DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments/amendments filed Mar. 17, 2026 have been fully considered.
Double Patenting
2. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
3. Claims 1 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13, 18, 19 and 20 of copending Application No. 18/740,872 (US 2025/0385526), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1 and 5-8 are anticipated in the claims 13, 18, 19 and 20 of the copending application, respectively.
Regarding claim 1, please refer to claims 13 and 18;
Regarding claim 5, please refer to claims 13, 18 and 19;
Regarding claim 6, please refer to claims 13 and 18-20;
Regarding claim 7, please refer to claims 13 and 18-20; and
Regarding claim 8, please refer to claims 13 and 18-20.
4. Claims 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 10-12 of copending Application No. 18/740,872 (US 2025/0385526), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 14-16 are anticipated in the claims 1, 2 and 10-12 of the copending application, respectively.
Regarding claim 14, please refer to claims 1, 2 and 10;
Regarding claim 15, please refer to claims 1, 2, 10 and 11; and
Regarding claim 16, please refer to claims 1, 2 and 10-12.
5. Claims 2 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 10-12 of copending Application No. 18/740,872 (US 2025/0385526) in view of Somani et al. (2017/0005473) (hereinafter “Somani”).
Regarding claim 2, the claims 13 and 18 of the copending application discloses the connection interface.
The claims 13 and 18 of the copending application doesn’t explicitly disclose “the connection interface comprises a static transfer switch”.
Somani discloses a connection interface (160 in for example Fig.1A) comprises a static transfer switch (¶ 65 and 78).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims 13 and 18 of the copending application with the teaching of Somani to provide the connection interface comprises a static transfer switch. The suggestion/motivation would have been to use a static transfer switch for connecting/disconnecting to the utility grid.
Regarding claim 3, the claims 13 and 18 of the copending application discloses the energy storage system.
The claims 13 and 18 of the copending application doesn’t explicitly disclose the energy storage system includes one or more batteries and a power conditioning system.
Somani discloses an example of an energy storage system (formed by 110 and 130 in Fig.1A) includes one or more batteries (110) and a power conditioning system (130).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims 13 and 18 of the copending application with the teaching of Somani to provide the energy storage system includes one or more batteries and a power conditioning system. The suggestion/motivation would have been to support that the energy storage system includes one or more batteries and a power conditioning system.
6. Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 10-12 of copending Application No. 18/740,872 (US 2025/0385526) in view of Somani et al. (2017/0005473) (hereinafter “Somani”) and Rangelov et al. (2020/0161880) (“Rangelov”).
Regarding claim 4, the claims 13 and 18 of the copending application discloses the energy storage system.
The claims 13 and 18 of the copending application doesn’t explicitly disclose the one or more batteries comprise lithium ferrophosphate batteries and the power conditioning system comprises a bi-directional inverter.
Somani discloses the power conditioning system (130) comprises a bi-directional inverter (¶ 64).
Rangelov discloses one or more batteries comprise lithium ferrophosphate batteries (¶ 29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims 13 and 18 of the copending application with the teaching of Somani to provide the power conditioning system comprises a bi-directional inverter and with the teaching of Rangelov to provide one or more batteries comprise lithium ferrophosphate batteries. The suggestion/motivation would have been to use bi-directional inverter to charge/discharge the power to/from the battery as supported by Somani and use lithium ferrophosphate battery for energy storage as supported by Rangelov.
7. Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 10-12 of copending Application No. 18/740,872 (US 2025/0385526) in view of Somani et al. (2017/0005473) (hereinafter “Somani”) and Abe et al. (2012/0176091) (“Abe”).
Regarding claim 20, the claims 1, 2 and 10 of the copending application discloses the connection interface and the energy storage system.
The claims 1, 2 and 10 of the copending application doesn’t explicitly disclose the connection interface comprises a static transfer switch, the energy storage system includes one or more batteries and a bi-directional inverter, and including a transformer connected to the bi-directional inverter.
Somani discloses a connection interface (160 in for example Fig.1A) comprises a static transfer switch (¶ 65 and 78).
Abe discloses an energy storage system (formed by 1014, 1012 and 1004 in Fig.5) includes one or more batteries (1004) and a bi-directional inverter (1012), and including a transformer (1014) connected to the bi-directional inverter (1012).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims 1, 2 and 10 of the copending application with the teaching of Somani to provide the connection interface comprises a static transfer switch and with the teaching of Abe to provide the energy storage system includes one or more batteries and a bi-directional inverter, and including a transformer connected to the bi-directional inverter. The suggestion/motivation would have been to use a static transfer switch for connecting/disconnecting to the utility grid as supported by Somani and provide an energy storage system with the battery, a bi-directional inverter and a transformer as supported by Abe.
Allowable Subject Matter
8. Claims 9-13 and 17-19 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD TAN whose telephone number is (571)270-7455. The examiner can normally be reached on M-F 8:30am-5:00pm.
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/Richard Tan/Primary Examiner 2836
Prosecution Insights