DETAILED ACTION
This is a final reissue Office action addressing the response dated 17 November 2025.
The following is the status of the claims presented:
Claims 1-4, 6, 7, 11-15, and 17-29 are pending.
Claims 5, 8-10, 16 are cancelled.
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 .
Maintenance Fees
Review of the file indicates no maintenance fees are due at this time. The next window for fees, being for the 7.5-year fee, opens 02 April 2026.
Amendments
Manner of Making Amendments/Support for Amendments Made
The amendment to the claims filed on 17 November 2025 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2), (c) and (d)(1)&(2) because each change relative to the ‘404 patent has not been properly marked. 37 CFR 1.173(b), 1.173(c) and 1.173(d)(1)&(d)(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ).
(i) Changes to the specification, other than to the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ), must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.
(ii) Changes to "Large Tables," a "Computer Program Listing Appendix," a "Sequence Listing," or a "Sequence Listing XML" must be made in accordance with § 1.58(g) for "Large Tables," § 1.96(c)(5) for a "Computer Program Listing Appendix," § 1.825 for a "Sequence Listing," and § 1.835 for a "Sequence Listing XML."
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
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(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined. (emphasis added)
The claims presented in the amendment filed 17 November 2025, do not comply with the above requirements as applicant did not provide an explanation of the support in the disclosure of the patent for the changes made, pursuant to 37 CFR 1.173(c). Further, the marking are not proper as deletions are shown by strikethrough instead of enclosure with single brackets. In addition, the amendments made are not made in accordance with the patented claims. For example, the claims patented are Claims 1-10. ANY claim presented after claim 10 has a status of “New” and should be completely underlined, regardless of whether the claims have been previously presented subsequent the filing of the reissue or interim amendments made. Another example is Claim 11 should have a status of “New” and be completely underlined, regardless of the number of times presented during reissue prosecution and regardless of amendments made to claim 11 throughout prosecution.
These corrections should be submitted with the next correspondence.
Response to Arguments
The following addresses applicant’s remarks/arguments dated 17 November 2025. Applicant’s courtesies are appreciated.
Drawing Objections (response: page 1) -
The cancelling of claims 5 and 16 render the objection previously made under this heading moot, and it is withdrawn.
Claim rejections: 35 USC 112(a) and 112(b) (response: page 1):
Regarding the rejection under 35 USC 112(a), applicant’s cancelling of claims 5 and 16 render the rejection under this heading moot and it is withdrawn.
Regarding the rejection under 35 USC 112(b), applicant’s amendments overcome the rejections previously raised and they are withdrawn; however, in light of the amendments made, some new rejections are raised which are addressed below.
Claim Rejections – 35 USC 102 and 103 (response: pages 2-4):
Applicant’s amendments overcome the rejections with respect to Claims 1-19 and 24-29 and they are withdrawn.
Regarding the rejections of Claims 20-24, the examiner respectfully disagrees with Applicant’s arguments. Applicant argues the grommet is not cylindrical due to a groove 145 and conical section 132B. The examiner disagrees with Applicant’s position. While noting various cross-sections of the grommet as identified by Applicant, the examiner takes the position that at least a portion of the grommet is cylindrical, including the portion in the opening in the substrate and thus meets the limitation as claimed. This is also in comparison to Applicant’s Figure 4: see 32 and 44, which deviate from the shape of a cylinder in like manner to the Walker reference.
Regarding the language directed to “radial compression”, the examiner addresses this amended language below and will not repeat the arguments here for brevity. Regarding Applicant’s arguments that Walker does not provide a water-tight seal, the examiner respectfully disagrees. Col. 7, lines 14-16 of Walker clearly note the seal is water-tight. The examiner explains this in further detail below and will not repeat the position here for brevity.
Claim Rejections - 35 USC § 112
35 USC 112(b):
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 7, 12, 18 and 23 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 7: the claim as amended reads as an incomplete statement “….opening and said second longitudinal”. Further the claim does not end in a period.
Claims 12 and 23: the language “has specific perimeter shapes” as amended, is indefinite as “specific” is a broad term and the metes and bounds of this language cannot be determined.
Claim 18: the claim does not end in a period.
35 USC 112(d):
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 21 states the grommet flange is configured to position on said aesthetic side of the substrate. This language has been amended into Independent claim 20, beginning at line 11. As a result, claim 21 no longer further limits claim 20.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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(s) 20-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker (U.S. Patent 7,604,364 B2).
Below is a reproduction of applicant’s claims addressing all limitations with the examiner’s comments in bold italics.
Claim 20: Walker discloses A pin light assembly (Figs. 1 and 2, generally) for installation into a substrate (Fig. 12: 154) having an aesthetic side (side containing 104) and a wiring side (containing wires 52, 54 as shown in Fig. 1) comprising:
a cylindrical elastomeric grommet (108, it can be made of silicone per Col 6, lines 42-44) with an outer diameter sized to fit in a hole (as shown in Fig. 12) in said substrate so as only radial compression of the elastomeric grommet within the hole into which it is to be fitted fixes the pin light assembly to the substrate (the examiner takes the position that the insertion of the lens as shown below in attached Fig. 12 would result in the claimed radial compression), said cylindrical elastomeric grommet configured for installation in said hole (as shown), said elastomeric grommet further comprising:
a front end (Fig. 1: 108A) with a grommet flange for position against the aesthetic side of the substrate (see below), said grommet flange having a diameter larger than said hole (as shown);
a wiring end (140) opposite said front end, said wiring end configured for positioning on said wiring side of said substrate (as shown);
a light lens (104) proximate said front end;
a longitudinal opening (138) proximate said wiring end;
said longitudinal opening is configured with an uninterrupted inner diameter (as shown via portion 138) defining a continuous circumference for the placement of an LED light (114) therewithin via said wiring side of said substrate (as shown), wherein compression from said LED light (via portion 116) against said elastomeric grommet retains and seals said LED light and said elastomeric grommet in said substrate (as shown the examiner takes the position that any pressure exerted in 132 would assist in retention of the grommet in the hole as it would deform the silicone in all directions upon which the pressure is exerted), by radial compression against said hole in said substrate (either directly or indirectly, see Fig. 12 from Walker below), with a water tight seal (Col. 7, lines 14-16; Col. 8, lines 40-45).
[AltContent: textbox (Direction of sealing resulting from Radial Compression)][AltContent: textbox (Grommet flange)][AltContent: arrow][AltContent: textbox (Insertion of this portion results in the claimed radial compression)][AltContent: ][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Portion of Fig. 12 from Walker
Claim 21: Walker discloses The pin light assembly as defined in claim 20 wherein said grommet flange is configured for positioning on said aesthetic side of said substrate (see 37 as shown generally in Fig. 1 and described above).
Claim 22: Walker discloses The pin light assembly as defined in claim 20 wherein said grommet flange is configured for positioning on said wiring side of said substrate (flange 132B meets this limitation) .
Claim 23: Walker discloses The pin light assembly as defined in claim 20 wherein said light lens has specific perimeter shapes. The language of this claim is considered optional via the language “may”, and the examiner interprets this language as though it is not required. See, however, Col. 9, lines 38-55 which notes it may be various shapes and sizes, which meets the claimed limitation).
Allowable Subject Matter
Claims 1-4, 6, 11, 13-15, 17, 19 and 24-29 are allowed.
Claims 7, 12, 18 and 23 would be allowable upon overcoming the rejections under 35 USC 112(b), above.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,247,404 B1 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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 WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993