DETAILED ACTION
This Office Action is in response to Restriction/Elected, filed on 07/27/2026, on the application filed on 10/09/2023. Claims 1-14 are presented for examination consideration.
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 .
Election/Restrictions
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group 2. Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group 3
There being no allowable generic or linking claims. Election was made without traverse in the reply filed on 07/27/2026.
Drawings Objections
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s):
The limitation phrases “switch” and “controlling the control circuitry” in the limitations “and a switch, connected to the cover plate and at least partially controlling the control circuitry” in independent claim 1 needs to be shown TOGETHER in a drawing. The limitation phrases “switch” and “controlling the control circuitry” should be shown together in drawing(s) and NOT to have “one skill in the arts” TRY to piece meal Figs. 1A-1B, Fig. 2A/2B and Figs. 3C-3D to maintain the required RELATIONSHIP and AVOID GAPS so as to enable the required mapping to the limitation structures cited in the limitation.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification Objections
The disclosure is objected to because of following errors:
The specification is objected to because of the claimed structures of “switch” and “controlling the control circuitry” are NOT properly shown TOGETHER in a single drawing to support independent claim 1 as detailed in the drawing objections. Though ¶[0050] indicates “voltage control circuitry 205 of Fig. 2A”, “switch control unit 104 of Figs. 1A-1B”, and “switch plug 209 of Fig. 2A”, and though ¶[0054] indicates “switch plug 312 of Fig. 3C” and “switch plug 209 of Fig. 2A”, structural mapping CANNOT be established between the Figures.
Single-gang box is indicated as item “320”, when the single-gang box should be indicated as item “302” in Figs. 3A-3B.
Appropriate correction is required as well as no new matter should be entered.
Claim Rejections - 35 USC § 103
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Provenzano et al. (US20110068103A1 and Provenzano hereinafter), in view of NPL “Touch-Smart Retrofit_DaVinci_1-13_Jun 2019” (NPL “Touch-Smart Retrofit” hereinafter), and in further view of NPL “USESI_229391 Passive Infrared Multi-Way Switch_WattStopper_1-12_Sep 2014” (NPL “USESI_229391” hereinafter).
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Reproduced Diagram of the Figure on page 10 from NPL “USESI_229391 Passive Infrared Multi-Way Switch_WattStopper_1-12_Sep 2014”
Regarding claim 1, Provenzano discloses a retrofitting kit (item 100 of Fig. 8 and ¶[0030] is interpreted to show and indicate retrofitting kit 100 {retrofitting faceplate system 100}), comprising: an enclosure box, wherein the enclosure box comprise a rear wall and at least one sidewall (item 124 of Fig. 8 and ¶[0030] shows and indicates enclosure box 124 {enclosure formed by the extension portion 124}; where enclosure box 124 comprises a rear wall and sidewalls), and wherein the enclosure box comprises at least one enclosure hole corresponding to at least one threaded hole in a front wall of a single-gang or multi-gang electrical box such that the enclosure box may be secured to the single-gang or multi-gang electrical box with at least one fastener inserted through the at least one enclosure hole and through the at least one threaded hole (items 822, 806, 804, 802, 820 of Fig. 8 and ¶[0030-0031] shows and indicates where enclosure box 124 is comprised of enclosure holes 822 {oblong apertures 822} respectively corresponds to threaded holes 806 (806A & 806B) {apertures 806} in the front wall 804 (804A & 804B) {flange portions 804} of the single-gang electrical box 802 {wall box 802} such that enclosure box 124 may be secured to the single-gang electrical box 802 with fasteners 802 inserted through enclosure holes 822 and through the threaded holes 806 (806A & 806B)); a cover plate (item 128 of Fig. 8 and ¶[0030] shows and indicates cover plate 128 {protruding nose portion 128 formed to cover the front of extension portion 124}).
Provenzano discloses the claimed invention except to explicitly disclose a retrofitting kit; wherein a control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry.
NPL “Touch-Smart Retrofit” discloses a retrofitting kit; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry (pages 1-13 indicates and shows a retrofitting kit {kit used to retrofit a DaVinci fireplace with existing analog controls using a Touch-Smart Retrofit Kit, indicated on page 1}; page 13 indicates and shows where multiple switches are connected to the cover plate and controlling the control circuitry; therefore, Provenzano will have a retrofitting kit by incorporating the concept of a kit from NPL “Touch-Smart Retrofit”; and where the retrofitting kit of Provenzano will have the switch be connected to the cover plate and controlling the control circuitry by incorporating the concept of a kit from NPL “Touch-Smart Retrofit”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a retrofitting kit; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry into the structure of Provenzano. One would have been motivated in the retrofitting kit of Provenzano and have the retrofitting kit; where the switch is connected to the cover plate and at least partially controlling the control circuitry, in order to provide a kit to retrofit an existing system and have the kit have the switch connected to cover plate to facilitate controlling the system, as surreptitiously described and shown by NPL "Touch-Smart", in the retrofitting kit of Provenzano.
However, Provenzano and NPL “Touch-Smart Retrofit” do not disclose wherein a control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry.
NPL “USESI_22939” discloses wherein a control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry (items A, B, C, D, E from the Reproduced Drawing & Figure on page 10 and pages 9-10 shows and indicates where control circuitry A {circuity controlling Relay 1 [RLY#1] and Relay 2 [RLY#2]} for controlling utility B {utility of the light fixture segmented through sensor #1 and sensor #2 that is controlled through relay 1 and relay 2} and contained within enclosure box E; and where switch D {switch buttons} is connected to cover plate C and controlling control circuitry A; therefore, modified Provenzano will have the retrofitting kit with the following limitations by incorporating the Light Fixture Occupy Sensor Switch of NPL “USESI_22939”: control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and a switch, connected to the cover plate and at least partially controlling the control circuitry).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate wherein a control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and wherein a switch connected to the cover plate and at least partially controlling the control circuitry into the structure of modified Provenzano. One would have been motivated in the retrofitting kit of modified Provenzano and have the control circuitry for controlling at least one utility and contained at least partially within the enclosure box; and where the switch is connected to the cover plate and controls the control circuitry, in order to provide switch buttons in the front cover plate of the control circuitry enclosure to control the given utility, as extrapolated by NPL "USESI-229391" on pages 9-10, in the retrofitting kit of modified Provenzano.
Regarding claim 2, modified Provenzano, further comprising a set of fasteners for securing the cover plate to the enclosure box (NPL “Touch-Smart Retrofit”: page 13 shows and indicates magnetic fastener for securing the cover plate to the enclosure box; NPL “USESI_22939”: page 13 shows and indicates tabs & button hinge fasteners for securing cover plate C to enclosure box E).
Allowable Subject Matter
Dependent claims 3-14 would be allowed if the independent claim 1 is rewritten or amended to overcome the Drawing Objections and the 35 USC § 103 rejection set forth in this Office Action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUILLERMO J EGOAVIL whose telephone number is (571)270-1325. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/GUILLERMO J EGOAVIL/Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847
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