FINAL REJECTION
This Office action is responsive to the response of December 10, 2025 (“Response”) and the application filed August 3, 2023.
The instant 18/230,150 application is a continuation reissue application of 17/190,393, filed March 3, 2021 as a continuation reissue application of 15/659,037, filed July 25, 2017 as a reissue application of U.S. Pat. 9,097,826 B2 to Vasylyev (“the ‘826 Patent”), which issued August 4, 2015 from U.S. Pat. App. Ser. No. 13/647,175, filed October 10, 2012, and claiming priority to provisional application 61/545,142 filed October 8, 2011.
Claims 1-16 were originally pending in this application. By way of a preliminary amendment filed with the application, claims 1-16 are canceled and claims 17-36 are added. Thus claims 17-36 are pending.
This action is Final.
Reissue
The Examiner has determined that there are no other continuations, reissues, reexaminations, inter partes reviews, or other AIA trials or appeals currently pending with respect to the ‘826 Patent. A litigation search has determined there to be no pending litigation as to the ‘826 Patent.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,097,826 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 material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Because the instant ‘826 Patent is deemed to contain claims having an effective date prior to March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions do not apply, rather the pre-AIA provisions do. See 35 U.S.C. § 100 (note) and 35 U.S.C. § 100 (pre-AIA ). In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of any statutory basis for a 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.
Claim Interpretation
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under §112 ¶6:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with §112 ¶6. The presumption that the claim limitation is interpreted under §112 ¶6, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with §112 ¶6. The presumption that the claim limitation is not interpreted under §112 ¶6, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Here, several claims include functional language including elements “configured to” perform a function. See for example the light sources of claims 17 and 33 “configured to illuminate [a] light input edge” of a guiding rod. In this case, §112 ¶6 is not invoked as “light source” is considered a structural element and, more importantly, one of ordinary skill in the art would have understood that the function of illuminating an edge of an element is a function intrinsically performed by a light source. The same is true as to claims 19, 20, and 34-36, wherein an LED is “configured to emit light” in a first or specific color. One of ordinary skill in the art would understand that an LED is a structural element and that emitting light in a specific color is a definitional function of such an element.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17-20, 22-27, and 32-35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over DE10032158A1 to Neumann (“Neumann”) with a publication date of January 10, 2002, in view of CN200410089633.0 to Kawashima et al. (“Kawashima”) with a publication date of May 4, 2005, and U.S. Pat 6,280,044 B1 to Kusakabe (“Kusakabe”), with a publication date of August 28, 2001.
As to claim 17, Neumann discloses:
An illumination system, comprising:
a first light guiding rod formed from an optically transmissive material and having a first light input edge and a first generally smooth surface configured for reflecting light using a total internal reflection;
a second light guiding rod formed from an optically transmissive material and positioned in a proximity of the first light guiding rod, the second light guiding rod having a second light input edge and a second generally smooth surface configured for reflecting light using a total internal reflection,
a third light guiding rod formed from an optically transmissive material and positioned in a proximity of the second light guiding rod, the third light guiding rod having a third light input edge and a third generally smooth surface configured for reflecting light using a total internal reflection,
Neumann discloses an illumination system comprising a number of light guiding rods formed from an optically transmissive material, each having a first light input edge and a smooth surface configured for reflecting light by total internal reflection. Neumann at FIGS 1 and 4, Abstract and at ¶¶11, 19-20, and 34-35. Note Neumann discloses a plurality of rod bodies put together, which one of ordinary skill in the art would understand encompasses three rod bodies. Id.
a first light source configured to illuminate the first light input edge;
a second light source configured to illuminate the second light input edge;
a third light source configured to illuminate the third light input edge:
Neumann discloses a light source (LED) configured to illuminate the light input edge of the light guiding rods. Neumann at FIG 1 element 3 and at ¶¶21-23. However, Neumann does not necessarily disclose an individual light source for each rod. To that end, Kawashima discloses an analogous invention, namely an illumination system comprising a light guiding panel made of an optically transmissive material and having a first light input edge and smooth surface configured for reflecting light by total internal reflection, and further wherein the light source may comprise three light LEDs next to each other. Kawashima at FIG 5 and at 10:14-17. Therefore, it would have been obvious to one of ordinary skill in the art to modify Neumann in such a manner, namely as to utilizing three light sources, as one of ordinary skill in the art would have understood that at the time colors could be created using three LEDs, one red, one green, and one blue. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
The Examiner notes further that Patent Owner asserts in his arguments that the recitation of an individual rod body with a coupled light source as well as the separate recitation of a combination of rod bodies (without specific mention of light sources for each rod) means that a combination of rod bodies each comprising an individual light source is inherent.
a first plurality of light extraction elements formed in or on the first generally smooth surface in select locations such that a distance between adjacent ones of the first plurality of light extraction elements progressively decreases with a distance from the first light input edge;
a second plurality of light extraction elements formed in or on the second generally smooth surface in select locations such that a distance between adjacent ones of the second plurality of light extraction elements progressively decreases with a distance from the second light input edge; and
a third plurality of light extraction elements formed in or on the third generally smooth surface in select locations such that a distance between adjacent ones of the third plurality of light extraction elements progressively decreased with a distance from the third light input edge.
Neumann discloses each rod includes a plurality of light extraction elements 10 formed in/on one of the smooth surfaces in select locations. Neumann at FIG 1 and at ¶¶23 and 39. While Neumann in view of Kawashima does not disclose that a distance between adjacent ones of the light extraction elements progressively decreases with a distance from the light input edge, Kusakabe discloses an analogous invention, namely an illumination system comprising a light guiding panel, as well as individual rods, made of an optically transmissive material and having a first light input edge and smooth surface configured for reflecting light by total internal reflection, and further wherein a rod includes a plurality of light extraction elements formed in/on one of the smooth surfaces in select locations wherein a distance between adjacent ones of the light extraction elements progressively decreases with a distance from the light input edge. Kusakabe at FIGS 1 and 4 and at Abstract as well as 4:31-51.
Therefore, it would have been obvious to one of ordinary skill in the art to modify Neumann in such a manner, namely as to providing a distance between adjacent ones of the light extraction elements which progressively decreases with a distance from the light input edge, as taught by Kusakabe. This is because Kusakabe states that doing so will “obtain a uniformity in the brightness over the whole light conductive member”. Kusakabe at 4:50-51. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Further as to claim 18:
An illumination system as recited in claim 17, wherein each of the first, second, and third light sources comprises a light emitting diode.
As noted above in the rejection of claim 17, Neumann discloses the light source is an LED, and Kawashima discloses the three light sources are also LEDs. Neumann at FIG 1 element 3 and at ¶¶21-23, Kawashima at FIG 5 and at 10:14-17.
Further as to claims 19 and 20:
An illumination system as recited in claim 17, wherein the first light source comprises a first light emitting diode configured to emit light in a first color and a second light emitting diode configured to emit light in a different second color.
An illumination system as recited in claim 17, wherein the first light source comprises a first light emitting diode configured to emit light in a first color, a second light emitting diode configured to emit light in a second color, and a third light emitting diode configured to emit light in a third color.
As noted above in the rejection of claim 17, the LEDs may be of different colors, namely RBG.
Further as to claim 22:
An illumination system as recited in claim 17, wherein surfaces of the first, second, and third light input edges are positioned parallel to one another.
In Neumann, the light input surfaces of the composite rods are positioned parallel to each other. Neumann at FIG 4 and ¶20.
Further as to claim 23:
An illumination system as recited in claim 17, wherein longitudinal portions of the first, second and third light guiding rods extend parallel to one another.
In Neumann, longitudinal portions of the composite rods extend parallel to each other. Neumann at FIG 4 and ¶20.
Further as to claim 24:
An illumination system as recited in claim 17, wherein each of the first, second and third light guiding rods have a generally rectangular cross-section.
Neumann discloses that the composite rods have a generally rectangular cross section. Neumann at FIG 4.
Further as to claim 25:
An illumination system as recited in claim 17, wherein each of the first, second and third light guiding rods have a generally round cross-section.
Neumann discloses that an individual rods have a generally round cross-section. Neumann at FIG 3.
Further as to claim 26:
An illumination system as recited in claim 17, wherein the first light guiding rod has a generally rectangular cross-section which outline comprises at least one arcuate section.
Neumann in view of Kawashima and Kusakabe discloses that one of the composite rods may have a generally rectangular cross-section with an arcuate section. Neumann at FIG 4, ¶24 and claim 3.
Further as to claim 27:
An illumination system as recited in claim 17, wherein the first, second, and third light guiding rods are positioned adjacent to each other and aligned parallel to a common plane so as to form a planar panel.
Neumann in view of Kawashima and Kusakabe discloses that the rods are positioned adjacent to each other and aligned parallel to a common plane to form a planar panel. Neumann at FIG 4 and Abstract and at ¶¶11, 19-20, and 34-35, as well as claim 8.
Further as to claim 32:
An illumination system as recited in claim 17, wherein a transverse dimension of the first light guiding rod is at least 5 times greater than a size of individual ones of the first plurality of light extraction elements.
In the combined invention of Neumann in view of Kawashima and Kusakabe, the transverse dimension of a rod is at least 5 times greater than the size of an individual light extraction element. Neumann at FIG 1, Kusakabe at FIG 1.
As to claim 33, Neumann discloses:
An illumination system, comprising:
a first light guiding rod formed from an optically transmissive material and having a first light input edge and a first generally smooth surface configured for reflecting light using a total internal reflection;
a second light guiding rod formed from an optically transmissive material and positioned in a proximity of the first light guiding rod, the second light guiding rod having a second light input edge and a second generally smooth surface configured for reflecting light using a total internal reflection;
a third light guiding rod formed from an optically transmissive material and positioned in a proximity of the second light guiding rod, the third light guiding rod having a third light input edge and a third generally smooth surface configured for reflecting light using a total internal reflection;
Neumann discloses an illumination system comprising a number of light guiding rods formed from an optically transmissive material, each having a first light input edge and a smooth surface configured for reflecting light by total internal reflection. Neumann at FIGS 1 and 4, Abstract and at ¶¶11, 19-20, and 34-35. Note Neumann discloses a plurality of rod bodies put together, which one of ordinary skill in the art would understand encompasses three rod bodies. Id.
a light source configured to illuminate the first, second, and third light input edges,
Neumann discloses a light source (LED) configured to illuminate the light input edge of a light guiding rods. Neumann at FIG 1 element 3 and at ¶¶21-23. However, Neumann does not necessarily disclose the light source illuminates all three rods. To that end, Kawashima discloses an analogous invention, namely an illumination system comprising a light guiding panel made of an optically transmissive material and having a first light input edge and smooth surface configured for reflecting light by total internal reflection, and further wherein the light source may comprise three light LEDs next to each other to illuminate the entire panel. Kawashima at FIG 5 and at 10:14-17. Therefore, it would have been obvious to one of ordinary skill in the art to modify Neumann in such a manner, namely as to utilizing the three light sources, as one of ordinary skill in the art would have understood that at the time colors could be created using three LEDs, one red, one green, and one blue and also that the light source would necessarily need to illuminate the entire panel. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
The Examiner notes further that Patent Owner asserts in his arguments that the recitation of an individual rod body with a coupled light source as well as the separate recitation of a combination of rod bodies (without specific mention of light sources for each rod) means that a combination of rod bodies each comprising an individual light source is inherent.
a first plurality of light extraction elements formed in or on the first generally smooth surface in select locations such that a distance between adjacent ones of the first plurality of light extraction elements progressively decreases with a distance from the first light input edge;
a second plurality of light extraction elements formed in or on the second generally smooth surface in select locations such that a distance between adjacent ones of the second plurality of light extraction elements progressively decreases with a distance from the second light input edge; and
a third plurality of light extraction elements formed in or on the third generally smooth surface in select locations such that a distance between adjacent ones of the third plurality of light extraction elements progressively decreased with a distance from the third light input edge,
Neumann discloses each rod includes a plurality of light extraction elements 10 formed in/on one of the smooth surfaces in select locations. Neumann at FIG 1 and at ¶¶23 and 39. While Neumann in view of Kawashima does not disclose that a distance between adjacent ones of the light extraction elements progressively decreases with a distance from the light input edge, Kusakabe discloses an analogous invention, namely an illumination system comprising a light guiding panel, as well as individual rods, made of an optically transmissive material and having a first light input edge and smooth surface configured for reflecting light by total internal reflection, and further wherein a rod includes a plurality of light extraction elements formed in/on one of the smooth surfaces in select locations wherein a distance between adjacent ones of the light extraction elements progressively decreases with a distance from the light input edge. Kusakabe at FIGS 1 and 4 and at Abstract as well as 4:31-51.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima in such a manner, namely as to providing a distance between adjacent ones of the light extraction elements which progressively decreases with a distance from the light input edge, as taught by Kusakabe. This is because Kusakabe states that doing so will “obtain a uniformity in the brightness over the whole light conductive member”. Kusakabe at 4:50-51. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
wherein the light source comprises a plurality of light emitting diodes distributed along at least one dimension.
As noted above, Kawashima discloses that the light source may comprise three light LEDs next to each other to illuminate the entire panel. Kawashima at FIG 5 and at 10:14-17.
Further as to claims 34 and 35:
An illumination system as recited in claim 33, wherein the light source comprises a first light emitting diode configured to emit light in a first color, a second light emitting diode configured to emit light in a second color, and a third light emitting diode configured to emit light in a third color.
An illumination system as recited in claim 33, wherein the light source comprises a first light emitting diode configured to emit light in a red color, a second light emitting diode configured to emit light in a green color, and a third light emitting diode configured to emit light in a blue color.
As noted above in the rejection of claim 33, the LEDs may be of different colors, namely RBG.
Claim 21 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Neumannin view of Kawashima and Kusakabe as applied to claim 17 above, and further in view of JP2000251516A, with a publication date of September 14, 2000.
As to claim 21:
An illumination system as recited in claim 17, wherein at least some of the first, second, and third pluralities of light extraction elements comprise areas formed by a white paint.
Neumann in view of Kawashima and Kusakabe discloses the light extraction elements above. Neumann specifies that they may have a galvanic coating, but it is not disclosed that they may comprise areas formed by white paint.
To that end, JP2000251516A discloses an illumination system comprising a panel made of a number of light guide bodies adjacent to each other. JP2000251516A at Abstract and FIG 1. The light guide bodies include light extraction elements 4. Id. Notably, these light guide extraction elements are formed by applying white paint to the reflective body. Id. at ¶¶7-8.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing light extraction elements made from white paint, as taught by JP2000251516A. One of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 28 and 29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Neumannin view of Kawashima and Kusakabe as applied to claim 17 above, and further in view of U.S. Pat. PGPUB 2009/0064993A1 to Ghosh et al. (“Ghosh”), with a publication date of March 12, 2009.
Further as to claim 28:
An illumination system as recited in claim 17, wherein each of the first, second, and third light guiding rods is bent to a curved shape.
Neumann in view of Kawashima and Kusakabe discloses the multiple rod panel above, but does not disclose that the rods may be bent in a curved shape.
To that end, Ghosh discloses a light waveguide comprising a panel including light extraction elements where the top comprises a plurality of round cross-section portions. Ghosh at FIGS 2 and 3 and at ¶¶22-23. Ghosh further states that the panel may be shaped such that the cross-sectional portions are bent in a curved shape. Id. at FIG 4 and at ¶¶24.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing the rods in a curved shape, as taught by Ghosh. This is because Neumann discloses one of the uses of his invention to be a signal lamp for motor vehicles, which at the time commonly were circular. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Further as to claim 29:
An illumination system as recited in claim 17, wherein each of the first, second, and third light guiding rods is adapted be flexed to a curved shape with relative ease and without breaking.
Neumann in view of Kawashima and Kusakabe discloses the multiple rod panel above, but does not disclose that the rods may be bent in a curved shape.
To that end, Ghosh discloses a light waveguide comprising a panel including light extraction elements where the top comprises a plurality of round cross-section portions. Ghosh at FIGS 2 and 3 and at ¶¶22-23. Ghosh further states that the panel may be shaped such that the cross-sectional portions are bent in a curved shape. Id. at FIG 4 and at ¶¶24.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing the rods in a curved shape, as taught by Ghosh. This is because Neumann discloses one of the uses of his invention to be a signal lamp for motor vehicles, which at the time commonly were circular. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Lastly, one of ordinary skill in the art at the time of the invention would have understood that in order for the rods of claim 28 above to be bent into a curved shape, they would necessarily need to be made such that they do not break in the process.
Claims 30 and 31 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Neumannin view of Kawashima and Kusakabe as applied to claim 17 above, and further in view of U.S. Pat. PGPUB 2001/0020984A1 to Umemoto (“Umemoto”), with a publication date of September 13, 2001.
As to claim 30:
An illumination system as recited in claim 17, wherein a diameter of the first, second, and third light guiding rods is approximately 5 millimeters.
While disclosing the invention of claim 17 above, Neumannin view of Kawashima and Kusakabe do not specify that a diameter of the light guiding rod may be approximately 5mm.
To that end, Umemoto discloses an analogous invention, namely a light guiding rod 1. Umemoto at FIG 4 and Abstract. Umemoto specifies that a light guiding rod may have a thickness of 5mm. Id. at ¶46.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing the rods in such a given diameter as taught by Umemoto. One of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As to claim 31:
An illumination system as recited in claim 17, wherein a diameter of the first light guiding rod is approximately 20 millimeters.
While disclosing the invention of claim 17 above, Neumann in view of Kawashima and Kusakabe do not specify that a diameter of the light guiding rod may be approximately 20mm.
To that end, Umemoto discloses an analogous invention, namely a light guiding rod 1. Umemoto at FIG 4 and Abstract. Umemoto specifies that a light guiding rod may have a thickness of 5mm. Id. at ¶46.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing the rods in such a given diameter as taught by Umemoto. One of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 36 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Neumannin view of Kawashima and Kusakabe as applied to claim 33 above, and further in view of U.S. Pat. 6,185,356 B1 to Parker et al. (“Parker”), with a publication date of February 6, 2001.
As to claim 36:
An illumination system as recited in claim 33, wherein the light source comprises a first light emitting diode configured to emit light in a red color, a second light emitting diode configured to emit light in a green color, and a third light emitting diode configured to emit light in a blue color, and wherein the light source is configured to individually vary intensity of the red, green, and blue colors.
Neumannin view of Kawashima and Kusakabe discloses the invention of claim 33 above. Further, Neumann mentions increasing i.e. varying the intensity of the light according to the light sources. Neumann at ¶30. However, Neumannin view of Kawashima and Kusakabe fails to specifically disclose individually varying the intensity of red, green, and blue colors.
Parker discloses an analogous invention, namely a lighting device comprising a light guiding rod made of an optically transmissive material, wherein the rod includes light extraction elements in a similar manner as in claim 33. Parker at FIG 27A and at 6: 2-20 and 17:46-65. Further, Parker discloses a lighting element for illuminating the rod, wherein the lighting element comprises three light sources, one red, one blue, and one green, and wherein further the light source is configured to vary each color. Id. at 7:24-45.
Therefore, it would have been obvious to one of ordinary skill in the art to further modify Neumann in view of Kawashima and Kusakabe in such a manner, namely as to providing varying light intensity as taught by Parker. As noted above, Neumann in view of Kawashima and Kusakabe discloses three LEDs for creating a light source and also suggests varying intensity, which would lead one of ordinary skill in the art to seek out references disclosing how to accomplish this, which would lead to Parker. Further, one of ordinary skill in the art at the time would have understood such a combination to merely be an example of combining prior art elements according to known methods to yield predictable results. MPEP § 2143 I. A., citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Response to Arguments
Patent Owner provides arguments in their response (“Remarks”).
As to the previous rejection of claims under §§ 112 and 251 (Remarks at 2-13):
As to support under § 112(a), Patent Owner asserts that, while the embodiments of FIGS 25 and 26 fails to specify that the individual rod bodies of the multiple rod body embodiment each have an individual light source, the teaching of an individual rod body having a light source, coupled with the teaching of a combination of rod bodies together, would provision to one of ordinary skill in the art that the multiple rod body embodiment necessarily must include the teaching of each rod body having its own light source. The Examiner, responsive to this argument, withdraws the rejection under § 112(a), but notes above that this same argument applies to the prior art (i.e. Neumann), namely in that the prior art reference, similar to the Patent disclosure, disclosing a single rod body with a light source as well as putting multiple rod bodies together means it must necessarily teach that each of the constituent rod bodies in the multiple rod body panel each have their own light source.
With regards to § 251 (recapture), Patent Owner argues that his claims are towards the embodiment of FIG 25, not that of FIG 26. Notably, the disclosure as to FIG 26 speaks of an array of elongated waveguide structures 4. Structure 4, throughout the patent, is disclosed as a cylindrical or near-cylindrical individual waveguide, and that multiple waveguides 4 are longitudinally joined in this embodiment. ‘826 Patent at 6:37-48, 8:50-56, and 20:33-40. However, Patent Owner here asserts that instead the embodiment of FIG 26 solely and unequivocally describes a unitary panel and does not, as asserted in the non-final Office action, describe a panel made up of individual rod bodies. Responsive to this, the Examiner withdraws the rejection under § 251. Still, the Examiner notes that the disclosure as to the embodiment asserted here, namely that of FIG 25, is limited to two generic sentences in the disclosure, as follows:
FIG. 25 shows an embodiment of collimating system 2 in which multiple waveguide structures, such as those illustrated in FIG. 19, are positioned adjacent to each other to form a planar collimating panel. While only a few of the waveguide structures are shown in FIG. 25, it should be understood that system 2 may incorporate any number of them, including very large arrays of individual waveguides 4 with the respective lenses 6, each having a longitudinally extending string of reflectors 8.
‘826 Patent at 19:48-56.
As to the previous rejection of claims under §103 (Remarks at 14-22), the Examiner finds Patent Owner’s arguments not persuasive.
First, Patent Owner asserts that Neumann fails to disclose multiple rod bodies positioned together, but rather discloses instead a single-piece body. This is a misreading of Neumann, which very clearly sets forth that the multiple rod body embodiment is made up of individual rod bodies. See Neumann at ¶¶34-35, stating that the multiple rod body 15 “be formed of several” individual rod bodies, that it “is made up of several,” and that “the single rod bodies 16, 19” in the multiple rod body embodiment “have interfaces 7 facing one another”. See further Id. at ¶¶37-38 showing a very similar multiple rod body “which has a plurality of single rod bodies 19” which are referenced in the cited portion i.e. “the single rod bodies 16, 19”. This is a clear recitation that the multiple rod body embodiment is composed of individual rod bodies. Patent Owner himself points to the applied portion of Neumann which states that the rod bodies 16 making up the multiple rod body embodiment are “integrally connected”, that is, that they are individual rods connected to make a panel. Note further that Neumann describes in his claims the multiple rod body embodiment is made of “a plurality of single rod bodies (16, 19) arranged next to one another”.
Patent Owner cites to a portion of Neumann claiming it supports his position here, however Patent Owner does not state where in Neumann this statement is, and the Examiner notes it is not anywhere in the portions cited as to the multiple rod-body embodiment applied against the claims.
Patent Owner cites to and reproduces FIGS 1 and 4 of Neumann, which are reproduced below:
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Patent Owner asserts that this demonstrates that the multiple rod body embodiment of FIG 4 is a monolithic structure. However, note that FIG 1 and FIG 4 are cross sections along different axes; FIG 1 shows a single rod body along a longitudinal plane, and FIG 4 shows a cross section of two such bodies put together along a plane orthogonal to that of FIG 1, in a similar manner as FIG 3 shows a cross section of a single rod body of FIG 1.
Patent Owner further argues that Neumann does not disclose any optical interfaces or air gaps between the structures. Remarks at 15. In response, the Examiner notes first off that no interface or air gap is claimed, and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, even if such were the case, no such interface or air gap is described in the ‘826 Patent disclosure at all; again, the embodiment of FIG 25 asserted here by Patent Owner comprises two sentences in the disclosure and includes no details at all about how the rod bodies are put together or what kind of interfaces there are between them. Third, even assuming this, Neumann clearly discloses interfaces 7 between the rod bodies 16 in FIG 4. Neumann at ¶36, “[t]he single rod bodies 16, 19 have interfaces 7 facing one another”.
Second, Patent Owner argues that the combination of references fails to disclose that each rod has a light source. The Examiner notes that Neumann discloses a single rod as well as a single light source for said rod, and further teaches an embodiment where multiple rods are connected together. Notably, the ‘826 Patent teaches the same thing – a lighting rod, the use of a light source with a single rod, and a general embodiment where multiple rods are connected together, without mention of how the multiple rods are lit.
However, in the case of his disclosure Patent Owner argues that such a teaching is sufficient to lead one of ordinary skill in the art to understand that each of the multiple rods in his embodiment of FIG 25 must necessarily have an individual light source. See arguments towards §112 above. This reasoning further applies to the Neumann reference as well; if this feature is inherent in his disclosure, it is also inherent in Neumann. Patent Owner cannot have it both ways.
Ignoring that by Patent Owner’s own argument individual light sources are inherent in the multiple rod body embodiment of Neumann, it would have been obvious to use individual light sources for the reasons set forth above in the rejection. Note further that Neumann, in speaking of a multiple rod-body embodiment, speaks of the light “emitted by the light sources 3”, denoting plural usage.
Next, Patent Owner argues that Neumann fails to disclose a surface configured for total internal reflection. The Examiner notes that Neumann discloses throughout his disclosure that individual rod bodies operate in accordance with TIR. Neumann at ¶39. The Examiner further notes that the ‘826 Patent specifies that this is how lighting rods such as those of Neumann operate. ‘826 Patent at 1:51-59. Note further the November 3, 2020 decision by the Patent Trial and Appeal Board in parent application 15/659,037, pointing out this fact. November 3, 2020 Decision at 26. Notably, the reference at issue in the parent application did not specify TIR, whereas in this case Neumann clearly discloses it.
Patent Owner continues, arguing that Neumann teaches away from TIR by disclosing a galvanic coating. However, as the portions of Neumann cited by Patent Owner make clear, the galvanic coating is for the light extraction elements (prisms), not the smooth surface along the bottom of the individual lighting rods which operates by way of TIR as is claimed, which the light extraction elements are in or on. The Examiner notes further that the combination of references clearly discloses TIR along the bottom surface as well, noting that Kusakabe, cited to describe the structure and layout of light extraction elements in the combined invention, describes light extraction elements 15 along a smooth surface 16 which operates in accordance with TIR. Kusakabe at 2:56-58.
Lastly, Patent Owner argues that the combination of references is done so using hindsight. First off, Patent Owner’s arguments again that Neumann teaches a single unitary panel are found not persuasive for the reasons set forth above. Second, Patent Owner’s arguments that the references are towards different fields is not persuasive; Neumann and Kusakabe are analogous in that they all disclose means for extracting light using a lighting rod with surfaces operating in accordance with TIR, further including light extraction elements along a surface. Patent Owner’s arguments of a lack of specific motivation fails in two manners. First, the feature of Kawashima applied to Neumann is one Patent Owner himself argues is inherent in Neumann, and further Kusakabe clearly states a benefit with respect to laying out light extraction elements in a lighting rod in the manner claimed, stating that it would “obtain a uniformity in the brightness over the whole light conductive member”, that is, there is clear motivation in the prior art reference to modify Neumann. Secondly, even if this clear motivation did not exist in Kusakabe, Patent Owner’s asserted requirement that the Examiner must necessarily find a suggestion or motivation has no basis in the case law; Patent Owner’s assertion does not take into account that the Court repudiated any requirement that an explicit teaching, suggestion, or motivation is required to show obviousness. See KSR, 550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of Appeals.”). Rather, the requirement is only that the Examiner show “the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added). Although “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” In re Kahn, 441 F.3d977, 988 (Fed. Cir. 2006), “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
That is to say, given the teachings of Kusakabe, there is suggestion in the prior art to:
Take a multiple rod body element made up of individual lighting rod bodies, which operates in accordance with TIR (Neumann),
Utilize the light extraction elements of that multiple rod body using variable spacing in order to provide more uniform brightness, in doing so keeping the bottom surface outside of the light extraction elements operating in accordance with TIR (as explicitly suggested by Kusakabe), and
Configuring individual light sources for each rod in the body as taught by Kawashima and asserted by Patent Owner as inherent in a multiple rod body device like Neumann’s.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Charles Craver whose telephone number is (571) 272-7849. The Examiner can normally be reached on Monday - Friday 8:30-5:30 PT Pacific Time.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed,
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992