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 .
Information Disclosure Statement
Information Disclosure Statements (IDS) filed on 06/29/2026 was considered.
Response to Amendment
The Applicant’s Amendment filed on 06/29/2026 in which claims 1, 15, 18, and 20 have been amended, claim 12 has been canceled, claims 21-22 have been added and entered of record.
Claim 12 has been cancelled and claim 20 has been amended herein to correct the informalities. Based on the amended claims, the objections to the claims are withdrawn.
Claims 1-11 and 13-22 are presented for examination.
Response to Argument
Applicant argues that “Tan does not disclose a control board having a voltage boost” (see Remarks page 6).
In response, the Examiner respectfully disagrees. The applicant has attacked the references individually when they are meant to be considered a combination, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Tan discloses a main power conditioning (a.k.a. voltage regulator) and the controller can vary the voltage “The actuator control module may have an inbuilt map of such degradation and, combined with battery capacity sensing, the actuator control module can vary the charge level and voltage to maximise the battery life and performance at different stages in its lifespan” [0050]. Tan does not explicitly disclose a voltage boost. Thieme discloses a control board includes to a voltage boost system [0088]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and have the control board includes to a voltage boost system. Doing so would allow increase the battery voltage to an operating voltage that required by the electric actuator, since using a boost converter to adjust a lower voltage to a higher voltage that required by a load or to charge a battery is a common knowledge in the art (primary reason for buck or boost converter).
Applicant also argues with respect to the amended independent claims that “neither Tan nor Thieme disclose one or more batteries being in a modular unit with the control board or power and management unit” (see Remarks page 6).
In response, the arguments have been considered but are not persuasive because the arguments are based substantially on the newly added limitations by the applicant to the independent claims. Please see the rejection below.
Applicant further argues that “the combination of Thieme with Tan is improper in the present instance. While Tan generally references that similar battery cell technologies are able to be utilized, this vague and generic awareness of possible alternatives does not identify any specific technologies that can be substituted or provide any explanation as to why a Lithium-Iron-Phosphate cell would be suitable in the situation identified in the present claims”.
In response to Applicant's argument that there is no suggestion to combine the references, the Examiner recognizes that references cannot be arbitrarily combined and that there must be some reason why one skilled in the art would be motivated to make the proposed combination of primary and secondary references. In re Nomiya, 184
USPQ 607 (CCPA 1975). However, there is no requirement that a motivation to make the modification be expressly articulated. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art In re McLaughlin, 170 USPQ 209 (CCP A 1971) references are evaluated by what they suggest to one versed in the art, rather-than by their specific disclosures. In re Bozek. 163 USPQ 545 (CCPA 1969). In this case, Lithium-Iron-Phosphate cell was discovered before the year 2000, an improvement of Lithium-Iron battery, and commercialized after the year 2000. It is well-known for long cycle life, thermal stability, high discharge, and low self-discharge rate. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and use Lithium-Iron-Phosphate cell when these features are needed for the application.
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.
Claim(s) 1-11, 18-19, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAN et al., US Patent Publication 20210184489; hereafter TAN in view of Thieme et al., US Patent Publication 20160137092; hereinafter Thieme.
Regarding claim 1, TAN discloses an internal battery backup system (Figs. 1-3) [0005] for an electric actuator [0040] connected to a valve [0040] or damper (having a housing (Fig. 1, housing 1) with an internal cavity (Fig. 1, housing 1 has internal cavity), the system comprising:
a first Lithium-Iron-Phosphate cell (Fig. 1, battery cells pack 6) ([0049] “Secondary Lithium and similar battery cell technologies are able to be utilized” indicates Lithium-Iron-Phosphate is also included since Lithium-Iron-Phosphate batteries commercialized well before the reference affective filing date) [0047] configured for placement in the internal cavity of the actuator (Fig. 1, battery pack 6 is inside the housing 1);
a control board (Fig. 1, 3 and 7, the disclosure indicates many electronic components that required to mount on a circuit board) [0045] coupled to the first Lithium-Iron-Phosphate cell (Fig. 1, battery cells pack 6) having circuitry for sensing a fault condition (Fig. 3, step 104 “is Mains power OK?”) and activating the first Lithium-Iron-Phosphate cell to provide power (Fig. 3, step 126) to initiate fail-safe positioning by the actuator [0002] [0062] and having a voltage boost system (Fig. 1, main power conditioning), wherein the first Lithium-Iron-Phosphate cell and the control board are part of a singular modular unit (Fig. 1, battery cells pack 6, the control modules 3, and the control module 7 are part of singular module housing unit 1).
TAN discloses the controller can vary the voltage “The actuator control module may have an inbuilt map of such degradation and, combined with battery capacity sensing, the actuator control module can vary the charge level and voltage to maximise the battery life and performance at different stages in its lifespan” [0050]; and the lithium battery including “similar battery cell technologies are able to be utilized” [0049]; and the first Lithium battery cell is a Lithium-Iron-Phosphate cell. Tan does not explicitly disclose the vary voltage system is a voltage boost system; and the first Lithium battery cell is a Lithium-Iron-Phosphate cell. Thieme discloses a boost system [0088]; and a system using Lithium-Iron-Phosphate cell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and use a boost system and Lithium-Iron-Phosphate cell. Doing so would allow to increase the battery voltage to an operating voltage that required by the electric actuator or a higher voltage that required to charge the battery; and have an improvement of the Lithium-Iron-Phosphate cell such as long cycle life, thermal stability, high discharge, and low self-discharge rate when these features are needed for the application since the Lithium-Iron-Phosphate batteries commercialized well before the reference affective filing date with the aforementioned benefits.
Regarding claim 2, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the internal battery backup system further comprising a second Lithium-Iron- Phosphate cell configured for placement in the internal cavity of the actuator coupled to the control board (Fig. 1, battery cells pack 6) [0041].
Regarding claim 3, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the control board (Fig. 2, 12) is coupled to the mains power line (Fig. 1, external power supply) providing power to the actuator [0005].
Regarding claim 4, the combination of TAN and Thieme discloses the internal battery backup system of claim 3 above, TAN also discloses the control board is configured to sense a loss of power in the mains power line (Fig. 3, step 104 no on “is Mains power OK?”).
Regarding claim 5, the combination of TAN and Thieme discloses the internal battery backup system of claim 4 above, TAN also discloses the control board activates the first Lithium-Iron-Phosphate cell when a loss of power is sensed in the mains power line (Fig. 3, step 126).
Regarding claim 6, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the control board is coupled to a temperature sensing device [0020].
Regarding claim 7, the combination of TAN and Thieme discloses the internal battery backup system of claim 6 above, TAN also discloses the control board is configured to compare a temperature reading from the temperature sensing device with a set limit temperature range and to provide a signal if the temperature reading is outside the set limit temperature range [0009] [0013].
Regarding claim 8, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the control board is configured to determine a voltage level of the first Lithium-Iron-Phosphate cell and to provide a signal if the voltage level of the first Lithium-Iron-Phosphate cell falls below a set limit (Fig. 3, step 128).
Regarding claim 9, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN discloses the first Lithium-Iron-Phosphate cell and the second Lithium-Iron-Phosphate cell can be connected in series. TAN does not disclose the first Lithium-Iron-Phosphate cell and the second Lithium-Iron-Phosphate cell are coupled in parallel. Thieme discloses cells can be connected in parallel to increase current capacity. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and connect the first Lithium-Iron-Phosphate cell and the second Lithium-Iron-Phosphate cell in parallel. Doing so would allow supply enough power to the electric actuator since connect battery cells in parallel to increase current to a load is well-known practice in the art.
Regarding claim 10, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the control board is coupled to field control system ([0039] “power generation industries, oil and gas flow control” indicates the actuator is a part of a field control system).
Regarding claim 11, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN also discloses the control board includes a charging circuit and a discharge circuit [0011]-[0013].
Regarding claim 18, TAN discloses an internal battery backup system (Figs. 1-3) [0005] for an electric actuator [0040] comprising:
a first Lithium-Iron-Phosphate battery pack (Fig. 1, battery cells pack 6) ([0049] “Secondary Lithium and similar battery cell technologies are able to be utilized” indicates Lithium-Iron-Phosphate is also included since Lithium-Iron-Phosphate batteries commercialized well before the reference affective filing date) containing a first Lithium-Iron-Phosphate cell and a second Lithium-Iron-Phosphate cell (Fig. 1, battery cells pack 6) ([0049]; and,
a power and management unit (Fig. 1, 3 and 7) connected to the first Lithium-Iron-Phosphate battery pack (Fig. 1, battery cells pack 6) configured to charge the cells in the Lithium-Iron-Phosphate battery pack [0011]-[0013] from a mains power supply (Fig. 2, external power supply) and to discharge the cells to the electric actuator (Fig. 3, step 126) upon sensing a fault condition in the mains power supply (Fig. 3, step 104 no on “is Mains power OK?”), wherein the first Lithium-Iron-Phosphate battery pack and the power and management unit are part of a singular modular unit (Fig. 1, battery cells pack 6, the control modules 3, and the control module 7 are part of singular module housing unit 1).
TAN discloses the lithium battery cells including “similar battery cell technologies are able to be utilized” [0049]. Tan does not explicitly disclose the first Lithium battery cell is a Lithium-Iron-Phosphate cell. Thieme discloses a system using Lithium-Iron-Phosphate cell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and use Lithium-Iron-Phosphate cell. Doing so would allow to have an improvement of the Lithium-Iron-Phosphate cell such as long cycle life, thermal stability, high discharge, and low self-discharge rate when these features are needed for the application since the Lithium-Iron-Phosphate batteries commercialized well before the reference affective filing date with the aforementioned benefits.
Regarding claim 19, the combination of TAN and Thieme discloses the internal battery backup system of claim 18 above, TAN discloses the Lithium-Iron-Phosphate pack connected to the power and management unit. TAN does not disclose a second Lithium- Iron-Phosphate battery pack. Thieme discloses a system using two battery packs (Fig. 328) [0047]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and have a second Lithium- Iron-Phosphate battery pack. Doing so would allow increase working time of the electric actuator when the main power failed.
Regarding claim 21, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN further disclose the control board includes a charger regulator circuit (Fig. 1, battery control module 7) ([0050] “actuator control module can vary the charge level and voltage” varying voltage indicates regulator circuit).
Regarding claim 22, the combination of TAN and Thieme discloses the internal battery backup system of claim 18 above, TAN further disclose the first Lithium-Iron- Phosphate cell and the second Lithium-Iron-Phosphate cell are connected in parallel ([0043] “a person skilled in the art of battery pack design will be sufficiently familiar with electronic balance charging circuits and over voltage, over current and under voltage protection methods, to select and implement a suitable arrangement according to the cell configuration/wiring method used/capacity and power capability required” indicates wiring cells in parallel or series configurations are considered) and the power and management unit charges and monitors each of the first Lithium-Iron-Phosphate cell and the second Lithium-Iron-Phosphate cell separately ([0043] “In a battery pack of the type described above, it is known to provide a smart balancing charge circuit”).
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAN and Thieme in view of Ottenstein, US Patent 3,665,945; hereinafter Ottenstein.
Regarding claim 13, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, TAN does not disclose the control board is coupled to an end-of-travel switch. Ottenstein discloses an electric actuator system having an end-of-travel switch (Column 5, lines 46-69). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of TAN and Thieme to incorporate the teaching of Ottenstein and have the control board is coupled to an end-of-travel switch. Doing so would allow to stop the motor to save battery power and not to damage the motor since having an end-of-travel switch is a common knowledge in the art.
Regarding claim 14, the combination of TAN, Thieme and Ottenstein discloses the internal battery backup system of claim 1 above, Ottenstein further discloses de-actives the battery cell when the control board senses activation of the end-of-travel switch (Column 5, lines 46-69).
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAN and Thieme in view of Afzal et al., US Patent Publication 20040085793; hereinafter Afzal.
Regarding claim 15, the combination of TAN and Thieme discloses the internal battery backup system of claim 1 above, the combination of TAN and Thieme discloses the voltage boost system. The combination of TAN and Thieme does not explicitly disclose detail of the boost system having an inductor, a capacitor and a MOSFET gate. Afzal discloses a voltage boost system having an inductor, a capacitor and a MOSFET gate. When the boost system operates, the MOSFET gate turn off and cause a direct current (DC) voltage directed through an inductor (Fig. 2C, L2) to charge a capacitor (Fig. 2C, C19) in the voltage boost system. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified combination of TAN and Thieme to incorporate the teaching of Afzal and have a direct current voltage from the first and second Lithium-Iron-Phosphate cells is directed through an inductor to a capacitor in the voltage boost system, since a voltage boost system having an inductor, a capacitor and a MOSFET gate and their operation are well-known in the art.
Regarding claim 16, the combination of TAN, Thieme and Afzal discloses the internal battery backup system of claim 15 above, Afzal further discloses the voltage boost system includes a MOSFET gate (Fig. 2C, Q8) that enables current to flow through the inductor to ground when the boost system is in a drain phase (Fig. 2C, when Q8 is on, current flowing through L2 to ground).
Regarding claim 17, the combination of TAN, Thieme and Afzal discloses the internal battery backup system of claim 15 above, Afzal further discloses the MOSFET gate enables current to flow through the inductor to the capacitor when the boost system is in a charge cycle (Fig. 2C, when Q8 is off, current flowing through L2 to charge C19).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAN and Thieme in view of MacDonald et al. (US 20030080623 A1); hereinafter MacDonald.
Regarding claim 20, the combination of TAN and Thieme discloses the internal battery backup system of claim 18 above, TAN discloses the controller can vary the voltage “The actuator control module may have an inbuilt map of such degradation and, combined with battery capacity sensing, the actuator control module can vary the charge level and voltage to maximise the battery life and performance at different stages in its lifespan” [0050]. TAN does not disclose the internal battery backup system further comprising a boost system in the power and management unit.
Thieme discloses a boost system [0088] for boosting a voltage from a low voltage to an operational voltage. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified TAN to incorporate the teaching of Thieme and use a boost system in the power and management unit and provide a voltage to the actuator greater than the first Lithium-Iron-Phosphate battery pack. Doing so would allow to increase the battery voltage to an operating voltage that required by the electric actuator.
The combination of TAN and Thieme does not explicitly disclose a capacitor at the output of the boost system. MacDonald discloses a boost system having a capacitor at an output of the boost system. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of TAN and Thieme to incorporate the teaching of MacDonald and provide a capacitor at the output of the boost system and have backup system further comprising a boost system in the power and management unit which directs current from the cells in the first Lithium-Iron-Phosphate battery pack through a capacitor to provide a voltage to the actuator greater than the first Lithium-Iron-Phosphate battery pack. Doing so would allow to filtering switching noise of the boost system and provide a stable output since adding a capacitor at the output of a boost converter is a common practice in the art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THAI H TRAN whose telephone number is (571)270-0668. The examiner can normally be reached M - F 8:30 - 5:00.
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/THAI H TRAN/Examiner, Art Unit 2836
/REXFORD N BARNIE/Supervisory Patent Examiner, Art Unit 2836
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