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 .
Specification
The disclosure should be carefully reviewed to ensure that any and all grammatical, idiomatic, and spelling or other minor errors are corrected.
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 1-6, 8-10 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,264,807. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed elements and limitations are recited in or suggested by the patented claims, as follows:
With respect to instant claim 1, U.S. Patent No. 12,264,807, claim 1, recites a luminaire comprising:
an enclosure [claim 1, lines 1-2; the instant enclosure is equivalent the patented enclosure top];
an end plate located at or near a side of the enclosure, wherein the end plate has an aperture that traverses therethrough [claim 1, lines 3-5; the instant language is broader than the patented language but is anticipated by the patented language as the instant limitation includes ‘a location near a side of the enclosure’]; and
a mounting accessory including a base, wherein the base includes at least one depressable tab [claim 1, lines 8-9], wherein the depressable tab is slideable through the aperture of the end plate [claim 1, lines 10-11: the instant limitation is anticipated by the patented limitation], wherein as the tab slide through the aperture of the end plate [claim 1, lines 11-13], the tab engages the end plate to couple the mounting accessory to the enclosure [claim 1, lines 13-15; the instant ‘couple’ is equivalent to the patented ‘engages’], wherein the tab is configured to be depressed to uncouple the mounting accessory from the enclosure [claim 1, lines 15-17; the instant ‘uncouple’ is equivalent to the patented ‘unlock’].
With respect to instant claim 2, U.S. Patent No. 12,264,807, claim 1, recites at least one rail located on the enclosure near the end plate [claim 1, lines 6-7], where the base engages the at least one rail when the base is slide through the aperture of the end plate [claim 1, lines 11-13].
With respect to instant claim 3, U.S. Patent No. 12,264,807, claim 2, recites the at least one rail is integral to the enclosure.
With respect to instant claim 4, U.S. Patent No. 12,264,807, claim 1, does not recite the end plate is integral to the enclosure. Forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the end plate integral with the enclosure in the device of U.S. Patent No. 12,264,807, claim 1, to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
With respect to instant claim 5, U.S. Patent No. 12,264,807, claims 3 or 5, recites the mounting accessory comprises a spring.
With respect to instant claim 6, U.S. Patent No. 12,264,807, claim 4, recites the mounting accessory comprises a blade.
U.S. Patent No. 12,264,807, claim 4, does not recite the blade is flexible. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the blade of U.S. Patent No. 12,264,807, claim 4, to be flexible so that the blade could be more easily positionable and moveable into position.
With respect to instant claim 8, U.S. Patent No. 12,264,807, claim 6, recites the mounting accessory is coupled to the enclosure and decoupled from the enclosure without use of tools.
With respect to instant claim 9, U.S. Patent No. 12,264,807, claim 3, recites the mounting accessory comprises a bracket.
With respect to instant claim 10, U.S. Patent No. 12,264,807, claim 1, recites the mounting accessory is removable from the enclosure by depressing the tab and sliding at least a portion of the base and depressed tab back through the aperture of the end plate [this limitation is equivalent to claim 1, lines 15-17; inherently the mounting accessory would be removed from the enclosure if the tab was depressed and the base was slid].
With respect to instant claim 14, U.S. Patent No. 12,264,807, claim 3, recites a luminaire comprising [claim 1, line 1]:
at least one end plate located at or near a side of the luminaire, wherein the at least one end plate has an aperture that traverses therethrough and at least one side rail [claim 1, lines 3-5; the instant luminaire is equivalent to the patented enclosure top] and
a mounting accessory including a base [claim 1, line 8] and a spring coupled to the base [claim 3], wherein the base slides along the at least one side rail of the at least one end plate [claim 1, lines 6-7, 13], and wherein the mounting accessory includes a tab that engages the aperture of the at least one end plate coupling the mounting accessory to the at least one end plate [claim 1, lines 8-11], wherein the tab is configured to be depressed to uncouple the mounting accessory from the at least one end plate [claim 1, lines 15-17].
With respect to instant claim 15, U.S. Patent No. 12,264,807, claim 3, does not recite the side rail is integral to the at least one end plate. Forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the side rail is integral to the at least one end plate in the device of U.S. Patent No. 12,264,807, claim 3, to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
With respect to instant claim 16, U.S. Patent No. 12,264,807, claim 3, does not recite the end plate is integral to the luminaire. Forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the end plate is integral to the luminaire in the device of U.S. Patent No. 12,264,807, claim 3, to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
With respect to instant claim 17, U.S. Patent No. 12,264,807, claim 3, recites a portion of the tab of the mounting accessory extends into the opening of the at least one end plate when the mounting accessory is coupled to the at least one end plate [claim 1, lines 8-11].
With respect to instant claim 18, U.S. Patent No. 12,264,807, claim 3, recites the at least one end plate includes at least two side rails [claim 1, lines 6-7] that both engage with the base [claim 1, line 13].
With respect to instant claim 19, U.S. Patent No. 12,264,807, claim 3, recites the mounting accessory is coupled to the at least one end plate [claim 1, lines 8-14] and decoupled from the at least one end plate [claim 1, lines 15-19].
U.S. Patent No. 12,264,807, claim 3, does not recite the mounting accessory can be decoupled from the at least one end plate without use of tools. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the device of U.S. Patent No. 12,264,807, claim 3, so the mounting accessory can be decoupled from the at least one end plate without use of tools to allow the enclosure to be easily disassembled and removed when not needed.
Claims 7, 11-13 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. U.S. Patent No. 12,264,807 in view of DE 10-2019-005-713-A1.
With respect to instant claim 7, U.S. Patent No. 12,264,807, claim 1, recites the mounting accessory comprises a coiled spring. DE 10-2019-005-713-A1 in a similar device discloses a mounting accessory [4,5,6] having a coiled spring [50a, 50b] which allows for a more structurally sound mounting between the enclosure and the support structure. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the device of U.S. Patent No. 12,264,807, claim 1, to include a coiled spring associated with the mounting accessory, as taught by DE 10-2019-005-713-A1 to form a more structurally sound mounting between the enclosure and the support structure.
With respect to instant claims 11-13, U.S. Patent No. 12,264,807, claim 1, does not recite the claim subject matter. DE 10-2019-005-713-A1 in a similar device discloses an end plate [21/24] comprises at least one side rail [23a, 23b] and the base [6] of the mounting accessory [5,6,7] engages the at least one side rail [23a, 23b] and a portion of the tab [78] of the mounting accessory [5,6,7] extends into the opening [25] of the end plate [21/24] when the mounting accessory [5,6,7] is attached to the end plate [21/24].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the device of U.S. Patent No. 12,264,807, claim 1, so the end plate includes at least one side rail and the base of the mounting accessory engages the at least one side rail and a portion of the tab of the mounting accessory extends into the opening of the end plate when the mounting accessory is attached to the end plate to easily create an alignment between the end plate and the mounting accessory via the side rail which will allow a firm connection is formed between the end plate and the mounting accessory.
With respect to instant claim 20, U.S. Patent No. 12,264,807, claim 3, recites the mounting accessory comprises a coiled spring. DE 10-2019-005-713-A1 in a similar device discloses a mounting accessory [4,5,6] having a coiled spring [50a, 50b] which allows for a more structurally sound mounting between the enclosure and the support structure. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the device of U.S. Patent No. 12,264,807, claim 3, to include a coiled spring associated with the mounting accessory, as taught by DE 10-2019-005-713-A1 to form a more structurally sound mounting between the enclosure and the support structure.
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.
Claims 1, 5, 7, 9-14, 17, 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 10-2019-005-713-A1.
With respect to claim 1, DE 10-2019-005-713-A1 discloses a luminaire comprising:
an enclosure [2];
an end plate [21/24] located at or near a side of the enclosure [2], wherein the end plate [21/24] has an aperture [25] that traverses therethrough; and
a mounting accessory [5,6,7] including a base [6], wherein the base [6] includes at least one depressable tab [78], wherein the depressable tab [78] is slideable through the aperture [25] of the end plate [21/24], wherein as the tab [78] slide through the aperture [25] of the end plate [21/24], the tab [78] engages the end plate [21/24] to couple the mounting accessory [5,6,7] to the enclosure [2], wherein the tab [78] is configured to be depressed to uncouple the mounting accessory from the enclosure [2; note figure 5 and page 26 of translation].
With respect to claim 5, DE 10-2019-005-713-A1 discloses the mounting accessory [5,6,7] comprises a spring [50a, 50b].
With respect to claim 7, DE 10-2019-005-713-A1 discloses the mounting accessory [5,6,7] comprises a coiled spring [50a, 50b].
With respect to claim 9, DE 10-2019-005-713-A1 discloses the mounting accessory [5,6,7] comprises a bracket [6]. Note: bracket is defined as:
1. Bracket (noun): A support or structural element used to hold, connect, or reinforce. (U.S. Dictionary)
With respect to claim 10, DE 10-2019-005-713-A1 discloses the mounting accessory [5,6,7] is removable from the enclosure by depressing the tab [78] and sliding at least a portion of the base [6] and depressed tab [78] back through the aperture [25] of the end plate [21/24].
With respect to claim 11, DE 10-2019-005-713-A1 discloses the end plate [21/24] comprises a side rail [23a, 23b].
With respect to claim 12, DE 10-2019-005-713-A1 discloses the end plate [21/24] includes at least one side rail [23a, 23b] and the base [6] of the mounting accessory [5,6,7] engages the at least one side rail [23a, 23b].
With respect to claim 13, DE 10-2019-005-713-A1 discloses a portion of the tab [78] of the mounting accessory [5,6,7] extends into the opening [25] of the end plate [21/24] when the mounting accessory [5,6,7] is attached to the end plate [21/24].
With respect to claim 14, DE 10-2019-005-713-A1 discloses a luminaire comprising:
at least one end plate [21/24] located at or near a side of the luminaire [the luminaire fits in the enclosure, 2], wherein the at least one end plate [21/24] has an aperture [25] that traverses therethrough and at least one side rail [23a, 23b]; and
a mounting accessory [5,6,7] including a base [6] and a spring [50a, 50b] coupled to the base [6], wherein the base [6] slides along the at least one side rail [50a, 50b] of the at least one end plate [21/24], and wherein the mounting accessory [5,6,7] includes a tab [78] that engages the aperture [25] of the at least one end plate [21/24] coupling the mounting accessory [5,6,7] to the at least one end plate [21/24], wherein the tab [78] is configured to be depressed to uncouple the mounting accessory [5,6,7] from the at least one end plate [21/24]; note figure 5 and page 26 of translation].
With respect to claim 17, DE 10-2019-005-713-A1 discloses a portion of the tab [78] of the mounting accessory [5,6,7] extends into the opening [25] of the at least one end plate [21/24] when the mounting accessory [5,6,7] is coupled to the at least one end plate [21/24].
With respect to claim 18, DE 10-2019-005-713-A1 discloses the at least one end plate [21/24] includes at least two side rails [23a, 23b] that both engage with the base [6].
With respect to claim 20, DE 10-2019-005-713-A1 discloses the mounting accessory [5,6,7] comprises a coiled spring [50a, 50b].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over DE 10-2019-005-713-A1 in view of Official Notice.
With respect to claim 4, DE 10-2019-005-713-A1 does not disclose the end plate is integral to the enclosure. Official Notice is taken that forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the end plate integral with the enclosure in the device of DE 10-2019-005-713-A1 to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
With respect to claim 15, DE 10-2019-005-713-A1 does not disclose the side rail is integral to the at least one end plate. Official Notice is taken that forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the side rail is integral to the at least one end plate in the device of DE 10-2019-005-713-A1 to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
With respect to claim 16, DE 10-2019-005-713-A1 does not disclose the end plate is integral to the luminaire. Official Notice is taken that forming elements of a device makes the connection between the elements stronger and the elements less likely to separate during use. It would have been well within the skill of one versed in the art, before the effective filing date of the claimed invention, to form the end plate is integral to the luminaire in the device of DE 10-2019-005-713-A1 to make the connection between the plate and enclosure stronger so the elements will be less likely to separate during use.
Allowable Subject Matter
Claims 2, 3, 6, 8 and 19 would be allowable if the double patenting rejections, set forth in this Office action, were overcome and the claims were rewritten to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA TSO whose telephone number is (571)272-2385. The examiner can normally be reached Mon-Thu 7:30a-4:00p.
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/LAURA K TSO/Primary Examiner, Art Unit 2875