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.”
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 27, 2026 was filed after the mailing date of the Non-Final Rejection on November 26, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath or Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414:
“(D) For continuation or divisional reissue applications:
(1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012. For these applications, a petition under 37 CFR 1.183 is not needed. For a reissue application filed before September 16, 2012, a petition under 37 CFR 1.183 will be needed to waive pre-AIA 37 CFR 1.175(e) in order to rely on the same error identified in the parent but being corrected in a different way. See 37 CFR 1.175(f)(2) for reissue applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.175(e) for reissue applications filed before September 16, 2012. One of form paragraphs 14.01.01, 14.01.02, or 14.01.03 may be used”.
In this instance, the Oath/Declaration filed on September 12, 2024, in the current reissue contains the same error as the one listed in the Oath/Declaration filed on February 21, 2019 in the parent reissue no. 16/282,231. Consequently, an Oath/Declaration listing new error must be filed and if the same error is fixed in another way, then “a statement is needed to explain compliance with 37 CFR 1.175(f)(2)”.
Claims 22-23, 29-30, 36-37, 43, 45, 47 and 55-63 are rejected as being based upon a defective reissue Oath/Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defects in the Oath/Declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251
Claims 22-23, 29-30, 36-37, 43, 45, 47 and 55-63 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, “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”. Claims 43, 45 and 47 do not recite underlined limitations: 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”.
(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” 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/partially 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 Interpretation
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The examiner finds several instances where the claim term explicitly includes functional language which would invoke 35 U.S.C. § 112, sixth paragraph.
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 § 112(f) (pre-AIA § 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 § 112(f) (pre-AIA § 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.
The following claim limitations have been interpreted under 35 U.S.C. § 112(f), because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by structural modifier.
In claims 29 and 36, “control circuitry” is considered to be a generic placeholder because this circuit carries out multiple functions and its structure is not sufficiently disclosed.
The functions disclosed in claims 29 and 36, performed by the “control circuitry” are as follows:
Limitation #1: “drive the plurality of LED strings to produce illumination and periodically turn the plurality of LED strings off by applying non-operative drive currents to the plurality of LED strings to take measurements or communicate optical data”; (Figure 11, driver circuit 54, a current source 62, a difference amplifier 64, and an LC filter 66 for producing illumination and taking forward voltage measurements from a connected LED chain 56a. In addition, the LED driver circuit 54 includes an analog to digital converter (ADC) 68 for digitizing the output of the difference amplifiers 64 included within each driver block 58, and controller 70 for the control circuit 52 to use to adjust the current produced by the current source 62) (C22, L11-23)
Limitation #2: to maintain a desired luminous flux or a desired color temperature of the lighting device over a range of operating temperatures, for each of the LED strings producing a different color spectrum output of the plurality of LED strings (the LED driver circuit 54 may include an optional temperature sensor 72 for taking ambient temperature (Ta) measurements, and a multiplexor (mux) 74 for multiplexing the ambient temperature (Ta) and forward voltage (Vf) measurements sent to the ADC 68) (C22, L24-28)
Limitation #3: determine a present junction temperature of the respective LED string; (as explained in the limitation #4 below, the junction temperature can be obtained by reading the graphs depicted in Figures 16 and 17, however if this interpretation is not accurate the Applicant is invited to provide the explanation)
Limitation #4: determine a target drive current that produces a contribution by the respective LED string to the determined desired luminous flux or the desired color temperature of the lighting device at the determined present junction temperature of the respective LED string; and (the luminous flux vs. junction temperature (or forward voltage) relationship for blue, green and white LEDs is substantially linear over the operating temperature range (see, FIG. 16). Because of this linear relationship, the compensation method is able to calculate luminous flux values at the present Vf (e.g., X values in FIG. 6) for blue, green and white LEDs by linearly interpolating between the calibration values stored at each drive current. However, red, red-orange and yellow LEDs exhibit a substantially non-linear relationship between luminous flux vs. junction temperature (see, FIG. 17). For these LEDs, a higher-order interpolation technique may be used to determine the luminous flux values at the present Vf (e.g., X values in FIG. 6) for each drive current. The higher-order interpolation technique may be in the form of a quadratic interpolation, which follows the general equation:
ax.sup.2+bx+c=y EQ. 1
where ‘x’ is Vf (or temperature), ‘y’ is luminous flux, and ‘a,’ ‘b’ and ‘c’ are coefficients. If forward voltage and luminous flux values were previously obtained during the calibration phase at three different temperatures, the ‘a,’ ‘b’ and ‘c’ coefficient values may be precisely determined by inserting the stored calibration values into EQ. 1 and separately solving the equation for ‘a,’ ‘b’ and ‘c’. If, on the other hand, the LED was calibrated at only two different temperatures, the ‘a’ coefficient may be obtained from data sheets provided by the LED manufacturer, while the ‘b’ and ‘c’ coefficients are determined from the calibration values”) (C15, L54 -C16, L16)
In claims 43 and 47, “control circuitry” is considered to be a generic placeholder because this circuit carries out multiple functions and its structure is not sufficiently disclosed.
The functions disclosed in claims 43 and 47, performed by the “control circuitry” are as follows:
Limitation #1: drive a plurality of operatively coupled LED strings to produce illumination and periodically turn the plurality of LED strings off by applying non-operative drive currents to the plurality of LED strings to take measurements or communicate optical data; (Figure 11, driver circuit 54, a current source 62, a difference amplifier 64, and an LC filter 66 for producing illumination and taking forward voltage measurements from a connected LED chain 56a. In addition, the LED driver circuit 54 includes an analog to digital converter (ADC) 68 for digitizing the output of the difference amplifiers 64 included within each driver block 58, and controller 70 for the control circuit 52 to use to adjust the current produced by the current source 62) (C22, L11-23)
Limitation #2: determine a relationship between luminous flux generated by the respective LED string and drive current for the respective LED string using the measured forward voltages; (since the relationship between luminous flux and drive current is non-linear for all LED colors (see, FIGS. 18-19), the relationship may be derived, in some embodiments, through a higher-order interpolation of the calculated luminous flux values. Alternatively, a piece-wise linear interpolation could be used to characterize the non-linear relationship between the calculated luminous flux values, or a typical curvature could be assumed from data sheets provided by the LED manufacturer). (C16, L26-35)
Since the claim limitations, recited above, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 29 has been interpreted to cover the corresponding structure described in the specification (as indicated above) that achieves the claimed function, and equivalents thereof.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112, sixth paragraph (claims 36-37), a general purpose computer is usually sufficient for the corresponding structure for performing a general c9omputing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. … By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. In this instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. Aristocrat, 521 F.3d at 1338 (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 P 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’ WMS Gaming, 184 F.3d at 1349.”) An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); In re Aoyama, 656 F.3d 1293, 1306 (Fed. Cir. 2011).
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 limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/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 and 2181 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 § 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.
Claim 22 is rejected under 35 U.S.C. 103(a) as being obvious over Zhang et al. (US Publication No. 2013/0249419), hereinafter referred to as “Zhang”, in view of Muthu et al (US Patent No. 6,495,964), hereinafter referred to as “Muthu”.
With respect to claim 22, Zhang teaches a method of controlling a light-emitting diode (LED) lighting device that includes a plurality of differently colored LED strings to maintain a desired luminous flux or a desired color temperature of the lighting device over a range of operating temperatures (para. [0097], “the parameters A and B are calculated from the characteristics depicted in FIGS. 1-4. Then a measurement is performed at a temperature, and the forward current is adjusted for the desired luminous flux output”. As illustrated in Figure 3, the forward voltage is a function of junction temperature), the method comprising: for each of the LED strings producing a different color spectrum output of the plurality of LED strings; determining, by the LED lighting control circuitry, a present junction temperature of the respective LED string (para. [0014]-[0015]); determining, by the LED lighting control circuitry, a target drive current that produces a contribution by the respective LED string to the desired luminous flux or the desired color temperature of the lighting device at the determined present junction temperature of the respective LED string (para. [0013] and [0081]-[0082], “if the forward voltage is measured, the junction temperature can be determined based on the forward voltage using characteristics of the LED. Based on the temperature, the calibration data provides an amount by which the forward current should be adjusted to maintain consistent luminosity”); and causing, by the LED lighting control circuitry, an adjustment of a present drive current to the respective LED string to the determined target drive current (para. [0013], “The control module is configured to determine a temperature of the LEDs and adjust current through the LEDs based on the temperature, the selected template, and the calibration data to maintain a luminosity of the LEDs at a predetermined luminosity”).
Zhang, however, does not explicitly disclose driving the plurality of LED strings to produce illumination and periodically turning the plurality of LED strings off by applying non-operative drive currents to the plurality of LED strings to take measurements or communicate optical data.
On the other hand, Muthu teaches driving the plurality of LED strings to produce illumination (C4, L10-15) and periodically turning the plurality of LED strings off by applying non-operative drive currents to the plurality of LED strings to take measurements or communicate optical data (C3, L51-65, wherein LEDs can be selectively turned off to accurately perform light intensity measurements).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate Muthu’s teaching about selectively turning off LED strings, into Zhang’s calibrating circuit, in order to accurately measure outputted light intensity and therefore improve precision of light adjustment.
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 22, 29 and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30, 22 and 38 of copending Application No. 18/233,231 (reference application). 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 at the plurality of different temperatures and adjusting drive current accordingly are all present in the claims 30, 22 and 38 respectively.
Claim 29 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30, 22 and 38 of copending Application No. 18/746,643 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other the steps/elements 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 at the plurality of different temperatures and adjusting drive current accordingly are all present in the claims 1 and 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/elements 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 at different ambient temperatures for each LED string and storing results in a calibration table are all present in the claim 10 of the ‘632 patent.
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 at a present temperature and storing results in a calibration table, wherein lumens correspond to the luminous flux recited in claims 43, 45 and 47.
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, because claims 5 and 16 in patent ‘612 teach the steps/elements of applying non-operative current, recording forward voltage at multiple temperatures, utilizing interpolation technique and storing results in a calibration table, wherein lumens correspond to the luminous flux, recited in claims 43, 45 and 47.
With respect to claims 45 and 47, those claims are rejected for same rationale as explained above.
Allowable Subject Matter
Claims 23, 29-30, 36-37, 43, 45, 47 and 55-63 recite allowable subject matter, however their allowance is contingent upon overcoming rejections/objects as explained above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 23, the prior art of records does not anticipate nor render obvious, the method for driving the plurality of LED strings as disclosed in claim 22, further wherein determining the target drive current corresponding to the contribution by the respective LED string to the desired luminous flux or the desired color temperature, is carried in the manner as disclosed in claim 23.
With respect to claims 29 and 36, the prior art of records does not anticipate nor render obvious, the device driving the plurality of LED strings to produce illumination and periodically turning the plurality of LED strings off by applying non-operative currents to the plurality of LED to take measurements or communicate optical data and carrying out the adjustment of the current to the respective LED string to the determined target drive current, wherein control circuitry to carry out the steps driving, measuring and adjusting require the circuitry as illustrated in Figure 11 and further explained in the 35 USC 112(f) section above.
With respect to claims 30, 37 and 58-63, those claims also contain allowance subject matter the virtue of their dependency on claims 29 and 36, respectively.
With respect to claims 43, 45 and 47, the prior art of records does not anticipate nor render obvious, the device driving the plurality of LED strings to produce illumination and periodically turning the plurality of LED strings off by applying non-operative currents to the plurality of LED to take measurements or communicate optical data, measuring forward voltage and utilizing table of calibration values and interpolation techniques to adjust or maintain the luminous flux output, wherein adjustment and compensation are carried out in the manner as disclosed in claims 43, 45 and 47.
Furthermore, with regards to claims 43 and 47, the control circuitry carrying out the steps of driving, measuring and adjusting requires the circuitry as illustrated in Figure 11 and further explained in the 35 USC 112(f) section above.
With respect to claim 55, the prior art of records does not anticipate nor render obvious controlling a light emitting diode (LED) lighting device as taught in claim 22, wherein the lighting device is configured to produce white light with correlated color temperatures (CCTs) ranging from warm white (2600K-3700K), to neutral white (3700K- 5000K), to cool white (5000K-8300K).
With respect to claims 56 and 57, those claims also contain allowance subject matter the virtue of their dependency on claim 55.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive.
In the first argument on pages 10-11, the Applicant contends “Applicant would like to preface the description of amendments by pointing out that Applicant considers the feature of determining "a present junction temperature of the respective LED string" to be an overlooked aspect of US Patent No. 9,578,724 … The Office Action, page 36, contends that the '724 Patent's dependent claim 5 ("further comprising a storage medium configured for storing the table of calibration values, and wherein the table of calibration values correlate forward voltage and drive current to luminous flux at a plurality of temperatures for each of the plurality of LED chains" (emphasis added)) implies something about junction temperature… However, Applicant strongly disagrees. First, the temperatures claimed are ambient environmental temperatures associated with the calibration method of FIG. 1”.
The Examiner’s Response: The Examiner agrees that it is possible that the temperatures referred to in claim 5 may be addressing ambient temperature however those temperature and other parameters such as forward voltage and driving current are all related to the junction temperature as evidenced by the Figures 2 and 3. Moreover, according to MPEP 1412.01 III “Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application”. In this instance, the Examiner is unable to locate the embodiment directed to utilizing junction temperature instead of other measurements such as ambient temperature. On contrary, it is evident, while reading through the specification, that all those measurements are dependent upon one another. It is correct that some colors of LEDs may require different interpolation techniques as some may result linear relationship as depicted in Figure 2 and other colors may display more quadratic patter as illustrated in Figure 3, however even though disclosure mentions “in another embodiment” multiple times, the drawing and provided explanations do not support that. For instance, flow chart depicted in Figure 1, lists the plurality of step of obtaining measurements and storing the information in a form of calibration table (C15, L15-32), while flowchart of Figure 5, illustrates the steps for driving an LED string and adjusting input in effort of producing desired luminous flux. It appears that the embodiment disclosed in claims 22, 29 and 36 falls under the embodiment disclosed in claim Figure 5 while claims 43, 45 and 47 appear to related to Figure 1 since they discuss storing information as a table of calibration values. It is worth noting however, that even though those two groups of claims are related to two different embodiments, they both include information about junction temperature.
Consequently, utilizing information about the junction temperature does not appear to be its own embedment but instead, an additional step which may enrich the accuracy of results (see C12, L21-33).
If the Applicant does not agree with the Examiner’s conclusion, the Applicant is invited to provide an explanation and citations of the original specification which could clearly indicate that obtaining and utilizing junction temperature is its own embodiment/ species/ invention and therefore qualifies as overlooked aspect of invention.
Accordingly, the rejections are maintained.
Conclusion
Claims 22-23, 29-30, 36-37, 43, 45, 47 and 55-63 stand rejected.
THIS ACTION IS MADE FINAL. 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 6:30 am - 3:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
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