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 .
Response to Amendment
The amendment filed on 10/03/2025 with respect to claims 1 and 4 has been entered.
Election/Restrictions
Although original claim 4 was objected to as allowable. Applicant has extracted selected limitations from that claim and presented them in newly added independent and dependent claims. The newly presented claims constitute patentably distinct and independent species, as shown in the newly added claims, they require a separate search and examination.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, new claims 10-20 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Danesh (US 10,753,558) in view of TODA et al. (US 2012/0243237 hereinafter refer as “TODA”).
Regarding claim 1. Danesh discloses a self-contained LED downlight (101, see Fig. 10, Col.11; lines 49-67) suitable for installation in a junction box (102, Figs. 8 and 10), the self-contained LED downlight comprising: a light housing (unified casting 105, see Figs. 8 and 10); a light engine housing having a light-emitting member including a circuit board with an LED chip array and the light-emitting member (e.g. lighting module 3a/103, see Fig. 8) and a light distribution member (107, see Fig. 8, col. 11; lines 50-63); and a trim plate (108, see Figs. 8 and 10); wherein the light housing is of a hat shape and comprises a brim portion (111/115, see Fig. 8, Col.11; lines 12-20) and a hat body portion (closed rear face 114, see Fig. 10), and the light engine housing is being disposed inside the hat body portion; the brim portion (111/115, see Fig. 8, Col.11; lines 12-20) is provided with fitting holes (e.g. screw holes, corresponding elements 127A, 127B, Figs. 1A and 8, Col.12; lines 25-30) sized to receive one or more fixing members (screws or bolts 125A, 125B, see Fig. 8) for connection with the junction box; the trim plate is installed to the light housing in a removable manner, and the trim plate covers the brim portion to shield the fitting holes. Danesh further discloses including one or more electric wires (e.g. wires 9B/12n, see Figs. 1A and 12c, Col. 4; lines 1-15, Col. 18; lines 25-51) configured to connect directly to one or more electric wires (9A/22n, see Figs. 1A and 12C) in the junction box so as to provide power to the LED chip array (see Col. 5; lines 20-35 and Col. 6; lines 17-30).
However, Danesh does not explicitly disclose the light engine housing having a lampshade and a light distribution member.
TODA teaches light engine housing (14, see Figs. 1 and 5) having a light-emitting member (23, see Fig. 2, Para. 0017), a lampshade (an optical component 24, see Fig. 2, Para. 0017), and a light distribution member (26, see Fig. 2, Para. 0017), the light-emitting member including a circuit board (55, see Fig. 2, Para. 0031-0032) with an LED chip array (56, see Fig. 2, Para. 0017, 0033) and the light-emitting member includes one or more electric wires (e.g. electric wire C, see Fig. 2, Para. 0034) configured to connect directly to one or more electric wires in the junction box so as to provide power to the LED chip array.
Therefore, in view of TODA, 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 Danesh by forming the light engine housing to include a lampshade and a light distribution member in order to improve assembling process, as taught by TODA. A person of ordinary skill in the art would have been motivated to make this combination to simplify the assembly process.
Regarding claim 8. Danesh in view of TODA further discloses including a reflective cup (106, see Fig. 8) having a small-diameter end and a large-diameter end, the small-diameter end disposed adjacent the circuit board (see Fig. 10), and the light distribution member (107) being removably mounted at the large-diameter end of the reflective cup (see Col. 12; lines 18-34).
Regarding claim 9. Danesh in view of TODA further discloses the junction box (e.g., 3n, see Fig. 12A, Col. 17; lines 39-67) is installed in a ceiling (2n, see Fig. 12A, Col. 17; lines 39-67) and the light distribution member (35n) is configured to be recessed from a plane defined by the ceiling when the LED downlight is installed within the junction box (see Figs. 12A and 12B).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Danesh in view of TODA and further in view of Liu et al. (US 9,057,505 hereinafter refer as “Liu”).
Regarding claims 2 and 3. Danesh further discloses another embodiment with a spring (friction clip 1042, see Fig.27) disposed inside the housing (1002, see Fig. 27); a trim plate (1005, see Fig. 27) is provided with an annular portion placed inside the housing portion; and the spring presses against the annular portion to prevent the cover from becoming disengaged from the light housing (see Col. 36; lines 5-41).
However, Danesh does not explicitly disclose having a plurality of springs center of the hat body portion distributed circumferentially at an interval around the hat body portion are provided inside the hat body portion and one end of each spring is secured inside the hat body portion, and the other end of each spring extends towards the center of the hat body portion to form a free end; the external side surface of the annular portion is provided with an annular groove extending along the circumference of the annular portion; and the free end of each spring is snapped into the annular groove when being placed into the hat body portion at the annular portion.
Liu teaches a lamp body (1), a decorative cover (2), and plurality of evenly distributed elastic sheets (3, see Fig. 1, Col. 2; lines 50-67) extend from the periphery of the closed end of the housing (radiator 11); wherein the external side surface of the annular portion (flange 22, see Figs. 3 and 4) of decorative cover (2) is provided with an annular groove (see Fig. 4) extending along the circumference of the annular portion; and the free end (connecting end 32, see Fig. 4) of each spring is snapped into the annular groove when being placed into the hat body portion at the annular portion (see Col. 4; lines 1-13).
Therefore in view of Liu, 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 Danesh’s trim to include an annular groove and the hat body to include a plurality of spring to be distributed circumferentially at an interval around the hat body in order to provide more stable connection, simple assembly and convenient disassemble as suggested by Liu, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain 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, incorporating multiple springs within the interior of the hat body to be connect with the annular portion of the trim would have flown naturally to one of ordinary skill in the art as necessitated by the specific requirements of a given application.
Allowable Subject Matter
Claims 4-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: the prior art taken as a whole does not show nor suggest “the lampshade comprises a circumferential wall, an end wall, and a reflective cup; the circumferential wall has a first end and a second end opposing each other; the first end of the circumferential wall is open to form a port, the circuit board of the light-emitting member is mounted at the first end of the circumferential wall and covers the port, while the LED chip array on the circuit board is located within the circumferential wall; the reflective cup is trumpet-shaped and comprises a small-diameter end and a large-diameter end, and both the small-diameter end and the large-diameter end are open, wherein the small-diameter end is placed within the circumferential wall via the second end of the circumferential wall and reaches the circuit board, and the LED chip array on the circuit board enters the reflective cup via the small-diameter end; the end wall is connected between the second end of the circumferential wall and the external side surface of the reflective cup to cover a gap between the second end of the circumferential wall and the external side surface of the reflective cup; the circumferential wall, the end wall, and the reflective cup are integrally formed; the light distribution member is mounted to the large-diameter end of the reflective cup in a removable manner; and the lampshade is fixedly installed in the hat body portion” and as specifically called for the claimed combinations.
Response to Arguments
Applicant's arguments filed 10/03/2025 have been fully considered but are moot because a new basis of rejection is being applied in response to the applicant's amendment to the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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