Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue
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 Patent No. 9,392,660 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Claims Status
Claims 24-48 are new and pending in the application.
Claims 24-37 and 45-48 are rejected.
Claims 38-44 are allowed.
Claims 1-23 are cancelled.
Claims 45-48 have been added.
Claims 24, 31, 41, 43 and 44 are amended.
Claim Interpretation
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 (claims 24, 31 and 38) 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:
Claim 24: “.. calculating, by the LED lighting device control circuitry, a performance characterization relationship for the respective LED, the performance characterization relationship including the plurality of optical output parameters as a function of ambient temperature …”
Similarly, claim 38 recites an LED lighting controller comprising the LED lighting control circuitry to “generate a performance characterization relationship for the respective LED, the performance characterization relationship including the plurality of optical output parameters as a function of ambient temperature”.
In this instance, the LED lighting device control circuitry corresponds to a generic placeholder.
Lastly claim 31 recites “control circuitry” to “calculate a performance characterization relationship including the plurality of optical parameters as a function of ambient temperature”.
It appears that according to column 5, line 61- column 6, line 23, the performance characteristics correspond to the calibration method. The equations recited below represent determined/calculated characteristics:
“Responsivity=m*wavelength+b+d*Vfd, or EQ. 1
Responsivity=(m+km)*wavelength+b+d*Vfd EQ. 2
where the coefficient ‘m’ corresponds to the slope of the responsivity vs. wavelength relationship, the coefficient ‘km’ corresponds to a difference in the slope of the relationships generated at different ambient temperatures, the coefficient ‘b’ corresponds to the offset or y-axis intercept value, and the coefficient ‘d’ corresponds to the shift due to temperature”.
Since the claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 24-44 have been interpreted to cover the corresponding structure/algorithm described in the specification 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, a general purpose computer is usually sufficient for the corresponding structure for performing a general computing 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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 24-37 and 45-48 are rejected under 35 U.S.C. 101 because the claimed invention recited in claims 24-30 is directed to a method without significantly more, invention claimed in claims 31-37 is directed to a non-transitory machine-readable storage device storing routine conventional instructions, without significantly more.
Claim 24:
STEP
ANALYSIS
Statutory Category
Yes. The claims recite series of steps and therefore it is a process
2A – Prong 1: Judicial Exception Recited?
Yes. The limitation recites the process for gathering plurality of measurements such as optical output, calculating/determining performance characterization relationship including plurality of optical output parameters. This is an abstract idea as it involves data gathering and mathematical calculation.
2A-Prong 2: Integrated into a Practical Application
No. Claim 24 recites that data representative of the performance characterization relationship between the plurality of optical output parameters as a function of ambient temperature is stored. Accordingly, the judicial exception is not integrated into a practical application.
2B: Claim provides an Inventive Concept?
No. Since the result of the algorithm discussed in Step 2A, Prong 1 is simply stored but not utilize to yield a practical or improved results the claims do not provide inventive concept.
With respect to claims 25-30, those claims are also rejected, by the virtue of their dependency on claim 24 and also by failing to recite additional limitations which could amount to significantly more.
Claim 31:
STEP
ANALYSIS
Statutory Category
Yes. The claims recite series of steps implemented on a computer readable medium (CRM) and therefore it is a product
2A – Prong 1: Judicial Exception Recited?
Yes. The limitation recites a CRM for gathering plurality of measurements such as optical output, calculating/determining performance characterization relationship including plurality of optical output parameters. This is an abstract idea as it involves data gathering and mathematical calculation.
2A-Prong 2: Integrated into a Practical Application
No. Claim 31 recites that data representative of the performance characterization relationship between the plurality of optical output parameters as a function of ambient temperature is stored. Accordingly, the judicial exception is not integrated into a practical application.
2B: Claim provides an Inventive Concept?
No. Since the result of the algorithm discussed in Step 2A, Prong 1 is simply stored but not utilize to yield a practical or improved results the claims do not provide inventive concept.
With respect to claims 32-37, those claims are also rejected, by the virtue of their dependency on claim 31 and also by failing to recite additional limitations which could amount to significantly more.
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 non-statutory 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 non-statutory 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 non-statutory 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 24-30 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.9,510,416. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a method for calibrating an illumination device wherein plurality of drive currents are applied to LEDs and plurality of output parameters such as light intensity, wavelength values, forward voltage are measured for respective LEDs and calibration values or parameters associated with performance characterization relationship are stored.
Claim 24 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 9,392,663. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a method for calibrating an illumination device wherein plurality of drive currents are applied to LEDs and forward voltages are measured for respective LEDs and calibration values or parameters associated with performance characterization relationship are stored as a function of ambient temperature.
Allowable Subject Matter
Claims 24-37 and 45-48 would be allowed contingent upon overcoming rejections recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 24 and 31, the prior art of record does not anticipate nor render obvious the LED lighting controller or the method as disclosed in claims 24, 31 and 38 wherein plurality of drive currents are applied to respective LEDs at plurality of ambient temperatures, different drive currents produce illumination at different levels of brightness, receiving a plurality of optical output parameters at each of the plurality of drive currents, determining a performance characterization relationship for respective LED according to the following equations:
“Responsivity=m*wavelength+b+d*Vfd, or EQ. 1
Responsivity=(m+km)*wavelength+b+d*Vfd EQ.2 (as explained on page 4)
Lastly storing output parameters as a function of ambient temperature.
With respect to claims 25-30, 32-37 and 45-48, those claims would also be allowed by the virtue of their dependency on claims 24 and 31 respectively.
Claims 38-44 are allowed.
With respect to claim 38, the prior art of record does not anticipate nor render obvious the LED lighting controller or the method as disclosed in claims 24, 31 and 38 wherein plurality of drive currents are applied to respective LEDs at plurality of ambient temperatures, different drive currents produce illumination at different levels of brightness, receiving a plurality of optical output parameters at each of the plurality of drive currents, determining a performance characterization relationship for respective LED according to the following equations:
“Responsivity=m*wavelength+b+d*Vfd, or EQ. 1
Responsivity=(m+km)*wavelength+b+d*Vfd EQ.2 (as explained on page 4)
Lastly storing output parameters as a function of ambient temperature.
With respect to claims 39-44, those claims would also be allowed by the virtue of their dependency on claim 38.
Response to Arguments
Applicant's arguments filed on January 27, 2026 have been fully considered but they are not persuasive.
Argument #1 On pages 9-10, the Applicant contends “First off, even if the claims just recited "control circuitry," it would convey sufficiently definite structure to a person of ordinary skill in the art. Applicant notes that the Federal Circuit has consistently and repeatedly determined circuit or circuitry is a term that connotes structure, for example, "when the structure-connoting term 'circuit' is coupled with a description of the circuit's operation, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art, and 1216 presumptively will not apply." Linear Tech. Corp. V. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004) (citing Apex, Inc. V. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (emphasis added); accord Massachusetts Institute of Technology V. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (citing Lighting World, Inc. V. Birchwood Lighting, Inc., 382 F.3d 1354, 1362 (Fed. Cir. 2004) ("[W]e have held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function. Id. at 1359-60." (Emphasis added)). The Federal Circuit has clearly stated "In contrast to the term 'mechanism,' dictionary definitions establish that the term 'circuitry,' by itself, connotes structure.".
Examiner’s Response: The Examiner does not find the above argument persuasive because MPEP 2181 I clearly states “The presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term "means" is overcome when "the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.'" Williamson, 792 F.3d at 1349, 115 USPQ2d at 1111 (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000); see also Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696, 704, 48 USPQ2d 1880, 1887 (Fed. Cir. 1998)”.
The term “circuit” is very broad and it does not point to any specific structure, thus the recitation of the sufficient structure to perform claimed function of generating a performance characterization relationship is lacking. Accordingly, the Examiner maintains that the interpretation under 35 U.S.C. 112 6th paragraph is proper.
In the other words, if claim would recite generic function, for instance receiving data or sending data, the “means plus function” interpretation may not be invoked but because the function recited in claim 24, goes beyond generic steps and the “control circuitry” does not recite sufficient structure to perform them, the 112(f) interpretation is invoked.
Argument #2 On pages 10-11, the Applicant alleges “The claimed subject matter provides a specific, novel, and non-obvious technical solution to correcting the color output of an LED lighting fixture to compensate for changes in temperature, changes in drive current, and over time as the LEDs age. A shift in intensity and/or color temperature output may be aesthetically unacceptable to a user, e.g., as the ambient temperature changes and the LEDs age, which is a technical problem. The technical solution is to calibrate a color/intensity performance characterization relationship for color temperature and intensity shifting of LEDs over time, which is a practical application. Accordingly, the claimed subject matter addresses the issue of color shift as an LED ages, by adjusting current to the LED(s) to maintain consistent and correct color temperature at a desired intensity over the course of the life of the LED, thereby reducing or eliminating the age-based color shift inherent in LED fixtures.”.
Examiner’s Response: The Examiner does not find the above argument persuasive. The Examiner does not contest that adjusting “current the LED(s) to maintain consistent and correct color temperature at a desired intensity over the course of the life of the LED, thereby reducing or eliminating the age-based color shift inherent in LED fixtures” is not a technical solution. However, claims 24-37 fail to recite the step of adjustment. In contrast, the rejected claims recite the steps of gathering data, calculating and storing the characteristics but based on what is being claimed, the data is not used for any practical purpose such as adjustment.
Accordingly, the rejections under 35 U.S.C. 101 are maintained.
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, Andrew Fischer can be reached on 571-272-6779.
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
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992