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 .
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection
Insofar as the arguments apply to the new grounds of rejection, Applicant argues that references Elmvang, Mandy, Benesohn, Roorda, Tyson, Sandel is not directed to a pool or spa light. However, this is not persuasive because while the references are not directed to a pool or spa light, they are directed to various attaching features of attaching lights analogous to the attachment of pool lights to niches or other features of attaching. As seen in MPEP §2143(1)(C)(D), use of a known technique to improve similar devices or applying a known technique to a known device read for improvement to yield predictable results are exemplary rationales for obviousness.
Applicant argues that Elmvang teaches away from Applicant’s invention. However, Elmvang is relied upon to show attachment via screw threads. This does not constitutes teaching away because Elmvang does not criticize, discredit or otherwise discourage the solution claimed. See MPEP §2141.02(VI).
In response to applicant's argument that the lens of Elmvang would be incorporated in the threads with the lamp behind the lens, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues with respect to Ehret that Ehret has no adapter. However, the element 38 of Ehret is analogous to an adapter in that it both secures to the ring 36 at the exterior (at #40) and also secures to the light source housing at the interior (at #42). Therefore, one having ordinary skill in the art would find it obvious to make similar modifications to the plate of Bauer et al., as discussed in the rejection of the claims.
Applicant argues with respect to Vogtner et al. that even though Vogtner et al. teaches using material to match the walls of a pool, it would not be obvious to use material to match the walls of the pool. The Examiner disagrees. It would be obvious to form recesses similar to that of Vogtner et al. in order to match the pool material, as taught by Vogtner et al. (Paragraph 57 / Paragraphs 37)
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: - -METHOD OF INSTALLING AN LED ASSEMBLY TO A LARGER SPA OR POOL LIGHT NICHE AND CONVERSION ADAPTER FOR INSTALLING AN LED ASSEMBLY TO A LARGER SPA OR POOL LIGHT NICHE- -.
The disclosure is objected to because of the following informalities:
In paragraph 46, change “receiving aperture 10” to - -receiving aperture 102- -.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the openings through the plate adjacent to and aligned with the as least one rib (claims 28 and 32), applying material to the inside of the adapter plate (claim 33) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 28, 30 and 33 is objected to because of the following informalities:
In claim 28, delete “further comprising a hub on the plate extending around the LED assembly receiving aperture” as it is redundant to section b of claim 21, upon which claim 28 depends.
In claim 28, line 5, change “with at least one rib” to - -with at least one of the ribs- -.
Claim 30 recites the limitation "”the LED assembly" in section C. There is insufficient antecedent basis for this limitation in the claim. Section D recites “an assembly receiving aperture,” but this is after section C. It is suggested by the Examiner to switch sections C and D.
In claim 33, last line, change “a niche” to - -the niche- -.
Appropriate correction is required.
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 28, 29, and 32-34 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.
Claims 28 and 32 recites “the adapter further comprising openings through the plate adjacent to and aligned with the at least one rib.” The specification as originally filed does not describe or depict any openings through the plate adjacent to and aligned with the at least one rib. As seen in Fig. 10, the ribs 210 are formed in the plate, but does not align with and are not adjacent to any openings that extend through the plate. Therefore, the specification as originally filed does not convey to one having ordinary skill in the art at the time of the invention that the inventor had possession of the claimed subject matter.
Claim 29 is dependent on claim 28 and contains the same deficiencies.
Claim 33 recites “applying material to the inside of the adapter plate and attaching the adapter and material over a niche.” The specification as originally filed does not describe or depict applying material to the inside of the adapter plate. As seen in Figs. 9 and 10, the inside of the adapter plate is shown without any material being applied thereto. There is fill material 228 applied to the cavity 244 (Paragraph 43), but this is on the outside surface of the adapter that faces away from the niche, whereas the claim specifically states that the inside surface faces the niche. Therefore, the specification as originally filed does not convey to one having ordinary skill in the art at the time of the invention that the inventor had possession of the claimed subject matter.
Claim 34 is dependent on claim 33 and contains the same deficiencies.
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 21, , 24-26, 28, and 32-34 are 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 21 recites “a plate having an inside surface facing the niche and an outside surface on the other side of the niche.” It is unclear if this is a typo and the outside surface is on the opposite side of the plate as compared to the inside surface. As seen in Applicant’s Fig. 5, the adapter 100 has an outer side (left) and an inner side (right), but both sides appear to be on the outside of the niche 10. Therefore, it is unclear if Applicant is trying to claim an undescribed embodiment (which would be new matter) OR if this limitation is a typo. For the purposes of examination, the limitation will be examined as though it recited “a plate having an inside surface facing the niche and an outside surface on the opposite side of the plate as the inside surface.”
Claim 21, line 7 recites that the plate has a periphery with “an inner diameter.” It is unclear what the term inner diameter is referring to. Is the inner diameter the inside where internal threads 204 are located? Is the inner diameter the inner section of peripheral lip 222? For the purposes of examination, the limitation will be examined as though the claimed periphery were instead “a peripheral lip on the outer perimeter of the plate, the peripheral lip having an inner diameter and an outer dimension.”
Claim 21, line 11 recites “the annular ring.” There is insufficient antecedent basis for this limitation in the claim. Does the annular ring refer to the previously recited ring in line 3? Is it a separate element? For the purposes of examination, the limitation will be examined as though it recited “the ring if the niche, wherein the ring is annular.”
Claim 24 recites “spaced-apart protrusions extending outward from the rim positioned at the at least one mounting member.” However, it appears that the spaced apart protrusions are referring to Applicant’s #116, 118 that form the mounting member. Therefore, the protrusions are not positioned at the mounting member because they are the mounting member. It is unclear if Applicant is trying to refer to the protrusions and mounting member as separate elements (which would be new matter) OR if Applicant means that they are the same element. For the purposes of examination, the spaced-apart protrusions will be examined as though they were the mounting member.
Claims 25 and 26 are dependent on claim 24 and contain the same deficiencies.
Claim 26 recites a border extending distally from the rim. It is unclear what part of Applicant’s disclosure the border refers to. The Examiner’s best guess is that the rim is the protruding part encircling near the perimeter of the back of the plate and the border is the part of the flat surface that extends radially outward therefrom (see annotated section of Fig. 4). However, it is unclear because the term rim sometimes means an outer edge, border, margin, etc. Therefore, the term rim and border appear to have overlapping scope and it is unclear which elements are being applied to the term “rim” and “border.” For the purposes of examination, the terms rim and border will be examined as though they were the elements pointed out in the annotated section of Fig. 4.
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Annotated section of Fig. 4
Claims 28 and 32 recite the adapter “further comprising openings through the plate adjacent to and aligned with the at least one rib.” As discussed in the 112(a) rejection above, the openings appear to be new matter. It is unclear if Applicant is claiming new matter that has no basis in the originally filed disclosure OR if Applicant is trying to claim a previously describe feature, but is doing so with a poor choice of words. For example, are the openings 206 being referred to intended to be the plate that is disposed between the ribs 210? For the purposes of examination, the limitation will be examined as though it recited the plate having an element between the ribs.
Claims 31 is dependent on claim 29. However, it is unclear if this is a typo and Applicant intended to make claim 31 dependent on claim 30. For the purposes of examination, Claim 31 will be examined as though it were dependent on claim 30.
Claim 32 is dependent on claim 29. However, claim 32 recites “the ribs,” however ribs are only recited previously in claim 31. Therefore it is unclear if this is a typo and claim 32 was intended to be dependent on claim 31 OR if claim 32 should recite ribs OR claim 29 should recite ribs. For the purposes of examination, claim 32 will be examined as though it were dependent on claim 31.
Claims 33 and 34 recite “applying material to the inside of the adapter plate and attaching the adapter and material over a niche.” As discussed in the 112(a) rejection above, this appears to be new matter. It is unclear if Applicant is claiming new matter that has no basis in the originally filed disclosure OR if Applicant is trying to claim a previously describe feature, but is doing so with a poor choice of words. For example, when Applicant recites that the material is on the inside of the adapter plate, does it mean that the inside is at cavity 224, located on the outside surface facing away from the niche? Is the material actually the fill material 228 that is applied to the outside surface facing away from the niche and the “inside of the adapter plate” not referring to the “inside surface?” For the purposes of examination, the limitation will be examined as though it recited “applying material to the outside surface facing away from the niche and attaching the adapter and material over the niche.
Claim 34 recites “the method of claim 28.” However, claim 28 is directed to an adapter, not a method. It is unclear if Applicant intended claim 34 to be dependent on claim 33 OR intended to recite the adapter of claim 28 OR intended to recite a method of installing the adapter of claim 28. For the purposes of examination, claim 34 will be examined as though it were dependent on claim 28 and recited a method of installing the adapter of claim 28.
Claim Rejections - 35 USC § 102
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 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 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 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 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) 21-23, 27, 28, 30-32 and 34 is/are rejected under 35 U.S.C. 102(a(1) as anticipated by Bauer et al. (US PGPub 2007/0279900 A1) or, in the alternative, under 35 U.S.C. 103 as obvious in further view of Ehret (USPN 4,543,623 A) and Arpin et al. (US PGPub 2019/0107274 A1) and Elmvang (US PGPub 2015/0292692 A1).
As to claim 21, Bauer et al. teaches (Figs. 6 and 6a) an adapter for installing an LED assembly 10 (Paragraph 31) to an existing niche 602 of a spa or pool light (Paragraph 35), the niche 602 having an open end with a surrounding perimeter, and an inside, the adapter comprising: a. a plate 600 having an inside surface facing the niche and an outside surface on the other side of the niche, the plate 600 having a periphery (outer peripheral lip of 600) with an inner diameter (inner part of peripheral lip) and an outer dimension (outer diameter of peripheral lip) generally conforming to the outside diameter of the niche 602 to cover the open end of a niche 602; b. at least one mounting member 604 associated with the plate 600, the at least one mounting member 604 having structure that mates with corresponding structure on the niche 602; c. an LED assembly receiving aperture (hole in middle of plate 600) extending through the plate 600; and d. a hub (inner periphery of plate 600 that surrounds the hole) on the plate extending around the LED assembly receiving aperture and into the niche 602.
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Bauer et al.
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Bauer et al. is silent as to Applicant’s ring and fastening to the ring. However, as the claim is directed to “An adapter for installing an LED assembly…” and not to the combination of the adapter and the LED assembly, the claim scope does not require structure other than the adapter itself. Therefore, any recitations of features of other elements besides the adapter limit the scope of the claim only insofar as they implied a limitation on the structure of the adapter itself. Since the adapter 600 of Bauer et al. could be used with a ring in the recited fashion, Bauer et al. therefore satisfies the limitations of the claim relating to the ring.
Alternatively, should it be found that the ring is a required feature, Bauer et al. teaches using the fastener 604 to attach to the attachment mechanism for the previously installed light fixture, but does not explicitly disclose the structure of the previously installed fastening, except for depicting an element for interacting with fastener 604.
Ehret teaches (Fig. 2) a light ring 36 that receives screw 40 in order to attach the lighting system to the niche (Col. 2, lines 61-64), with the part 38 analogous to the adapter and peripheral lip having outer diameter generally conforming to the outside diameter of the ring 36 and the ring having structure for mating with the fastener 40.
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Therefore, in the absence of an explicit teaching by Bauer et al. as to what parts of the niche has holes that align with the adapter plate, to look to the prior art for suitable structures to secure mounting of the adapter plate. Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to mount the adapter plate to an existing light ring of a niche, as taught by Ehret, in order to retrofit the old niche without the addition of further elements as taught by Bauer et al.
As to the hub on the plate extending around the LED assembly receiving aperture, the plate 600 of Bauer et al. is shown to have thickness and therefore the hub that is the part surrounding the central hole will extend around the LED assembly receiving aperture and into the niche.
Alternatively, should it be found that Bauer et al. does not adequately read on the claimed hub and its details, Bauer et al. does teach that the LED assembly 10 can be mounted to the adapter plate 600 in a variety of means such as fasteners, clips, tabs, or locking rotational arrangement (Paragraph 35) and that the plate 600 serves to properly install the light fixture into a niche designed for a larger light fixture (Paragraph 35).
Arpin et al. teaches (Fig. 1A) a lighting assembly with threads 268 for installation to a (Paragraph 20).
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Elmvang teaches (Fig. 24) a receiving element 17 that receives lamp element 54 by threads in 17, 54 (threads not labelled, see Fig. 5 for threads 8, 19, Paragraph 104), wherein the receiving element is for mounting to external element (building structure, Paragraph 104).
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Since the attachment mechanism of the lighting device to the adapter plate can be formed from a variety of mechanism and therefore does not appear to be particularly limited, and an existing pool light already has exterior threads, as taught by Arpin et al. and threading allows attachment of an element to a respective receiving element, as taught by Elmvang, one having ordinary skill in the art at the time of the invention would therefore find it obvious to form threads on the central hole of the adapter of Bauer et al. in order to receive and attach to a lighting device, such as the one taught by Arpin et al. in order to adapt the plate to an existing lighting device and since the selection from among known suitable attachment methods for their known purposes is generally within the abilities of one having ordinary skill in the art. In the modification, since the portion surrounding the central hole of Bauer et al. would need to be modified to have threads to mate with the threads of the lighting device, this section with threads would be the claimed hub that extends around the LED assembly receiving aperture and into the niche.
As to claim 22, Bauer et al. discloses (Fig. 6a) at least one rib (unlabeled) extending radially from the hub toward the periphery of the plate on the inside surface of the plate.
As to claim 23, Bauer et al. discloses (Fig. 6b) that the outside surface of the plate is generally flat.
As to claim 27, Bauer et al. in view of Ehret and Arpin et al. and Elmvang teaches that the inside of the hub is threaded (Elmvang Fig. 24 #17).
As to claim 28, Bauer et al. discloses (Fig. 6a) at least one rib (unlabeled) extending radially from the hub toward the periphery of the plate on the inside surface of the plate. As discussed in the 112(b) rejection above, the openings are being examined as though they were instead portions of the plate between the ribs. As seen in Bauer et al. Fig. 6a, there is a portion of the plate extending between adjacent ribs.
As to claim 30, Bauer et al. discloses (Figs. 6 and 6a) an adapter 600 for installing an LED assembly 10 (Paragraph 31) to an existing niche 602 of a spa or pool light (Paragraph 35), the niche 602 having an open end with a surrounding perimeter, and an inside, the adapter 600 comprising: a. a plate 600 having an inside surface facing the niche 602 and an outside surface on the other side of the inside surface, the plate 600 having a periphery to cover the open end of a niche 602; 17/25Appl. No. 16/890,397June 11, 2021, Response to March 11, 2021, Office Action Law Group LLP b. at least one mounting member 604 associated with the plate 600, the at least one mounting member 604 having structure that mates with corresponding structure on the perimeter of the niche 602; c. a hub (inner periphery of plate 600 that surrounds the hole) on the plate extending around the LED assembly receiving aperture (hole in the middle of plate 600); and d. an LED assembly receiving aperture extending through the plate 602.
Bauer et al. is silent as to whether the plate has periphery with outer dimension that extends over a niche’s perimeter. However, as the claim is directed to “An adapter for installing an LED assembly…” and not to the combination of the adapter and the LED assembly, the claim scope does not require structure other than the adapter itself. Therefore, any recitations of features of other elements besides the adapter limit the scope of the claim only insofar as they implied a limitation on the structure of the adapter itself. Since the adapter 600 of Bauer et al. could be used with a niche in the recited fashion, Bauer et al. therefore satisfies the limitations of the claim relating to the niche.
Alternatively, should it be found that the plate with periphery with an outer dimension sufficient to extend over the niche’s perimeter is a required feature, Bauer et al. teaches using the fastener 604 to attach to the attachment mechanism for the previously installed light fixture, but does not explicitly disclose the structure of the previously installed fastening, except for depicting an element for interacting with fastener 604.
Ehret teaches (Fig. 2) a light ring 36 that receives screw 40 in order to attach the lighting system to the niche (Col. 2, lines 61-64), with the part 38 analogous to the adapter and peripheral lip having outer diameter generally conforming to the outside diameter of the ring 36 and the ring having structure for mating with the fastener 40, wherein the part 38 analogous to the adapter and outer dimension extends over the niche’s perimeter 12.
Therefore, in the absence of an explicit teaching by Bauer et al. as to what parts of the niche has holes that align with the adapter plate, to look to the prior art for suitable structures to secure mounting of the adapter plate. Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to mount the adapter plate to an existing light ring of a niche, with the outer diameter extending over the niche’s perimeter, as taught by Ehret, in order to retrofit the old niche without the addition of further elements as taught by Bauer et al.
As to the hub on the plate extending around the LED assembly receiving aperture, the plate 600 of Bauer et al. is shown to have thickness and therefore the hub that is the part surrounding the central hole will extend around the LED assembly receiving aperture and into the niche.
Alternatively, should it be found that Bauer et al. does not adequately read on the claimed hub and its details, Bauer et al. does teach that the LED assembly 10 can be mounted to the adapter plate 600 in a variety of means such as fasteners, clips, tabs, or locking rotational arrangement (Paragraph 35) and that the plate 600 serves to properly install the light fixture into a niche designed for a larger light fixture (Paragraph 35).
Arpin et al. teaches (Fig. 1A) a lighting assembly with threads 268 for installation to a (Paragraph 20).
Elmvang teaches (Fig. 24) a receiving element 17 that receives lamp element 54 by threads in 17, 54 (threads not labelled, see Fig. 5 for threads 8, 19, Paragraph 104), wherein the receiving element is for mounting to external element (building structure, Paragraph 104).
Since the attachment mechanism of the lighting device to the adapter plate can be formed from a variety of mechanism and therefore does not appear to be particularly limited, and an existing pool light already has exterior threads, as taught by Arpin et al. and threading allows attachment of an element to a respective receiving element, as taught by Elmvang, one having ordinary skill in the art at the time of the invention would therefore find it obvious to form threads on the central hole of the adapter of Bauer et al. in order to receive and attach to a lighting device, such as the one taught by Arpin et al. in order to adapt the plate to an existing lighting device and since the selection from among known suitable attachment methods for their known purposes is generally within the abilities of one having ordinary skill in the art. In the modification, since the portion surrounding the central hole of Bauer et al. would need to be modified to have threads to mate with the threads of the lighting device, this section with threads would be the claimed hub that extends around the LED assembly receiving aperture and into the niche.
As to claim 31, Bauer et al. discloses (Fig. 6a) ribs (unlabeled) extending radially from the hub toward the periphery of the plate.
As to claim 32, Bauer et al. discloses (Fig. 6a) at least one rib (unlabeled) extending radially from the hub toward the periphery of the plate on the inside surface of the plate. As discussed in the 112(b) rejection above, the openings are being examined as though they were instead portions of the plate between the ribs. As seen in Bauer et al. Fig. 6a, there is a portion of the plate extending between adjacent ribs.
As to claim 34 (which is dependent on claim 28) Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang teaches a method of installing the adapter of claim 28 (see rejection of claim 28), wherein the receiving aperture of the plate has internal threads (modification in view of Arpin et al. and Elmvang as seen in the rejection of claim 28 to include threads in the hub surrounding the hole of plate 600 of Bauer et al. with threads from analogous element 17 to attach the plate and LED assembly), the attaching an LED assembly step comprises engaging 18/25Appl. No. 16/890,397 June 11, 2021, Response to March 11, 2021, Office ActionLaw Group LPexternal threads of the LED assembly with the receiving aperture's internal threads.
Claims 24 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang as applied to claim 21 above, or alternatively in further in view of Ritter (USPN 2,906,863 A)
As to claim 24, Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang discloses (Bauer et al. Fig. 6 and 6a) a rim extending around the plate (protruding parts of 600m see Fig. 6a), the rim being attached via fastener to light ring (modification in view of Ehret as discussed in the rejection of claim 21) with spaced apart protrusions (part near where 604 attaches, see Fig. 6a) positioned at the area of mounting member 604.
As discussed in the 112(b) rejection, it is unclear if the mounting member is the same element or different elements. However, since they may be different elements, the protrusions and mounting member 604 satisfy the claimed limitation.
Alternatively, Ritter teaches (Fig. 1-3) attaching an adapter 11 to ring 10 via spaced apart protrusions 38, 46 that engage with 42, 48 of ring 10 to facilitate joining of the adapter 11 to ring 10 (Col. 3, lines 17-Col. 4, line 13).
Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to include spaced apart protrusion extending outward from the rim to be the mounting member and facilitate joining of the adapter to the ring, as taught by Ritter et al., in order to allow the adapter to function with the particulars of other rings.
As to claim 26, Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang teaches a border (Ritter #20, Potucek et al. #182) extending distally from the rim (projecting rearward pieces of Ritter #28, Potucek et al.).
Claim 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang and Ritter as applied to claim 24 above, or alternatively in further in view of Potucek et al. (US PGPub 2011/0267834 A1).
As to claim 25, Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang and Ritter teaches that an aperture (Bauer et al. hole associated with #604 or alternatively Ehret Fig. 2, part where #40 is attached) spaced from the spaced-apart protrusions for receiving a fastener (Bauer et al. #604 or alternatively Ehret #40) for attaching the adapter to the niche. Even though the fasteners of Ehret and the protrusion Ritter are for mounting to different, rings, it would be obvious to include both features in order to mount to a variety of rings.
Alternatively, Potucek et al. teaches (Fig. 11) having fastener aperture 178 and also protrusion 176 for mounting to the niche (Paragraph 47). Therefore, it would be obvious to include both protrusions and spaced apart fastener slot in order to mount to a niche, as taught by Potucek et al. It is noted that Potucek et al. only has one protrusion, however, since Ritter et al. teaches using two protrusions, it would be obvious to use two protrusions also. Alternatively, the addition of an additional protrusion to make two is mere duplication of parts and would be obvious to do so to ensure an even more secure attachment. See also MPEP §2144304(VI)(B).
Claim 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang as applied to claim 28 above, or alternatively in further in view of Mandy et al. (US PGPub 2014/0268823 A1).
As to claim 3, Bauer et al., or alternatively in further view of Ehret and Arpin et al. and Elmvang appear to show (Elmvang Fig. 24) the LED assembly 54 is connected to the adapter element 17 such that an illuminating end thereof is substantially flush with an outer face of the adapter element.
Alternatively, Elmvang is not specific about the particular elements such as the coverings or reflectors of the LED assembly.
Mandy et al. teaches (Fig. 6) the LED assembly 18 substantially flush with receiving element 12.
Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to make the LED assembly flush with the receiving element/adapter plate, as taught by Mandy et al., in order to provide an aesthetically pleasing and flush surface that will not block the light or create sharp or protruding edges, as is well-known in the art.
Claim 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer et al. in view of Ehret and Benesohn (USPN 6,491,413 B1) and Vogtner et al. (US PGPub 2020/0408381 A1 / 62/868,182, citations herein are in “A / B” format wherein “A” refers to the PGPub citation and “B” refers to the provisional Application citation if they occur at different places in the respective documents).
As to claim 33, Bauer et al. discloses (Figs. 6 and 6a) a method for installing an LED assembly 10 into an existing niche 602 of a spa or pool light (Paragraph 35), the niche 602 having an open end with a surrounding perimeter and an inside, the method comprising: a. mounting an adapter plate 600 having an inside surface facing an existing niche 602 and an outside surface facing away from the niche 602, such that the adapter plate 600 covers the open end of the niche; b. attaching an LED assembly to a receiving aperture (Paragraph 35, middle hole in adapter plate 600) through the adapter plate 600; and attaching the adapter plate 600 over the niche 602.
Bauer et al. discloses (Fig. 6) attaching the plate 600 to the niche via fastener 604, but does not specifically disclose the structure of the previously installed fastening, except for depicting an element for interacting with fastener 604.
Ehret teaches (Fig. 2) a light ring 36 that receives screw 40 in order to attach the lighting system to the niche (Col. 2, lines 61-64), with the part 38 analogous to the adapter and peripheral lip having outer diameter generally conforming to the outside diameter of the ring 36 and the ring having structure for mating with the fastener 40.
Therefore, in the absence of an explicit teaching by Bauer et al. as to what parts of the niche has holes that align with the adapter plate, to look to the prior art for suitable structures to secure mounting of the adapter plate. Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to mount the adapter plate to an existing light ring of a niche, as taught by Ehret, in order to retrofit the old niche without the addition of further elements as taught by Bauer et al.
Bauer et al. in view of Ehret is silent as to Applicant’s inserting a projection on the surrounding perimeter into a member associated with the plate and.
Benesohn teaches (Fig. 1) fastening by inserting a projection 18 on the element 16 analogous to the light ring into a member 74 associated with the element 60 analogous to the plate in order to align the elements 18, 74m wherein fasteners pass through the aligned elements 18, 74 in order to secure the element 60. (Col. 5, lines 13-17).
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Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to further include a tab in order to align the positioning of the apertures, as taught by Benesohn, in order to allow easier alignment.
Bauer et al. in view of Ehret and Benesohn is silent as to applying material to the inside of the adapter plate.
Vogtner et al. teaches (Figs. 1-3) applying material 10 applied to the inside of the adapter plate in order to match or compliment the surrounding mounting surface 16, wherein the fill material has similar appearance characteristics of the submerged surface lining of the pool (Paragraph 57 / Paragraphs 37).
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Therefore, it would be obvious to one having ordinary skill in the art at the time of the invention to make the adapter plate (analogous to the elements that have cavity 14) of Bauer et al. in view of Ehret and Benesohn to include apply material to the inside of the adapter plate in order to be filled with an aesthetic material to match or compliment the surrounding mounting surface, as taught by Vogtner et al.
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 extension fee 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 date of this final action.
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/S.Y.H/Examiner, Art Unit 2875
/RAJARSHI CHAKRABORTY/Supervisory Patent Examiner, Art Unit 2875
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