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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11,982,433. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claimed invention is somewhat broader recitation of the ’433 Patent, for example
present claimed invention (APP’038)
U.S. Patent No. 10,473,317 (PAT’433)
Comments
1. A fluid-cooled LED-based lighting fixture for an agricultural environment, the lighting fixture comprising: a frame having a coolant channel; at least one LED light source, coupled to the frame, to emit radiation; control circuitry, coupled to the frame and electrically coupled to the at least one LED light source, to receive AC power and to control the at least one LED light source; a tube defining a cavity with a first open end and a second open end, the cavity containing the frame, the at least one LED light source, and the control circuitry, the tube being transparent to the radiation; a first end cap disposed at the first open end of the tube and coupled to the frame; a second end cap disposed at the second open end of the tube and coupled to the frame, the first and second end caps enclosing the cavity of the tube; and a coolant pipe, at least partially disposed in and thermally coupled to the coolant channel of the frame, to carry a fluid coolant that extracts heat generated by the at least one LED light source during operation of the lighting fixture, the coolant pipe passing through a first fluidic feedthrough in the first end cap and a second fluidic feedthrough in the second end cap.”
1. A fluid-cooled LED-based lighting fixture for an agricultural environment, the lighting fixture comprising: a frame having a coolant channel; at least one LED light source, coupled to the frame, to emit radiation; control circuitry, coupled to the frame and electrically coupled to the at least one LED light source, to receive AC power and to control the at least one LED light source; a tube defining a cavity with a first open end and a second open end, the cavity containing the frame, the at least one LED light source, and the control circuitry, the tube being transparent to the radiation; a first end cap disposed at the first open end of the tube and coupled to the frame; a second end cap disposed at the second open end of the tube and coupled to the frame, the first and second end caps enclosing the cavity of the tube; and a coolant pipe, at least partially disposed in and thermally coupled to the coolant channel of the frame, to carry a fluid coolant that extracts heat generated by the at least one LED light source during operation of the lighting fixture, the coolant pipe passing through a first fluidic feedthrough in the first end cap and a second fluidic feedthrough in the second end cap, wherein: the coolant pipe is formed from copper; and the coolant pipe is press fit into the coolant channel of the frame.”
Claim 1 of APP’038 fails to discloses:
the coolant pipe is formed from copper; and the coolant pipe is press fit into the coolant channel of the frame
Therefore, in respect to above discussions, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the teachings of claim 1 Patent ’433 as a general teachings for an illuminating device as claimed by the present application.
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, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Richert et al. (US 2015/0377427 hereinafter refer as “Richert”) in view of MARTINEZ et al. (US 2012/0033431 hereinafter refer as “MARTINEZ”).
Regarding claim 1, Richert discloses a fluid-cooled LED-based lighting fixture (10/160, see Figs. 3 and 5), the lighting fixture comprising: a frame (161, see Fig. 5, Para. 0017, 0024) having a coolant channel (cavity 170, see Fig. 5, Para. 0024); at least one LED light source (light emitting diodes (LEDs) 183 mounted on the LED electrical board 180, see Fig. 5, Para. 0024) coupled to the frame, to emit radiation; control circuitry (a driver board 190, see Fig. 5, Para. 0024), coupled to the frame and electrically coupled to the at least one LED light source, to receive power and to control the at least one LED light source (see Para. 0024); a tube (translucent enclosure 50/150, see Figs. 3 and 5, Para. 0024) defining a cavity (internal 51, see Fig. 5, Para. 0024) with a first open end (52/53, see Fig. 3, Para. 0016) and a second open end (53/52, see Para. 0016), the cavity containing the frame (see Fig. 5), the at least one LED light source, and the control circuitry, the tube being transparent to the radiation (see Para. 0016); a first end cap (54, see Fig. 3, Para. 0016) disposed at the first open end of the tube and coupled to the frame; a second end cap (54, see Fig. 3, Para. 0016) disposed at the second open end of the tube and coupled to the frame, the first and second end caps enclosing the cavity of the tube; and a coolant pipe (171, see Fig. 5, Para. 0024), at least partially disposed in and thermally coupled to the coolant channel of the frame, to carry a fluid coolant that extracts heat generated by the at least one LED light source during operation of the lighting fixture.
Regarding the claim limitation “for an agricultural environment”, the applicant is respectfully advised that the recitation the lighting fixture is for an agricultural environment is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Furthermore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use Richert’s lighting fixture for an agricultural environment, since it has been held by the courts that 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 satisfying the claimed structural limitations. Ex parte Masham 2 USPQ2d 1647 (1987).
Regarding the control circuitry receiving AC power, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to satisfy the requirements of the receiving AC power in order to power the driver board (as recited claim), since satisfying the operational and/or regulatory requirements of a particular application would have flown naturally to one of ordinary skill in the art.
However, Richert is silent with respect to the coolant pipe passing through a first fluidic feedthrough in the first end cap and a second fluidic feedthrough in the second end cap.
MARTINEZ teaches an LED module (100, see Figs. 1 and 2, Para. 0020) includes a first end cap (112, see Figs. 1 and 2, Para. 0026) disposed on a first longitudinal end and a second end cap (114) disposed on an opposing second longitudinal end; wherein a coolant pipe (channels 132, 134, see Figs. 1 and 2, Para. 0020) passing through a first fluidic feedthrough (194, see Para. 0025) in the first end cap and a second fluidic feedthrough in the second end cap.
Therefore, in view of MARTINEZ, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Richert’s end cap to include a first and second fluidic feedthrough in the first end cap and second end cap respectfully in order to supply coolant which is circulating within the liquid cooling tubes as suggested by MARTINEZ, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, providing fluidic feedthrough in the end caps would have flown naturally to one of ordinary skill in the art as necessitated by the specific requirements of a given application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Storey et al. (US 2017/0146226 hereinafter refer as “Storey”) discloses a fluid-cooled LED-based lighting fixture (lighting system 10, see Fig. 6, 11, Para. 0024) for an agricultural environment, the lighting fixture comprising: a frame (lighting housing 12, see Figs. 4, 6, Para. 0025, 0029) having a coolant channel (42, see Fig. 6, Para. 0034); a first end cap (48 and 58, see Fig. 9, Para. 0039); Claeys (US 2012/0162976) discloses a UV module of this invention has connection block (optional), connection end cap, shutter, and exhaust end cap assemblies; and Wertz et al. (US 2017/0102138 hereinafter refer as “Wertz”) teaches an LED module (100, see Figs. 1 and 2, Para. 0026) includes a first end cap (102, see Figs. 1 and 2, Para. 0026) disposed on a first longitudinal end and a second end cap (108) disposed on an opposing second longitudinal end (108); wherein a coolant pipe (fluid inlet 112 and fluid outlet 114, see Figs. 1 and 2, Para. 0026) passing through a first fluidic feedthrough in the first end cap and a second fluidic feedthrough in the second end cap.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tsion Tumebo whose telephone number is 571-270-1668. The examiner can normally be reached on 7:30 am to 4:00 pm, Monday thru Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached on (571)272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TSION TUMEBO/
Primary Examiner, Art Unit 2875