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
The previous rejection has been modified to fully and properly address the claims previously presented.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims listed in the table below of U.S. Patent No. 11,862,962. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application listed below are clearly anticipated by the corresponding claims of the aforementioned patent.
Instant Application
11,862,962
2
1
3
2
4
3
5
4
6
5
7
8
Claims 2-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims listed in the table below of U.S. Patent No. 12,088,087. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application listed below are clearly anticipated by the corresponding claims of the aforementioned patent.
Instant Application
12,088,087
2
1
3
2
4
3
5
4
6
5
7
8
8
9
9
10
10
11
11
12
12
13
13
14
14
15
15
16
16
17
17
18
18
19
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 2-4, 6, 7, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Espeut (2010/0038966) in view of Lagree et al (2020/0251297).
In re Claim 2, Espeut teaches a controllable main breaker (33) as seen in Figures 2 and 8A, comprising: a main breaker (33, breaker connected to utility grid) sized to fit within an existing panel slot of an electrical panel (as seen in Figure 8A); a controllable actuator (49) that mechanically opens the main breaker (paragraphs 67-69 and 75-76); and a microcontroller (31) for controlling the actuator 49 (paragraph 69).
Espeut does not specifically teach that the main breaker comprises a trigger to open the main breaker in response to a thermal fault or overcurrent condition.
Lagree teaches a circuit breaker that has a lever 222 actuated by a motor actuator 230 as seen in Figure 3 (paragraph 29), wherein the circuit breaker further comprises within it a trigger 229 that causes the circuit breaker to open its contacts in response to an overcurrent condition (paragraphs 38-39).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a trigger as taught by Lagree with the circuit breaker of Espeut since Lagree teaches that it is utilized to open the circuit breaker during and overcurrent conditions to provide overcurrent protection.
In re Claim 3, Lagree further teaches a solenoid to open the contacts (paragraph 38).
In re Claim 4, Espeut teaches the actuator 49 is a motor (paragraph 81).
In re Claim 6, Espeut teaches that prior to commanding opening of the main breaker, the microcontroller is configured to determine that an onsite power source is capable of forming a microgrid (paragraph 74).
In re Claim 7, Espeut teaches a communications interface, wherein the controllable main breaker is configured to communicate with an onsite power system via the communications interface (paragraph 74).
In re Claim 17, Espeut teaches that the main breaker boots into an open state (paragraph 75).
In re Claim 18, Espeut does not specifically teach that the amperage rating is configurable.
Lagree teaches that by using a communication module 240, the trip settings of the breaker can be adjusted (paragraph 32).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a communication module as taught by Lagree since it would allow the microcontroller of Espeut to adjust its amperage rating so it can best suit various applications.
In re Claim 19, Espeut teaches the controllable main breaker 33 is modular as seen in Figure 2A.
In re Claim 20, Espeut teaches the controllable main breaker comprises as seen in Figure 2A a core component 33 and an adaptor 34 (paragraph 70).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Espeut (2010/0038966) in view of Lagree et al (2020/0251297) as applied to claim 4 above and further in view of Hoffmann (3,358,250).
In re Claim 5, Hoffmann as modified by Lagree does not specifically teach an interlock that is configured to prevent the motor from closing the main breaker in the event the breaker was opened due to the overcurrent condition.
Lagree teaches that relays 235 can be utilized to control a motor 231 to operate to either open or close a circuit breaker.
Hoffmann teaches activating a lockout relay 50 to prevent a breaker from being closed when the breaker is tripped due to overcurrent (col 3 lines 16-23).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a relay to lockout the motor of Espeut as taught by Lagree and Hoffmann in order to prevent the breaker from being reclosed when an overcurrent condition is present.
Claim(s) 8, 9, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Espeut (2010/0038966) in view of Lagree et al (2020/0251297) as applied to claims 2 and 7 above and further in view of Narla (2022/0352722).
In re Claim 8, Espeut does not teach that the onsite power source comprises an inverter.
Narla teaches a system that controls the flow of power between a grid 180 and an energy storage system 150 as seen in Figure 1 (paragraph 32), wherein the backup storage system comprises batteries 152 connected to a PV power generation system 160 and an inverter 154 with a controller 155 that communicates with the controller 122 of the interconnection device 120 of the system (paragraphs 33, 34, 42, and 47).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the energy storage system as taught by Narla as the auxiliary energy source of Espeut since it would provide a renewable source of energy.
In re Claim 9, Narla teaches status information is communicated (paragraph 51).
In re Claim 13, Espeut does not teach an ESS.
Narla teaches a system that controls the flow of power between a grid 180 and an energy storage system 150 as seen in Figure 1 (paragraph 32), wherein the backup storage system comprises batteries 152 connected to a PV power generation system 160 and an inverter 154 with a controller 155 that communicates with the controller 122 of the interconnection device 120 of the system (paragraphs 33, 34, 42, and 47).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the energy storage system as taught by Narla as the auxiliary energy source of Espeut since it would provide a renewable source of energy.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Espeut (2010/0038966) in view of Lagree et al (2020/0251297) as applied to claim 2 above and further in view of Erger et al (2013/0329331).
In re Claims 10 and 11, Espeut as modified by Lagree does not teach a battery.
Erger teaches as seen in Figure 4 that the controller 416 of a breaker is powered by a power supply 430 that utilizes a battery 432 to maintain power in the event power is disrupted (paragraph 36).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the power supply and battery of Erger since Erger teaches that it would maintain power to the controller of Espeut in the event of any power disruptions.
In re Claim 12, see discussion of claims 10 and 11 above. Additionally, as seen in Figure 4 of Erger the power supply is connected to the load side of the breaker.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Espeut (2010/0038966) in view of Lagree et al (2020/0251297) and Narla (2022/0352722) as applied to claim 16 above and further in view of Erger et al (2013/0329331).
In re Claim 14, Espeut as modified by Lagree and Narla does not specifically teach that the main breaker is powered by the ESS.
Erger teaches as seen in Figure 4 that the controller 416 of a breaker is powered by a power supply 430 that is connected to the load side of the breaker to derive power for the controller of the breaker (paragraph 36).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the power supply of Erger since it would provide the power required for the controller of Espeut.
Upon modification, the ESS would provide power to the power supply when the breaker is open during non-grid operation.
In re Claim 15, Narla teaches that the breaker is wirelessly paired with the ESS (paragraph 47).
In re Claim 16, the controller of the breaker would connect to the wireless network formed by the ESS and controller (paragraph 47).
Allowable Subject Matter
Claim 21 is 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.
In re Claim 21, Espeut as modified by Lagree fails to teach the core component comprises the main breaker, the controllable actuator, and the microcontroller, and wherein different adaptors facilitate accommodating different types of breaker slots.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER JAY CLARK whose telephone number is (571)270-1427. The examiner can normally be reached Monday - Friday, 10:00am - 6:00pm EST.
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, Thienvu Tran can be reached at 571-270-1276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER J CLARK/Examiner, Art Unit 2838
/THIENVU V TRAN/ Supervisory Patent Examiner, Art Unit 2838
