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.
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Claims 1-15, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 15-18 of U.S. Patent No. 12,165,792. Although the claims at issue are not identical, they are not patentably distinct from each other because there are only minor variations in ordering of claimed limitations and/or Claim dependency, resulting in broader independent claims of the instant application.
Instant application Claims 1, 8-10 combined and Patent Claim 1 recite the same limitations.
Instant application Claims 2-7 and Patent Claims 2-7 recite the same limitations.
Instant application Claims 11, 18-20 combined and Parent Claims 15 recite the same limitations.
Instant application Claims 12-15 and Patent Claims 16-18 respectively recite the same limitations.
Instant application Claims 18 limitations are disclosed in Claim 15 of the Patent.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Woodworth et al. (US 5,594,613, prior art previously considered in the parent application, now listed in IDS) in view of Doone (WO 97/10631).
Regarding Claim 1, Woodworth discloses an arrester assembly (Figures 1-24, Figures 1-2 shows the details of a surge arrester module 10 and its schematics, Figure 3 shows plurality of arrester modules 60, Figures 9-10 shows similar arrester modules comprising 212, 214, 216, Column 13, lines 25-32) comprising:
a first terminal electrically connected to an energized conductor (comprising
terminal 74, Figure 3, Column 10, lines 25-28, “…terminals 74 and 76 which, in turn, are employed to electrically connect arrester 70 between and voltage source and ground”);
a first arrester module electrically connected to the first terminal (a first arrester module 60 comprising a first MOV disk 20 and electrically connected to 74, Figure 3), the first arrester module including a first metal oxide varistor (MOV) disc and a first housing (the arrester module 60 comprising a first MOV disk 20 and a first housing 34, 34, Figure 3, comprising 212, Figures 9-10, Column 13, lines 25-32);
a second arrester module (comprising a second arrester module 60, Figure 3,
3, comprising 214, Figures 9-10, Column 13, lines 25-32) electrically connected in series with the first arrester module (the first subassembly 60 electrically connected in series with the second subassembly 60, Figure 3), the second arrester module including a second MOV disc and a second housing (the second subassembly 60 comprising a second MOV disc 20, a second housing 34, Figure 3);
a disconnect device (comprising 78, Figure 3) electrically connected in series with the first arrester module and the second arrester module (78 in series with the first
arrester modules 60 and second arrester module 60, Figure 3), and
a second terminal electrically connected to the disconnect device, the second terminal electrically connected to a ground conductor (comprising terminal 76 connected
to the disconnect device and ground conductor, not shown, Figure 3, Column 10, lines 34-39, “….An isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown)….”);
wherein the disconnect device is electrically connected between the second arrester module and the second terminal (78 electrically connected between the second arrester module 60 and second terminal 76, Figure 3);.
Woodworth does not disclose the disconnect device is electrically connected between the first arrester module and the second arrester module.
Doone discloses an arrester assembly (Figures 1-3) comprising a first surge arrester module including a housing (comprising 1 including a housing, Figure 1) and a second arrester module connected in series with the first arrester module and including a housing (comprising 2 connected in series with 1 and including a housing , Figure 1) between a first terminal and a second terminal (1 in series with 2 connected between the first/top terminal, not labelled and the second/bottom terminal, not labelled, Figure 1) and a disconnect device connected between the first arrester module and the second terminal (comprising 3 connected between the first/top terminal, not labelled and the second/bottom terminal, not labelled, Figure 1, Figure 1) and in parallel with the second arrester module (3 in parallel with 2, Figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the location of the disconnect device in the surge arrester of Woodworth to a different location in the series circuit based on the design conditions such as spacing and cost (between surge arrester modules or between a surge arrester module and a different terminal in Woodworth still open the series circuit between the first terminal and the second terminal, stop the current flow and protect the components and/or prevent further damage) and/or provide additional elements as taught Doones where changing location is not preferred option to provide continuity of operation.
Regarding Claim 2, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, wherein the disconnect device is configured to disconnect the first terminal from the second terminal when a voltage across the first arrester module exceeds a threshold associated with a voltage between the energized conductor and the ground conductor (Woodworth, threshold corresponding to the predetermined current/capabilities of the surge arrester, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 3, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, wherein the disconnect device is configured to disconnect the first terminal from the second terminal when a current flowing through the disconnect device exceeds a threshold (Woodworth, threshold corresponding to the predetermined current/capabilities of the surge arrester, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 4, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, wherein the disconnect device is configured to operate when the first arrester module is shorted (Woodworth, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 5, combination of Woodworth and Doones discloses the arrester assembly of Claim 4, wherein the disconnect device is further configured to operate when the second arrester module is not shorted (Woodworth, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 6, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, wherein the disconnect device is configured to operate when a voltage across the first arrester module is approximately equal to a voltage between the first terminal and the second terminal (Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 7, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, wherein the second housing is physically separate from the first housing (Woodworth, housing 34 of each arrester module 60 separated by 102, 14, Figure 3).
Regarding Claim 8, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, further comprising a conductive arc plate connected between the first arrester module and the second arrester module (Woodworth, comprising 96 forming spark gap 14 between the first and second 60, Figure 3, corresponding elements in Figures 6-9).
Regarding Claim 9, combination of Woodworth and Doones discloses the arrester assembly of Claim 8, wherein the conductive arc plate is configured to collect or supply leakage current travelling across at least one selected from a group consisting of the first housing and the second housing (Woodworth, Figure 3, Column 11, lines 5-29).
Regarding Claim 10, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, further comprising a gap grading circuit configured to allow function of the arrester assembly during surge events without triggering the disconnect device (gap grading circuit formed as shown in Figure 2, Figure 3, Column 11, lines 5-29).
Regarding Claim 10, Woodworth discloses an arrester assembly (Figures 1-24,
Figures 1-2 shows the details of a surge arrester module 10 and its schematics, Figure
3 shows plurality of arrester modules 60, Figures 9-10 shows similar arrester modules
comprising 212, 214, 216, Column 13, lines 25-32) comprising:
a first terminal electrically connected to an energized conductor (comprising
upper terminal 74, Figure 3, Figures 9-10, Column 13, lines 25-32, Column 10, lines 25-
28, “…terminals 74 and 76 which, in turn, are employed to electrically connect arrester
70 between and voltage source and ground”);
a second terminal electrically connected to a ground conductor (comprising lower
terminal 76, Figure 3, Figures 9-10, Column 13, lines 25-32);
a plurality of arrester modules electrically connected in series between the first
terminal and the second terminal (plurality of arrester modules 60 connected in series
between 74 and 76, Figure 3, comprising arrester modules 212, 214, 216, Figures 9-10,
Column 13, lines 25-32);and
a disconnect device (comprising 78, Figure 3, corresponding elements in Figures
9-10, Column 13, lines 25-32) electrically connected in series with the plurality of
arrester modules between the between the plurality of arrester modules and the second terminal (78 in series with the plurality of arrester modules 60 and between and 76, Figure 3, Figures 9-10, Column 13, lines 25-32).
Woodworth does not disclose the electrically connection of the disconnect device being between the plurality of arrester modules.
Doone discloses an arrester assembly comprising a plurality of arrester module (Figures 1-3), the plurality of arrester module including a first surge arrester module in a housing (comprising 1, Figure 1) and a second arrester module connected in series with the first arrester module and including a housing (comprising 2 connected in series with 1, Figure 1) and connected between a first terminal and a second terminal (1 in series with 2 connected between the first/top terminal, not labelled and the second/bottom terminal, not labelled, Figure 1) and a disconnect device connected between the first arrester module and the second terminal (comprising 3 connected between the first/top terminal, not labelled and the second/bottom terminal, not labelled, Figure 1, Figure 1) and in parallel with the second arrester module (3 in parallel with 2, Figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the location of the disconnect device in the surge arrester of Woodworth to a different location in the series circuit based on the design conditions such as spacing and cost (between surge arrester modules or between a surge arrester module and a different terminal in Woodworth still open the series circuit between the first terminal and the second terminal, stop the current flow and protect the components and/or prevent further damage) and/or provide additional elements as taught Doones, where changing location is not preferred option to provide continuity of operation.
Regarding Claim 12, combination of Woodworth and Doones discloses the arrester assembly of Claim 11,
wherein the plurality of arrester modules includes a first arrester module (comprising 212, Figures 9-10, Column 13, lines 25-32), a second arrester module (comprising 214, Figures 9-10, Column 13, lines 25-32), and a third arrester module (comprising 216, Figures 9-10, Column 13, lines 25-32).
Regarding Claim 13, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, wherein the plurality of arrester modules further includes a third arrester module (comprising 216, Figures 9-10, Column 13, lines 25-32).
Regarding Claim 14, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, wherein the first arrester module includes a first metal oxide varistor (MOV) disc (212, Figures 9-10), and wherein the second arrester module includes a second MOV disc (214, Figures 9-10).
Regarding Claim 15, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, wherein the disconnect device is configured to disconnect a line terminal from a ground terminal in response to an occurrence of a predetermined trigger condition (a predetermined trigger condition corresponding to the predetermined current/capabilities of the surge arrester, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 16, combination of Woodworth and Doones discloses the arrester assembly of Claim 15, wherein the predetermined trigger condition is at least one selected from a group consisting of when a voltage across the first arrester module exceeds a threshold associated with a voltage between the energized conductor and the ground conductor, when a current flowing through the disconnect device exceeds a threshold, and when a voltage across the first arrester module is approximately equal to a voltage between the first terminal and the second terminal (Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 17, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, further comprising a conductive arc plate connected between the first arrester module and the second arrester module (Woodworth, comprising 96 forming spark gap 14 between the first and second 60, Figure 3, corresponding elements in Figures 6-9), wherein the conductive arc plate is configured to collect or supply leakage current travelling across at least one selected from a group consisting of a first housing of the first arrester module and a second housing of the second arrester module (Woodworth, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 18, combination of Woodworth and Doones discloses the arrester assembly of Claim 1, further comprising a gap grading circuit configured to allow function of the arrester assembly during surge events without triggering the disconnect device (gap grading circuit formed as shown in Figure 2, Figure 3, Column 11, lines 5-29).
Regarding Claim 19, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, wherein the disconnect device is configured to operate when the first arrester module is shorted (shorted (Woodworth, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Regarding Claim 20, combination of Woodworth and Doones discloses the arrester assembly of Claim 12, wherein the disconnect device is further configured to operate when the second arrester module is not shorted (Woodworth, Column 10, lines 34-39, “….isolator 78 is connected between lower closure 82 and lower terminal 76 and employed to explosively disconnect arrester 70 from the ground connection (not shown) in the event that the arrester fails to reseal after the arrester has operated to divert a surge to ground”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Besouw (US 2021/0193355, previously applied in parent application now listed in IDS) discloses an arrester assembly (Figures 1-3) comprising:
a first terminal electrically connected to an energized conductor (comprising
terminal 14, Figures 1A, 1B, terminal 54, Figures 2A-2B, 104, Figures 3A,3B);
a first arrester module (comprising a first MOV disc in 18, Figures 1A, 1B, a first
MOV disc in 56, Figures 2A-2B, comprising a first MOV disc in 106, Figures 3A,3B)
electrically connected to the first terminal (16 electrically connected to 14, the first MOV
in 56 electrically connected to 54, Figures 2A-2B) the first arrester module including a
first metal oxide varistor (MOV) disc (a first MOV disc in 56, Figures 2A, 2B, Paragraph
21); a second arrester module (comprising a second MOV disc in 56, Figures 2A-2B,
comprising a second MOV disc in 106, Figures 3A,3B) electrically connected in series
with the first arrester module (the first MOV in 56 electrically connected in series with
the second MOV disc in 56, Figures 2A-2B), the second surge arrester module including
a second MOV disc (a second MOV disc in 18, Figures 1A, 1B, corresponding elements
similarly connected in Figures 2A, 2B and Figures 3A, 3B, Paragraph 21);
a disconnect device (comprising 16, Figures 1A, 1B, 58, Figures 2A,2B,
comprising 110, Figures 3A, 3B B) electrically connected in series with the first arrester
module and the second arrester module (16 in series with first second arrester modules
in 18, Figure 1A, 1B, 58 in series with the first and second arrester modules in 56,
Figures 2A, 2B, 108 in series with the first and second arrester modules in 106, Figures
3A, 3B), a second terminal (comprising terminal 20, Figures 1A, 1B) electrically connected to a ground conductor (20 electrically connected to ground
conductor 22, Figures 1A, 1B);
Lenk et al. (US 2005/0088795) discloses an arrester assembly in
Figures 1-6, comprising an arrester module 13 and disconnect device 11 connected
between a first terminal 12 and a second terminal 17;
Huo et al. (US 9,088,153) discloses an arrester assembly in Figures 1-23, comprising an arrester module (comprising 10, Figure 4) and graded gap circuit (comprising 9, 7,8, Figure 4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY M THOMAS whose telephone number is (571)272-6002. The examiner can normally be reached Mon-Fri 9:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Crystal L Hammond can be reached at (571)270-1682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY M THOMAS/ Examiner, Art Unit 2838, 6/08/2026.
/CRYSTAL L HAMMOND/ Supervisory Primary Examiner, Art Unit 2838
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