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
The Applicants have filed claims that are a verbatim (nor nearly identical) copy of those already rejected in the parent application (see Non-Final 2/2/24 and Final 5/10/24). This application does not contain any arguments to address or rebut the broad interpretations of the claim language (namely, there is no “system” and none of the fuel cell modules are actually connected). This application does not contain any remarks to indicate why Young (US 2002/0109410) does not anticipate the same claim language.
The art rejection from the parent application is repeated in this Action. To assist the Applicants, comments and interpretations presented in the Final Rejection (5/10/24) are included as well. In other words, adding “when the power supplied from the system is off” to claim 13 would not be sufficient to overcome the anticipation rejection.
As the claims of this application are a verbatim copy of those already rejected in the parent application, this Action is made final.
Priority
The present application is a “continuation” of parent application 17/892,063. It is not a divisional.
The restriction requirement (12/8/23) was withdrawn and all claims were treated in the parent application (see Non-Final 2/2/24). This means that there were no “withdrawn” claims to prosecute in a child application.
A divisional application is defined as a “carve out” of the claims of the parent. MPEP §201.06. No such relationship exists here, as the pending claims are an exact copy of claims 13-16 of the parent application.
The purpose of a divisional is to prosecute claims that were shown to be independent and distinct (i.e. ones that couldn’t be rejected under double patenting). This is not the case here, as the claims are exactly the same to those originally filed in the parent.
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 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of U.S. Patent No. 12,170,457. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of pending claim 13 are included within patented claim 11. Parent claim 11 includes more limitations than pending claim 13 and would qualify as an anticipatory reference if it were prior art.
Pending claims 14-16 correspond to language patented claims 11-13, respectively.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claim 13 already recites that the controller is configured to activate the AC voltage generation “to generate an AC voltage corresponding to the power supplied from a system”. “corresponding to” is descriptive of an electrical relationship. AC voltage inherently includes “a voltage and a frequency”. Claim 14 simply repeats inherent features of AC power, it does not present any narrowing structure or functionality. Every limitation that appears in claim 14 is already inherently included in claim 13.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Young (US 2002/0109410).
With respect to claims 13-14, Young discloses a device (fig 3-5; par 18-31) for controlling a line connection type fuel cell system, the device comprising:
a plurality of fuel cell modules (18#1 through 18#n);
a controller (31) configured to:
control one of the plurality of fuel cell modules (18#1) to generate an AC voltage corresponding to power supplied from a system (par 29, 31); and
control [the] remaining fuel cell modules to generate a current in synchronization with the AC voltage (through the “sync” signal shown in fig 5; par 29).
Young discloses a plurality of parallel fuel cells (18n), each with a corresponding inverter (PCS). Young discloses that all of its fuel cells are controlled in the same manner to be “activated” and synchronized (par 29, 31). All of the Young fuel cells provide power, which includes voltage and current. Therefore, the Young AC voltage generator provides synchronized voltage (as well as current) and the other fuel cells provide current (as well as voltage).
The claim does not define any structure or control functionality by which the fuel cell modules or their outputs are any different. Namely, the claim does not explicitly recite the disclosed functionality of “the AC voltage generator 20 [i.e. the first fuel cell module] does not require a large amount of energy because the AC voltage generator 20 does not generate a current [] and may be implemented in a small size.” (specification, par 53).
The Applicants had argued that Young’s fuel cells are not synchronized with the grid in the G/I mode. But claim 1 only broadly refers to “a system” without defining what it is or requiring Young’s grid to be this system.
The Examiner notes that the claim is written broadly as it generally refers to components that aren’t explicitly connected together. The fuel cell modules are not defined as having their outputs connected to a common bus or having any electrical connection to a “system”. In fact, the “system” is only passively referred to a part of the definition for how the first cell module AC voltage is generated. The claim does not recite what the system is or how its voltage/frequency is sensed in order to synchronize the AC voltage generator. Figure 1 shows a system with electrical connections of three sources (AC generator, fuel cells, power system) to the same bus and same load – no such language appears in the claim.
Even when Young switches between G/I and G/C modes, it is designed to provide continuous power to a load (14). Since the load survives (it doesn’t fail or isn’t destroyed) by repeated mode changes, the voltage and frequency provided to the load in the G/I mode are interpreted as both “corresponding to” a grid and “synchronized” with each other. In other words, the fuel cell module voltage and current outputs are interpreted as being about the same in the two modes. The output in the G/I mode “corresponds” to the output in the G/C mode. Thus, even when Young’s synchronization signal is driven by the XTAL (61), it would still have voltage and frequency characteristics that “correspond to” the voltage and frequency of the grid (10).
All of these interpretations were presented during the prosecution of the parent application. They have not been rebutted and, thus, are presumed to be the correct interpretations of the claim.
With respect to claim 14, AC voltage inherently includes voltage and frequency.
With respect to claim 15, Young discloses the controller is configured to monitor:
a status in which power is supplied from the system (par 26); or
a status in which the power that is supplied from the system is cut off (par 26).
The Examiner notes that there is no use for this monitoring recited in the claims. There is minimal patentable weight given to the simple functionality of monitoring the “status” of an unclaimed system and not doing anything with the information.
With respect to claim 16, Young discloses an ATS (17, 19; par 19, 23, 26) configured to: disconnect the system from the plurality of fuel cell modules when the power supplied from the system is cut off, and connect the system to the plurality of fuel cell modules when a supply of the power from the system is resumed.
The phrase “configured to” is structural. It does not require that the functionality occur in the prior art. For example, an ATS is, by definition, a circuit that automatically provides one of two inputs to the output. The one input is “connected” and the other is “disconnected” The claim appears to simply repeat this known description. The names of the sources connected to the ATS inputs do not further narrow the structure of the ATS. The ATS is “configured” in exactly the same way if it is connected to the fuel cell modules or not.
Claim 16 does not remedy the breadth of claim 13 that the “system” is not claimed or defined. Claim 16 does not explicitly require that the ATS be connected between the fuel cell modules and a system. “configured to disconnect” and “configured to connect” are structural limitations that are redundant to the name “automatic transfer switch” – this type of language is not the same as actually reciting electrical connections between components.
Conclusion
This is a Continuation (no a divisional) of applicant's earlier Application No. 17/892,063). All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
All of the pending claims have been rejected twice (see Non-Final 2/2/24, Final 5/10/24). Should these claims have been submitted again during prosecution of the parent application, they could have been finally rejected again.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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