Detailed Action
summary
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 .
1.This office action is in response to the application filed on January 28, 2025.
2. Claim 1 is pending and has been examined.
Drawings
3. The drawings submitted on 1/28/2025 are acceptable.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 0/01/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Double Patenting
5. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12218581. This is a statutory double patenting rejection.
Conflicting claims Case No 19039729
Conflicting claims Case No US Patent 12218581
1. A power converter, including:(a) a set of one or more power switches coupled in series, the set including a first power switch configured to be coupled to an input terminal and a last power switch configured to be coupled to a reference voltage;(b) a first protective switch having a control input for setting the first switch to an open state or to a closed state, the first switch coupled between the first power switch and an adjacent power switch in the set of one or more power switches; and(c) a second protective switch configured to be coupled to a reference voltage and having a control input for setting the second switch to an open state or to a closed state, the second switch coupled between the last power switch and an adjacent power switch in the set of one or more power switches; wherein the first switch and the second switch are set to the closed state during normal operation of the power converter, and wherein at least one of the first switch and the second switch is set to the open state in response to one or more events.
1. A power converter, including: (a) a set of one or more power switches coupled in series, the set including a first power switch configured to be coupled to an input terminal and a last power switch configured to be coupled to a reference voltage; (b) a first protective switch having a control input for setting the first protective switch to an open state or to a closed state, the first protective switch coupled between the first power switch and an adjacent power switch in the set of one or more power switches; and (c) a second protective switch configured to be coupled to a reference voltage and having a control input for setting the second protective switch to an open state or to a closed state, the second protective switch coupled between the last power switch and an adjacent power switch in the set of one or more power switches; wherein the first protective switch and the second protective switch are set to the closed state during normal operation of the power converter, and wherein at least one of the first protective switch and the second protective switch is set to the open state in response to one or more events.
Double Patenting
6. 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11923765. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims anticipates examined claim.
Conflicting claims Case No 19039729
Conflicting claims Case No US Patent 11923765.
. A power converter, including:(a) a set of one or more power switches coupled in series, the set including a first power switch configured to be coupled to an input terminal and a last power switch configured to be coupled to a reference voltage;(b) a first protective switch having a control input for setting the first switch to an open state or to a closed state, the first switch coupled between the first power switch and an adjacent power switch in the set of one or more power switches; and(c) a second protective switch configured to be coupled to a reference voltage and having a control input for setting the second switch to an open state or to a closed state, the second switch coupled between the last power switch and an adjacent power switch in the set of one or more power switches; wherein the first switch and the second switch are set to the closed state during normal operation of the power converter, and wherein at least one of the first switch and the second switch is set to the open state in response to one or more events.
1. A power converter, including: (a) a first switch having a control input for setting the first switch to an open state or to a closed state; (b) a second switch having a control input for setting the first switch to an open state or to a closed state; and (c) a set of one or more switches coupled in series, the set being coupled in series between the first switch and the second switch; wherein the first switch and the second switch are set to the closed state during normal operation of the power converter, and at least one of the first switch and the second switch is set to the open state in response to one or more events.
Claim Rejections - 35 USC § 112
7. 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.
Claim 1 is 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.
Claim 1 is rejected to because of the following informalities:
Claim 1 recites “one or more events” is used in the claim is vague and unclear and leaves the reader in doubt as to the meaning because the claim does not define what is considered to be “one or more events”.
Claim 1 recites “the first switch” in line 4 and “the second switch” in line 9. There are insufficient antecedent basis for these limitations.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SISAY G TIKU whose telephone number is (571)272-6898. The examiner can normally be reached 8:30AM-6:00PM. 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, 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SISAY G TIKU/
Primary Examiner, Art Unit 2838
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