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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is being considered by the examiner.
Response to Arguments
Claims 1–15 are pending. Claims 1 and 9 have been amended. Claims 2–8 and 10–15 are as previously presented. No new matter has been introduced.
Applicant's amendments and arguments filed 08/12/2026 have been fully considered but are not persuasive. The rejection of claims 1–15 under 35 U.S.C. 103 over Baker in view of Patel is maintained for the reasons of record and as further set forth below.
A. The limitation added to claim 1 does not alter the scope of claim 1
Applicant argues that the combination of Baker and Patel fails to teach or suggest "wherein when the air gap switch is closed, the controlled output power is available at the first output terminal and the bypass output power is available at the second output terminal."
Claim 1 as originally presented already recited that (i) "when the air gap switch is closed, the lighting control circuit is configured to provide a controlled output power at a first output terminal of the lighting control device based on an input power received by the air gap switch via an input terminal," and (ii) "when the air gap switch is closed, a bypass output power is provided via the second output terminal independent of the lighting control circuit." Both recitations are predicated on the same condition, the air gap switch being closed.
The clause added by the present amendment recites that those same two output powers are "available" at those same two output terminals under that same condition. The added clause is therefore coextensive with limitations already present in claim 1, and it does not distinguish claim 1 from the applied art beyond the limitations addressed in the previous Office action. The rejection of claim 1 is maintained on that basis alone.
B. Applicant's simultaneity argument is not commensurate with the scope of claim 1
Applicant's traverse rests on the assertion that "the bypass output power is available at the second output terminal at the same time as the controlled output power is available at the first output terminal when the air gap switch is closed" (Remarks, p. 6), and that Patel's bypass instead occurs only upon a power outage such that "power is not available at the main control unit and the emergency bypass at the same time" (Remarks, p. 7).
Claim 1 as amended does not recite "at the same time," "simultaneously," "concurrently," or any equivalent language of temporal coincidence. Applicant added the phrase "at the same time" to claim 9 only. Arguments directed to subject matter not recited in the claim cannot establish patentability of that claim; arguments must be commensurate in scope with the claim language. See MPEP 2145(VI). To the extent applicant argues that claim 1 requires simultaneous availability of the two output powers, that limitation is not recited in claim 1 and the argument is not persuasive as to claim 1.
C. The proposed combination does teach concurrent availability of both output powers (claims 1 and 9)
To the extent claim 1 is read as requiring concurrent availability by virtue of the shared "when the air gap switch is closed" predicate, and as to the express "at the same time" recitation of amended claim 9, the argument remains unpersuasive.
Nonobviousness cannot be established by attacking the references individually where the rejection is based on a combination of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The test for obviousness is not whether the features of the secondary reference may be bodily incorporated into the structure of the primary reference, but what the combined teachings would have suggested to one of ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Patel is relied upon for its teaching of a separate output path that routes power around a control device and delivers that power to loads that are not governed by the control device's control function; specifically, "line out" ports routed to a distribution block and distributed to fixtures independent of normal lighting control operation (Patel, [0010]–[0011]), a device "wired … as a bypass device to shunt … power around a control device" ([0013]), and forcing of the bypassed fixtures on independent of the control device ([0015]).
In the combination as articulated, the second output terminal is fed from the input terminal through the air gap switch, in parallel with the path from the air gap switch to the lighting control circuit. Baker discloses the air gap switch (maintained mechanical switch 332) in series with the hot terminal upstream of the controllably conductive device ([0078]; [0072]–[0073]). Consequently, closing the air gap switch energizes both paths from the same input source: the lighting control circuit receives input power and provides the controlled output power at the first output terminal, while the second output terminal receives bypass output power independent of the lighting control circuit. Concurrent availability of the two output powers is the necessary consequence of the parallel connection topology recited in the claim itself and taught by the combination; it is not a further functional requirement that the combination must separately disclose.
Additionally, the claims recite that the output powers are "available" at the respective terminals. This is a statement of the capability of the claimed apparatus. A prior art apparatus possessing the claimed structure meets such a functional recitation where the structure is capable of performing the recited function. See MPEP 2114(II).
D. Patel's emergency context does not defeat the combination
Applicant argues that because Patel's bypass is triggered by loss of normal power, Patel cannot teach or suggest availability of both output powers at once.
Patel's outage trigger governs when the ELCU forces the emergency fixtures on ([0015]). It does not teach away from, criticize, discredit, or otherwise discourage a lighting control device having a second output path that is not subject to the control circuit and that is energized whenever the upstream switch is closed. Applicant has identified no such statement in Patel. See MPEP 2145(X)(D)(2).
Further, the rejection does not propose importing Patel's outage-detection function into Baker. It proposes modifying Baker's lighting control device—in which the air gap switch is already in series with the hot terminal—to add the separate, uncontrolled output path that Patel teaches, for the benefit of powering selected lighting loads while bypassing normal lighting control operation. The motivation set forth in the previous action identified failure of normal control operation as one exemplary condition; it was not limited to that condition, and the structural modification relied upon does not depend on it.
E. Dependent claims 2–8 and 10–15
Applicant argues these claims are allowable by virtue of their dependency from claims 1 and 9, and further "submits that the recitations of several of the current dependent claims are of patentable significance" without identifying which claims, which recitations, or why. A general allegation that the claims define a patentable invention, without specifically pointing out how the language of the claims patentably distinguishes them from the references, does not comply with 37 CFR 1.111(b). See MPEP 707.07(f). Because claims 1 and 9 remain unpatentable for the reasons above, and no separate argument of patentable significance has been presented, the rejections of claims 2–8 and 10–15 are maintained.
F. Statutory basis
Applicant's Remarks refer to the rejection as having been made under pre-AIA 35 U.S.C. 103(a) (Remarks, p. 5). The present application is being examined under the first inventor to file provisions of the AIA , and the rejection was made under AIA 35 U.S.C. 103. As noted in the previous action, any correction of the statutory basis would not constitute a new ground of rejection where the prior art relied upon and the supporting rationale are the same under either status.
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 (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 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.
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 1–15 are rejected under 35 U.S.C. 103 as being unpatentable over Baker et al. (US 2024/0155751 A1, hereinafter "Baker") in view of Patel (US 2023/0156931 A1, hereinafter "Patel").
Regarding claim 1, Baker discloses a lighting control device including a lighting control circuit and a maintained mechanical switch (e.g., an air-gap switch) electrically connected in series between the hot terminal and dimmed hot terminal ([0078]), and further discloses that the lighting control circuit provides controlled output power to lighting devices through a dimmed-hot circuit ([0072]–[0073]).
Baker does not explicitly teach that the air gap switch is electrically connected to a second output terminal of the lighting control device such that, when the air gap switch is closed, a bypass output power is provided via the second output terminal independent of the lighting control circuit, wherein a load electrically connected to the second output terminal is not controlled by the lighting control circuit.
In analogous art, Patel discloses bypassing a control device such that power is routed around the control device ([0013]), and discloses separate output paths and output connections for distributing power to lighting fixtures independent of normal lighting control operation ([0010]–[0011], [0015]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the lighting control device of Baker to electrically connect the air gap switch to a second output terminal configured to provide bypass output power independent of the lighting control circuit, as taught by Patel, in order to provide power to selected lighting loads while bypassing normal lighting control operation, because Patel teaches shunting power around a control device ([0013]) and providing separate output paths for lighting operation independent of the control device ([0010]–[0011], [0015]).
As to the limitation added by amendment "wherein when the air gap switch is closed, the controlled output power is available at the first output terminal and the bypass output power is available at the second output terminal", in the modified device of Baker, the air gap switch is connected in series with the input (Baker, [0078]) and feeds both the lighting control circuit and, per the Patel-taught modification, the second output terminal. Closing the air gap switch therefore energizes both paths from the common input, such that the controlled output power is available at the first output terminal (Baker, [0072]–[0073]) and the bypass output power is available at the second output terminal independent of the lighting control circuit (Patel, [0010]–[0011], [0013], [0015]). The recited availability is further a capability of the claimed structure. MPEP 2114(II).
Regarding claim 2, Baker discloses the lighting control circuit includes an electronic switch ([0072]: triac, FET, IGBT).
Regarding claim 3, Baker discloses the lighting control circuit includes a dimmer circuit ([0027]).
Regarding claim 4, Baker discloses the dimmer circuit includes a TRIAC ([0072]).
Regarding claim 5, Baker discloses the controlled output power depends on a user input received via a user input interface ([0078]).
Regarding claim 6, Baker discloses the air gap switch electrically connected between an input terminal and an output terminal ([0078]); Patel further teaches separate output paths for bypass power operation ([0010]–[0015]). Same motivation as claim 1.
Regarding claim 7, Baker discloses the terminals as hot terminal H and dimmed hot terminal DH ([0072]); Patel further discloses electrical connectors and wiring connections ([0037]–[0040]).
Regarding claim 8, Patel discloses the second output terminal includes an electrical connector terminating one or more electrical wires ([0037]–[0040]).
Regarding claim 9, Baker discloses a lighting system comprising a first light device and a second light device ([0023]–[0025], [0048]–[0053]), and a lighting control device including a lighting control circuit and an air gap switch electrically connected to the lighting control circuit ([0072]–[0078]). Baker does not explicitly teach the air gap switch electrically connected to a second output terminal configured to provide bypass output power independent of the lighting control circuit; Patel teaches bypassing a control device and providing separate output paths ([0010]–[0015]). It would have been obvious to modify Baker in view of Patel for the reasons set forth with respect to claim 1.
As to the limitation added by amendment "wherein when the air gap switch is closed, the controlled output power is available at the first output terminal and the bypass output power is available at the second output terminal at the same time", in the modified device the second output terminal and the lighting control circuit are both fed from the input through the air gap switch. Closing the air gap switch necessarily energizes both paths from the common input at the same time, such that the controlled output power is available at the first output terminal and the bypass output power is available at the second output terminal concurrently. The concurrent availability is a consequence of the parallel connection of the two output paths downstream of the air gap switch and is further a capability of the resulting structure. MPEP 2114(II).
Regarding claim 10, Baker discloses an electronic switch ([0072]).
Regarding claim 11, Baker discloses a dimmer circuit ([0027], [0073]).
Regarding claim 12, Baker discloses the dimmer circuit includes a TRIAC ([0072]).
Regarding claim 13, Baker discloses dependence on user input via a user input interface ([0078]).
Regarding claim 14, Baker discloses the air gap switch connected to the input terminal and to the second output terminal ([0078]); Patel further teaches separate output paths ([0010]–[0011]).
Regarding claim 15, Baker discloses the second light device is a smart lighting fixture ([0023]–[0024]).
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 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 MONICA C KING whose telephone number is (571)270-3429. The examiner can normally be reached Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander H. Taningco can be reached at (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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/MONICA C KING/
Primary Examiner, Art Unit 2845
9/5/2026
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