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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9 March 2026 has been entered.
Response to Amendment
The amendment filed on 9 March 2026 has been entered.
Response to Arguments
Applicant's arguments filed 9 March 2026 have been fully considered but they are not persuasive.
Applicant argues that Wu does not disclose or teach the claimed fire isolation layer. The portion of Wu cited by the Office Action states an adiabatic layer, which in the context of Wu functions as a thermal insulation layer for reducing heat transfer within the lighting structure. Such an adiabatic layer is intended to limit heat conduction during normal operation and is not described as providing fire isolation, flame blocking, or fire-resistant protection. The examiner disagrees. Wu describes element 3 as “a fireproof and/or adiabatic layer … The mantle could avoid the fire spreading to the outside and the fireproof and/or adiabatic layer 3 could keep the outside surface of the mantle in a comparatively low temperature so as not to ignite combustible objects around the fire-rated recessed downlight” (Wu paragraph 29). Accordingly, layer 3 is a fire isolation layer because it is explicitly described as fireproof and designed to prevent the spread of a fire by preventing objects from igniting.
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 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.
Claims 1, 4, 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2008/0158862 A1) in view of Johnson (US 2016/0209018 A1) and Rashidi Doust (US 2016/0238226 A1).
With respect to claim 1: Wu teaches “a lighting apparatus (21+111) to be installed into a platform (14) that has an installation opening (see Fig. 17), comprising: a back cover (5); an annular structure (21), wherein the annular structure has surrounding wall (2+3), wherein the surrounding wall defines a top opening (4), wherein the back cover conceals the top opening (see Fig. 17), wherein the annular structure has a bottom rim (12) extended outwardly from a bottom border of the surrounding wall (see Fig. 17), wherein the annular structure and the back cover are fixed as a unit to conceal the installation opening (see Fig. 17), wherein the annular structure and the back cover are made of a fireproof material (paragraphs 28-29), wherein the back cover and the annular structure defines a container space (see Fig. 17); a light module (111) stored within the container space (see Fig. 17), a fire isolation layer (3) placed between the back cover and the light module (see Fig. 17), wherein the fire isolation layer is fixed (see Fig. 17) to the back cover with a metal connector (2)”.
Wu does not specifically teach “a surface rim conceals the installation opening, wherein the bottom ring is between the surface rim and an edge border of the installation opening”.
However, Johnson teaches “a surface rim (30) conceals the installation opening (see Figs. 1-2), wherein the bottom ring (either the rim of 14, ring 34, or ring 16) is between the surface rim (see Fig. 1) and an edge border of the installation opening (paragraph 36)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to modify the lighting apparatus of Wu with the surface rim and bottom ring of Johnson in order to provide a seal (Johnson paragraphs 32, 36).
Wu does not specifically teach “wherein the surface rim has a lower melting point than the annular structure”.
However, Rashidi Doust teaches “wherein the surface rim (16) has a lower melting point (paragraphs 37-38) than the annular structure (10)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by choosing a material with a lower melting point to make the surface rim as compared to the annular structure as taught by Rashidi Doust in order to permit the opening of the lighting apparatus to be plugged when there is a fire (Rashidi Doust paragraphs 37-38).
With respect to claim 4: Wu in view of Johnson and Rashidi Doust teaches “The lighting apparatus of claim 1 (see above)”.
Wu does not specifically teach “wherein the annular structure is a circular shape”.
However, Johnson teaches “wherein the annular structure (14) is a circular shape (see Fig. 2)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to modify the lighting apparatus of Wu by making it circular as taught by Johnson due to the art recognized suitability of circular light fixtures for use as downlights (Johnson paragraph 28).
With respect to claim 17: Wu in view of Johnson and Rashidi Doust teaches “The lighting apparatus of claim 1 (see above)”.
Wu teaches “wherein a socket connector (1) is disposed on the back cover (see Fig. 17), wherein an external cable is guiding power to the light module via the socket connector (see Fig. 17)”.
With respect to claim 18: Wu in view of Johnson and Rashidi Doust teaches “The lighting apparatus of claim 1 (see above)”.
Wu teaches “wherein the fireproof material comprises metal material (paragraphs 28-29)”.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson and Rashidi Doust as applied to claim 1 above, and further in view of Monson et al. (US 6105334).
With respect to claim 5: Wu in view of Johnson and Rashidi Doust teaches “the lighting apparatus of claim 1 (see above)”.
Wu does not specifically teach “wherein the annular structure is polygonal shape”.
However, Monson teaches “wherein the annular structure (10) is polygonal shape (see Fig. 1)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to modify the lighting apparatus of Wu by making the annular structure polygonal as taught by Monson due to the suitability of the polygonal shape for mounting the lighting device between ceiling joists (Monson column 2 lines 20-33).
Claims 6-7, 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson and Rashidi Doust as applied to claim 1 above, and further in view of Hsia et al. (US 2011/0273107 A1).
With respect to claim 6: Wu in view of Johnson and Rashidi Doust teaches “the lighting apparatus of claim 1 (see above)”.
Wu does not specifically teach “wherein the light module comprises a light source plate and multiple LED modules, wherein the multiple LED modules are mounted on the light source plate”.
However, Johnson teaches “wherein the light module (106+108) comprises a light source plate (108) and multiple LED modules (106), wherein the multiple LED modules are mounted on the light source plate (see Fig. 4)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to modify the lighting apparatus of Wu by using LEDs as the light sources as taught by Johnson in order to save energy (Johnson paragraph 2)/
Wu does not specifically teach “wherein the multiple LED modules have multiple different optical parameters”.
However, Hsia teaches “wherein the multiple LED modules (825, 835, 845) have multiple different optical parameters (color temperatures, intensities, see paragraph 42)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to further modify the lighting apparatus of Wu by controlling different optical parameters as taught by Hsia in order to tune the correlated color temperature of the lighting apparatus (His paragraphs 37-38, 42).
With respect to claim 7: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “The lighting apparatus of claim 6 (see above)”.
Wu does not specifically teach “further comprising a controller for controlling driving currents supplied to the multiple LED modules to mix a required optical parameter”.
Hsia teaches “further comprising a controller (870) for controlling driving currents (820, 830, 840) supplied to the multiple LED modules (see Fig. 9) to mix a required optical parameter (paragraph 42)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to further modify the lighting apparatus of Wu by controlling different optical parameters with a controller as taught by Hsia in order to tune the correlated color temperature of the lighting apparatus (Hsia paragraphs 37-38, 42).
With respect to claim 9: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “The lighting apparatus of claim 7 (see above)”.
Wu does not specifically teach “wherein the controller is disposed in a driver box, wherein the driver box contains a driver circuit for converting an external power to driving currents, wherein the controller controls the driver circuit”.
However, Hsia teaches “wherein the controller (602) is disposed in a driver box (610), wherein the driver box contains a driver circuit (paragraph 46) for converting an external power to driving currents (paragraph 46), wherein the controller controls the driver circuit (paragraph 46)”.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to further modify the lighting apparatus of Wu by controlling different optical parameters with a controller as taught by Hsia in order to tune the correlated color temperature of the lighting apparatus (Hsia paragraphs 37-38, 42).
With respect to claim 10: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “The lighting apparatus of claim 9 (see above)”.
Wu teaches “wherein there is a cable opening (6 or 81) on back cover (see Figs. 10, 12, 17), wherein there is a cover sealing plate (5 or 8) for concealing the cable opening (see Figs. 10, 12) while allowing the multiple LED modules to receive power supply from the cable opening (paragraph 33)”.
Note: in embodiments where 8 is behind 5, 8 is the back cover and 5 is the sealing plate, and in embodiments where 5 is behind 8, 5 is the back cover and 8 is the sealing plate.
It would have been obvious at the time the application was effectively filed for one of ordinary skill in the art to use the back cover sealing plate of Wu Figs. 9 or 12 in the lighting apparatus of Wu Fig. 17 in order to keep the back cover from separating from the lighting apparatus (Wu paragraph 28).
With respect to claim 11: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “The lighting apparatus of claim 10 (see above)”.
Wu teaches “wherein the cable sealing plate (5) is made of a fireproof material (paragraph 28)”.
With respect to claim 12: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “The lighting apparatus of claim 9 (see above)”.
Wu does not teach “wherein a manual switch is disposed on the driver box for a user to configure a mixed optical parameter of the multiple LED modules”.
However, Hsia teaches a manual switch (850) for a user to configure a mixed optical parameter of the multiple LED modules (paragraph 42).
Hsia does not specifically say where the physical location of switch 850 is, but the relevant precedent regarding the placement of switches holds that shifting the position of the switch is unpatentable because it would not have modified the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); see MPEP 2144.04(VI)(C)).
It would have been obvious at the time the application was effectively filed to modify the lighting apparatus of Wu by including the switch of Hsia in order to permit the user to set a desired CCT and light intensity level for the lighting apparatus (Hsia paragraph 42).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson, Rashidi Doust and Hsia as applied to claims 1, 6, 7 above, and further in view of Koo (US 2017/0181241 A1).
With respect to claim 8: Wu in view of Johnson, Rashidi Doust, and Hsia teaches “the lighting apparatus of claim 7 (see above)”.
Wu does not specifically teach “wherein the controller is disposed on the light source plate”.
However, Koo teaches “wherein the controller (120) is disposed on the light source plate (110)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by placing the controller on the light source plate as taught by Koo due to the art recognized suitability of a controller so located for supplying a driving control current to LEDs on the light source plate (Koo paragraph 108).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson and Rashidi Doust as applied to claim 1 above, and further in view of Luo et al. (US 2016/0146411 A1).
With respect to claim 13: Wu in view of Johnson and Rashidi Doust teaches “the lighting apparatus of claim 1 (see above)”.
Wu does not specifically teach “wherein when the light module is burnt with a fire, a distance between the light module and the back cover is changed by detaching the light module from the back cover by melting a fixing connector by the fire”.
However, Luo teaches “wherein when the light module (1070) is burnt with a fire (paragraph 4), a distance between the light module and the back cover (back of 1060) is changed by detaching the light module from the back cover (see Figs. 24a, 24b) by melting a fixing connector (1020, 1022) by the fire (paragraph 106)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by adding the meltable fixing connectors of Luo in order to allow the light module to drop out of the light apparatus’s opening and allow a fireproof element to plug the opening, thus keeping the fire out (Luo paragraph 106).
With respect to claim 14: Wu in view of Johnson, Rashidi Doust and Luo teaches “the lighting apparatus of claim 13 (see above)”.
Wu does not specifically teach “wherein then the fixing connector is melt, there is a hanging connector to prevent the light module directly dropping down to ground”.
However, Luo teaches “wherein then the fixing connector is melt (see Fig. 26), there is a hanging connector (1095) to prevent the light module directly dropping down to ground (paragraph 107)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by having the hanging connector prevent the light module from dropping to the ground as taught by Luo in order to prevent collateral damage (Luo paragraph 107).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson, Rashidi Doust, and Luo as applied to claim 13 above, and further in view of Walters (GB 2489039 A).
With respect to claim 15: Wu in view of Johnson, Rashidi Doust and Lu teaches “the lighting apparatus of claim 13 (see above)”.
Wu does not specifically teach “wherein a breaking sensor is coupled to a controller that controls the light module to send a fire alarm to an external device when the sensor detects melting of the fixing connector”.
However, Walters teaches “wherein a breaking sensor (20) is coupled to a controller (page 5 lines 20-25) that controls the light module (21) to send a fire alarm to an external device (24) when the sensor detects melting of the fixing connector (column 5 lines 20-25; detecting ‘excessive heat’ is considered equivalent to detecting melting of the fixing connected since Luo’s fixing connectors are designed to melt when exposed to excessive heat)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by including Walters’ sensors and fire alarm in order to alert people that help is needed (Walters page 4 lines 23-30).
With respect to claim 16: Wu does not specifically teach “wherein a safety switch is turned on after the lighting apparatus is installed to turn on the fire alarm function of the breaking sensor”.
However, Walters teaches “wherein a safety switch is turned on after the lighting apparatus is installed to turn on the fire alarm function of the breaking sensor (page 4 lines 23-30)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by including Walters’ sensors and fire alarm in order to alert people that help is needed (Walters page 4 lines 23-30).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Johnson and Rashidi Doust as applied to claims 1, 18 above, and further in view of Hou et al. (US 2020/0217493 A1).
With respect to claim 19: Wu in view of Johnson and Rashidi Doust teaches “the lighting apparatus of claim 18 (see above)”.
Wu does not specifically teach “wherein the surface rim is made of plastic material”.
However, Hou teaches “wherein the surface rim (70) is made of plastic material (paragraph 45)”.
It would have been obvious at the time the application was effectively filed to further modify the lighting apparatus of Wu by making the surface rim out of plastic as taught by Hou due to the art recognized suitability and equivalence to other suitable materials of plastic for that purpose (Hou paragraph 45).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Steer (US 20080170404 A1), which teaches a firestop for a downlight.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL J. LEE whose telephone number is (571)270-5721. The examiner can normally be reached 9-5 EST M-F.
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/NATHANIEL J LEE/Examiner, Art Unit 2875
/ABDULMAJEED AZIZ/Supervisory Patent Examiner, Art Unit 2875