25) and in the Non-Final (8/7/25) and has not been addressed or rebutted. Thus, it is presumed to be a correct interpretation of the intended scope of the claim. Also, to interpret claim 1 as including the EVSE would make the system part of Group 1 (not elected without traverse).
Zhang discloses a combiner box (with a control device / microprocessor arrangement) that is configured to complete two of the three recited actions. Provided the utility power is available, it disables at least three converters (AVR1, 13, 14). Any one of these can be considered as a “main” converter. The claim simply lists the name of the converter without defining where it is, what it does or how to build it. Next, Zhang enables a reserve converter (16). This is used to recharge the battery 12. The claim does not recite what the reserve converter is connected to or where its output power is routed. That the reserve power source is “configured to power” an unclaimed home energy system is not a structural limitation that explicitly defines how the reserve converter is connected within the combiner box and how the combiner box is connected within a system. All of these interpretations were presented in the Non-Final and have not been addressed or rebutted. Thus, they are presumed to be correct. Adding a “microprocessor device” to the claim does not distinguish over Zhang’s control device (par 4) that is responsible for coordinating the enable/disable timing of the three converters.
Furthermore, the claim does not clearly recite which component is completing the converter control (is it the combiner box or the microprocessor). Claim 2 recites “the combiner box is further configured to … enable the main power converter”. This indicates that the combiner box, as a whole, is in charge of converter operation (not the microprocessor). This makes the microprocessor useless – its only requirement is to be physically present. Zhang discloses this.
Zhang does not expressly disclose its combiner box sends a signal (the third action). Hsieh discloses a combiner box that sends a signal (fig 4; via any one or more of 217, 218 and/or 219; par 40) to an external device to inform that device of the status of the combiner box. When combined, the Zhang microprocessor arrangement would use Hsieh’s communication circuitry to send a “signal” about which Zhang converter is operational.
What receives the signal, how it is received and what is done with the information contained within the signal is irrelevant and does not further limit the structure of claim 1. Any structure or functionality regarding signal reception is outside the scope of the claim as it is not part of how the combiner box is structurally configured. This unclaimed functionality includes: disable a main converter of the EVSE, enable a reserve converter of the EVSE, “and power from a reserve power source of the combiner box … flows to the [EVSE]”.
The combination’s combiner box is interpreted as sending the (Hsieh) signal to an unclaimed EVSE. Again, the destination of the signal has no narrowing structural effect on the combiner box apparatus. The combination obviously teaches that its signal is “such that a main power converter of the electric vehicle supply equipment is disabled, a reserve power converter of the electric vehicle supply equipment is enabled, and power from a reserve power source of the combiner box [] flows to the electric vehicle supply equipment”. These phrases are descriptive of what the Applicants intend to do with the signal and are not limiting to the structure of the combiner box.
Zhang and Hsieh are analogous to the claimed invention because they are from the same field of endeavor, namely combiner boxes. The two references disclose uninterruptible power supplies (UPS), which is analogous to a combiner box (they box input power from multiple sources and control the distribution of power within and to an output). At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Zhang to include an output signal, as taught by Hsieh. The motivation for doing so would have been to share information about the status of the system. An external viewer (human or machine) would not be able to understand the inner operational state of the Zhang combiner box without receiving information (i.e. a signal) from the box.
With respect to claim 2, Zhang discloses the combiner box is further configured to, after the power flows to the electric vehicle supply equipment, enable the main power converter of the combiner box (par 9 – AVR1 is enabled) and disable the reserve power converter of the combiner box (par 9, last sentence). The Zhang modes can occur in any order. The claim only broadly recites “after” – there is no causal or timing relationship in the claim.
With respect to claim 3, the combination teaches the combiner box is further configured to, after the power flows to the electric vehicle supply equipment, send a signal (see art rejection of claim 1) to the electric vehicle supply equipment such that (same “such that” analysis as in claim 1 applies here) the main power converter of the electric vehicle supply equipment is enabled (not claimed – not a distinct limitation), the reserve power converter of the electric vehicle supply equipment is disabled (not claimed not a distinct limitation), and the power from the reserve power source of the combiner box no longer flows to the electric vehicle supply equipment (not claimed – no actual EVSE being claimed let alone any electrical connection between components).
As discussed above in the art rejection of claim 1, Hsieh discloses outputting a signal about the status of the Zhang combiner box. What is done with this information is arbitrary – it does not affect the structure of how the combiner box itself is configured.
With respect to claim 5, Zhang discloses the reserve power source (12, 16) is a battery (the Zhang battery is interpreted as included within the reserve power source).
With respect to claim 6, the combination teaches the Zhang microprocessor arrangement is modified by Hsieh to be configured to send a signal related to voltage or current of the power (Hsieh par 40 – any of the three signals would be “regarding” the voltage/current of the power sensed at 215).
With respect to claim 7, the combination teaches the Zhang microprocessor arrangement is modified by Hsieh to be further configured to send a signal related to ambient temperature (Hsieh par 40 - any of the three signals would be “regarding” the temperature sensed at 214).
Regarding claims 7-8, the claims do not explicitly recite the presence of any sensors. Nor do the claims explain how the microprocessor knows what the voltage, current or temperature is. Lastly, the claims do not explain what it means for transmitted information to be “regarding” these parameters. “regarding” implies that the information is not the actual sensed value, but the claim doesn’t explain what it would be or how it is derived from current, voltage or temperature.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Hsieh and Raaijmakers (US 2021/0385095).
The combination of Zhang and Hsieh teaches the system of claim 1 and Zhang disclose the reserve power source (16). The combination does not expressly disclose Power over Ethernet. Raaijmakers teaches that it is known to supply power to an EVSE via Power over Ethernet (fig 2; par 24, 46).
Zhang and Raaijmakers are analogous to the claimed invention because they are from the same field of endeavor, namely power supplies. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to modify Zhang to include PoE, as taught by Raaijmakers. The motivation for doing so would have been to use a known technology (power over ethernet) for its intended purpose (to provide power).
As discussed above, the reserve power source isn’t distinctly claimed and there is no explicit interconnection of components (the combiner box main/reserve converters aren’t electrically connected to each other or to any common point – the EVSE [and its converters] isn’t claimed at all). Simply adding PoE for two components that do not have any clearly defined relationship to the claim 1 combiner box would have been an obvious modification of the prior art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Hsieh and Williamson (US 5,513,088).
Zhang discloses the two converters, but does not expressly disclose they are switch mode power supplies (SMPS). Williamson discloses that it is known to use SMPS in a combiner box (i.e. a UPS) (see at least col. 2, lines 5-42). Zhang and Williamson are analogous to the claimed invention because they are from the same field of endeavor, namely combiner boxes with internal converters. At the time of the earliest priority date of the application, it would have been obvious to one skilled in the art to substitute the Williamson SMPS for any/all of the Zhang converters. The motivation for doing so would have been to take advantage of the known and established benefits of an SMPS converter.
Claim 8 simply names the type of converter. The claim does not remedy the breadth of claim 1 by actually reciting how the converters are connected (no inputs, no outputs, no indication regarding if they are connected in series/parallel or completely separate).
Claims 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Williamson.
With respect to claim 15, Zhang discloses a combiner box (fig 1-3; page 1) comprising:
main (any one or more of AVR1, 13, 14) and reserve (16) power supplies;
a battery (12) configured to provide power to start a home energy system that includes the combiner box; and
a microprocessor programmed to (par 4), while grid power is available to the combiner box and the combiner box is connected with electric vehicle supply equipment (not claimed), disable the main switch mode power supply (par 7), enable the reserve switch mode power supply (par 7), and then supply power from the battery to the electric vehicle supply equipment (via output 112).
Zhang does not expressly disclose the main/reserve power supplies are SMPS. Williamson teaches the known use of SMPS in combiner boxes and the references are analogous, as discussed above in the art rejection of claim 8.
Claim 15 (like claim 1) is limited in scope to the combiner box itself. The claim recites that the battery is “configured to provide power to start a home energy system” – but the battery is just a battery. Naming an intended destination does not further narrow the scope/structure of the battery nor does it explicitly introduce the home energy system (or any connection to the home energy system) into the claim. For example, a AA battery retains its structure regardless of where is it being used (or if it isn’t being used).
Regarding the EVSE, the existence and connection of this component does not further narrow the structure of the microprocessor. The Zhang microprocessor controls its combiner box to output power and, therefore, if one skilled in the art were to add an EVSE, then the Zhang combiner box would provide power to an EVSE (adding a specific load to the output is not a modification of the combiner box itself).
With respect to claim 17, Zhang discloses the microprocessor is further programmed to enable the main switch mode power supply and disable the reserve switch mode power supply provided that parameters derived from the power are within predefined ranges (par 9). The Zhang modes are only operated when specific conditions for each mode are present. The claim only broadly states “parameters [] are within predefined ranges”. There are no sensors, comparators or any actual named ranges within the claim.
With respect to claim 18, Zhang discloses the battery is a 12V battery (item 12 is powered by the auxiliary power source 121, which can provide 12v; see par 6).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Williamson and Raaijmakers.
The references combine to disclose PoE to an unclaimed EVSE, and the references are analogous, as discussed above in the art rejection of claim 4.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Williamson and Hsieh.
The references combine to disclose the signal is “regarding” voltage, current and temperature, and the references are analogous, as discussed above in the art rejection of claims 6-7.
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.
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/ADI AMRANY/Primary Examiner, Art Unit 2836