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 .
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 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,374,562 (‘562 hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of ‘562 essentially recites all of the limitations of claim 1 of the instant application. However, claim 10 does not explicitly state that “turning, at a second time later than the first time, the plurality of first transistors of the first leg from an off state to an ON state” (Examiner’s emphasis) and “turning, at a fourth time later than the third time, the second transistor of the second leg from the ON state to the OFF state” (Examiner’s emphasis). For instance, claim 10 of the instant application fails to explicitly disclose that that the first leg is turned on after the second leg and the first leg is turned off before the second leg. However, claim 10 of ‘562 implies that the transistors may be turned on as recited in claim 1 of the instant application, since claim 10 of ‘562 states “transition the apparatus from a non-conduction period to a conduction period by turning the first transistor of the second leg from an OFF state to an ON state and turning the plurality of transistors of the first leg from an OFF state to an ON state; and transition the apparatus from the conduction period to the non-conduction period by turning the plurality of transistors of the first leg from the ON state to the OFF state and turning the first transistor of the second leg from the ON state to the OFF state” which suggests the possibility of the activation and deactivation of the first and second legs at any desired timing including the timing as recited in claim 1 of the instant application. Furthermore, Fig. 3 of ‘567 suggests such a timing of the activation of the transistors as recited in claim 1 of the instant application.
While claim 10 of ‘567 fails to explicitly disclose the explicit timing as recited in claim 1 of the instant application. It would have been obvious to time the activation of the transistors of the first and second legs of claim 10 of ‘567 such that the first leg is turned on after the second leg and the first leg is turned off before the second leg, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). One would have been motivated to set the timing of activation at the desired time points for the purpose of having a desired activation timing of the switched circuit.
With respect to claim 11, claim 11 merely recites the method of constructing/operating the circuit as recited in claim 1. Thus, claim 11 is rejected for similar reasons as discussed above with claim 1, since it would have been obvious to perform the method of claim 11 using the circuit as recited in claim 10 of ‘567, as modified above, since the circuit is connected and operative such that it will perform the method steps of claim 11.
Allowable Subject Matter
Claims 2-10 and 12-20 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 Thomas J. Hiltunen whose telephone number is (571)272-5525. The examiner can normally be reached 9:00AM-5:30PM EST M-F.
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/THOMAS J. HILTUNEN/Primary Examiner, Art Unit 2849