DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-7, 9-16, and 18-22 have been presented for examination based on the preliminary amendment filed on 12/01/2022.
Claims 1-7, 9-16, and 18-21 are amended.
Claim 22 is new.
Claims 14-16 and 18-21 are construed under 35 U.S.C. 112 (f).
Claim 13 is rejected under 35 USC 101 as software per se.
Claims 1-6, 9-16, 18, 20-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Koninkl (WO 2014/147524 A1; hereinafter “Koninkl”).
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Koninkl (WO 2014/147524 A1; hereinafter “Koninkl”) in view of Sasaki (EP 2797391 A1; hereinafter “Sasaki”).
This action is made Non-Final.
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 .
Acknowledgement of References Cited By Applicant
7. The information disclosure statements (IDS) submitted on 12/01/2022 and 09/22/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The entire reference is considered to provide disclosure relating to the claimed invention. The claims & only the claims form the metes & bounds of the invention. Office personnel are to give the claims their broadest reasonable interpretation in light of the supporting disclosure. Unclaimed limitations appearing in the specification are not read into the claim. Prior art was referenced using terminology familiar to one of ordinary skill in the art. Such an approach is broad in concept and can be either explicit or implicit in meaning. Examiner's Notes are provided with the cited references to assist the applicant to better understand how the examiner interprets the applied prior art. Such comments are entirely consistent with the intent & spirit of compact prosecution.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim 14 limitation “a data entry means adapted to receive” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “data entry means” coupled with functional language “adapted to receive” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 14 limitations “a data entry means adapted to receive” has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: “the inputting means may be any one of: a touch-sensitive interface, a keyboard, a button, a mouse, etc.” SPEC page 14 lines 28-30.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitations treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claims so they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 13 is directed to software per se. Claim 13 explicitly recites a computer program: “A computer program comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method according to the previous claim 1”. Examiner respectfully suggests cancelation of claim 13 to overcome the rejection.
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)(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.
Claims 1-6, 9-16, 18, 20-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Koninkl (WO 2014/147524 A1; hereinafter “Koninkl”).
Regarding claim 1, Koninkl discloses: “A method for retrofitting a lighting site, (Koninkl: paras. [0007], [0008], [0010], [00215], [00218], [00219], [00221]) said lighting site including at least one pathway, (Koninkl: para. [0003]) said method comprising:” “obtaining at least one visual representation of the lighting site to be retrofitted, said lighting site corresponding to a location for installing at least one luminaire;” (Koninkl: paras. [0049]-[0054], [0073], [00194], [00203]-[00212]; Fig. 7) “extracting, from the at least one visual representation, at least one luminaire installation characteristic; and” (Koninkl: [00212]: "The user can go to the field and use the application to add a new light point at the current geolocation. The application also allows the user to add a new light point at an arbitrary location on the map (e.g., by double tapping on the map). For each light point, the user can input some basic attributes such as luminaire type and the height of the light pole. By using image processing techniques, these attributes may also be automatically extracted from the picture taken for the light point"; Fig. 7) “obtaining, based on the at least one luminaire installation characteristic and a database with a plurality of luminaire designs, a list comprising at least one luminaire design of said plurality of luminaire designs, said at least one luminaire design being suitable for being installed at the lighting site.” (Koninkl: paras. [00201]-[00219]; Figs. 4-9).
Regarding claim 2, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “wherein the at least one luminaire installation characteristic is at least one of, preferably at least two of, more preferably at least three of: a pathway width, an interval distance between two neighboring luminaire base supports, a pathway surface material, a pathway surface optical properties, a height of a luminaire head of the at least one luminaire, a number of lanes of the pathway, one or more circulation directions of the pathway, a lateral distance between the pathway and the at least one luminaire base support, a lateral dimension of a hard shoulder of the pathway, an arrangement pattern of a group of luminaires including the at least one luminaire, a bracket length of the luminaire head of the at least one luminaire, an inclination of the luminaire head of the at least one luminaire, a location of the at least one luminaire base support respective to the one or more circulation directions, a proximity with a neighboring building, characteristics of the neighboring building, a number of luminaire heads per base support, a presence of a conflict area in the lighting site, or a type of the pathway.” (Koninkl: paras. [00210]-[00219]; Figs. 5-9).
Regarding claim 3, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “providing an input corresponding to another luminaire installation characteristic and wherein the obtaining of the list of the at least one luminaire design is further based on the another luminaire installation characteristic.” (Koninkl: paras. [00210]-[00219]; Figs. 5-9).
Regarding claim 4, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “providing an input corresponding to a preferential parameter relative to the plurality of luminaire designs; and sorting the list of the at least one luminaire design based on the preferential parameter.” (Koninkl: paras. [0195], 00202], [00203]; Figs. 5, 8, 9).
Regarding claim 5, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “obtaining, from a regulation database, a lighting regulation associated to the lighting site, and wherein the obtaining of the list of the at least one luminaire design is further based on the obtained lighting regulation.” (Koninkl: paras. [0068], [00220]; claim 4).
Regarding claim 6, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “obtaining, from a stock database, a list of available luminaire parts, and wherein the obtaining of the list of the at least one luminaire design is further based on the obtained list of available luminaire parts.” (Koninkl: paras. [00210]-[00219]; Figs. 5-9).
Regarding claim 9, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “wherein the at least one visual representation comprises a first and a second visual representation of the lighting site, said first visual representation being different from said second visual representation and wherein the extracting of the at least one luminaire installation characteristic is based on the first and the second visual representations of the lighting site.” (Koninkl: paras. [00210]-[00219]; Figs. 5-9).
Regarding claim 10, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “wherein the obtaining of the list of the at least one luminaire design is further based on another at least one luminaire installation characteristic of another lighting site.” (Koninkl: paras. [00210]-[00219]; Figs. 5-9).
Regarding claim 11, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “wherein the at least one visual representation comprises an indication corresponding to a location of the at least one luminaire base support within the lighting site.” (Koninkl: Figs. 2, 2A-2K).
Regarding claim 12, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “wherein the lighting site corresponds to the location for installing, for the at least one luminaire, at least one luminaire head, optionally combined with an associated luminaire head bracket, to at least one existing base support of the lighting site.” (Koninkl: Figs. 2, 2A-2K).
Regarding claim 13, Koninkl discloses all of the features with respect to claim 1 as outlined above and further Koninkl discloses: “A computer program comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method according to the previous claim 1” (Koninkl: para. [00197]).
Regarding claim 14, incorporating the rejections of claim 1, claim 14 is rejected as discussed above for substantially similar rationale.
Regarding claim 15, incorporating the rejections of claims 14 and 3, claim 15 is rejected as discussed above for substantially similar rationale.
Regarding claim 16, incorporating the rejections of claims 14 and 4, claim 16 is rejected as discussed above for substantially similar rationale.
Regarding claim 18, incorporating the rejections of claims 14 and 6, claim 18 is rejected as discussed above for substantially similar rationale.
Regarding claim 20, incorporating the rejections of claims 14 and 9, claim 20 is rejected as discussed above for substantially similar rationale.
Regarding claim 21, incorporating the rejections of claims 14 and 10, claim 21 is rejected as discussed above for substantially similar rationale.
Regarding claim 22, Koninkl discloses: “A method for retrofitting a lighting site, (Koninkl: paras. [0007], [0008], [0010], [00215], [00218], [00219], [00221]) said lighting site including at least one pathway, (Koninkl: para. [0003]) said method comprising:” “obtaining, based on at least one luminaire installation characteristic and a database with a plurality of luminaire designs, a list comprising at least one luminaire design of said plurality of luminaire designs, said at least one luminaire design being suitable for being installed at the lighting site,” (Koninkl: paras. [0049]-[0054], [0073], [00194], [00203]-[00212]; and [00201]-[00219]; Figs. 4-9) “wherein the obtaining of the list of the at least one luminaire design is further based on another at least one luminaire installation characteristic of another lighting site.” (Koninkl: [00212]: "The user can go to the field and use the application to add a new light point at the current geolocation. The application also allows the user to add a new light point at an arbitrary location on the map (e.g., by double tapping on the map). For each light point, the user can input some basic attributes such as luminaire type and the height of the light pole. By using image processing techniques, these attributes may also be automatically extracted from the picture taken for the light point"; Fig. 7; [00201]-[00219]; Figs. 4-9)
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Koninkl (WO 2014/147524 A1; hereinafter “Koninkl”) in view of Sasaki (US EP 2797391 A1; hereinafter “Sasaki”).
Regarding claim 7, Koninkl discloses all of the features with respect to claim 1 as outlined above and however Koninkl does not appear to expressly disclose:
“outputting an altered visual representation of the lighting site with at least one installed luminaire, based on the list of the at least one luminaire design and on the at least one visual representation of the lighting site.”
However in the same field of endeavor, Sasaki teaches: “outputting an altered visual representation of the lighting site with at least one installed luminaire, based on the list of the at least one luminaire design and on the at least one visual representation of the lighting site.” (Sasaki: paras. [0080]-[0091] and FIG. 5)
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of invention of the claimed invention to use known simulation and modeling techniques. A person of ordinary skill in the layout and design simulation and modeling field would be motivated to combine Koninkl in view of Sasaki because “allows display of the floor plan to be not only used to simply display the state of operation of the illumination device as in Patent Document 2 described above, but also utilized to remotely operate the illumination device” (Sasaki: paras. [0024]-[0025]).
Regarding claim 19, incorporating the rejections of claims 14 and 7, claim 19 is rejected as discussed above for substantially similar rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN C MIKOWSKI whose telephone number is (571)272-8525. The examiner can normally be reached generally Monday through Thursday 8 am to 4:30 pm, EST.
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/JUSTIN C MIKOWSKI/Supervisory Patent Examiner, Art Unit 3673