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 Aug. 12, 2026 have been fully considered.
2. Response to Applicant’s argument regarding the double patenting rejection:
(i). Applicant argued that the double patenting rejection is premature due to the copending application No. 18/740,872 (US 2025/0385526) has not been examined.
However, it is required to do the double patenting rejection so that to allow the instant application.
(ii). Regarding claim 5, Applicant argued that claim 5 recites that the fuel cell power plants “are operable to provide electrical and thermal loads to the utility grid”. Claim 19 of the copending application instead recites that the fuel cell power plants “are operable to provide electrical and thermal energy to the microgrid”, which is different recipient of the power.
The Examiner respectfully disagrees because claim 18 of the copending application, which the claim 19 depends upon, states that “a connection interface operable to connect the plurality of fuel cell power plants to the utility grid; at least one microgrid connectable to the utility grid with the connection interface”, therefore the fuel cell power plants are operable to provide electrical and thermal loads to the utility grid.
(iii). Regarding claim 2 and 20, Applicant argued that the claims 2 and 20 is not supported by the reference relied upon for the recited “static transfer switch”.
The Examiner agrees to the Applicant’s argument and withdraws the rejection over the claims 2 and 20; and
(iv). Regarding claim 4, Applicant argued that the claim 4 is not supported by the reference relied upon for the recited “static transfer switch”; however, the claim 4 doesn’t include “static transfer switch”, thus the rejection over the claim 4 is maintained.
Double Patenting
3. 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.
4. 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.
5. 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.
6. Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 18 of copending Application No. 18/740,872 (US 2025/0385526) in view of Somani et al. (2017/0005473) (hereinafter “Somani”).
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.
7. Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 18 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.
Allowable Subject Matter
8. Claims 2, 9-13 and 17-24 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
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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.
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, Menatoallah Youssef can be reached on 571-270-3684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Richard Tan/Primary Examiner 2836
Prosecution Insights