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 .
Response to Amendment
Applicant's amendment filed on 8/26/2026 has been entered. Claims 1-2, 11, and 24-25 have been amended. Claims 12 and 22 have been cancelled. Claims 26-27 have been added. Claims 1-2, 4-6, 8-11, 13-17, 19-20, and 24-27 are still pending in this application, with claims 1 and 24 being independent.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “rope light extends away from … the rigid cover” in Claim 1, and the “at least one light configured to emit light from a base portion end of the housing, around a center portion of the base portion end, or both” in Claim 24 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
In this case, Fig. 9 shows a frosted material 70, which is described in the Specification as filed as being a rigid cover of the rope light in par. [0139] thereof, which states “The convertible light device 10 may include a sheath configured to fit over (e.g., similar to a sleeve) the elongate flexible light source 16, wherein the sheath may comprise a frosted material 70 to diffuse light”, and explains “the sheath comprises a hard cover configured to slideably receive the elongate flexible light source 16” (see par. [0139] of the Specification as filed). The only figure which shows the frosted material/sheath/cover 70 is Fig. 9, and no other cover is shown in any of the remaining figures. Accordingly, none of the drawings show the rope light extending away from the rigid cover as recited in amended Claim 1.
Further, while Figs. 6, 9, and 11 show the flashlight 68 includes at least one light arranged at a center of a base portion 50 of the housing 12, to emit light from both a center of the base portion 50 and around a center portion of the base portion 50 simultaneously, there is no illustration of the flashlight 68 emitting light from just around a center of the base portion 50, or from just another portion of the base portion 50 (or more generally, from separate alternative sections of the base portion end 50), as recited in amended Claim 24.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-2, 4-6, 8-11, 13-17, 19-20, and 24-25 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.
Regarding claim 1, the invention, as described in the Specification and shown in the Drawings (as filed), features “a rope light coupled to the housing, wherein the device is configured to convert between a rope mode and a lantern mode”, and “wherein in the rope mode, the rope light extends from the housing” (see Claims 1-2 as originally presented in the claims filed 3/21/2025).
Amended Claim 1 defines the instant invention as including “wherein in the rope mode, the rope light extends away from the housing and the rigid cover” in lines 9-10 of the claim. This newly presented configuration that the rope light extends away from the rigid cover in the rope mode is new matter, as it is neither described in the Specification nor shown in the Drawings, as filed.
In this case, the Specification as filed describes in par. [0139] that “The elongate flexible light source 16 may be thought of as a “rope light””, explaining that “the elongate flexible light source 16 comprises a frosted material 70 to diffuse light”, and that “The convertible light device 10 may include a sheath configured to fit over (e.g., similar to a sleeve) the elongate flexible light source 16, wherein the sheath may comprise a frosted material 70 to diffuse light”, further explaining that this sheath “comprises a hard cover configured to slideably receive the elongate flexible light source 16” (see par. [0139] of the Specification as originally filed, which is repeated in the Specifications of all the priority applications). This frosted material 70 constituting the sheath/cover of the rope light 16 is illustrated solely in Fig. 9, and is not labeled or otherwise identified in any of the other drawing figures.
The only other instance of a cover being mentioned anywhere in the Specification as originally filed is in para. [0147]-[0148] (which are repeated in the Specifications of all the priority applications), which describe “a cover configured to fit over at least a portion of the housing 12”, giving as an example “the cover is configured to fit over a middle portion 52 of the housing 12 such that the cover substantially encloses the elongate flexible light source 16 when the device 10 is in the lantern mode 22” (see par. [0147] of the Specification as filed). This passage of the Specification as filed additionally mentions that “The cover may comprise a material, such as a frosted material, such that the cover diffuses the light emitted by the elongate flexible light source 16”, that “The cover may be slideably coupled to the housing 12, and may be configured to slide toward the base of the housing 12”, and can “be configured to act as the winding mechanism, and thereby may be configured to facilitate coiling the elongate flexible light source 16 around the housing” (see par. [0147] of the Specification as filed). While the cover being described in para. [0147]-[0148] is not identified with any specific reference character used in the Drawings, since the middle portion 52 is labeled in Fig. 8 and Fig. 9 shows the frosted material 70 described in par. [0139] as forming a hard cover/sheath of the rope light 16 covering the region of the middle portion 52 of the housing 12, the cover described in para. [0147]-[0148] appears to be the same cover/sheath identified as corresponding to the frosted material 70 in par. [0139] of the Specification as filed, since no other cover is mentioned anywhere else in the entire Specification. However, none of these paragraphs ever mention the rope light 16 extends away from the rigid cover 70 in the rope light mode, as recited in amended Claim 1, and none of the Drawings as filed illustrate the rope light 16 extending away from the cover 70 either.
Therefore, the recitation in amended Claim 1 that “in the rope mode, the rope light extends away from … the rigid cover” in lines 9-10 of the claim is new matter, as it is neither described in the Specification nor shown in the Drawings, as filed.
Claims 2, 4-6, 8-11, 13-17, 19-20, and 24-25 are rejected due to their dependence on rejected Claim 1.
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 24 is 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 claim 24, the limitation “at least one light configured to emit light from a base portion end of the housing, around a center portion of the base portion end, or both” in lines 1-3 of the claim renders the claim indefinite because it is unclear how the alternative region “a center portion of the base portion end” can be differentiated from “a base portion end of the housing”, since any light being emitted from a center portion of the base portion end is being emitted from a base portion end of the housing, rendering the scope of the claim unascertainable. A review of the Specification as filed shows that the base portion 50 of the housing 12 includes a flashlight 68 comprising one or more light sources, emitting light outward from a center portion of the base end which radiates around the center portion, as shown in Figs. 6, 9, and 11 (see para. [0125], [0127]-[0130], [0144]-[0146] of the Specification as filed). Therefore, for the purpose of examination, the Examiner has treated Claim 24 as broadly reciting at least one light configured to emit light from a base portion end of the housing.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 26-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nyfelt et al. (US 2022/0340393, hereinafter “Nyfelt”).
Regarding claim 26, Nyfelt discloses a device (LED light hose reel; see Fig. 1; Abstract; para. [0006], [0020]-[0021]), comprising a housing (housing 10; see Fig. 1; para. [0006], [0008]-[0009], [0021]-[0022], [0024], [0026]-[0030], [0034]-[0038]); a rope light coupled to the housing (an LED light strip 22 defined by a flexible circuit board populated by LEDs thereon forms a rope light which is housed in a transparent hose 20 which is retractably reeled on a reel 12 inside the housing 10; see Fig. 1; para. [0006]-[0007], [0011], [0021], [0025]-[0030], [0034], [0036], [0039]-[0042]), wherein the device is configured to convert between a rope mode and a lantern mode (the rope light 22 is housed within a transparent hose 20 which can be extended from the housing 10 in a rope light mode and retracted into the housing for a lantern mode; see Fig. 1; para. [0006]-[0011], [0013], [0021], [0023]-[0031], [0034]-[0036], [0039]-[0042]); and a rigid cover coupled to the housing and configured to diffuse the light emitted by the rope light when the device is in lantern mode (the transparent hose 20 surrounding the rope light 22 diffuses light emitted by the LEDs of the rope light and is coupled to the reel 12 inside the housing 10, and is designed to become stiff/rigid and inflated by compressed air or fluid which protects the LED light strip; see Fig. 1; para. [0006]-[0007], [0011], [0021], [0025]-[0031], [0034], [0036], [0039]-[0042]), the rigid cover configured to fit over at least a portion of the housing such that the rigid cover substantially encloses the rope light when the device is in lantern mode (the rigid cover (transparent hose 20) encloses the rope light 22 both in the rope light mode where the rigid cover is extended from the housing 10, and when the rigid cover is retracted into the housing to wrap around the reel 12 of the housing interior; see Fig. 1; para. [0006]-[0007], [0011], [0021], [0025]-[0031], [0034], [0036], [0039]-[0042]).
Regarding claim 27, Nyfelt discloses wherein in the lantern mode, the rope light is retracted to define a concentrated area of light, and wherein in the rope mode, the rope light extends from the housing (the rigid cover (transparent hose 20) enclosing the rope light 22 can be extended from the housing 10 in a rope light mode, and retracted into the housing for a lantern mode in which light is emitted in an area concentrated closer to the housing itself; see Fig. 1; para. [0006]-[0011], [0013], [0021], [0023]-[0030], [0034]-[0036], [0039]-[0042]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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
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 WILLIAM N HARRIS whose telephone number is (571)272-3609. The examiner can normally be reached Monday - Thursday 8:00AM- 5:00PM EST, Alternate Fridays.
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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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/WILLIAM N HARRIS/Primary Examiner, Art Unit 2875
