`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
`
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`15/108,823
`
`06/29/2016
`
`Satoru INAKAGATA
`
`ONDAP0140WOUS
`
`6957
`
`(15/17/2018 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`0 TOOLE’ COLLEENJ
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
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`CLEVELAND, OH 44115
`
`2842
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`05/17/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/108,823 INAKAGATA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`COLLEEN O TOOLE $2215 2842
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 1/6/18.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-16is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-16 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20180511
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`

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`Application/Control Number: 15/108,823
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`Page 2
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`Art Unit: 2842
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(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.
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`2.
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`Claim(s) 1, 4-9 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Endo et al. (U.S. Patent Application Publication 2014/0152119, hereafter
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`Endo).
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`Claim 1 : Endo teaches a circuit constant variable circuit that varies a circuit constant of
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`a passive element of which impedance changes in accordance with a frequency of an
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`alternating current (Figure 3), the circuit constant variable circuit comprising:
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`a series circuit including a first bidirectional switch (SW1) and a passive element
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`(CA1) that are connected in series;
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`a second bidirectional switch (SW2) connected in parallel to the series circuit;
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`and
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`a control circuit (102) that causes, at least once during a single cycle of the
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`alternating current, the first bidirectional switch to be conductive in one direction while
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`the second bidirectional switch is non-conductive in two directions ([0094]) and
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`subsequently causes the first bidirectional switch to be conductive in the other direction
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`q0097p.
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`

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`Application/Control Number: 15/108,823
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`Page 3
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`Art Unit: 2842
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`Claim 9: Endo teaches a circuit constant variable circuit that varies a circuit constant of
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`a passive element of which impedance changes in accordance with a frequency of an
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`alternating current (Figure 3), the circuit constant variable circuit comprising:
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`the passive element (CA1);
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`a first bidirectional switch (SW1) connected in series to the passive element;
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`a second bidirectional switch (SW2) connected in parallel to the passive element;
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`and
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`a control circuit (102) that causes, during a single cycle of the alternating current,
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`the first bidirectional switch to be conductive in one direction while the second
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`bidirectional switch is non-conductive in two directions ([0094]) and subsequently
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`causes the first bidirectional switch to be conductive in the other direction ([0097]).
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`Claims 4 and 12: Endo further teaches that each of the first bidirectional switch and the
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`second bidirectional switch includes two MOS transistors that are connected in series
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`(Figure 4C).
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`Claims 5 and 13: Endo further teaches that the passive element includes a capacitor or
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`a coil (capacitor CA1).
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`Claims 6 and 14: Endo further teaches that the passive element includes a capacitor
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`and a coil, and the capacitor and the coil are connected in series or in parallel (capacitor
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`CA1).
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`

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`Application/Control Number: 15/108,823
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`Page 4
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`Art Unit: 2842
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`Claims 7 and 15: Endo further teaches that the control circuit causes, at least once
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`during a single cycle of the alternating current, the first bidirectional switch to be
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`conductive in one direction while the second bidirectional switch is non-conductive in
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`two directions, subsequently causes the first bidirectional switch to be conductive in the
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`other direction, and then causes the first bidirectional switch and the second
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`bidirectional switch to be conductive in two directions (via 102; [0097]).
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`Claims 8 and 16: Endo further teaches that the control circuit controls a time in which
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`the first bidirectional switch is conductive in one direction and a time in which the first
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`bidirectional switch is conductive in the other direction (via 102; [0097]).
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`Claim Rejections - 35 USC § 103
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`3.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`4.
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`Claims 2, 3, 10 and 11 is/are rejected under 35 U.S.C. 103 as being
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`unpatentable over Endo in view of Morita et al. (U.S. Patent Application Publication
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`2010/0321363, hereafter Morita).
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`Claims 2 and 10: Endo teaches the limitations of claims 1 and 9 above. Endo does not
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`specifically teach that the first and second bidirectional switches includes a GaN switch.
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`

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`Application/Control Number: 15/108,823
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`Page 5
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`Art Unit: 2842
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`Morita teaches a bidirectional switch comprising a GaN bidirectional switching device
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`having a double-gate (Figure 6).
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`It would have been obvious to one of ordinary skill in
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`the art at the time the invention was made to use the GaN bidirectional switching device
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`taught by Morita in the circuit of Endo to reduce the ON voltage ([0195]).
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`Claims 3 and 11: Endo teaches the limitations of claims 1 and 9 above. Endo does not
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`specifically teach that the first and second bidirectional switches include two lGBTs.
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`Morita teaches a bidirectional switch comprising two series circuits, each including a
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`diode and an IGBT that are connected in series, and the two series circuits are
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`connected in parallel so that the two series circuits have polarities of different directions
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`(Figure 4).
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`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to use the bidirectional switch taught by Morita in the circuit of Endo
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`to reduce power loss ([0180]).
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`Response to Arguments
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`5.
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`Applicant's arguments filed January 6, 2018 have been fully considered but they
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`are not persuasive. Applicant asserts that Endo does not teach a bidirectional switch.
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`Examiner respectfully disagrees.
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`In response to applicant's argument that the
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`references fail to show certain features of applicant’s invention, it is noted that the
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`features upon which applicant relies (i.e., the bidirectional switch has four different
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`modes of operation as described in Applicant’s paragraphs [0022]-[0026] and the
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`structures of Figures 1, 5 and 6) are not recited in the rejected claim(s). Although the
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`

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`Application/Control Number: 15/108,823
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`Page 6
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`Art Unit: 2842
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`claims are interpreted in light of the specification, limitations from the specification are
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`not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed.
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`Cir. 1993). Therefore, Endo teaches first and second bidirectional switches ([0097]).
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`Applicant further asserts that Endo does not teach that the first bidirectional
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`switch is set to conduct first in one direction and subsequently in the other direction.
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`Examiner respectfully disagrees. Endo teaches that when the first bidirectional switch
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`(SW1) is on, it conducts first in one direction and subsequently in the other direction
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`([0094], [0097] and further detailed in Figure 8).
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`Conclusion
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`6.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`

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`Application/Control Number: 15/108,823
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`Page 7
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`Art Unit: 2842
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to COLLEEN O TOOLE whose telephone number is
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`(571 )270-1 273. The examiner can normally be reached on M-F 8:30-5:00pm EST.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Lincoln Donovan can be reached on (571) 272-1988. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 15/108,823
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`Page 8
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`Art Unit: 2842
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`
`/C. O./
`
`Examiner, Art Unit 2842
`/LINCOLN DONOVAN/
`
`Supervisory Patent Examiner, Art Unit 2842
`
`