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 .
Continuity
Examiner notes this application is a continuation of parent 1746243.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/17/25 has been considered by the examiner.
Claim Objections
Claims 13-14 are objected to because of the following informalities:
in claim 13, line 6, “the ground node” lacks antecedent basis.
in claim 13, line 7, “the first voltage rail” lacks antecedent basis.
in claim 13, line 9, “the second voltage rail” lacks antecedent basis.
Appropriate correction is required.
Claim 13 appears to have been intended to depend from claim 12. Appropriate clarification is requested.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: ‘power means’ and ‘energy means’ in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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 5-6 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claim 1, Applicant requires first and second battery cells coupled between the first and third terminals, which reads upon the embodiment depicted in Figure 3-2, but not on the embodiment depicted in Figure 3-1, which requires a single cell between the first and third terminals. Claim 5, which depends from claim 1, attempts to describe features from the embodiment of Figure 3-1, but as stated above, the embodiment of Figure 3-1 lacks the features required by claim 1. Applicant may not further refine the claimed invention while claiming the original filing date of the parent application.
Claim Rejections - 35 USC § 112b
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 15-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim limitation “adjustment means for adapting a voltage level” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification provides examples that the adjusting means may be a charge pump or capacitive divider, but no corresponding structure is actually depicted beyond the black box diagram of Figures 3-1, 3-2 which depict only a black box 204 with one input and one output. Examiner notes that both charge pumps and capacitive dividers have more inputs and outputs than the two terminal black box 204. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.
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.
Claim(s) 15 is rejected under 35 U.S.C. 102a1 as being anticipated by Tkachenko (US 2020/0185947).
With respect to claim 15, Tkachenko discloses an apparatus for voltage regulation, the apparatus comprising: a power means (Fig. 2A 202); an adjustment means (Fig. 2A 204A) for adjusting a voltage level from the power means to produce a first supply voltage (Fig. 2A voltage node 212-214) and a second supply voltage (Fig. 2A node 216-218); and switching means (Fig. 2A 204b,238) for selectively coupling the first supply voltage and the second supply voltage to an energy means (Fig. 2A 236) based on a current (Fig. 8B 800B) corresponding to the energy means (paragraph 25).
Claim(s) 18 is rejected under 35 U.S.C. 102a1 as being anticipated by Arno (US 2014/0070787).
With respect to claim 18, Arno discloses a method for voltage regulation, the method comprising: adjusting a voltage level from at least one battery (Fig. 7 Vbat) to produce a first voltage level (Fig. 8 Vbat) and a second voltage level (Fig. 8 voltage N+1/N Vbat or N-1/N Vbat); providing the first voltage level at a first terminal (Fig. 7 terminal 54); providing the second voltage level at a second terminal (Fig. 7 terminal of capacitor 7(i)); selectively coupling (Fig. 7 switches connected to N1 couple the voltages to N1) the first voltage level from the first terminal and the second voltage level from the second terminal through multiple switches (Fig. 7 switches couple to N1) to an energy storage unit (Fig. 7 51), the multiple switches including a first switch (Fig. 7 switch between 54,N1) coupled to the first terminal, a second switch (Fig. 7 switch of 5(i) connected between 7(i) and N1) coupled to the second terminal (Fig. 7 terminal of 5(i)), and a third switch (Fig. 7 switch between N1 and G) coupled to a third terminal (Fig. 7 G).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5-13, 15-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Arno (US 2014/007087) in view of Prexl (US 2013/0320949).
With respect to claim 1, Arno discloses an apparatus for voltage regulation, the apparatus comprising: a battery subsystem (Fig. 7 Vbat) comprising a first terminal (Fig. 7 54), a second terminal (Fig. 7 terminals to 7(i)), a third terminal (Fig. 7 ground G), at least one battery (Fig. 7 Vbat) coupled between the first terminal (Fig. 7 54) and the third terminal (Fig. 7 G), and voltage adjustment circuitry (Fig. 7 7(i) and switches on battery side of 5(i)) coupled (Fig. 7 54) to the at least one battery between (Fig. 7 battery between 5(i) and ground G) the second terminal and the third terminal, wherein the voltage adjustment circuitry is coupled between (Fig. 7 coupled between 54 and 7(i)) the first terminal and the second terminal; and a voltage regulator (Fig. 7 switches connected to N1) coupled to the first terminal, the second terminal, and the third terminal, the voltage regulator comprising: multiple switches (Fig. 7 switches connected to N1) comprising a first switch (Fig. 7 switch between 54 and N1) coupled to the first terminal, a second switch (Fig. 7 switch between 7(i) and N1) coupled to the second terminal, and a third switch (Fig. 7 switch between N1 and G) coupled to the third terminal; and an energy storage unit (Fig. 7 L) coupled to the multiple switches. Arno discloses the at least one battery but remains silent as to the at least one battery including a first battery cell and a second battery cell coupled between the first terminal and the third terminal. It was well known before the effective filing date of the claimed invention for a battery to be comprised of first and second battery cells.
Prexl discloses an apparatus for voltage regulation comprising at least one battery including a first battery cell and a second battery cell (paragraph 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the switching means for selectively coupling at least one battery including a first battery cell and a second battery cell coupled between the first terminal and the third terminal, in order to increase the output voltage or energy storage capacity.
With respect to claim 2, Arno in view of Prexl make obvious the apparatus of claim 1, wherein the battery subsystem is configured to: provide a first voltage (Fig. 8 Vbat) level at the first terminal; and provide a second voltage level (Fig. 8 N-1/N Vbat) at the second terminal.
With respect to claim 3, Arno in view of Prexl make obvious the apparatus of claim 2, wherein the second voltage level (Fig. 8 2/N Vbat) is approximately twice the first voltage level (Fig. 8 1/N Vbat). Examiner notes multiple combinations exist where the claimed second voltage level is twice the first voltage level, such as Vbat being the second voltage level and N-(N/2)/N being the first voltage level. Examiner also believes it would have been obvious to pump the voltage to higher levels than shown in Figure 8, such as to the second voltage level of 2Vbat.
With respect to claim 5, Arno in view of Prexl make obvious the apparatus of claim 1, wherein, the voltage adjustment circuitry comprises a charge pump (paragraph 83).
With respect to claim 6, Arno in view of Prexl make obvious the apparatus of claim 5, wherein, the voltage regulator comprises a dual-input, three-level buck converter (Fig. 7 switches connected to N1 and 51) or a dual-input, three-level buck-boost converter.
With respect to claim 7, Arno in view of Prexl make obvious the apparatus of claim 1, wherein: the voltage adjustment circuitry comprises a capacitive divider (Fig. 7 7(i)); and the voltage regulator comprises a dual-input, three-level buck converter (Fig. 7 switches connected to N1 and 51) or a dual-input, three-level buck-boost converter.
With respect to claim 8, Arno in view of Prexl make obvious the apparatus of claim 1, further comprising control circuitry (Fig. 14 57) coupled to the multiple switches and configured to selectively couple the energy storage unit to: the first terminal via the first switch; the second terminal via the second switch; or the third terminal via the third switch.
With respect to claim 9, Arno in view of Prexl make obvious the apparatus of claim 1, wherein the control circuitry comprises: multiple ramp generators (Fig. 14 SAW1-SAW4); and one or more comparators (Fig. 14 62) coupled between the multiple ramp generators and the multiple switches.
With respect to claim 10, Arno in view of Prexl make obvious the apparatus of claim 9 as set forth above, and Arno further discloses a finite state machine (Fig. 14 logic block in 57) coupled between the one or more comparators (Fig. 14 62) and the multiple switches (Fig. 14 56). Arno remains silent as to wherein the control circuitry comprises: circuitry configured to determine a current corresponding to the voltage regulator, the circuitry coupled between the energy storage unit and the multiple ramp generators. It was well known before the effective filing date of the claimed invention to determine a current corresponding to the voltage regulator.
Prexl discloses wherein the control circuitry comprises: circuitry (Fig. 1 6) configured to determine a current (Fig. 1 CSOUT) corresponding to the voltage regulator, the circuitry coupled between the energy storage unit (Fig. 1 L) and the multiple ramp generators (Fig. 1 4).It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement wherein the control circuitry comprises: circuitry configured to determine a current corresponding to the voltage regulator, the circuitry coupled between the energy storage unit and the multiple ramp generators, in order to control the current to improve the regulation.
With respect to claim 11, Arno in view of Prexl make obvious the apparatus of claim 10, wherein: the multiple ramp generators comprise at least three ramp generators (Fig. 14 SAW1-SAW4); and the finite state machine (Fig. 1 block of 57 receives PWM1-PWM4) is configured to operate the multiple switches based on at least three ramp signals (Fig. 1 PWM1-PWM4 depend on SAW1-SAW4) provided by the at least three ramp generators and based on the current (in combination, non-inverting input to the comparators 62 depends on current as in Prexl Fig. 1 A1-A2) provided by the circuitry.
With respect to claim 12, Arno in view of Prexl make obvious the apparatus of claim 1, further comprising: a first voltage rail (Fig. 7 54) coupled between the first terminal of the battery subsystem and the first switch of the voltage regulator; a second voltage rail (Fig. 7 rail connected to 7(i)) coupled between the second terminal of the battery subsystem and the second switch of the voltage regulator; and a ground node (Fig. 7 G) coupled between the third terminal of the battery subsystem and the third switch of the voltage regulator.
With respect to claim 13, Arno in view of Prexl make obvious the apparatus of claim 1, wherein: the energy storage unit comprises an inductor (Fig. 7 L); the inductor is coupled between a switching node (Fig. 7 N1) and an output (Fig. 7 52) of the voltage regulator; the voltage regulator comprises a capacitor (Fig. 7 Cout) coupled between the output of the voltage regulator and the ground node (Fig. 7 G); the first switch is coupled between the first voltage rail and the switching node; the second switch is coupled between the second voltage rail and the switching node; and the third switch is coupled between the ground node and the switching node.
With respect to claim 15, Arno discloses an apparatus for voltage regulation, the apparatus comprising: a power means (Fig. 7 Vbat); an adjustment means (Fig. 7 left side of 5(i)) for adjusting a voltage level from the power means to produce a first supply voltage (Fig. 8 voltage N-1/N Vbat) and a second supply voltage (Fig. 8 voltage Vbat); and switching means (Fig. 7 switches connected to N1) for selectively coupling the first supply voltage and the second supply voltage to an energy means (Fig. 7). Arno does not disclose the switching means for selectively coupling the first supply voltage and the second supply voltage to an energy means based on a current corresponding to the energy means. The use of control based on a current corresponding to the energy means was well known before the effective filing date of the claimed invention.
Prexl discloses the switching means (Fig. N1-N4) for selectively coupling the supply voltage (Fig. VIN) to an energy means (Fig. L) based on (Fig. CSOUT) a current (Fig. IL) corresponding to the energy means. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the switching means for selectively coupling the first supply voltage and the second supply voltage to an energy means based on a current corresponding to the energy means, in order to control the output current to improve the output regulation.
With respect to claim 16, Arno in view of Prexl make obvious the apparatus of claim 15, wherein the power means comprises at least one battery (Arno Fig. 7 Vbat).
Arno remains silent as the battery comprising first and second cells, which was well known before the effective filing date of the claimed invention.
Prexl discloses wherein the power means comprises at least one battery including a first battery cell and a second battery cell (paragraph 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement wherein the power means comprises at least one battery including a first battery cell and a second battery cell, in order to increase the input voltage or energy storage capacity.
With respect to claim 17, Arno in view of Prexl make obvious the apparatus of claim 15, further comprising control means (Fig. 4-6,RS,A1-A2, R1-R6,C1-C2) for operating the switching means to selectively couple (Arno Fig. 14 57 modified by the current loop of Prexl) the first supply voltage and the second supply voltage to the energy means based on the current (Fig. CSOUT corresponds to IL) corresponding to the energy means.
With respect to claim 19, Arno discloses the method of claim 18 as set forth above, and remains silent as to wherein the least one battery further comprises a first battery cell and a second battery cell. It was well known before the effective filing date of the claimed invention to implement a battery with first and second battery cells.
Prexl discloses wherein the least one battery further comprises a first battery cell and a second battery cell (paragraph 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to wherein the least one battery further comprises a first battery cell and a second battery cell, in order to increase the input voltage or energy storage capacity.
With respect to claim 20, Arno in view of Prexl make obvious the method of claim 19, wherein the first battery cell and the second battery cell are coupled together in series (Prexl paragraph 2).
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Arno (US 2014/007087) in view of Prexl (US 2013/0320949) and further in view of Pullen (US 2020/0076306).
With respect to claim 14, Arno in view of Prexl make obvious the apparatus of claim 13, wherein the control circuitry is configured to: open the second switch and open and close the first switch and the third switch to implement a first bucking operation (Fig. 8 switching between Vbat/N and 0); open the third switch and open and close the first switch and the second switch to implement a second bucking operation (Fig. 8 switching between Vbat/N and 2/N Vbat). Arno remains silent as to implementing a pass-through mode which was well known before the effective filing date of the claimed invention.
Pullen discloses implementing a pass-through mode (Fig. 4 430). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement an operation to open the second switch and the third switch and close the first switch to implement a pass-through mode. The reason for doing so was to improve the efficiency by eliminating the switch loss when the input voltage is sufficiently near the desired output voltage.
Claim(s) 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Arno (US 2014/007087) in view of Zhang (CN 112636438).
With respect to claim 1, Arno discloses an apparatus for voltage regulation, the apparatus comprising: a battery subsystem (Fig. 7 Vbat) comprising a first terminal (Fig. 7 54), a second terminal (Fig. 7 terminals to 7(i)), a third terminal (Fig. 7 ground G), at least one battery (Fig. 7 Vbat) coupled between the first terminal (Fig. 7 54) and the third terminal (Fig. 7 G), and voltage adjustment circuitry (Fig. 7 7(i) and switches on battery side of 5(i)) coupled (Fig. 7 54) to the at least one battery between (Fig. 7 battery between 5(i) and ground G) the second terminal and the third terminal, wherein the voltage adjustment circuitry is coupled between (Fig. 7 coupled between 54 and 7(i)) the first terminal and the second terminal; and a voltage regulator (Fig. 7 switches connected to N1) coupled to the first terminal, the second terminal, and the third terminal, the voltage regulator comprising: multiple switches (Fig. 7 switches connected to N1) comprising a first switch (Fig. 7 switch between 54 and N1) coupled to the first terminal, a second switch (Fig. 7 switch between 7(i) and N1) coupled to the second terminal, and a third switch (Fig. 7 switch between N1 and G) coupled to the third terminal; and an energy storage unit (Fig. 7 L) coupled to the multiple switches. Arno discloses the at least one battery but remains silent as to the at least one battery including a first battery cell and a second battery cell coupled between the first terminal and the third terminal. It was well known before the effective filing date of the claimed invention for a battery to be comprised of first and second battery cells.
Zhang discloses an apparatus for voltage regulation comprising at least one battery including a first battery cell (Fig. 1 Bat1) and a second battery cell (Fig. 1 Bat2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the switching means for selectively coupling at least one battery including a first battery cell and a second battery cell coupled between the first terminal and the third terminal, in order to increase the output voltage or energy storage capacity.
With respect to claim 4, Arno in view of Zhang make obvious the apparatus of claim 1, wherein: the first battery cell and the second battery cell are coupled together in series between the second terminal (as in Zhang Fig. 1 Bat1 +) and the third terminal (as in Zhang Fig. 1 Bat2 -); and the battery subsystem comprises a center tap (Zhang Fig. 1 node Bat1-Bat2) coupled to the at least one battery between the first battery cell and the second battery cell, the center tap coupled to the first terminal (as in Zhang Fig. 1).
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, 5-11 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5,7,7,8,5,5,5,5,5,5,5,5,5 and 5, respectively, of U.S. Patent No. 12,224,655. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the patent claims the limitations of the application, thereby anticipating the claimed battery subsystem, voltage regulator, energy storage unit and voltage adjustment circuitry of claim 1. Claim 7 of the patent claims the charge pump and dual input converters of claims 5-6, while claim 8 recites the capacitive divider and dual input converters of claim 7. Claim 1 of the patent further recites the circuitry, finite state machine and ramp generators of claims 8-11. The limitations of application claims 15-17 are recited in claim 5 of the patent, with the battery subsystem as the power means, the voltage adjustment circuitry as the adjustment means, and the switches of the voltage regulator as the switching means. The limitations of claims 18-20 of the application are also met by claim 5 of the patent, with the adjusting a voltage performed by the voltage adjustment circuitry, the terminals have voltage levels, and the selectively coupling is performed by the switches of the voltage regulator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARRY RAYMOND BEHM whose telephone number is (571)272-8929. The examiner can normally be reached M-F: 8-5 EST.
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/HARRY R BEHM/Primary Examiner, Art Unit 2838
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