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 .
Election/Restrictions
Claims 4, 8, and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/5/2026.
Applicant’s arguments have been fully considered but are not persuasive. Applicant is further reminded that said withdrawn claims will be automatically rejoined upon allowance. Applicant’s arguments that the species share common classification and common purpose are not persuasive. It appears Applicant is arguing against a restriction (ie restriction between Process and Apparatus) and not species as indeed, species typically do have common classification and common purpose which makes them species of one another.
Rule 105 - Request for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In view of Applicant’s Figures which comprise mere block diagrams for the component(s) listed below, it appears Applicant intends for said components to comprise what is conventional and known in the art (see MPEP 608.02(d)) however applicant has failed to provide an adequate disclosure and description of said components, nor has applicant used conventional terminology for said components making the components unknown.
Therefore, Applicant is required to provide further background information on their invention, particularly for the following components of:
Said “selection unit” as comprising “mutually exclusive” switches that are electrically insulated from each other having three connection (power supply input, load connection side and cascaded exclusive switch” side (see FIGURE 2). The terms “mutually exclusive” and “electrically insulated” describe properties and it is unclear what switch in the art comprises these properties. Since applicant presented generic block diagrams and did not disclose said switch it appears Applicant intends that said switch is known in the art however said switch is not a known switch in the art.
including:
Component name as used in the art and as used by the manufacturer;
Component manufacturer; and
Component specification data sheet(s).
as well as a detailed summary of the improvements associated with the invention and any technical information known to applicant concerning the related art particularly for said components listed above.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification fails to adequality disclose the following claimed subject matter:
Structure of the “selection unit” means to support means for claim construction.
Said switches being “electrically insulated” and the structure intended by the “electrically insulated” claim limitation.
Structure intended by “mutually exclusive” switches.
Structure of said “control unit” means.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the following details in enabling detail as described in the specification:
Structure of the “selection unit” means to support means for claim construction.
Said switches being “electrically insulated” and the structure intended by the “electrically insulated” claim limitation.
Structure intended by “mutually exclusive” switches.
Structure of said “control unit” means.
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Regarding Claim 1-3, 5-7, 9-11, and 13-16
Claim limitation(s):
Selection unit = box 210, FIG2; and
Control unit = box 300, FIG2.
have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim(s) limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the claim(s) have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Selection unit = box 210, FIG2; and
Control unit = box 300, FIG2.
However, the written description fails to disclose meaningful enabling details the corresponding structure, material, or acts for the claimed function.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-7, 9-11, and 13-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The disclosure fails to provide enabling details for the following claimed subject matter:
Structure of said “selection unit” means.
Structure of said “electrically insulated” terminals.
Structure of “mutually exclusive switches”.
Structure of the “control unit” means.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5-7, 9-11, and 13-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, 5, 6, 8
The disclosure fails to provide proper and enabling structural details for said claimed:
“Selection unit” depicted as box 200, FIGURE 2. The figure discloses a generic depiction of what is labeled as “mutually exclusive” switches however “mutually exclusive” switches are not a particular and known type of switch in the art. Same of said term “electrically insulated” which is not a particular switch in the art. Both terms describe a property and not any particular switch structure. Furthermore, it is unclear what properties are intended by said term. It is unclear what is meant by “mutually exclusive” as indeed the switches depicted in FIGURE 2 are cascaded and not “exclusive”. The term “insulated” could refer to many different properties including any switch in the art since switches by their very nature open and break a connection thereby “insulating” the input from the output. In that sense every sense is an insulating switch so it is unclear what is intended to be added from the term “electrically insulated”. Furthermore, the depiction of switches is confusing from an electrical standpoint. Switches are known to provide an open and closed power connection. The represented switches have three terminals which is confusing and unclear what the switch structurally comprises.
It is unclear what function is intended to be added by “select at most one of the plurality of input terminals…” as the function lacks context and is unclear. It is unclear whether only a single of said plurality switches is ever addressable and switchable or whether all switches are switchable however controlled in a break before make type configuration.
Regarding Claim 2, 6
Said “control unit” is depicted as a mere generic box thereby not supporting means for claim construction as no structure is provided.
Regarding Claim 3, 14
The claim attempts to further limit the selection unit however the selection unit structure is not provided. Nor is it clear what makes a connection terminal “configured to be” connected to a power grid.
Because of the great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim(s), it is not proper to reject the present claim(s) on the basis of prior art. (See MPEP 2173.06 and In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL CAVALLARI whose telephone number is (571)272-8541. The examiner can normally be reached Mon-Fri 0900-18:30.
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, Rexford Barnie can be reached at (571)272-7492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL CAVALLARI/Primary Examiner, Art Unit 2836
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