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
Claims 5 & 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/3/2025.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,193,420 B2; herein ‘420. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘420 encompasses instant claim 1 as it is currently recited.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,193,420 B2; herein ‘420. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of ‘420 encompasses instant claim 6 as it is currently recited.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,193,420 B2; herein ‘420. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘420 encompasses instant claim 7 as it is currently recited.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,193,420 B2; herein ‘420. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of ‘420 encompasses instant claim 10 as it is currently recited.
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, & 6-7, & 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al., U.S. Reissued Patent No. RE48,022 E, herein Tang in view of Wang U.S. Patent Application Publication No. 2014/0251227 A1.
Re claim 1, Tang discloses a light system in combination with an aquarium; the system comprising:
(a) an aquarium tank (10; the typical aquarium tank, fig. 1-2) having a surrounding wall (12; the rectangular body, fig. 1-2) defining an interior volume (fig. 1-2, the interior volume of the rectangular body); an open top in communication with the interior volume (fig. 1-2 and col 6; 4-15, the aquarium is shown to have an open top and the sides of the body may be closed by the lid; 14, fig. 2);
(b) a lid (14; the lid, fig. 1-2 & 6-8) covering the open top of the tank (fig. 2); the lid being attached to the tank and is capable of moving between a covered position and uncovered position (col 6; 11-29, the lid may be raised or lowered to make contact with the rectangular body or to open the tank); the lid having an interior portion in communication with the interior volume, when the lid is in the covered position (again see col 6; 11-29, when the lid is contacting the rectangular body);
(c) a light source (44, 46, & 48; see fig. 6; the light sources) secured to the interior portion of the lid (claims 1, 11-13, & 24, the light source is located within the housing); the light source emitting a light beam (col 4; 20-26, the light system produces a beam) and moving with the lid between the covered position and uncovered position (again see col 6; 11-29); and
(d) an alignment arrangement within for the light source constructed and arranged to ensure the light beam projects into the tank interior volume regardless of the position of the lid and light source (col 8; 56-63, the outboard light sources are mounted to permit freedom in multiple directions therefore gravity will allow the light beam to project into the tank as the lid is moved).
Tang fails to disclose the lid being pivotably attached to the tank and being pivotable between a covered position and uncovered position. However, Wang discloses a light system for a tank comprising a lid being pivotably attached to the tank and being pivotable between a covered position and uncovered position (fig. 1-2 and para 11, “[t]he flip-up top cover is hinged to the tank body, and movable between an open position to open the top side of the tank body and a close position to close the top side of the tank body”).
The only distinction between the prior art and the claimed invention is that the prior art fails to disclose the lid being pivotably attached to the tank and being pivotable between a covered position and uncovered position however, Wang discloses such a pivoting lid. Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the opening mechanism of the lid by utilizing a simple substitution of the known pulley-type lift taught by the prior art for the hinged lid from Wang in order to obtain the predictable result of a lighter, less expensive mechanism for accessing the interior of the tank. See MPEP 2143 I. (B).
Re claim 2, the combination of Tang and Wang discloses the invention of claim 1, Tang further discloses wherein the alignment arrangement includes a pivotable shield (best shown in fig. 7-8, the section of the outboard light sources that tilts/pans) secured to the interior portion of the lid (fig. 6, the exploded view shows the outboard light sources are placed within the lid) and moving with the lid between the covered position and uncovered position (again see col 6; 11-29, when the lid moves all lights will move); the shield pivoting by gravity to a position deflecting the light beam into the tank interior, when the lid is moved to the uncovered position (again see col 8; 56-63).
Re claim 3, the combination of Tang and Wang discloses the invention of claim 2, Tang further discloses wherein the alignment arrangement includes a pair of swivel joints extending between the lid and opposite ends of the shield (again see col 8; 56-63, the ball and socket will extend between the section of the light that remains level with the lid and the shields located on opposite ends).
Additionally, if applicant is of the opinion the ball-and-socket is not attached to the lid as well as the shield, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the joint attached to both the lid and the tin/pan section to stabilize the light source, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 VI. C.
Re claim 4, the combination of Tang and Wang discloses the invention of claim 2, Tang further discloses wherein the light source is a fluorescent light bulb fixed at opposite ends (fig. 4 & 6 and col 11; 58, the light is a fluorescent bulb, which are fixed at opposite ends).
Re claim 6, the combination of Tang and Wang discloses the invention of claim 1, Tang as modified by Wang further discloses a method of providing lighting into an interior of an aquarium comprising:
(a) pivoting (again see Wang, fig. 1-2 and para 11) the lid from a position covering the tank to a position exposing the open top of the tank (again see Tang, col 6; 11-29); and
(b) using the alignment arrangement for the light source to ensure the light beam from the light source projects into the tank interior volume regardless of the position of the lid and light source (Tang, col 8; 56-63, the outboard light sources are mounted to permit freedom in multiple directions therefore gravity will allow the light beam to project into the tank as it is angled from 0-90°).
Re claim 7, Tang discloses an alignment arrangement for use with a light source (46 & 48; the outboard light sources, fig. 6-8) having a beam (as shown in fig. 9a-9b) and an aquarium tank (10; the typical aquarium tank, fig. 1-2) having a lid (14; the lid, fig. 1-2 & 6-8) and the light source secured to an interior portion of the lid (claims 1, 11-13, & 24, the light source is located within the housing) and moving with the lid (fig. 2 & 6-8 and col 6; 11-29 & 60-65, the light sources move with the large portion of the lid), the lid may be raised or lowered to make contact with the rectangular body or to open the tank (col 6; 11-29, the lid may be raised or lowered to make contact with the rectangular body or to open the tank); the alignment arrangement comprising:
a pivotable shield (best shown in fig. 7-8, the section of the outboard light sources that tilts/pans) constructed and arranged to ensure the light beam project into the tank regardless of the position of the lid and light source (col 8; 56-63, the outboard light sources are mounted to permit freedom in multiple directions therefore gravity will allow the light beam to project into the tank as the lid is moved).
Tang fails to disclose a pivotable lid. However, Wang discloses an alignment arrangement for use with a light source (60; the lighting device, fig. 2-6) and a tank (10; the tank body, fig. 1, 3, & 7) having a pivotable lid (fig. 1-2 and para 11, “[t]he flip-up top cover is hinged to the tank body, and movable between an open position to open the top side of the tank body and a close position to close the top side of the tank body”).
The only distinction between the prior art and the claimed invention is that the prior art fails to disclose a pivotable lid however, Wang discloses such a mechanism. Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the opening mechanism of the lid by utilizing a simple substitution of the known pulley-type lift taught by the prior art for the hinged lid from Wang in order to obtain the predictable result of a lighter, less expensive mechanism for accessing the interior of the tank. See MPEP 2143 I. (B).
Re claim 8, the combination of Tang and Wang discloses the invention of claim 7, Tang further discloses wherein the alignment arrangement includes the pivotable shield (see the rejection of claim 7); the shield pivoting by gravity to a position deflecting the light beam into the tank, based on a position of the lid (col 8; 56-63, the outboard light sources are mounted to permit freedom in multiple directions therefore gravity will allow the light beam to project into the tank as the lid is moved).
Re claim 10, the combination of Tang and Wang discloses the invention of claim 1, Tang as modified by Wang further discloses the tank having the pivotable lid (see the rejection of claim 1); and the light source secured to an interior portion of the lid and moving with the lid (see the rejection of claim 1), wherein the light source is a fluorescent light bulb (fig. 4 & 6 and col 11; 58, the light is a fluorescent bulb).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication No. 2014/0251227 A1 which discloses an aquarium light fixture with a hinge. U.S. Patent No. 4,074,124 A which discloses an illumination apparatus that rotates the light source. U.S. Patent Application Publication No. 2010/0265697 A1 which discloses an Aquarium light fixture that lifts and pivots.
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/NICOLE PAIGE MACCRATE/Examiner, Art Unit 3642 /JOSHUA J MICHENER/Supervisory Patent Examiner, Art Unit 3642