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 .
Priority
Acknowledgment is made of this application’s status as a continuation of application 18/119,744 now patent 12,273,972 which is a continuation of application 16/814,289 now patent 11,632,835 filed on 03/10/2020, which is a continuation of application 16/106,801 now patent 10,588,200 filed on 08/21/2018, which is a continuation of application 15/050,207 now patent 10,057,964 filed on 02/22/2016, which is a continuation of abandoned application 14/790,956 filed on 07/02/2015.
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).
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Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 122,273,972. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by claims of the previous U.S. Patent
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,588,200. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by claims of the previous U.S. Patent, with the expectation of the addition of limitation of “underwater lights”; which is a recitation of the intended use of the claimed invention and must result in a structural difference between the claimed invention and the U.S. Patent in order to patentably distinguish.
Furthermore, prior art US2014/0210373A1 hereinafter Baret discloses a similar lighting control system that controls underwater spotlights (¶39L8-11: the spotlights feature a watertight body to be installed in a swimming pool basin), therefore, it would have been obvious to one ordinarily skilled in the art to modify the lights patented in U.S. Patent 10,588,200, to be similar in feature as disclosed by Baret.
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 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 1-7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Baret in view of US2005/0198650A1 hereinafter “Ford”
Regarding claim 1, Baret discloses a line control module (¶40L1-2: control box) for controlling operations of an underwater light (¶39L3-11: the spotlights feature a watertight body to be installed in a swimming pool basin) comprising:
a plurality of sets of commands (¶42L1-9: the control is configured with IC command instructions capable of modifying the color of each of the LEDs)
a processor (¶45L3: a microprocessor), the processor configured
to select one of the plurality of sets of commands to be utilized for controlling an underwater light (¶44-49: the combinations of cuts thus form a Morse-like coding delivering information or instructions which corresponds to different operating modes that the spotlight can adopt); and
one or more output switches (¶42L1-9: the disconnect of the control box advantageously consisting of a relay or triac, or any other shut-off system) controlled by the processor and configured to interrupt transmission of line voltage to the underwater light for specified time periods (¶47L1-5: the microprocessor is coupled to a time based of the disconnect which allows it to perform these cuts with a precise duration within 1ms) in response to user inputs received by processor to thereby control the underwater light (¶66L1-17: the user presses key to start the spotlight; selects sequence that suit him by using key 3 and 4)
Baret does not explicitly disclose:
a memory storing said plurality of sets of commands.
Baret describes in ¶46 the combination of cut to the power is pre-determined, which implies a memory device for storing the instructions; and in ¶66 that the control box can take different input from the keys to send out instructions.
Therefore, it would have been obvious to one ordinarily skilled in the art to recognized that Baret implies the control box includes a memory to store said instructions; or would’ve been motivated to include a memory to store such instructions.
Baret does not explicitly disclose the control box is configured to:
select one of the plurality of set of command to be utilized based on a version of firmware being implemented by the underwater light
Ford discloses a system/method for providing device driver selection wherein
select one of the plurality of set of command to be utilized based on a version of firmware being implemented by device (¶65L1-10: selecting a set of drivers based upon defined device information; including the firmware version as of the date the device was setup)
Examiner notes, Ford described in ¶1-3 that drivers are executable instruction use by a device, and therefore is equivalent to the “set of instructions” as recited by the claim.
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application to modify the control box disclosed by Baret to include the multiple drivers and selection of driver based on firmware implemented by the device as disclosed by Ford.
One of ordinary skill in the art would’ve been motivated because this allow the system to select the best driver based on the current firmware version of the device to allow new features to be enabled on the device (¶16-18) or allow the use of older driver version that can be more appropriate for devices running an older firmware. (¶23)
Regarding claim 2, Baret in view of Ford hereinafter “Baret/Ford” discloses in Baret the line control module of claim 1 (as rejected above),
in combination with the underwater lights. (¶39L3-11: the spotlights feature a watertight body to be installed in a swimming pool basin)
Regarding claim 3, Baret/Ford discloses in Baret the combination of claim 2, wherein the underwater light is configured to execute
a first command processing mode and a second command processing mode, wherein the first command processing mode is responsive to power interruption having a first duration and the second command processing mode is responsive to power interruption having a second duration. (¶72L1-10: a microprocessor generate a code consisting of combinations of short and long power cuts to modulate color of the LED; the embedded detector of spotlights and which is equipped with a microprocessor which interprets said code and modulates a signal intended to modify the operating mode of said spotlights)
Regarding claim 4, Baret/Ford discloses in Baret the combination of claim 2, wherein,
in response to interruption of the line voltage by the line control module, the underwater light selects and executes one of a plurality of light show programs. (¶72L1-10: the embedded detector of spotlights and which is equipped with a microprocessor which interprets said code and modulates a signal intended to modify the operating mode of said spotlights)
Baret does not explicitly disclose:
a memory
Baret describes in 74L1-6: the microprocessor is programmed with the different operating modes of the spotlights so as to interpret said IC command instructions transmitted by bathe cut-off device.
Therefore, it would have been obvious to one ordinarily skilled in the art to recognized that Baret implies the spotlight also includes a memory.
Regarding claim 5, Baret/Ford discloses in Baret the combination of claim 2, wherein one of
the specified time periods corresponds to a command to set an intensity of light output by the underwater light or a command to set a rate at which an underwater light cycles through a light show. (¶66L10-12: there may be other operating modes, for example, diminishing or increasing the intensity of the light)
Regarding claim 6, Baret/Ford discloses in Baret the combination of claim 2, wherein
a command issued to the underwater light by the line control module corresponds to a pre-defined number of power interruptions or a specified time period of a power interruption. (¶44-49: the combinations of cuts thus form a Morse-like coding delivering information or instructions which corresponds to different operating modes that the spotlight can adopt)
Regarding claim 7, Baret/Ford discloses in Baret the combination of claim 2, wherein
the line control module issues a command to the underwater light to drive light emitting diodes according to an intensity setting or to cycle through colors of a light show program at a specified rate. (¶66L10-12: there may be other operating modes, for example, diminishing or increasing the intensity of the light)
Regarding claim 9, Baret/Ford discloses in Baret the line control module of claim 1, wherein,
in response to interruption of the line voltage by the line control module, the underwater light selects and executes one of a plurality of light show programs. (¶72L1-10: the embedded detector of spotlights and which is equipped with a microprocessor which interprets said code and modulates a signal intended to modify the operating mode of said spotlights)
Baret does not explicitly disclose:
a memory
Baret describes in 74L1-6: the microprocessor is programmed with the different operating modes of the spotlights so as to interpret said IC command instructions transmitted by bathe cut-off device.
Therefore, it would have been obvious to one ordinarily skilled in the art to recognized that Baret implies the spotlight also includes a memory.
Regarding claim 10, Baret/Ford discloses in Baret the line control module of claim 1, wherein one of
the specified time periods corresponds to a command to set an intensity of light output by the underwater light or a command to set a rate at which an underwater light cycles through a light show. (¶66L10-12: there may be other operating modes, for example, diminishing or increasing the intensity of the light)
Regarding claim 11, Baret/Ford discloses in Baret the line control module of claim 1, wherein
a command issued to the underwater light by the line control module corresponds to a pre-defined number of power interruptions or a specified time period of a power interruption. (¶44-49: the combinations of cuts thus form a Morse-like coding delivering information or instructions which corresponds to different operating modes that the spotlight can adopt)
Regarding claim 12, Baret/Ford discloses in Baret the line control module of claim 1, wherein
the line control module issues a command to the underwater light to drive light emitting diodes according to an intensity setting or to cycle through colors of a light show program at a specified rate. (¶66L10-12: there may be other operating modes, for example, diminishing or increasing the intensity of the light)
Claims 8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Baret in view of US2014/0265865A1 hereinafter “Hickok”
Regarding claim 8, Baret/Ford discloses the combination of claim 2
Baret/Ford does not disclose:
a preview circuit configured to output a preview of a light show.
Hickok discloses a lighting management system wherein the system comprises
a preview circuit configured to output a preview of a light show. (¶38L1-3: the controller renders a preview of the light show in a preview bar on the display associated with the controller)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the control box disclosed by Baret/Ford to include the light management controller with display that displays a light show preview as disclosed by Hickok.
One of ordinary skill in the art would’ve been motivated because in the case of a complicated light show, it would be simpler and less time consuming if the user can verify and edit the light show without waiting for the lighting device to play back the defined light show. (Hikok ¶2)
Regarding claim 13, Baret/Ford discloses the line control module of claim 1
Baret/Ford does not disclose:
a preview circuit configured to output a preview of a light show.
Hickok discloses a lighting management system wherein the system comprises
a preview circuit configured to output a preview of a light show. (¶38L1-3: the controller renders a preview of the light show in a preview bar on the display associated with the controller)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the control box disclosed by Baret/Ford to include the light management controller with display that displays a light show preview as disclosed by Hickok.
One of ordinary skill in the art would’ve been motivated because in the case of a complicated light show, it would be simpler and less time consuming if the user can verify and edit the light show without waiting for the lighting device to play back the defined light show. (Hikok ¶2)
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Baret/Ford in view of US2014/0145644A1 hereinafter “Netzel” further in view of US2011/0232687A1 hereinafter “Stein”
Regarding claim 14, Baret/Ford discloses the line control module of claim 1
Baret/Ford does not disclose:
a rotary encoder having a shaft and a push button switch; and
indicator light emitting diodes encircling the shaft of the rotary encoder, wherein
the indicator light emitting diode are energized and de-energized in response to rotation of the shaft.
Netzel discloses a system for selecting a color show generated by LED pool lights wherein the system comprises
a rotary encoder having a shaft and a push button switch (¶29L1-12: push buttons and a rotary switch for a user can be mounted on a wall of a standard outlet switch box)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application replace the keys on the control box disclosed by Baret/Ford with the push button switch and rotary encoder disclosed by Netzel.
One of ordinary skill in the art would’ve been motivated because the rotary encoder provides an easy way of selecting the desired operating mode, by simply rotating the switch, and the push button provides an easy way of turning on/off the light by a simple push.
Baret/Ford in view of Netzel does not disclose:
indicator light emitting diodes encircling the shaft of the rotary encoder, wherein
the indicator light emitting diode are energized and de-energized in response to rotation of the shaft.
Stein discloses an rotary switch for selecting different operating modes, wherein
indicator light emitting diodes encircling the shaft of the rotary encoder (¶13: an illuminable of a circular annular ring shape arranged around the control switch), wherein
the indicator light emitting diode are energized and de-energized in response to rotation of the shaft. (¶16: a visible light spot that appears to rotate around the annular ring pattern of the indicator.)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the rotary switch disclosed by Baret/Ford in view of Netzel to include the indicator lights as disclosed by Stein.
One of ordinary skill in the art would’ve been motivated because it provides a readily visible and easily recognizable symbolic indication of the operation. (Stein ¶7)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND R CHAI whose telephone number is (571)270-0576. The examiner can normally be reached M-F 9:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander H Taningco can be reached on (571)272-8048. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Raymond R Chai/ Primary Examiner, Art Unit 2844
