DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant’s arguments filed June 11, 2026, with respect to the rejection of claims 1 and 11 under Chisenga, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Swanson (US 2006/0196535) figure 7B. Chisenga is still maintained as a secondary reference against dependent claims.
Information Disclosure Statement
The Applicant’s assistance with the information disclosure statement submissions are appreciated. In future replies when listing references that satisfy the key words, the Applicant is requested to include the date the reference was submitted and its length in pages. As previously noted, the Examiner’s docket labels all foreign references the same and all non-patent literature the same.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 5, 7-9, 11, 15 and 17-19 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Swanson (US 2006/0196535).
With respect to claim 1, Swanson discloses an apparatus (fig 7B; par 49-52) comprising:
a PV panel (630) comprising a first PV terminal (617), a second PV terminal (616), and a casing (614);
a ground connection (see “grounded frame” label in the figure) via the casing of the PV panel; and
a converter circuit (600) comprising:
a power input (left side) comprising:
a first input terminal (PV-minus) connected to the first PV terminal; and
a second input terminal (PV-plus) connected to the second PV terminal, the casing, and the ground connection;
a power output (right side) galvanically isolated (via 603) from the power input and comprising a first output terminal and a second output terminal (the AC output has two terminals, either can be the “first” or “second”); and
wherein the converter is configured to convert a DC power at the power input to an AC power at the power output (via 602).
With respect to claims 5-8, Swanson discloses the converter circuit is configured to operate at a peak voltage that is at least double/triple a maximum voltage rating of the photovoltaic panel (see explanation below), the maximum voltage rating being between the PV panel casing and one of the first/second PV terminals.
Claim 1 defines the structure (i.e. configuration) of the converter circuit. Claim 5 does not add any narrowing structure – it simply describes what the claim 1 converter is structured/configured to achieve. As Swanson anticipates the claimed converter structure, it is interpreted as operating at the same relative voltage levels.
With respect to claim 7, Swanson discloses the power output is configured to be connected to a second ground (not claimed), and wherein a ground potential of the ground connection is different than a ground potential of the second ground connection.
The Applicant has been put on notice regarding the interpretation of “configured to” language. No rebuttal has been presented to state the Applicant’s intention that the claim be interpreted differently. Further, the “to be” language indicates a future action – one that is outside the scope of the claim. If the Applicant intends to seek patent protection over structure, then that structure should be distinctly claimed – not presented as a hypothetical.
The Swanson power output is an electrical conductor and, therefore, it is “configured to be connected” to any other electrical circuit or node. This includes a ground connection. As Swanson disclose the converter provides galvanic isolation, the skilled artisan would have understood the need to make the second ground potential different than the first. Coupling the two grounds together would negate the entire purpose of isolation.
With respect to claim 9, Swanson discloses the converter circuit comprises a transformer (see fig 7B) that galvanically isolates the power input from the power output.
With respect to claims 11, 15 and 17-19, Swanson discloses the apparatus necessary to complete the recited method steps, as discussed above in the art rejections of claims 1, 5 and 7-9, respectively.
The Examiner notes that method claim 17 does not actually connect the power output to the second ground – it is phrased as a possibility or hypothetical. There are no method steps of “connecting” the power output to any ground.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2, 6, 12 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Swanson in view of Mun (US 2012/0274264).
With respect to claim 2, Swanson discloses the converter circuit, but does not expressly disclose it is housed in a junction box. Mun discloses a converter circuit housed in a junction box (abstract), and wherein the junction box is configured to be mechanically connected to the photovoltaic panel (abstract). Mun also shows the junction box as item 200 in figure 2.
Swanson and Mun are analogous to the claimed invention because they are from the same field of endeavor, namely PV converter circuits. At the time of the Applicant’s earliest priority date, it would have been obvious to one skilled in the art to modify Swanson to have its converter circuit placed in a junction box, as taught by Mun. The motivation for doing so would have been to protect the electrical components from the elements.
While Mun’s converter is DC-DC (not DC-AC), the reference is only relied on for its teaching of putting a converter into a junction box. The specific type of converter (isolating DC-AC) is already taught by Swanson.
With respect to claim 6 Mun discloses the converter circuit is incorporated into the photovoltaic panel (fig 2; par 42). The Mun converter is inside the junction box (200), which is incorporated into the PV panel . The references are analogous, as discussed above.
With respect to claims 12 and 16, Swanson and Mun combine to teach the apparatus necessary to complete the recited limitations, and the references are analogous, as discussed above in the art rejections of claims 2 and 6, respectively.
Claims 3-5, 8, 13-15 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Swanson and Chisenga (US 2010/0309692).
With respect to claim 3, Swanson discloses a converter circuit, but does not expressly disclose it is controlled with a duty cycle. Chisenga discloses a photovoltaic DC/AC converter circuit (fig 1-2; page 5) comprising an input (left side) and a galvanically isolated output (right side), wherein the converter circuit comprises an adjustable duty cycle (par 52).
Swanson and Chisenga are analogous to the claimed invention because they are from the same field of endeavor, namely PV inverters. At the time of the Applicant’s earliest priority date, it would have been obvious to one skilled in the art to modify the Swanson converter to be duty cycle controlled, as taught by Chisenga. The motivation for doing so would have been to fill in the blanks in the Swanson disclosure. Swanson discloses converters (DC-DC and DC-AC), but does not expressly disclose how to operate them. Thus, the skilled artisan would have consulted the prior art to find successful operating strategies, including duty cycle control.
With respect to claim 4, Chisenga discloses a controller (fig 1, items 7-8), wherein the duty cycle is adjustable by the controller to provide an open circuit voltage across the first output terminal and the second output terminal of the converter circuit (par 52) prior to connecting converter outputs of a plurality of converter circuits in parallel. The Chisenga duty system “is adjustable” at all times, including prior to any hypothetical connection of other parallel converters.
The claim does not explicitly introduce the limitation of: 1) other converter circuits; or 2) the structure necessary to selectively connect converter outputs together. The claim is directed to one converter circuit – there are no other parallel ones. The claim does not recite any switching mechanism or circuit to selectively connect other (unclaimed) converters in parallel.
With respect to claims 5 and 8, Chisenga discloses the converter circuit is configured to operate at a peak voltage that is at least double/triple a maximum voltage rating of the photovoltaic panel (par 52 and fig 9), the maximum voltage rating being between the PV panel casing and one of the first/second PV terminals. Paragraph 52 discloses that the peak voltage is higher than the grid voltage (at least 120VAC). Figure 9 shows that the PV panel maximum voltage rating is about 40v. 120 is at least three times (and, therefore at least twice) 40. The references are analogous, as discussed above.
With respect to claims 13-15 and 18, Swanson and Chisenga combine to teach the apparatus necessary to complete the recited limitations, and the references are analogous, as discussed above in the art rejections of claims 3-5 and 8, respectively.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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
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