DETAILED ACTION
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
Applicant’s election of Species C, Species iii, and Species y in the reply filed on 6/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/119136, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the prior-filed application fails to provide support for “the window…physically secured to the middle frame,” as recited in claim 7 and similarly in claim 9 and “the curved region includes an ellipsoid region,” recited in claim 10 and in combination with the window comprising a curved region and a flat region.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 2-5, 7, 9-12, 15, and 18-20 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the limitation “wherein the holding frame open region adjoins the window at at least two locations, the at least two locations including a first adjoined surface and a second adjoined surface sequentially connected to one another,” is unclear as to unclear as to what is meant by an “open region” adjoining the window, as the open region is understood to be an empty space. It is further unclear as to what element the first and second adjoined surfaces are of, e.g. the “open region” or the “window.” Further, if the former is intended, it is unclear what is meant by the “open region” having surfaces.
Regarding claim 5, the limitation “the holding frame opening region includes a perpendicular region to a lower surface of the holding frame,” is unclear as to what is meant by the “opening region,” understood to be an empty space, having a “perpendicular region.”
Regarding claim 7, the limitation “the window [is] physically secured to the middle frame,” is unclear as to what is required by the claim. Specifically, the disclosure provides that the holding frame is “physically secured” to the middle frame by a screw or bonding layer, however there is no such disclosure of the window being “physically secured” to the middle frame, and therefore it is unclear as to the proper scope and meaning of “physically secured” as it relates to the window.
Regarding claim 7, the limitation “the holding frame…can be separated,” is unclear as to how it is related to the previous recitation of the holding frame being “removable” from the middle frame.
Regarding claim 9, the limitation “the window is physically secured to the middle frame,” is unclear as to what is required by the claim. Specifically, the disclosure provides that the holding frame is “physically secured” to the middle frame by a screw or bonding layer, however there is no such disclosure of the window being “physically secured” to the middle frame, and therefore it is unclear as to the proper scope and meaning of “physically secured” as it relates to the window.
Regarding claim 10, the limitation “an ellipsoid region,” is unclear as to what is required. Specifically, it is unclear as to how much of an ellipsoid shape is required in order to be construed as “an ellipsoid region.”
Regarding claim 11, the limitation “the curved region is disposed on the lower region of the window and partially overlaps the middle frame open region,” is unclear as to how it is related to the previous recitation of “the flat region is disposed on a lower region of the window.”
Regarding claim 15, the limitations “the widow lower region,” and “the window upper region,” are unclear because they lack proper antecedent basis.
Regarding claim 15, the limitation “wherein the first height is greater than a second region,” is unclear as to what is required by a height being greater than a region. It is further unclear as to a second region of what element.
Regarding claim 18, the limitation “the middle frame upper surface,” is unclear because it lacks proper antecedent basis.
Regarding claim 18, the limitation “the middle frame includes a larger region than the holding frame at the middle frame upper surface adjoined with the holding frame,” is unclear as to if it requires the middle frame to have a larger region than the holding frame or than a region of the holding frame. It is further unclear as to which element(s) are “at the middle frame upper surface.”
Regarding claim 19, the limitation “the upper surface of the middle frame,” is unclear because it lacks proper antecedent basis.
Regarding claim 19, the limitation “the window includes a protrusion region from the upper surface of the middle frame to the light emitting source,” is unclear as to what is required by the limitation. Specifically, there is no written disclosure associated with this feature and it is unclear what feature of the invention applicant is intending to claim. Accordingly, a proper scope in light of the specification cannot be ascertained.
Regarding claim 20, the limitation “the upper region of the middle frame,” is unclear because it lacks proper antecedent basis.
Note the dependent claims necessarily inherit the indefiniteness of the claims on which they depend.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-9 and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woo (US 2009/0251902; herein “Woo”).
Regarding claim 1, Woo discloses in Fig. 4 or 7 and related text a light emitting device comprising:
a base frame (10/20/30);
a light emitting diode (50, see [0026]) disposed on the base frame;
a middle frame (bottom portion of 40) disposed on the base frame, the middle frame including a middle frame open region (e.g. at least a “region” of the opening in bottom portion of 40, “region” being interpreted as, e.g., “any large, indefinite, and continuous part of a surface or space,” see Collins English Dictionary) exposing the light emitting diode;
a holding frame (top portion of 40) disposed on the middle frame and removable therefrom; and
a window (80/81, see [0036) disposed on the middle frame,
wherein the holding frame includes an upper region and a lower region which adjoins the middle frame (e.g. at least an upper “region” and a lower “region” of the top portion of 40), and
wherein the upper region is larger than the lower region (note that one can choose “regions” of the top portion of 40 such that the claimed limitation is met), wherein the holding frame includes a holding frame open region (e.g. at least a “region” of the opening in top portion of 40) partially overlapping the middle frame open region, and
wherein the holding frame open region includes a first width at the upper region and a second width at the lower region (note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met), and
wherein the first width is smaller than both the second width and a maximum width of the window (note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met).
The limitation “a holding frame…removable therefrom,” is directed to a method of using the device and because the device of Woo has all of the structural limitations of the claimed invention the device is capable of being operated in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Further, while features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. In the instant case, a holding frame capable of being removed from the middle frame by any means or in any manner reads on the claim.
Regarding claim 2, Woo further discloses wherein the holding frame open region adjoins the window at at least two locations, the at least two locations including a first adjoined surface and a second adjoined surface sequentially connected to one another (see Fig. 7).
Regarding claim 3, Woo further discloses wherein the first adjoined surface forms an angle less 90 degrees to an upper surface of the holding frame, and the second adjoined surface is at a 90 degree angle to the upper surface (see Fig. 7).
Regarding claim 4, Woo further discloses wherein the second adjoined surface is lower than the first adjoined surface (see Fig. 7).
Regarding claim 5, Woo further discloses the holding frame opening region includes a perpendicular region to a lower surface of the holding frame (note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met).
Regarding claim 6, Woo further discloses wherein the maximum width of the window is disposed outside of the middle frame open region, and is greater than a width of the middle frame open region (see Fig. 7; also note that one can choose a “region” of the opening in the bottom portion of 40 such that the claimed limitation is met).
Regarding claim 7, Woo further wherein the holding frame and the window are physically secured to the middle frame (see Fig. 4 or 7) and can be separated from the middle frame.
The limitation “the holding frame and the window…can be separated from the middle frame,” is directed to a method of using the device and because the device of Woo has all of the structural limitations of the claimed invention the device is capable of being operated in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Further, while features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. In the instant case, a holding frame and window capable of being removed from the middle frame by any means or in any manner reads on the claim.
Regarding claim 8, Woo discloses in Fig. 4 or 7 and related text a light emitting device comprising:
a base frame (10/20/30);
a light emitting diode (50, see [0026]) disposed on the base frame;
a middle frame (bottom portion of 40) disposed on the base frame, the middle frame including a middle frame open region (e.g. at least a “region” of the opening in bottom portion of 40, “region” being interpreted as, e.g., “any large, indefinite, and continuous part of a surface or space,” see Collins English Dictionary) exposing the light emitting diode;
a holding frame (top portion of 40) disposed on the middle frame and removable therefrom; and
a window (80/81, see [0036) disposed on the middle frame,
wherein the holding frame includes a holding frame open region (note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met) partially overlapping the middle frame open region,
wherein the window includes a flat region and a curved region (see Fig. 4 or 7), and
wherein the flat region is disposed on a lower region of the window and is located closer to the light emitting diode than the curved region (see Fig. 4 or 7).
Regarding claim 9, (Original) The light emitting device according to claim 8, wherein the window is physically secured to the middle frame by the holding frame and can be separated from the middle frame.
The limitation “the window…can be separated from the middle frame,” is directed to a method of using the device and because the device of Woo has all of the structural limitations of the claimed invention the device is capable of being operated in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Further, while features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. In the instant case, a holding frame and window capable of being removed from the middle frame by any means or in any manner reads on the claim.
Regarding claim 13, Woo further discloses wherein the window includes a maximum width located outside of the middle frame open region, and wherein the maximum width of the window is greater than a width of the middle frame open region (see Fig. 4 or 7).
Regarding claim 14, Woo further discloses wherein the window adjoins a middle frame upper region (see Fig. 4 or 7).
Regarding claim 15, Woo further discloses wherein the window includes a first height from a distal end of the widow lower region to the middle frame open region and a second height from the middle frame open region to a distal end of the window upper region, wherein the first height is greater than a second region (see Fig. 4 or 7).
Regarding claim 16, Woo discloses in Fig. 4 or 7 and related text a light emitting device comprising:
a base frame (10/20/30);
a light emitting diode (50, see [0026]) disposed on the base frame;
a middle frame (bottom portion of 40) disposed on the base frame, the middle frame including a middle frame open region (e.g. at least a “region” of the opening in bottom portion of 40, “region” being interpreted as, e.g., “any large, indefinite, and continuous part of a surface or space,” see Collins English Dictionary) exposing the light emitting diode;
a holding frame (top portion of 40) including a holding frame open region (e.g. at least a “region” of the opening in top portion of 40); and
a window (80/81, see [0036) disposed on the middle frame open region,
wherein the holding frame partially overlaps (e.g. in at least one direction) the middle frame open region,
wherein the holding frame open region includes at least two beveled regions including a first inclined angle and a second inclined angle which are sequentially connected to each other (see Fig. 4 or 7; also note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met), and
wherein the second inclined angle is greater than the first inclined angle (see Fig. 4 or 7; also note that one can choose a “region” of the opening in the top portion of 40 such that the claimed limitation is met).
Regarding claim 17, Woo further discloses wherein the window includes a maximum width at a location outside of the middle frame open region, and wherein the maximum width is larger than a width of the middle frame open region (see Fig. 4 or 7).
Regarding claim 18, Woo further discloses wherein the middle frame includes a larger region than the holding frame at the middle frame upper surface adjoined with the holding frame (see Fig. 4 or 7).
Regarding claim 19, Woo further discloses wherein the window includes a protrusion region from the upper surface of the middle frame to the light emitting source (see Fig. 4 or 7).
Regarding claim 20, Woo further discloses wherein the window adjoins the holding frame and the upper region of the middle frame (see Fig. 4 or 7).
Claim Rejections - 35 USC § 102/ § 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, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Woo.
Regarding claim 10, Woo further discloses wherein the curved region includes an ellipsoid region (see Fig. 4 or 7).
In the alternative, it would have been an obvious matter of design choice to modify the curved region to be an ellipsoid region, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04
Regarding claim 11, Woo further discloses wherein the curved region (e.g. above and supported by) is disposed on the lower region of the window and partially overlaps (e.g. in at least one direction) the middle frame open region (see Fig. 4 or 7).
Regarding claim 12, Woo further discloses wherein the curved region includes a major axis of the window placed outside the middle frame open region (see Fig. 4 or 7).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12701831. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘831 recite additional features and/or more narrow recitations compared to the claims of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lauren R Bell whose telephone number is (571)272-7199. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Kraig can be reached at (571) 272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN R BELL/Primary Examiner, Art Unit 2896
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