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 .
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Herr (US 2026/0058650).
For claim 1, Herr teaches a soft starter for an optical module (Figure 4), adapted to be electrically connected between a power conversion circuit (circuit not shown which generates VIN) and the optical module (capable of being connected to VOUT, as explained below) so as to transmit a driving current outputted by the power conversion circuit to the optical module (current corresponding to VOUT), said soft starter comprising:
a switch (SP) adapted to be electrically connected between the power conversion circuit and the optical module (as understood by examination of Figure 4), and configured to operate in one of a closed state for allowing the driving current to flow through said switch ([34]), and an open state for disallowing the driving current to flow through said switch ([34]); and
a switch-control circuit (60, RSNS) having a first terminal that is adapted to be electrically connected to the optical module (input of 611), and a control terminal that is electrically connected to said switch (terminal carrying VG), said switch-control circuit being configured to
detect, via said first terminal, a connection signal (VPD) that indicates whether or not the optical module is electrically connected to said soft starter ([34]-[35]),
upon detecting the connection signal indicating that the optical module is electrically connected to said soft starter, output, via said control terminal, a control signal to said switch after a period of latency (from t1 to t3, Figure 5) to control said switch to switch from the open state to the closed state, such that said switch allows the driving current to flow through said switch to the optical module for starting the optical module ([39]).
It is noted that the use of the soft starter of claim 1 with an optical module relates only to its intended use since the use of a soft starter is useful in preventing inrush current to any type of device, not only optical modules. MPEP section 2114 which indicates that "the manner of operating a device does not differentiate an apparatus claim from the prior art" (emphasis added). Applicant should also note the holdings in In re Masham, 2 USPQ2d 1647 (1987); In re Schreiber, 44 USPQ2d 1429 (1997); In re Swinehart, 169 USPQ 226 (1971); In re Casey, 152 USPQ 235 (1967); In re Danly, 120 USPQ 528 (1959); and Hewlewtt-Packard Co. v. Bausch & Lomb, 15 USPQ 1525 (1990). Each of these cases has held that apparatus claims must be structurally distinguishable from the apparatus of the prior art to be patentable, and that the claimed manner in which the apparatus is intended to be used or operated cannot be relied upon for patentability. Moreover, it has been long held that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on, see In re Swinehart, 58 CCPA 1027, 169 USPQ 226 (1971).
For claim 2, Herr further teaches:
said switch is a metal-oxide- semiconductor field-effect transistor ([5]) that has a gate electrically connected to said control terminal of said switch-control circuit, a source adapted to be electrically connected to the power conversion circuit, and a drain adapted to be electrically connected to the optical module (as understood by examination of Figure 4).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herr in view of Wessendorf (US 11,722,106).
For claim 3, Herr teaches the limitations of claim 2 but fails to teach the details of the switch control circuit as claimed.
It is noted that Herr’s switch control circuit includes an amplifier (62).
However, Wessendorf teaches the details of an amplifier (Figure 1A) having a first and second inputs (base terminals of 110) and an output terminal (125).
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to implement Herr’s amplifier using Wessendorf’s amplifier (Figure 1A) since it merely relates to a specific-for-broad substitution, i.e., any person of ordinary skill in the art would understand that Herr’s generic amplifier symbol indicates that any well-known amplifier circuit can/should be used to implement this generic symbol.
Furthermore, the particular known technique for implementing an amplifier was recognized as part of the ordinary capabilities of one skilled in the art, as evidenced by Wessendorf.
The combination of Herr and Wessendorf teaches that said switch-control circuit includes:
a first transistor (110 on the right) having a base that is electrically connected to said first terminal of said switch-control circuit (via SP, as understood by the combination of references), an emitter that is grounded (as understood by examination of Wessendorf’s Figure 1A), and a collector (as understood by examination of Wessendorf’s Figure 1A), said first transistor being configured to operate in one of a conduction state and a non-conduction state (conduction state, as understood by examination of the Figures); and
a second transistor (130) having a base that is electrically connected to said collector of said first transistor (as understood by examination of Wessendorf’s Figure 1A), a collector that is electrically connected to said gate of said switch (as understood by the combination of references), and an emitter that is grounded (as understood by examination of Wessendorf’s Figure 1), said second transistor being configured to operate in one of a conduction state and a non-conduction state (conduction state),
wherein, when the optical module is electrically connected to said soft starter, the connection signal changes to a low signal level (VPD is low during normal operation, [35]), which sequentially makes said first transistor operate in the non-conduction state, said second transistor operate in the conduction state, and said switch operate in the closed state (as understood by the combination of references).
For claims 4-5, the combination of Herr and Wessendorf as cited above teaches the limitations of claim 3 but fails to teach the limitations of claims 4-5.
However, Examiner takes official notice that it is notoriously old and well known to use capacitors between a signal node and ground as low pass filters to filter voltage spikes and/or noise.
Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to add a first capacitor to the base of the first transistor and ground and a second capacitor to the base of the second transistor and ground in order to improve signal stability.
For claims 12-14, the use of the soft starter of claim 1 within a system mainboard does not further define the soft starter of claim 1 over the prior art and as such, relates only to the intended use of the soft starter. MPEP section 2114 which indicates that "the manner of operating a device does not differentiate an apparatus claim from the prior art" (emphasis added). Applicant should also note the holdings in In re Masham, 2 USPQ2d 1647 (1987); In re Schreiber, 44 USPQ2d 1429 (1997); In re Swinehart, 169 USPQ 226 (1971); In re Casey, 152 USPQ 235 (1967); In re Danly, 120 USPQ 528 (1959); and Hewlewtt-Packard Co. v. Bausch & Lomb, 15 USPQ 1525 (1990). Each of these cases has held that apparatus claims must be structurally distinguishable from the apparatus of the prior art to be patentable, and that the claimed manner in which the apparatus is intended to be used or operated cannot be relied upon for patentability. Moreover, it has been long held that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on, see In re Swinehart, 58 CCPA 1027, 169 USPQ 226 (1971).
Allowable Subject Matter
Claims 6-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bone et al (US 2026/0246268) teaches a hot swap circuit.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL CALRISSIAN PUENTES whose telephone number is (571)270-5070. The examiner can normally be reached M-F 9-6:30 (flex).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taelor Kim can be reached at (571) 270-7166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C PUENTES/Primary Examiner, Art Unit 2836
