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 .
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) 4, 5, & 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 claims 4 & 5 the limitation “the optical element” is unclear because it was optional when it was introduced in claim 1 and so it is unclear if the optical element is still optional, of the rest of the limitation included in that option in claim 1 are still optional, and if the entirety of claims 4 & 5 are optional. Amending claim 1 to replace the “or” with an –and—would overcome this rejection.
Regarding claim 20 it is unclear if the “at least one rail lighting fixture” introduced in claim 13 is part of the “an array of rail lighting fixtures” introduced in claim 20 or there is some other relationship. Additionally, reintroducing the limitations of claim 1 into a claim which is already dependent on claim 1 makes the scope of the claim unclear. Amending claim 20 to recite that the at least one rail lighting fixture is a plurality of lighting fixtures instead of reintroducing the bulk of claim 1 would overcome this rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In particular, 35 U.S.C. 112(f) is applied to claim 6 and the limitation “fastening means arranged for attaching the housing to the rail”.
Claim Rejections - 35 USC § 102
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 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 & 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rudiger( EP 3418449 A1).
Regarding claim 1 Rudiger teaches a rail lighting fixture for providing illumination along a rail of a railway track (FIG. 1: 1), wherein the lighting fixture comprises a housing (FIG. 2: 2), arranged for attachment to the rail (FIG. 1: 5) and provided with at least one aperture (FIG. 2: 15), and at least one light source provided in the housing and arranged to emit a light beam (FIG. 2: 3), wherein the lighting fixture is arranged to direct the light beam through the aperture towards a lighting direction (FIG. 2: depicted structure), wherein the lighting direction has a component that is parallel to a longitudinal direction of the rail (the light will extend out from the aperture in a three dimensional cone, some of that light will travel in a direction which is partially in the direction of the longitudinal direction of the rail), wherein: the aperture is provided with an optical element arranged to receive the light beam and to direct the light beam towards diverging directions (FIG. 2: 16); or the aperture has an optical axis extending, as seen in the horizontal plane, at an acute angle with the longitudinal direction and away from the rail as seen along the lighting direction.
Regarding claim 5 Rudiger teaches that the optical element is a lens (FIG. 2: 16).
Regarding claim 6 Rudiger teaches fastening means arranged for attaching the housing to the rail (FIG. 1: 4).
Regarding claim 7 Rudiger teaches that the fastening means comprise a mounting bracket arranged for connecting the housing to the rail (FIG. 1: depicted), wherein the mounting bracket is arranged for coupling with the rail (FIG. 1: depicted at 10.3), wherein the mounting bracket is further arranged to engage the housing (FIG. 1: 11).
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.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudiger( EP 3418449 A1.
Regarding claim 10 Rudiger does not explicitly teach that the housing is less than 4 centimetres in width as seen from the lighting direction. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Rudiger to use a housing width of less than 4cm, so as to achieve an optimal ease of installation, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed range or value yields any previously unexpected results.
Regarding claim 11 Rudiger does not explicitly teach that the housing is less than 40 centimetres in length. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Rudiger to use a housing length of less than 40cm, so as to achieve an optimal ease of installation, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed range or value yields any previously unexpected results.
Regarding claim 12 Rudiger does not explicitly teach that the housing is less than 20 centimetres in height as seen from the lighting direction. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Rudiger to use a housing height of less than 20cm, so as to achieve an optimal ease of installation, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed range or value yields any previously unexpected results.
Claim(s) 3 & 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudiger( EP 3418449 A1) in view of Rooks (EP 3251916 A1).
Regarding claim 3 Rudiger teaches that the light beam directed towards the lighting direction has an asymmetric light distribution (FIG. 1: depicted pointing to the left) but does not explicitly teach that a horizontal light distribution of the light beam is wider than a vertical light distribution of the light beam.
However, Rooks does teach the use of a light beam that is wider than it is tall (FIG. 2: depicted). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have alternatively modified Rudiger to have the wide light beam of Rooks in order to illuminate a wider patch of ground.
Regarding claim 4 Rudiger as modified above teaches that the optical element is arranged to create the asymmetric light distribution (Rudiger, FIG. 2: depicted).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudiger( EP 3418449 A1) in view of Morrow et al. (US 20060050507 A1, herein after referred to as Morrow).
Regarding claim 8 Rudiger does not explicitly teach a heatsink body arranged to cool the at least one light source, however Morrow does teach the use of a heatsink for a light source (FIG. 6: 616). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included a heatsink for the light source in order to run the light source at a higher intensity safely.
Allowable Subject Matter
Claim(s) 2, 9, & 13-20 is/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:
Regarding claim 2 no prior art made of record teaches a rail lighting fixture comprising a single lighting fixture arranged to direct two light beams in mutually opposite lighting directions parallel to the longitudinal direction.
Regarding claim 9 no prior art made of record teaches a rail lighting fixture comprising a housing monolithically formed, by an insert moulding technique, onto the at least one light source and any other components provided in the housing, such that the housing comprises a solidified material that at least partially covers the at least one light source and the respective other components of the rail lighting fixture that are provided in the housing.
A combination of these limitations and the other recited features was not reasonably found in the prior art.
Regarding claim 13 no prior art made of record teaches a rail lighting fixture comprising a presence detector for detecting a presence of a person alongside of the rail, wherein the presence detector is arranged to provide a presence detection signal indicative for the presence of a person alongside of the rail, wherein the rail lighting system is arranged to control, based on the presence detection signal, an illumination intensity of the light source of the at least one lighting fixture at a first illumination intensity when the presence detection signal indicates the presence of a person alongside of the rail, and at a second illumination intensity when the presence detection signal does not indicate the presence of a person alongside of the rail, wherein the first intensity exceeds the second intensity.
Conclusion
Prior art made of record and not replied upon is considered pertinent to applicant’s disclosure. The references noted on the attached PTO 892 teach [THING] of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAXWELL L MESHAKA whose telephone number is (571)272-5693. The examiner can normally be reached Mon-Fri 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel J Morano IV can be reached on (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAXWELL L MESHAKA/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615
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