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 December 30 of 2025, has been entered. Claims 1-11 have been amended. No claim has been cancelled, or added. Claims 1-20 are still pending in this application, with claims 1 and 11 being independent.
Applicant’s amendment to the specification have overcome the objections detailed in sections 2-6 of the previous Office Action (mailed October 9, 2025). Therefore, the cited objections have been withdrawn.
Applicant’s amendment to the claims have overcome the objections detailed in sections 7-10 of the previous Office Action (mailed October 9, 2025). Therefore, the cited objections have been withdrawn.
It is noted that the newly submitted amendment to the abstract was not be provided in a separate sheet, as required by 37 CFR 1.72. See MPEP § 608.01(b). The applicant is advised that, to expedite prosecution the amendment to the abstract has been entered; however, a new abstract on a separate sheet, including no other part of the application or other material, must be provided before the application is considered in condition for allowance.
Claim Objections
Method claim 11 is objected to because it fails to provide proper antecedent basis for the limitation "said outside perimeter" (see lines 9 and 10).
The cited lack of antecedent instances do not amount to indefinitiveness under 35 U.S.C. 112, second paragraph, since is readily apparent, in light of the originally filed description and drawings, that the cited claim is attempting to refer back to the previously defined “outer perimeter” (see line 3). However, appropriate correction is required to place the claims in proper form for allowance.
Proposed Claim Amendments
The Examiner respectfully suggests amending the claims as indicated below. The applicant is advised that, if the proposed amendments are accepted, all claims must be carefully reviewed to reflect and/or accommodate the new language.
CLAIM 11. A method for forming an illuminated device comprising:
obtaining a substrate having an outside perimeter configured with a continuous channel along said outside perimeter;
obtaining a light strip comprising a non-lighted side and a lighted side having a plurality of lights;
disposing said light strip within said channel such that said light strip extends continuously around said outside perimeter of said substrate, wherein said plurality of lights are oriented inward toward an interior of said substrate; and
activating said light strip.
Claim Rejections Based on Prior Art
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.
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.
Claims 1-4, 6-12 and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GUEST (U.S. Pat. App. Pub. 2004/0004827).
Regarding independent claim 1 (as best understood), GUEST discloses an illuminated substrate 10 (as seen in Figure 1) including a substrate 12 (as seen in Figure 4) having an outside perimeter 14 (as seen in Figure 4); a continuous channel 32 (as seen in Figure 4) formed along the outside perimeter 14 of the substrate 12 (as detailed in lines 1-5 of paragraph 0056, and seen in Figure 4); and a light strip 40 (as seen in Figure 5) having a lighted side (side of element 40 facing element 12, as seen in Figure 5) with a plurality of lights 30 (as seen in Figure 5), and a non-lighted side (side of element 40 facing away from element 12, as seen in Figure 5), the light strip 40 disposed within the channel 32 (as seen in Figure 5) and extending continuously around the outside perimeter 14 of the substrate 12 (see lines 1-5 of paragraph 0055, and as seen in Figure 5), and the plurality of lights 30 is oriented inward toward an interior of the substrate 12 (see lines 20 and 21 of paragraph 0055, and Figure 5).
Regarding dependent claim 2 (as best understood), GUEST further discloses the outside perimeter 14 of the substrate 12 includes a countersunk edge 32 (as seen in Figure 4).
Regarding dependent claim 3 (as best understood), GUEST further discloses the light strip 40 is configured for insertion in the countersunk edge 32 (see lines 1-5 of paragraph 0055).
Regarding dependent claim 4 (as best understood), GUEST further discloses at least one U-channel 104 (as seen in Figure 12), the non-lighted side of the light strip 40 is configured for insertion into the at least one u-channel 104 (as seen in Figure 12), and the at least one u-channel 104 is configured to attach to the outside perimeter 14 of the substrate 12 (see lines 7-9 of paragraph 0074).
Regarding dependent claim 6 (as best understood), GUEST further discloses at least one u-channel 104 is opaque (see line 7 of paragraph 0074).
Regarding dependent claim 7 (as best understood), GUEST further discloses the substrate 12 includes a channel 32 (as seen in Figure 4) along the outside perimeter 14 (as seen in Figure 4) configured to accept the light strip 40 (see lines 1-5 of paragraph 0055).
Regarding dependent claim 8 (as best understood), GUEST further discloses the light strip 40 is flexible (plastic tape, see lines 14-20 of paragraph 0056, as seen in Figure 5).
Regarding dependent claim 9 (as best understood), GUEST further discloses the light strip 40 is substantially continuous about the outside perimeter 14 (as seen in Figure 5)
Regarding dependent claim 10 (as best understood), GUEST further discloses the lights 30 are evenly spaced along the lighted side (as seen in Figure 5).
Regarding independent method claim 11 (as best understood), GUEST discloses the steps of obtaining a substrate 12 (as seen in Figure 4) having an outside perimeter 14 (as seen in Figure 4) configured with a continuous channel 32 (as seen in Figure 4) along the outside perimeter 14 (as detailed in lines 1-5 of paragraph 0056, and seen in Figure 4); obtaining a light strip 40 (as evidenced by Figure 5) having a non-lighted side (side of element 40 facing away from element 12, as seen in Figure 5), and a lighted side (side of element 40 facing element 12, as seen in Figure 5) with a plurality of lights 30 (as seen in Figure 5); disposing the light strip 40 within the channel 32 (as evidenced by Figure 5) such that the light strip 40 extends continuously around the outside perimeter 14 of the substrate 12 (see lines 1-5 of paragraph 0055, and as seen in Figure 5), the plurality of lights 30 oriented inward toward and interior of the substrate 12 (see lines 20 and 21 of paragraph 0055, as seen in Figure 5); and activating the light strip 40 (see lines 20-24 of paragraph 0055).
Regarding dependent method claim 12 (as best understood), GUEST further discloses the step of affixing the lighted side along the outside perimeter 14 of the substrate 12 includes the steps of inserting the one or more light strips 40 in one or more u-channels 104 (as evidenced by Figure 12); and affixing the u-channels 104 to the substrate 12 (as evidenced by Figure 12).
Regarding dependent method claim 14 (as best understood), GUEST further discloses the step of affixing the u-channels 104 to the substrate 12 includes the step of applying an adhesive to the u-channels 104 (see lines 24-28 of paragraph 0074).
Regarding dependent method claim 15 (as best understood), GUEST further discloses a groove 32 (as seen in Figure 4) along the outside perimeter 14 (as seen in Figure 4) configured accept the one or more light strips 40 (as seen in Figure 5); and wherein the step of affixing the lighted side along the outside perimeter 14 of the substrate 12 includes the step of inserting the one or more light strips 40 in the groove 32 (as evidenced by Figure 5).
Regarding dependent method claim 16 (as best understood), GUEST further discloses the step of affixing the lighted side along the outside perimeter 14 of the substrate 12 further includes the step of filling the groove 32 with sealing material (see lines 24-28 of paragraph 0074).
Regarding dependent method claim 17 (as best understood), GUEST further discloses the step of affixing the lighted side along the outside perimeter 14 of the substrate 12 further includes the step of creating a flat top surface 26/26 (as evidenced by Figure 4) of the substrate 12 (as seen in Figure 4).
Regarding dependent method claim 18 (as best understood), GUEST further discloses the step of obtaining a substrate 12 having an outer perimeter 14 is followed by the step of forming a countersunk edge 32 in the substrate 12 (as evidenced by Figure 4).
Regarding dependent method claim 19 (as best understood), GUEST further discloses the step of affixing the lighted side along at least a portion of the outside perimeter 14 of the substrate 12 includes the step of inserting the one or more light strips 40 in the countersunk edge 32 (as evidenced by Figure 5).
Regarding dependent method claim 20 (as best understood), GUEST further discloses the step of obtaining a substrate 12 having an outer perimeter 14 is concurrent with the step of forming a countersunk edge 32 in the substrate 12 (as evidenced by Figure 4).
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 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over GUEST (U.S. Pat. App. Pub. 2004/0004827.
Regarding dependent claim 5 (as best understood), GUEST discloses all the limitations of the claim, except the U-channel 104 being translucent.
However, the examiner takes Official Notice of the use and advantages of translucent elements, specifically to support light sources in illumination devices, are old and well known in the illumination art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply form the U-channel 104 of GUEST to be translucent, to obtain the predictable result of matching the material of the U-channel 104 to that of the substrate 12, as necessitated by the particular illumination requirements of a given application. (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385).
Regarding dependent method claim 13 (as best understood), GUEST discloses all the limitations of the claim, except the U-channel 104 being translucent.
However, the examiner takes Official Notice of the use and advantages of translucent elements, specifically to support light sources in illumination devices, are old and well known in the illumination art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply form the U-channel 104 of GUEST to be translucent, to obtain the predictable result of matching the material of the U-channel 104 to that of the substrate 12, as necessitated by the particular illumination requirements of a given application. (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385).
Response to Arguments
Applicant's arguments, filed December 30 of 2025, have been fully considered but they are not persuasive.
Regarding the Examiner’s rejection of independent claim 1 (and method claim 11) under 35 U.S.C. 102(a)(1) as being anticipated by GUEST (U.S. Pat. App. Pub. 2004/0004827), the applicant argues that the cited reference fails to disclose all the features of the claimed invention, specifically a light strip disposed to extend continuously along a continuous channel formed along the outside perimeter of the substrate.
Regarding the Examiner’s rejection of claims 2-10 and 12-20, the applicant present no arguments, except stating that such claims depend directly, or indirectly, from independent claims 1 and 11, and would be allowable when/if the independent claims are allowed. Applicant’s failure to distinctly and specifically traverse such rejections, as required by 37 C.F.R. 1.111(b), has been interpreted as an admission that the individual features added by claims 2-10 and 12-20 fail to further distinguish the subject matter defined by the independent claims over the Prior Art already made of record.
In response to applicant’s arguments that GUEST (U.S. Pat. App. Pub. 2004/0004827) failed to disclose individually, or suggest in combination, the light strip 40 disposed to extend continuously along a continuous channel formed along the outside perimeter 14 of the substrate 12, the applicant is respectfully advised that while the claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 70 USPQ2d 1827 (Fed. Cir. May 13, 2004).
In this case, as previously detailed, GUEST discloses a substrate 12 having a channel 32 formed continuously along its outside perimeter 14 (as detailed in lines 1-5 of paragraph 0056, and seen in Figure 4); with the light strip 40 disposed within the channel 32 (as seen in Figure 5) to extend continuously around the outside perimeter 14 (see lines 1-5 of paragraph 0055, and as seen in Figure 5). That is, GUEST was considered as reasonably anticipating the claimed channel, light strip, and relative arrangement.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 ISMAEL NEGRON whose telephone number is (571)272-2376. The examiner can normally be reached on Monday - Friday from 10:00 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk Lee, can be reached at telephone number 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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/ISMAEL NEGRON/Primary Examiner
Art Unit 2875
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