REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Claim Rejections - 35 USC § 251
Claims 22-48 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case, the Applicant seeks to broaden original independent claims 22, 29, 36, 43, 45 and 47 by omitting some of the original limitations present in the claim language. More specifically, independent claims 22, 29 and 36 omit following underlined limitations, “periodically turning the plurality of LED chains off for short durations of time during a first period to take measurements or communicate optical data, and supplying a non-operative drive current to each LED chain, one chain at a time, during the short durations of time to measure an operating forward voltage developed across each LED chain” and “determining respective drive currents needed to achieve a desired luminous flux from each LED chain using the operating forward voltages measured across each LED chain, a table of calibration values and one or more interpolation” and “a driver circuit or method, which comprises periodically turning the plurality of LED chains off during a first period to take measurements or communicate optical data” . Claims 43, 45 and 47 do not recite underlined limitations: periodically turning the plurality of LED chains off for short durations of time during a first period to take measurements or communicate optical data, and supplying a non-operative drive current to each LED chain, one chain at a time, during the short durations of time to measure an operating forward voltage developed across each LED chain” and “determining respective drive currents needed to achieve a desired luminous flux from each LED chain using the operating forward voltages measured across each LED chain, a table of calibration values and one or more interpolation”.
(Step 2: MPEP 1412.02(B)) The record of the prior 13/970,990 application prosecution history indicates that in a Response filed on November 19th, 2015, the Applicant amended the claims in such a manner as to include the limitations to overcome the prior art of record. Accordingly, the newly amended claims recited the allowable subject matter as explained in the step 1 above, hence they overcame the cited prior art (Muthu et al (US Patent No. 6,495,964) and Jungwirth et al (US Patent No. 7,319,298)). In addition, on November 19th, 2015, the Patent Owner contended in the remarks on page 12, that “None of the cited art provides teaching or suggestion for a driver circuit or method, which comprises periodically turning the plurality of LED chains off during a first period to take measurements or communicate optical data”. In addition, on page 15 of the remarks, the Patent Owner also submits “None of the cited art provides teaching or suggestion for a control circuit or method, which comprises determining respective drive currents needed to achieve a desired luminous flux from each LED [chain] using the operating forward voltages measured across each LED [chain], a table of calibration values and one or more interpolation techniques”.
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitations of “periodically turning the plurality of LED chains off for short durations of time during a first period to take measurements or communicate optical data, and supplying a non-operative drive current to each LED chain, one chain at a time, during the short durations of time to measure an operating forward voltage developed across each LED chain” and “determining respective drive currents needed to achieve a desired luminous flux from each LED chain using the operating forward voltages measured across each LED chain, a table of calibration values and one or more interpolation” and “a driver circuit or method, which comprises periodically turning the plurality of LED chains off during a first period to take measurements or communicate optical data” are surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. The surrendered subject matter, noted above, has been entirely eliminated from new independent reissue claims 22, 29, 36, 43, 45 and 47. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claims 22, 29, 36, 43, 45 and 47 attempt impermissible recapture of subject matter surrendered during prosecution of the 18/087,365 application. Dependent reissue claims dependent upon the independent claims mentioned above are rejected for similar rationale.
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 22, 23, 29, 30, 36 and 37 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 claims contain 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.
In this instance, the limitation “receiving, by LED lighting control circuitry, a change in output intensity from a present output intensity to a target output intensity” is not disclosed in the original disclosure. It is not clear where the intensity is received from or how this process is conducted.
Similarly, claims 22, 29 and 36 disclose limitation “contribution [of the desired luminous flux] by the respective LED string to the target intensity”, which also lacks support in the original disclosure.
Claims 43, 45 and 47 are also rejected under 35 U.S.C. 112(a), first paragraph, as failing to comply with the written description requirement. More specifically, the original disclosure of the ‘724 Patent does not appear to teach the following limitation: “wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level”.
With respect to the limitation reciting “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings”. The cited portions of the disclosure teach shutting off power to LEDs, using respective drive currents and VLC communication, however they do not disclose that the LED string were adapted to produce an output signal based on an incident light level or performing compensation in the order as disclosed in the citation above.
Claim Rejections - 35 USC § 112
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 22, 23, 29, 30, 36 and 37 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.
Claims 22, 29 and 36 recite “intensity”, however none of those terms are recited in the specification verbatim. It is unclear whether the Patent Owner considers “intensity” the same as “luminous flux” as recited in the disclosure.
In addition, claims 22, 29 and 36 recite “change in output”, however that phrase is considered indefinite because it is not certain what kind of output claims are addressing.
Claims 22, 29 and 36 recite the steps of “receiving … a change in output … from a present intensity to a target intensity” and the few steps later, claim language states “determining … a desired luminous flux of respective LED string, the desired luminous flux corresponding to a contribution by the respective LED string to the target intensity”. It is unclear whether the intensity and luminous flux are describing the same thing or are they two different characteristics. Accordingly, the metes and bounds of the claimed invention are deemed indefinite.
Lastly limitation “receive a change in output from a present intensity to a target intensity” recited in claims 22, 29 and 36, as explained below in claim interpretation section, is considered indefinite because there is no indication and explanation of how this step is carried out in the original disclosure.
With respect to claims 43, 45 and 47, those claims disclose “wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings”, however without teaching what those steps actually involve, the metes and bounds of the claimed invention are indefinite.
Claims 22, 29, 36, 43, 46 and 47 recite limitations “receiving, by LED lighting control circuitry, a change in output intensity from a present output intensity to a target output intensity”, “receive a change in output intensity from a present output intensity to a desired output intensity”, “receive a change in output from a present intensity to a target intensity”, “determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings”, “determining a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings” and “determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no structure or an algorithm recited in the original disclosure supporting functions recited above. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Accordingly, the Examiner concludes that because claims 22-23, 29,30, 36, 37, 43, 45 and 47 are indefinite under § 112 (b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections even though the claims are indefinite, these indefinite claims are construed and the prior art is applied as much as practically possible.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 22: the LED lighting control circuitry performing the following functions:
“receiving, by LED lighting control circuitry, a change in output intensity from a present output intensity to a target output intensity” (as explained in the rejection under 35 U.S.C. 1112(a), the change in output intensity from current to target is not supported by the original specification)
“determining, by the LED lighting control circuitry, a target luminous flux of the respective LED string, the target luminous flux corresponding to the target output intensity” (wherein the determination step is described in (6:23-41);
determining, by the LED lighting control circuitry, a target drive current corresponding to the target luminous flux at the determined present junction temperature of the respective LED string” (6:42-58).
Claim 29: the control circuitry to
“receive a change in output intensity from a present output intensity to a desired output intensity” (as explained in the rejection under 35 U.S.C. 112(a), the change in output intensity from current to desired is not supported by the original specification);
“determine a desired luminous flux of the respective LED string, the desired luminous flux corresponding to the desired output intensity” (wherein the determination step is described in (6:23-41);
determine a desired drive current corresponding to the target luminous flux at the determined present junction temperature of the respective LED string” (6:42-58).
Claim 30: the control circuitry to “determine a luminous flux of the light emitted by the respective LED string at the received ambient temperature and the first drive current by interpolating between the first calibration value and the second calibration value” (16:43-50).
Claim 36: control circuitry to
“receive a change in output from a present intensity to a target intensity” (as explained in the rejection under 35 U.S.C. 112(a), the change in output from current to desired is not supported by the original specification);
“determine a target luminous flux of the respective LED string, the target luminous flux corresponding to the target output intensity” (wherein the determination step is described in (6:23-41);
determine a target drive current corresponding to the target luminous flux at the determined present junction temperature of the respective LED string” (6:42-58).
Claim 43: control circuitry to “determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” (Figure 1) and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings” (the support for this limitation could not be located in the portions of the ‘724 Patent cited by the Patent Owner1).
Claim 45: the LED lighting device control circuitry “determining a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” (Figure 1) and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings” (the support for this limitation could not be located in the portions of the ‘724 Patent cited by the Patent Owner2).
Claim 47: control circuitry to “determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux” (Figure 1), and “remove power from a plurality of operatively coupled LED strings, wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level” and “compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings” (the support for this limitation could not be located in the portions of the ‘724 Patent cited by the Patent Owner3).
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (see the mapping as indicated above.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 43, 45 and 47 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 9,651,632. Although the claims at issue are not identical, they are not patentably distinct from each other because the steps may be recited in a different order in the body of the claim, however all the main functions such as applying non-operative current, recording forward voltage and storing results in a calibration table are all present in the claim 10 of the ‘632 patent.
U.S. Patent No. 9,578,724
Claim 10 of U.S. Patent No. 9,651,632
43. A light-emitting diode (LED) lighting controller, comprising: control circuitry to:
remove power from a plurality of operatively coupled LED strings;
wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level [*];
wherein each of the plurality of LED strings includes at least one light-emitting diode [1]; and wherein each of the plurality of LED strings provides a different output color spectrum (this limitation is not explicitly recited in the claims of ‘632 patent, however the disclosure clearly discusses this feature in column 1, lines 40-42, thus it would have been obvious to one of ordinary skill in the art at the time then invention was made to have multiple LEDs corresponding to different colors); and at each of a plurality of ambient temperatures (in claim 10 of the ‘724 patent, the measurements are conducted at multiple temperatures), for each of the LED strings included in the plurality of LED strings: apply non-operative drive current and measure a forward voltage across the respective LED string [2]; apply a plurality of different operative drive currents and measure a luminous flux produced by the respective LED string at each of the plurality of operative drive currents [3]; determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux; and store as a table of calibration values in operatively coupled memory circuitry, the determined relationship between luminous flux and drive current for the respective LED string [4] (‘632 patent does not explicitly recite calibration table, however the original disclosure in column 6, lines 3-6, teaches calibration table and since claim 1 recites performing plurality of measurements, it would have been obvious to one of ordinary skill in the art to use a calibration table to organize the data); compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings [*].
10. An illumination device, comprising: a plurality of light emitting diode (LED) chains [1]; a storage medium configured for storing a table of calibration values correlating forward voltage and drive current to luminous flux at a plurality of temperatures for each of the plurality of LED chains [2]; wherein for each LED chain, the table of calibration values comprises: a first forward voltage value measured across the LED chain upon applying a non-operative drive current ranging between 0.1 mA and 10 mA to the LED chain when the LED chain is subjected to a first temperature while turning off all other LEDs in the illumination device [2], wherein when all other LEDs are turned off occurs in time slots between when the illumination device produces illumination; a second forward voltage value measured across the LED chain upon applying the non-operative drive current to the LED chain when the LED chain is subjected to a second temperature while turning off all other LEDs in the illumination device, wherein when all other LEDs are turned off occurs in time slots between when the illumination device produces illumination; a first plurality of luminous flux values detected from the LED chain based on a plurality of different operative drive currents when the LED chain is subjected to the first temperature [3]; a second plurality of luminous flux values detected from the LED chain based on the plurality of different operative drive currents when the LED chain is subjected to the second temperature [2]; and an interface for receiving the calibration values from a calibration tool [4].
[*] With respect to the limitation marked with asterisk, it would have been obvious to one of ordinary skill in the art at the time the invention was made to employ VCL (i.e. optical communication) and use calibration values along with the measurements conducted while supplying non-operative current because remaining limitations already discuss supplying non-operative current and adjusting luminous flux using calibration values. Additionally, the optical communication was well known in the art at the time the invention was made as evidenced by the disclosure of the ‘632 patent (see column 1, lines 64-67 and column 14, lines 8-20).
With respect to claims 45 and 47, those claims are rejected for same rationale as explained above.
Furthermore, independent claims 43, 45 and 47 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 7 and 17 of U.S. Patent No. 9,485,813. Similarly, to the ‘632 patent, patent ‘813 recites the steps of applying non-operative current, recording forward voltage and storing results in a calibration table, wherein lumens correspond to the luminous flux recited in claims 43, 45 and 47.
U.S. Patent No. 9,578,724
U.S. Patent No. 9,485,813
Claim 43. A light-emitting diode (LED) lighting controller, comprising: control circuitry to: remove power from a plurality of operatively coupled LED strings; wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level [*], wherein each of the plurality of LED strings includes at least one light-emitting diode [1]; and wherein each of the plurality of LED strings provides a different output color spectrum (this limitation is not explicitly recited in the claims of ‘813 patent, however the disclosure clearly discusses this feature in column 10, lines 16-27, thus it would have been obvious to one of ordinary skill in the art at the time then invention was made to have multiple LEDs corresponding to different colors); and at each of a plurality of ambient temperatures, for each of the LED strings included in the plurality of LED strings: apply non-operative drive current and measure a forward voltage across the respective LED string [2]; apply a plurality of different operative drive currents and measure a luminous flux produced by the respective LED string at each of the plurality of operative drive currents [3]; determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux; and store as a table of calibration values in operatively coupled memory circuitry, the determined relationship between luminous flux and drive current for the respective LED string [4], compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings [*].
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Claim 1. An illumination device, comprising: a plurality of light emitting diode (LED) chains configured to produce illumination for the illumination device; a driver circuit coupled for generating and supplying a respective drive current to each of the plurality of LED chains [1].
Claim 7. The illumination device as recited in claim 6, wherein the control circuit is configured to determine the actual lumens needed from each LED chain to achieve the temporary target lumens value at the present temperature by: periodically turning the plurality of LED chains off for short durations of time; measuring a forward voltage presently developed across each LED chain by applying a non-operative drive current to each LED chain, one chain at a time, during the short durations of time the plurality of LED chains are periodically turned off; determining chromaticity values that are expected for each LED chain using the forward voltage measured across each LED chain, the respective drive current supplied to each LED chain, a table of stored calibration values correlating forward voltage and drive current to chromaticity at a plurality of different temperatures [4], and one or more interpolation techniques; and calculating the actual lumens needed from each LED chain to achieve the temporary target lumens value using the expected chromaticity values and the chromaticity setting.
Claim 17. The method as recited in claim 16, wherein said determining the actual lumens needed from each LED chain to achieve the temporary target lumens value at the present temperature comprises: periodically turning the plurality of LED chains off for short durations of time; measuring a forward voltage presently developed across each LED chain by applying a non-operative drive current to each LED chain [3], one chain at a time, during the short durations of time the plurality of LED chains are periodically turned off; determining chromaticity values that are expected for each LED chain using the forward voltage measured across each LED chain, the drive current supplied to each LED chain, a table of stored calibration values correlating forward voltage and drive current to chromaticity at a plurality of different temperatures [4], and one or more interpolation techniques; and calculating the actual lumens needed from each LED chain to achieve the temporary target lumens value using the expected chromaticity values and the chromaticity setting.
[*] With respect to the limitation marked with asterisk, it would have been obvious to one of ordinary skill in the art at the time the invention was made to employ VCL (i.e. optical communication) and use calibration values along with the measurements conducted while supplying non-operative current because remaining limitations already discuss supplying non-operative current and adjusting luminous flux using calibration values. Additionally, the optical communication was well known in the art at the time the invention was made as evidenced by the disclosure of the ‘813 patent (see column 12, lines 26-28 and column 26, lines 11-17).
With respect to claims 45 and 47, those claims are rejected for same rationale as explained above.
Independent claims 43, 45 and 47 are also rejected on the ground of non-statutory double patenting as being unpatentable over claims 5 and 16 of U.S. Patent No. 9,237,612, for the same reasons as recited above.
U.S. Patent No. 9,578,724
U.S. Patent No. 9,237,612
Claim 43. A light-emitting diode (LED) lighting controller, comprising: control circuitry to: remove power from a plurality of operatively coupled LED strings; wherein the power is removed for a short duration of time and only for a subset of the plurality of LED strings, an LED string from which power has been removed being adapted to produce an output signal based on an incident light level [*], wherein each of the plurality of LED strings includes at least one light-emitting diode [1]; and wherein each of the plurality of LED strings provides a different output color spectrum (this limitation is not explicitly recited in the claims of ‘612 patent, however the disclosure clearly discusses this feature in column 9, lines 32-44), thus it would have been obvious to one of ordinary skill in the art at the time then invention was made to have multiple LEDs corresponding to different colors); and at each of a plurality of ambient temperatures (‘612 patent does not recite ambient temperatures in its claims, however the disclosure clearly recites multiple ambient temperatures (18:7-30). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to record multiple ambient temperatures, because POSITA is well aware of its impact on LEDs’ characteristics) , for each of the LED strings included in the plurality of LED strings: apply non-operative drive current and measure a forward voltage across the respective LED string [2]; apply a plurality of different operative drive currents and measure a luminous flux produced by the respective LED string at each of the plurality of operative drive currents [3] (while ‘813 patent does not explicitly recite different drive currents, however the specification clearly teaches that the measurements are performed at multiple drive currents (21: 59-64). It would have been obvious to one of ordinary skill in the art at the time the invention was made to use multiple drive currents to obtain more accurate calibration values); determine a relationship between luminous flux and drive current for the respective LED string using the measured luminous flux; and store as a table of calibration values in operatively coupled memory circuitry, the determined relationship between luminous flux and drive current for the respective LED string [4], compensating to provide a constant intensity of the plurality of LED strings responsive to the application of the non-operative drive current to one or more of the plurality of LED strings to determine the relationship between luminous flux and drive current for the respective LED string by adapting the drive current applied to at least portion of the plurality LED strings [*].
Claim 5. The illumination device as recited in claim 4, wherein the control circuit is configured to determine the actual lumens needed from each LED chain [1] to achieve the temporary target lumens value at the present temperature by: periodically turning the plurality of LED chains off for short durations of time; measuring a forward voltage presently developed across each LED chain by applying a non-operative drive current to each LED chain, one chain at a time [2], during the short durations of time the plurality of LED chains are periodically turned off; determining chromaticity values that are expected for each LED chain using the forward voltage measured across each LED chain, the respective drive current supplied to each LED chain, a table of stored calibration values correlating forward voltage and drive current to chromaticity at a plurality of different temperatures, and one or more interpolation techniques; and calculating the actual lumens needed from each LED chain to achieve the temporary target lumens value using the expected chromaticity values and the chromaticity setting.
Claim 16. The method as recited in claim 15, wherein said determining the actual lumens needed from each LED chain to achieve the temporary target lumens value at the present temperature comprises: periodically turning the plurality of LED chains off for short durations of time; measuring a forward voltage presently developed across each LED chain by applying a non-operative drive current to each LED chain [2], one chain at a time, during the short durations of time the plurality of LED chains are periodically turned off; determining chromaticity values that are expected for each LED chain using the forward voltage measured across each LED chain, the drive current supplied to each LED chain, a table of stored calibration values correlating forward voltage and drive current to chromaticity at a plurality of different temperatures, and one or more interpolation techniques [4]; and calculating the actual lumens needed from each LED chain to achieve the temporary target lumens value using the expected chromaticity values and the chromaticity setting.
[*] With respect to the limitation marked with asterisk, it would have been obvious to one of ordinary skill in the art at the time the invention was made to employ VCL (i.e. optical communication) and use calibration values along with the measurements conducted while supplying non-operative current because remaining limitations already discuss supplying non-operative current and adjusting luminous flux using calibration values. Additionally, the optical communication was well known in the art at the time the invention was made as evidenced by the disclosure of the ‘612 patent (see column 4, lines 58-67 and column 11, lines 22-24).
With respect to claims 45 and 47, those claims are rejected for same rationale as explained above.
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 (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 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.
Claims 22, 23, 29, 30, 36 and 37 a