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 .
Election/Restrictions
Claim 2-5 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/25.
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.
In claim 13, lines 3-4 the limitation "cap is above flat surface" in vague and indefinite because it is idiomatically incorrect.
Claim 13 recites the limitation " flat surface" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation " the recess part" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,209,715. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant merely uses slightly different claim language to claim the same invention.
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.
Claims 1, 6 and 8 are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent Application Publication No. 2014/0217880, hereafter referred to as ‘Tanaka ‘880’. Regarding claim 1, Tanaka ‘880 discloses a lighting apparatus (figures 1-8), comprising: an Edison cap (see para. # 52, pin connecting cap 15 & 85 can be replaced with an Edison cap); a light housing (12, 22), wherein the light housing 22 comprises a back cover 14, wherein the Edison cap is attached to the back cover (para. # 52); a light source plate 41, wherein multiple LED modules (42, 48, 49) are mounted on the light source plate (fig. 1); and a lens module (61, 62, 65, 67) disposed above the light source plate (figures 1-2), wherein the lens module comprises multiple lens units 61 corresponding to the multiple LED modules on the light source plate (figures 1-2).
Regarding claim 6, the lighting apparatus of claim 1, wherein the Edison cap is detachable from the light housing (see para # 33, cover 14 includes Edison cap and the cover and cap is attachable and detachable from a recess part 24 of the light housing 12, 22), wherein the light housing has a second way for connecting to a power source instead of being from the Edison cap (second way of connecting is via pin connectors 85 rather than Edison connector, see para’s 33-34 and 52).
Regarding claim 8, the lighting apparatus of claim 1, wherein a rotation angle of the Edison cap with respect to the light housing (12, 22) determines a setting of the multiple LED modules (inherently when the Edison cap of the lighting apparatus 11 connects to a female socket it would rotate and determine a setting of the plurality of LED modules).
Claims 1, 6 and 8 are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent Application Publication No. 2013/0265760, hereafter referred to as ‘Demuynck ‘760’. Regarding claim 1, Demuynck ‘760 discloses a lighting apparatus (figures 1-13), comprising: an Edison cap (see para. # 52, figures 2, 6 and 9); a light housing 106, wherein the light housing 106 comprises a back cover 110 (figure 1), wherein the Edison cap is attached to the back cover (figures 2, 6 and 9); a light source plate (see light source plate which is a circuit board in figure 1 and also see where light source plate is a circuit board 1006 in figure 10, also see para. # 52), wherein multiple LED modules (104, 108, 102, 302,402, 502) are mounted on the light source plate (fig. 1); and a lens module (406, 506, 704, para. #’s 44-46 and 49) disposed above the light source plate (figure 1), wherein the lens module comprises multiple lens units (figures 1 and 3-5) corresponding to the multiple LED modules on the light source plate (figures 1 and 3-5).
Regarding claim 6, the lighting apparatus of claim 1, wherein the Edison cap is detachable from the light housing (see para # 36-37, cover 110 includes Edison cap and cover is attachable and detachable from a light housing 106), wherein the light housing has a second way for connecting to a power source instead of being from the Edison cap (second way of connecting is via pin connectors 85 rather than Edison connector, see para’s 33-34 and 52).
Regarding claim 8, the lighting apparatus of claim 1, wherein a rotation angle of the Edison cap with respect to the light housing 106 determines a setting of the multiple LED modules (see para. #’s 36-37, inherently when the Edison cap of the lighting apparatus 100 connects to a female socket it would rotate and determine a setting of the plurality of LED modules).
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.
Claims 9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka ‘880’. Regarding claim 9, Tanaka ‘880’discloses the claimed invention except for the teaching that a surrounding part of the bottom is a flat surface.
Tanaka ‘880 teaches the back cover 110 has a bottom.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the lighting apparatus of Tanaka ‘880 so that a surrounding part of the bottom is a flat surface since such a modification would have merely been an obvious engineering design choice yielding the predictable results of efficiently manufacturing the cover of the light apparatus in different shapes and sizes for different applications.
Regarding claims 11-12, Tanaka ‘880 discloses the claimed invention except for the teaching that a first diameter of the back cover is larger than three times of a second diameter of the Edison cap and/or the light housing has a lateral wall, wherein the diameter of the back cover is larger than three times of a height of the lateral wall.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the lighting apparatus of Tanaka ‘880 so a first diameter of the back cover is larger than three times of a second diameter of the Edison cap and/or the light housing has a lateral wall, wherein the diameter of the back cover is larger than three time of a height of the lateral wall since such a modification would have merely been an obvious engineering design choice yielding the predictable results of efficiently manufacturing the cover of the light apparatus in different shapes and sizes for different applications.
Regarding claim 13, the lighting apparatus of claim 9, wherein there is a recess part in the center of the bottom of the back cover (figures 1-2), wherein a bottom part of the Edison cap is placed within the recess part so that only an exposed portion of the Edison cap is above flat surface (figures 1-2 and para. #’s 33-34 and 52, the pin or Edison connection would inherently be exposed in order to connect to a socket).
Regarding claim 14, the lighting apparatus of claim 13, wherein the exposed portion of the Edison cap is used for rotating into a corresponding Edison socket (para. # 52).
Regarding claim 15, the lighting apparatus of claim 13, wherein a power cable 30 is coupled to a driver circuit (16, 87) for guiding an external power to the driver circuit (para. # 35) to generate a driving current to the multiple LED modules (para. #’s 20, 23-24 and 35-37).
Regarding claim 16, the lighting apparatus of claim 15, wherein a socket 51 is disposed on a backside of the of the light source plate (fig. 1, para. #’s 23-24) for plugging the power cable 30.
Regarding claim 17, the lighting apparatus of claim 9, wherein a driver circuit (16, 87, para. # 35) is placed in the recess part of the bottom (fig. 1).
Regarding claim 18, the lighting apparatus of claim 17, wherein a driver box (81, 82, fig. 1) is used for concealing the driver circuit (fig. 1).
Regarding claim 19, Tanaka ‘880 discloses the claimed invention except for the teaching that the driver box is made of a fire proof material.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the driver box of Tanaka ‘880 so that it is made of a fire proof material since such a modification would have merely been an obvious engineering design choice yielding the predictable results of efficiently manufacturing the lighting apparatus out of material that prevents fires caused by overheating of the light circuitry.
Regarding claim 20, the lighting apparatus of claim 17, wherein the Edison cap is attached to the driver box to route an external power to the driver circuit to generate a driving current to the multiple LED modules (para. #’s 33-35).
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Demuynck ‘760. Regarding claim 9, Demuynck ‘760 discloses the claimed invention except for the teaching that a surrounding part of the bottom is a flat surface.
Demuynck ‘760 teaches the back cover 110 has a bottom.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the lighting apparatus of Demuynck ‘760 so that a surrounding part of the bottom is a flat surface since such a modification would have merely been an obvious engineering design choice yielding the predictable results of efficiently manufacturing the cover of the light apparatus in different shapes or sizes for different applications.
Regarding claim 10, the lighting apparatus of claim 9, further comprising a light cover (112, 114, 116, 104, 304, 404, 504, para. #’s 38 and 40-41), wherein the light cover is attached to the light housing 106 for allowing a light of the multiple LED modules to pass through (para. #’s 38-48), wherein the light cover has a larger diameter than the light housing to cover an installation hole of the lighting apparatus (figures 1-2).
Regarding claims 11-12, Demuynck ‘760 discloses the claimed invention except for the teaching that a first diameter of the back cover is larger than three times of a second diameter of the Edison cap and/or the light housing has a lateral wall, wherein the diameter of the back cover is larger than three time of a height of the lateral wall.
It would have been obvious to one skilled in the art before the effective filing date of applicant’s claimed invention to modify the lighting apparatus of Demuynck ‘760 so a first diameter of the back cover is larger than three times of a second diameter of the Edison cap and/or the light housing has a lateral wall, wherein the diameter of the back cover is larger than three time of a height of the lateral wall since such a modification would have merely been an obvious engineering design choice yielding the predictable results of efficiently manufacturing the cover of the light apparatus in different shapes and sizes for different applications.
Regarding claim 13, the lighting apparatus of claim 9, wherein there is a recess part in the center of the bottom of the back cover (figures 1-2), wherein a bottom part of the Edison cap is placed within the recess part so that only an exposed portion of the Edison cap is above flat surface (figure 2).
Regarding claim 14, the lighting apparatus of claim 13, wherein the exposed portion of the Edison cap is used for rotating into a corresponding Edison socket (fig. 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stimac ‘142 and Van De Ven ‘422 disclose lighting devices which are similar to applicant’s invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M SEMBER whose telephone number is (571)272-2381. The examiner can normally be reached flexing generally from 7 a.m. to 5.00 p.m. M-F.
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/THOMAS M SEMBER/Primary Examiner, Art Unit 2875