DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/23/2026 and 03/30/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The Applicant’s Amendment, filed 01/21/2026 has been entered. Claims 8-9, 15, and 20 have been canceled. Claims 33-36 have been added. Claims 1, 3, 6, 10-11, 14, 16-17, 19, 21-22 and 24-36 are pending in the Application.
Response to Arguments
Regarding the Double Patenting rejection, the Applicant requests that the double patenting rejection be held in abeyance until allowable subject matter is identified. Therefore, the double patenting rejection is maintained. Please see below for the detailed rejection.
Applicant's arguments filed 01/21/2026 with respect to the prior art rejection have been fully considered but they are not persuasive.
Regarding claim 1, the Applicant argues that the cited arts fail to disclose the limitation “wherein the configuring comprises enabling the extension module to participate in communication via the communication bus or ILB”. The Examiner respectfully disagrees. The previously cited Gorka (US 20190173748) explicitly discloses that the initialization and/or configuration of the modules enable the system/modules to be placed in an operation state for communication (see para 0064, after configuration, the system 10 can be placed in an operating state). The Examiner further notes that Gorka discloses a method for initializing the modules, which can be understood as enabling the module for communication (see the abstract). Thus, the prior arts disclose the argued limitation as claimed. The Examiner suggests amending the claim to clarify the steps that the invention uses for enabling the modules to differentiate from the prior arts (also see Allowable Subject Matter section below).
Based on the reasoning above, the reject should be maintained. Please see below for the detailed rejection.
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, 3, 6, 10-11, 14, 16-17, 19, 21-22 and 24-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,989,146. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant application is at least fully disclosed in the reference patent.
Claim 1 of the instant application is anticipated by the patent’s claims 7-8 in that claims 7-8 of the patent contain all the limitation of claim 1 of the instant application. Please see table below for the claim comparison.
Further, the limitation of the other claims are found with minor variations in the teaching of the patent claims 1-22.
Instant Application (18/664,956)
Patent No. 11,989,146
Claim 1: A method comprising:
searching for an extension module communicatively connected via a communication bus or an intra-luminaire bus to a base module of a network assembly in a light management system (LMS),
Claim 7: A method for configuring an extension module of a network assembly, wherein: the network assembly comprises a base module comprising: a communication bus formed as part of the base module
wherein the extension module is configured for function extension or function provision of the network assembly; and
and configured for providing communication between the logic unit and one or several extension modules connectable to the communication bus for function extension or function provision of the network assembly
when the search shows that the extension module is communicatively connected to the communication bus or ILB,
the method comprises:
searching for an extension module connected to the communication bus; and
configuring the extension module for the communication bus or ILB, wherein the configuring comprises enabling the extension module to participate in communication via the communication bus or ILB
configuring an extension module for the communication bus if the search shows that the extension module is connected to the communication bus.
querying to determine a type of the extension module, wherein: when the query shows that the extension module is a communication module, the method further comprises designating the communication module to represent a functional device already present in the network assembly in the LMS; and when the query shows that the extension module is not a communication module, the method further comprises recognizing the extension module as a functional device and initializing the functional device
Claim 8: querying whether the extension module found during the search is a communication module; and
designating the extension module to represent a functional device present in the network assembly by the communication module in a network if the query results in the extension module found in the search being a communication module.
Claims 1, 3, 6, 10-11, 14, 16-17, 19, 21-22 and 24-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/384,919 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant application is at least fully disclosed in the reference application.
Claim 1 of the instant application is anticipated by the reference application’s claim 1 and 7-9 in that claims 1 and 7-9 of the reference application contain all the limitation of claim 1 of the instant application. Please see table below for the claim comparison.
Further, the limitation of the other claims are found with minor variations in the teaching of the patent claims 1-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application (18/664,956)
Reference Application (18/384,919)
Claim 1: A method comprising:
searching for an extension module communicatively connected via a communication bus or an intra-luminaire bus to a base module of a network assembly in a light management system (LMS),
Claim 1: A method for configuring a driver expansion module for function extension of a network assembly, the method comprising:
searching for the driver expansion module connected to a communication bus of the network assembly;
wherein the extension module is configured for function extension or function provision of the network assembly; and
a driver expansion module for function extension of a network assembly
when the search shows that the extension module is communicatively connected to the communication bus or ILB,
if the search reveals that the driver expansion module has been connected to the communication bus
configuring the extension module for the communication bus or ILB, wherein the configuring comprises enabling the extension module to participate in communication via the communication bus or ILB
configuring the driver expansion module for the communication bus such that the driver expansion module automatically initializes a network setup for a light management system (LMS)
querying to determine a type of the extension module, wherein: when the query shows that the extension module is a communication module, the method further comprises designating the communication module to represent a functional device already present in the network assembly in the LMS; and when the query shows that the extension module is not a communication module, the method further comprises recognizing the extension module as a functional device and initializing the functional device
Claim 7: querying whether the driver expansion module found is configured as a communication module.
Claim 8: wherein if the querying shows that the driver expansion module found is configured as a communication module, the method further comprises: determining whether the driver expansion module represents a functional device present in the network setup by the driver expansion module.
Claim 9: configuring the driver expansion module to connect the network assembly to the LMS.
Claims 1, 3, 6, 10-11, 14, 16-17, 19, 21-22 and 24-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/384,431 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter in the instant application is at least fully disclosed in the reference application.
Claim 1 of the instant application is anticipated by the reference application’s claims 1, and 8-9 in that claims 1, and 8-9 of the reference application contain all the limitation of claim 1 of the instant application. Please see table below for the claim comparison.
Further, the limitation of the other claims are found with minor variations in the teaching of the patent claims 1-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application (18/664,956)
Reference Application (18/384,431)
Claim 1: A method comprising:
searching for an extension module communicatively connected to a base module of a network assembly via a communication bus or an intra-luminaire bus (ILB),
Claim 1: the method comprising: searching for the extension module connected to a base module of the network assembly;
wherein the extension module is configured for function extension or function provision of the network assembly; and
A method for configuring an extension module for function extension of a network assembly,
when the search shows that the extension module is communicatively connected to the communication bus or ILB, configuring the extension module for the communication bus or ILB.
Claim 9: wherein in searching for the extension module connected to the base module of the network assembly, the extension module is so connected via the communication bus or ILB.
querying to determine a type of the extension module, wherein: when the query shows that the extension module is a communication module, the method further comprises designating the communication module to represent a functional device already present in the network assembly in the LMS; and when the query shows that the extension module is not a communication module, the method further comprises recognizing the extension module as a functional device and initializing the functional device
Claim 8: querying whether the extension module found is configured as a communication module, wherein: when the querying shows that the extension module found is configured as a communication module, the method further comprises: designating the extension module to represent a functional device already present in the network assembly in a lighting management system (LMS); notifying the extension module of a type of functional device to be represented; sending, to the extension module, factory settings of the functional device necessary for participation in the LMS; and activating the extension module for participation in the LMS; and when the querying shows that the extension module found is not configured as a communication module, the method further comprises: recognizing the extension module as a functional device; and initializing the functional device. First Response and Amendment
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.
Claims 1, 3, 6, 10-11, 14, 16-17, 19, 21 and 24-35 are rejected under 35 U.S.C. 103 as being unpatentable over Gorka US 20190173748, and in view of Kim et al US 20120212140.
Regarding claim 1, Gorka teaches a method comprising:
searching for an extension module communicatively connected to a base module of a network assembly (see figure 1, base module 14 and expansion module 16a-16c, see para 0002, a base module and a first and a second expansion module, also see para 0008, the base module and the expansion modules can be connected through a bus system) via a communication bus or an intra-luminaire bus (ILB) (see para 0010, the querying of one or more of the multiplicity of expansion modules with regard to description data about the electrical peripheral interfaces of the respective expansion modules), wherein the extension module is configured for function extension or function provision of the network assembly (see para 0006, Expansion modules… support the implementation of an automation functionality)
when the search shows that the extension module is communicatively connected to the communication bus or ILB, configuring the extension module, via the base module, for the communication bus or ILB (see para 0062, If the configuration device 40 determines that one or more files stored in the memory 44 of the third expansion module 16 c can/must be updated, it can additionally retrieve a suitable update from the server 78 and transmit it to the third expansion module 16 c), wherein the configuring comprises enabling the extension module to participate in communication via the communication bus or ILB (see para 0064, after configuration, the system 10 can be placed in an operating state); and
querying to determine a type of the extension module (see para 0054, a query from the base module 14 with regard to information describing the second expansion module 16 b, then in response to the query the processing unit 42 can read out a data structure stored in the memory 44 and containing information describing the second expansion module 16 b (hereinafter also referred to as “second data structure”)), wherein:
when the query shows that the extension module is a communication module (see para 0044, the second expansion module 16 b has a radio interface that can be operated in alternation for sending and receiving data), the method further comprises designating the communication module to represent a functional device already present in the network assembly (see para 0054, the second data structure can contain information corresponding to the information cited in connection with the first data structure e.g. corresponding to the first expansion device already presented in the network); and
when the query shows that the extension module is not a communication module (see figure 2, expansion module 16 a does not have a radio communication interface), the method further comprises recognizing the extension module as a functional device and initializing the functional device (see the abstract, initializing a system that includes a base module and a first and a second expansion module).
But Gorka fails to teach the network assembly is in a light management system (LMS).
However, Kim teaches a network assembly in a light management system (LMS) (see figure 7 shows a digital addressable lighting interface (DALI) communication network).
It would have been obvious to modify the network assembly of Gorka and incorporate a light management system to control light source.
The motivation for doing so is to enhance the functionality of the network assembly.
Regarding claim 3, Gorka further teaches configuring the extension module occurs automatically (see para 0063, automatic configuration).
Regarding claim 6, Gorka further teaches notifying the communication module of a type of functional device to be represented (see para 0050, the first data structure can contain information about whether the first peripheral interface 48 and the second peripheral interface 50 of the first expansion module 16 a are analog or digital peripheral interfaces).
sending to the communication module at least one factory setting of the functional device which is relevant or necessary for participation in the LMS (see para 0050, the first data structure can include an address of the first peripheral interface 48 and an address of the second peripheral interface 50 of the first expansion module 16 a).
Regarding claim 10, Gorka further teaches activating the communication module for participation in the LMS (see para 0041, communicating with the expansion modules, also see para 0060, execute an initialization routine in the initialization state)
Where at least one of the notifying and the sending occurs automatically (see para 0004, an (automation) system according to the invention equipped (or programmed) to automatically carry out the method).
Regarding claim 11, Gorka further teaches the communication module is configured for wireless communication via at least one of a Zigbee communication protocol, a Bluetooth communication protocol, and a Digital Addressable Lighting Interface (DALI) communication protocol (see para 0054, , the second data structure can contain information about the radio standard or standards supported by the radio interface 60, as for example, EnOcean, ZigBee, Z-Wave, Bluetooth, WLAN, etc. also see para 0057, the communication standard or standards supported by the third peripheral interface 62, as for example, KNX, BACnet, MODBUS, LonWorks, Dali, MP-Bus, IO-Link, etc).
Regarding claim 14, Gorka further teaches the functional device comprises a sensor (see para 0060, the third expansion module 16 c has a third peripheral interface that is connected through a data cable to a first sensor 32 and to a second sensor 34).
Kim further teaches a driver as a functional device (see figure 2, DALI ballast having lighting driving unit 11-1).
Regarding claim 16, Kim further teaches the network assembly having the extension comprises a lighting element comprising a light source; and a functional device is configured to at least one of detect and control an amount of light produced by the light source of the lighting element (see figure 2, drive lighting apparatus controlled by DALI ballast 11, see para 0041, The lighting driving unit 11-1 may perform diving operations such as turning on/off the lighting apparatus, dimming control or color control of the lighting apparatus).
Regarding claim 17, Gorka further teaches transmitting between the extension module and the base module a signal comprising data or a message (see para 0010, the transmission of a query message from the base module to the expansion modules) and supplying electrical power to the extension module from the base module (see para 0009, The power supply to the expansion modules and the data communication between the base module and the expansion modules can be realized).
Regarding claim 19, Kim further teaches communicatively connecting to a base module a lighting element comprising a light source (see figure 2, drive lighting apparatus controlled by DALI ballast 11, also see figure 1, DALI ballast 11 is connected to a DALI master 12 and management server 13).
Regarding claim 21, Gorka further teaches the communication bus is formed as a constituent component of the base module (see para 0008, The base module can be, for example, a bus coupler).
Regarding claim 24, Kim further teaches an extension module comprises a lighting element comprising a light source (see figure 2, drive lighting apparatus controlled by DALI ballast 11); and the function extension or function provision of the network assembly is in order to provide at least one additional function of the lighting element, the at least one additional function comprising at least one of: control of the lighting element; and control of a network function of the lighting element (see para 0041, The lighting driving unit 11-1 may perform diving operations such as turning on/off the lighting apparatus, dimming control or color control of the lighting apparatus).
Regarding claim 25, Kim further teaches the extension module comprises a lighting element comprising a light source; and the functional device is configured to at least one of detect and control an amount of light produced by the light source of the lighting element (see figure 2, drive lighting apparatus controlled by DALI ballast 11, see para 0041, The lighting driving unit 11-1 may perform diving operations such as turning on/off the lighting apparatus, dimming control or color control of the lighting apparatus).
Regarding claim 26, Kim further teaches the functional device is configured to both detect and control the amount of light produced by the light source of the lighting element (see figure 2, drive lighting apparatus controlled by DALI ballast 11, see para 0041, The lighting driving unit 11-1 may perform diving operations such as turning on/off the lighting apparatus, dimming control or color control of the lighting apparatus, also see para 0016, a sensor unit generating a sensing signal by sensing at least one of intensity of illumination around the DALI ballast).
Regarding claim 27, Kim further teaches the network assembly is a luminaire (see figure 7 shows a digital addressable lighting interface (DALI) communication network).
Regarding claim 28, Kim further teaches the LMS is configured to control the luminaire to define at least one lighting scene thereof (see para 0006, a DALI communication standard allocates an address to each lighting device or to each of groups of lighting devices to establish scenes of various combinations).
Regarding claim 29, Kim further teaches the extension module is a driver configured to control light emissions of the luminaire (see figure 2, DALI ballast having lighting driving unit 11-1).
Regarding claim 30, Kim further teaches the driver is a light-emitting diode (LED) driver configured for driving at least one LED of the luminaire (see para 0041, if the lighting apparatus is an LED, for the dimming control, sequential information about a direct current (DC) driving voltage between 0 to 10 V, and to control the color, information about on a direct current driving voltage with respect to each of red, green, and blue LEDs, may be included).
Regarding claim 31, Gorka further teaches the extension module is connected, via the communication bus or ILB, directly to the base module (see figure 1, base module 14 and expansion module 16a is directly connected via the communication bus).
Regarding claim 32, Gorka further teaches the configuring of the extension module automatically initializes the network assembly for the LMS (see the abstract, a method for initializing a system that includes a base module and a first and a second expansion module).
Regarding claim 34, Gorka further teaches enabling the extension module to participate in communication via the communication bus or ILB ensures that, without such enabling, the extension module is prevented from participating in communication with at least one of: the base module; and one or more other extension modules communicatively connected to the communication bus or ILB (see para 0064, after configuration, the system 10 can be placed in an operating state e.g. It is clear that without initialization and/or configuration, the system cannot be placed in the operation state thus cannot participate in communication).
Regarding claim 35, Gorka further teaches enabling the extension module to participate in communication via the communication bus or ILB ensures that, without such enabling, the extension module is unauthorized to communicate, via the communication bus or ILB, with the base module and any other extension module communicatively connected to the communication bus or ILB (see para 0064, after configuration, the system 10 can be placed in an operating state e.g. It is clear that without initialization and/or configuration, the system cannot be placed in the operation state and thus is regarded as unauthorized to communicate).
Claims 22 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Gorka and Kim as applied to claims above, and further in view of Schmucki US 2015091383.
Regarding claim 22, the combination of Gorka and Kim teaches all the features with respect to claim 21 as outlined above.
But, the combination of Gorka and Kim fails to teach the communication bus comprises at least one of: a signal line configured for communication between the extension module and a logic unit of the base module; and a supply line configured for supplying power to the extension module from the logic unit of the base module.
However, Schmucki teaches a communication bus comprises at least one of: a signal line configured for communication between the extension module and a logic unit of the base module; and a supply line configured for supplying power to the extension module from the logic unit of the base module (see figure 1 and para 0040, The bus-compatible lighting system according to prior art which is shown in FIG. 1 is provided with a power line 1 and with a bus, for example a DALI bus 2).
Therefore, it would have been obvious to modify the communication bus of Gorka and further incorporate a power line and a signal line.
The motivation for doing so is to provide both power transfer and signal communication through the bus.
Allowable Subject Matter
Claim 33 is regarded as comprising allowable subject matter, and would be allowable (1) if rewritten in independent form including all of the limitations of the base claim and any intervening claims and (2) upon filing of the Terminal Disclaimer to overcome the Double Patenting rejection set forth above.
Claim 36 is regarded as comprising allowable subject matter, and would be allowable upon filing of the Terminal Disclaimer to overcome the Double Patenting rejection set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Richards US 20110093639 discloses verification and authorization of different extension modules in a bus system
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 PHONG H DANG whose telephone number is (571)272-0470. The examiner can normally be reached Monday-Friday 9:30AM - 6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Henry Tsai can be reached at (571)272-4176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHONG H DANG/Primary Examiner, Art Unit 2184
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