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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01 June 2026 has been entered.
Response to Amendment
Applicant's amendment filed on 01 June 2026 has been entered. Claims 1, 3-5, 8, 10, 12, 14, 17, and 20-22 have been amended. Claims 6-7, 13, and 16 have been cancelled. Claim 23 has been added. Claims 1-5, 8-12, 14-15, and 17-23 are still pending in this application, with claims 1, 10, 17, 21, and 22 being independent.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 12, 17-20, 21, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, regarding claims 1, 17, and 21, the claims recite: “...discrete opaque structure...,” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no mention of the term “discrete” anywhere in the instant specification as originally filed. It appears Applicant intends for “discrete” to imply that the opaque structure is separable from the integral attachment portion merely because the instant disclosure recites that the opaque structure is “inserted” into the integrally molded body (see page 7 of the remarks filed 01 June 2026). However, this description merely states the opaque structure is in the body, not that it is actually removable from the body after being inserted, or otherwise that the body is molded or formed without the opaque structure being inserted. Therefore, the term “discrete opaque structure” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Clarification from the Applicant is requested and appropriate correction is required.
Claims 4-5, 12, 18-20, and 23 are rejected as they either recite the cited claim term noted above, or depend upon claims 1, 17, or 21, respectively.
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.
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 1-5, 10-12, 14-15, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dong (US 2024/0151378 A1).
Regarding claim 1, Dong teaches or suggests a lamp for a vehicle (Figs. 1A-3I), comprising: a single unitary molded body (160), consisting of one total internal reflection (TIR) optic (160) having a front surface (164, 164t) configured as a light exit (as shown in Fig. 1C); and an integral attachment portion (168) extending from at least a portion of a perimeter of the front surface (as shown in Fig. 1B); and a discrete structure (120, and/or 128) positioned adjacent to and along a majority of an internal surface of the integral attachment portion (as shown in Fig. 1C, the upper portion of 120, defining a portion of 128, is positioned adjacent to and along a majority of an internal surface of the integral attachment portion, note that the connection forms a seal as described in paragraphs [0017] and [0019], and thus, the components must be formed along a majority of said internal surface of 168 on which said discrete structure is received).
While one skilled in the art would reasonably expect the material of 120, which aids in cooling the device as noted in paragraph [0014], to be opaque to light, there is no explicit mention that said discrete structure is opaque.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of said discrete structure is opaque, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). In the instant case, one skilled in the art would have been motivated to yield the predictable result of preventing light leakage through the discrete structure, and/or provide a material which can preventing light leakage through the discrete structure and/or improve dissipation of heat from the device).
Regarding claim 2, Dong teaches or suggests (Figs. 1A-3I) the integral attachment portion (168) extends from the perimeter of the front surface in a rearward direction substantially perpendicular to the front surface (as shown in Figs. 1A-2).
Regarding claim 3, Dong teaches or suggests (Figs. 1A-3I) the integral attachment portion (168) extends in the rearward direction to have a depth (as shown in Figs. 1A-2), and the discrete opaque structure (120 and/or 128) extends from the front surface to have a substantially equal depth (at portion 128, said discrete opaque structure has a substantially equal depth to 168 so as to form a seal therebetween).
Regarding claim 4, Dong teaches or suggests (Figs. 1A-3I) the integral attachment portion (168) extends from an entire perimeter of the front surface and the discrete opaque structure (120 and/or 128) is positioned in contact with the integral attachment portion (as described in paragraphs [0017] and [0019]).
Regarding claim 5, Dong teaches or suggests (Figs. 1A-3I) a substrate configured to carry one or more of a light source (142, on a front side thereof), a circuit board (140, or the layer of conductive traces thereon, on a front side thereof), and a heat sink (126, on a rear side thereof), wherein the discrete opaque structure (120 and/or 128) connects to the substrate to enclose the lamp (as shown in Fig. 1C).
Regarding claim 10, Dong teaches or suggests a lamp (Figs. 1A-3I), comprising: a unitary molded body (160) forming one TIR optic (160) with a front surface (164, 164t) configured as a light exit (as shown in Fig. 1C) and a flexible integral attachment portion (168, paragraph [0017]) extending from a perimeter of the front surface (as shown in Figs. 1A-3I), the unitary molded body molded of optical silicone (as described in paragraph [0017]); an structure (120 and/or 128) of a rigid material (paragraph [0014]) different than optical silicone (120/128 aid in cooling the lighting device and thus, are formed of a material different than optical silicone) and configured as a physical support for the flexible integral attachment portion (paragraphs [0014] and [0017]); and a substrate (104) carrying a light source (142), the substrate connected with the structure to enclose the lamp (as shown in Fig. 1C), wherein the integral attachment portion extends from an entire perimeter of the front surface (as noted in paragraphs [0017] and [0019] so as to seal the lighting device) and the structure is positioned internal to and in contact with the integral attachment portion (the upper portion of the structure forming a part of 128 is positioned internal to and in contact with the integral attachment portion).
While one skilled in the art would reasonably expect the material of 120, which aids in cooling the device as noted in paragraph [0014], to be opaque to light and thus configured as a light barrier to prevent stray light, there is no explicit mention that said discrete structure is opaque.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of said discrete structure is opaque and configured as a light barrier to prevent stray light, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). In the instant case, one skilled in the art would have been motivated to yield the predictable result of preventing light leakage through the discrete structure, and/or provide a material which can preventing light leakage through the discrete structure and/or improve dissipation of heat from the device).
Regarding claim 11, Dong teaches or suggests (Figs. 1A-3I) the integral attachment portion (168) extends from the perimeter of the front surface in a rearward direction substantially perpendicular to the front surface (as shown in Figs. 1A-3I).
Regarding claim 12, Dong teaches or suggests (Figs. 1A-3I) the single unitary molded body (160) is molded from plastic (e.g., paragraph [0017]).
Regarding claim 14, Dong teaches or suggests (Figs. 1A-3I) the opaque structure has a contoured portion extending from a portion in contact with the integral attachment portion (see Figs. 3C and 3D, the shapes of said opaque structure and said optic are designed to match so as to form a seal for the lighting device), the contoured portion configured to align with contours of the one TIR optic (as shown in Figs. 3C and 3D).
Regarding claim 15, Dong teaches or suggests (Figs. 1A-3I) a shape of the TIR optic (e.g., 370) is non-symmetrical about a center axis of the TIR optic (as shown in Fig. 3D), the center axis being perpendicular to the front surface (as shown in Fig. 3D).
Regarding claim 17, Dong teaches or suggests a lamp for a vehicle (Figs. 1A-3I), comprising: a unitary molded body (160), comprising: an optic (160) having a front surface (164, 164t) configured as a light exit (as shown in Fig. 1C), the front surface being flat (164t is planar and thus flat); and an integral attachment portion (168) extending from a perimeter of the front surface (as shown in Figs. 1A-3I); and a discrete structure (120 and/or 128) internal to the integral attachment portion (the portion of 120 forming part of 128 is internal to the integral attachment portion 168, as shown in Fig. 1C), the structure (120 and/or 128) having a first surface facing the optic (an inner surface facing the optic 160) and a second surface opposite the first surface and in contact with the integral attachment portion (as shown in Fig. 1C, an opposite surface of said above-mentioned portion of said structure contacts the integral attachment portion 168), wherein the integral attachment portion (168) extends from the perimeter of the front surface in a rearward direction substantially perpendicular to the front surface (as shown in Figs. 1A-3I).
While one skilled in the art would reasonably expect the material of 120, which aids in cooling the device as noted in paragraph [0014], to be opaque to light, there is no explicit mention that said discrete structure is opaque.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of said discrete structure is opaque, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). In the instant case, one skilled in the art would have been motivated to yield the predictable result of preventing light leakage through the discrete structure, and/or provide a material which can preventing light leakage through the discrete structure and/or improve dissipation of heat from the device).
Regarding claim 18, Dong teaches or suggests (Figs. 1A-3I) the opaque structure (120 and/or 128) extends in the rearward direction from the perimeter of the front surface (164, 164t) to a substantially equal distance or less than a distance that the integral attachment portion (168) extends (for at least the portion of said opaque structure forming 128, said portion extends equal to or less than the extension of 168 so as to form a seal for the lighting device).
Regarding claim 19, Dong teaches or suggests (Figs. 1A-3I) the opaque structure includes a contoured portion configured to align with contours of the optic (see Figs. 3C and 3D, the shapes of said opaque structure and said optic are designed to match so as to form a seal for the lighting device).
Regarding claim 20, Dong teaches or suggests (Figs. 1A-3I) the unitary molded body (160) is molded of silicone (paragraph [0017]) and the integral attachment portion (168) is configured as a flexible skirt (160 being formed of silicone as noted in paragraph [0017] results in the structure of 168 being a flexible skirt for sealing the device in place of adhesive, as noted in paragraph [0017]), the discrete opaque structure (120 and/or 128) formed of a rigid material configured to physically support the flexible skirt (as noted in paragraph [0014] along with the material of paragraph [0017] for 160, 120 is formed of a material to be structurally strong. Additionally, this feature is also met as modified in claim 1 above).
Regarding claim 21, Dong teaches or suggests a lamp for a vehicle (Figs. 1A-3I), comprising: an optic (160) having a front surface (164, 164t) configured as a light exit (as shown in Fig. 1C); an integral attachment portion (168) configured as a flexible skirt of silicone extending from a perimeter of the front surface (as described in paragraphs [0017] and [0019], so as to form a seal in place of adhesive); and a discrete structure (120 and/or 128) positioned against an internal surface of the flexible skirt (as shown in Fig. 1C) to maintain a shape of the flexible skirt (as shown in Fig. 1C and as described in paragraphs [0014], [0017], and [0019]).
While one skilled in the art would reasonably expect the material of 120, which aids in cooling the device as noted in paragraph [0014], to be opaque to light, there is no explicit mention that said discrete structure is opaque.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of said discrete structure is opaque, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). In the instant case, one skilled in the art would have been motivated to yield the predictable result of preventing light leakage through the discrete structure, and/or provide a material which can preventing light leakage through the discrete structure and/or improve dissipation of heat from the device).
Regarding claim 22, Dong teaches or suggests a lamp for a vehicle (Figs. 1A-3I), comprising: a unitary molded body (160) of a first material (e.g., silicone, paragraph [0017]), comprising: an optic (160) having a front surface (164, 164t) configured as a light exit (as shown in Fig. 1C); and an integral attachment portion (168) extending from a perimeter of the front surface (as shown in Figs. 1A-3I); and a structure (120 and/or 128) internal to the integral attachment portion (as shown in Fig. 1C, at least the portion forming 128 is internal to said integral attachment portion) and formed of a second material different from the first material (120/128 dissipates heat from the device, and is thus formed of a different material than that of the optical silicone of 160), the second material being more rigid than the first material (as noted in paragraphs [0014] and [0017]).
While one skilled in the art would reasonably expect the material of 120, which aids in cooling the device as noted in paragraph [0014], to be opaque to light, there is no explicit mention that said discrete structure is opaque.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of said discrete structure is opaque, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). In the instant case, one skilled in the art would have been motivated to yield the predictable result of preventing light leakage through the discrete structure, and/or provide a material which can preventing light leakage through the discrete structure and/or improve dissipation of heat from the device).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dong, in view of Calais (FR 3,121,972 A1).
Regarding claims 8 and 9, Dong does not explicitly teach a vehicle, comprising: an exterior component having an aperture, wherein the unitary molded body is molded from optical silicone and sized to fit within the aperture such that an edge of the aperture is in direct contact with the integral attachment portion to form a seal, the substrate located internal to the exterior component (as recited in claim 8); and wherein the exterior component is a grill, body panel, or fender (as recited in claim 9).
Calais teaches or suggests (Fig. 1) a vehicle (10), comprising: an exterior component (11) having an aperture (in which 12 is disposed); wherein the unitary molded body (12) is molded from optical silicone (“...the translucent or transparent part 12 may in particular be made of transparent or translucent polymer material. The latter can be chosen from a polycarbonate (PC), an acrylonitrile butadiene styrene (ABS) copolymer, polymethyl methacrylate (PMMA), silicone or any other translucent or transparent polymer, these polymers possibly being taken alone or as a mixture...”) and sized to fit within the aperture such that an edge of the aperture is in direct contact with the integral attachment portion to form a seal (as shown in Fig. 1), the substrate located internal to the exterior component (not shown, below 15; “...the LED(s) can be supported and electrically connected by a printed circuit board (not shown)...”); and wherein the exterior component is a grill, body panel, or fender (as shown in Fig. 1 and as noted in the corresponding description, 10 is an interior or exterior body panel of a vehicle).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Iwasaki and incorporated the teachings of a vehicle, comprising: an exterior component having an aperture, wherein the unitary molded body is molded from optical silicone and sized to fit within the aperture such that an edge of the aperture is in direct contact with the integral attachment portion to form a seal, the substrate located internal to the exterior component (as recited in claim 8); and wherein the exterior component is a grill, body panel, or fender (as recited in claim 9), such as taught or suggested by Calais, in order to increase the utility of the application (i.e., by providing an embodiment by which the device is utilized in a vehicular lighting application), and/or improve the performance, transmittivity, and/or design flexibility (e.g., by forming the unitary molded body from optical silicone).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Dong (US 2024/0151378 A1), in view of Ohno (US 2015/0078027 A1).
Regarding claim 23, Dong does not explicitly teach that the one TIR optic is configured to produce a non- symmetrical illumination pattern about a z-axis, which is perpendicular to the front surface and passes through an optical center of the front surface, and is produced using no secondary reflectors, secondary lenses or other secondary optics.
Ohno teaches or suggests (Figs. 2A-21) the one TIR optic is configured to produce a non- symmetrical illumination pattern (e.g., 15A-15B) about a z-axis (as shown in Figs. 2A-21, 15A-15B, or 20A-20C), which is perpendicular to the front surface and passes through an optical center of the front surface (as shown by the light rays in Figs. 2A-22) and is produced using no secondary reflectors, secondary lenses or other secondary optics (as shown in Figs. 2A-22).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Dong and incorporated the teachings of the one TIR optic is configured to produce a non-symmetrical illumination pattern about a z-axis, which is perpendicular to the front surface and passes through an optical center of the front surface, and is produced using no secondary reflectors, secondary lenses or other secondary optics, such as taught or suggested by Ohno, 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, one of ordinary skill in the art would have been motivated to yield the predictable result of reducing the cost and/or complexity of manufacturing the device (e.g., by providing or otherwise forming the entire beam shaping structure with a single TIR optic).
Response to Arguments
Applicant’s arguments with respect to claims 1-5, 8-12, 14-15, and 17-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: KR-20170117717-A to KWAK et al., KR-101508691-B1, and KR-20220003021-U, pertinent to various features of the optical molded body, silicone material, and silicone opacity.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colin J Cattanach whose telephone number is (571)270-5203. The examiner can normally be reached Monday - Friday, 9:30 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at (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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/COLIN J CATTANACH/Primary Examiner, Art Unit 2875
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