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 preliminary amendment filed on 31 March 2025 has been entered. Claims 3, 5-7, 9-10, and 13-17 have been amended. Claim 19 has been cancelled. Claims 20-21 have been added. Claims 1-18 and 20-21 are still pending in this application, with claim 1 being independent.
Claim Objections
Claims 7, 15, and 17 are objected to because of the following informalities:
In claim 7, “...the plurality of clamping strips, preferably in which the bumper is formed from a resilient material...” should read: --...the plurality of clamping strips, wherein the bumper is formed from a resilient material...--.
In claim 15, “...a plurality of handles on the upper housing, preferably in which the plurality of handles are ridges molded integrally into the housing...” should read: --... a plurality of handles on the upper housing, wherein the plurality of handles are ridges molded integrally into the housing...--.
In claim 17, “...a frame connector configured to connect to a supporting frame, preferably in which the frame connector comprises a rotatable connection for receiving power and hard-wired data transfer from the frame...” should read: --... a frame connector configured to connect to a supporting frame, wherein the frame connector comprises a rotatable connection for receiving power and hard-wired data transfer from the frame...--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 2, 5, and 9 are 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 2, the limitation recites: “...the clamping strips being configured to clamp the upper rim and the lower rim together inside the one or more channels, preferably in which each clamping strip is a profile strip comprising a T-shaped channel, the T-shaped channel being configured to receive the upper rim and the lower rim therein...” which renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “one or more channels”, and the claim also recites “preferably in which each clamping strip is a profile strip comprising a T-shaped channel, the T-shaped channel being configured to receive the upper rim and the lower rim therein” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Additionally, it is unclear if the t-shaped channels are related to the one or more channels, or additional channels to the one or more channels. For purposes of examination, the Examiner will interpret claim 2 as follows: --...the clamping strips being configured to clamp the upper rim and the lower rim together inside the one or more channels,
Regarding claim 5, the limitation recites: “...the lighting assembly comprises at least one clamping strip for each edge of the polygonal housings, preferably in which the lighting assembly comprises two or more clamping strips for each edge of the polygonal housings...” which renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “the lighting assembly comprises at least one clamping strip for each edge of the polygonal housings”, and the claim also recites “preferably in which the lighting assembly comprises two or more clamping strips for each edge of the polygonal housings” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, the Examiner will interpret claim 2 as follows: --...the lighting assembly comprises at least one clamping strip for each edge of the polygonal housings
Regarding claim 9, the limitation recites: “...the clamping strips have a length of between 12 mm and 30 mm, preferably between 14 mm and 20 mm...” which renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “a length of between 12 mm and 30 mm”, and the claim also recites “preferably between 14 mm and 20 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, the Examiner will interpret claim 2 as follows: --... the clamping strips have a length of between 12 mm and 30 mm
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.
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 1-4, 6, 10-13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 202012100972 U1, herein ‘0972.
Regarding claim 1, ‘0972 discloses a surgical lighting assembly (Figs. 1-8), comprising: an upper housing (3), with an upper rim arranged around at least a portion of a perimeter of the upper housing (34, and/or the rim of 3 outside of 34, as shown in Figs. 1-8), and a lower housing (6), with a lower rim (61) arranged around at least a portion of a perimeter of the lower housing (as shown in Figs. 1-8); the upper housing and the lower housing being configured to fit together around their perimeters to define a chamber therebetween (as shown in Figs. 1-8); the lighting assembly further comprising: a light source (2) in the chamber (as shown in Figs. 1-8); a sealing member (7) located between the perimeters of the upper and lower housings (as shown in Figs. 1-8); and a plurality of clamping strips (9); in which the clamping strips are configured to clamp the upper rim to the lower rim around the perimeter of the housings (as shown in Figs. 1-8, e.g., “...cover 6 is preferably via a latching connection with the base part 3 connected. This can be brackets 9 be provided on the one hand the cover 6 encompassing and on the other hand, the base part 3 are arranged encompassing, in particular distributed around the circumference of the moisture lamp...”), so that the upper housing is clamped to the lower housing in a sealed configuration (as shown in Figs. 1-8 and as noted in the citation above).
Regarding claim 2, ‘0972 discloses (Figs. 1-8) each clamping strip (9) comprises one or more channels shaped to receive the upper rim and the lower rim (as shown in Figs. 1-8), the clamping strips being configured to clamp the upper rim and the lower rim together inside the one or more channels (as shown in Figs. 1-8), preferably in which each clamping strip is a profile strip comprising a T-shaped channel (as shown in Figs. 2, 7, and 8), the T-shaped channel being configured to receive the upper rim and the lower rim therein (as shown in Figs. 2, 7, and 8).
Regarding claim 3, ‘0972 discloses (Figs. 1-8) a plurality of upper rims (as shown in Figs. 1-8), each upper rim being arranged to extend around a portion of the perimeter of the upper housing (as shown in Figs. 1-8), and/or a plurality of lower rims (as shown in Figs. 1-8), each lower rim being arranged to extend around a portion of the perimeter of the lower housing (as shown in Figs. 1-8).
Regarding claim 4, ‘0972 discloses (Figs. 1-8) the plurality of upper rims extend around at least 75%, or at least 80%, or at least 85%, or at least 90% of the perimeter of the upper housing (the plurality of upper rims formed by 34, and/or the rim of 3 outside of 34, as shown in Figs. 1-8, extend around at least 75% and/or 100% of said perimeter of the upper housing), and/or in which the plurality of lower rims extend around at least 75%, or at least 80%, or at least 85%, or at least 90% of the perimeter of the lower housing (the plurality of lower rims extend around at least 100% of the perimeter of the lower housing, as shown in Figs. 1-8).
Regarding claim 6, ‘0972 discloses (Figs. 1-8) the upper (the plurality of upper rims formed by 34, and/or the rim of 3 outside of 34) and lower (61) rims and the plurality of clamping strips (9) are arranged symmetrically around the perimeter of the housings (as shown in Fig. 1).
Regarding claim 10, ‘0972 discloses (Figs. 1-8) the clamping strips (9) comprise an upper jaw (the upper portion of 9 coupling to 34 and an edge of 3 thereof, as shown in Fig. 2) configured to clamp over the upper rim of the upper housing (as shown in Fig. 2), and a lower jaw (a lower portion of 9 coupled to 61) configured to clamp over the lower rim of the lower housing (as shown in Fig. 2), the upper jaw and the lower jaw being connected to one another by a clamping strip spine (the outer side of 9 between said upper and lower jaws, as shown in Fig. 2), and a channel for receiving and clamping the upper and lower rims being defined by an inner surface of the upper jaw, the clamping strip spine, and the lower jaw (as shown in Fig. 2).
Regarding claim 11, ‘0972 discloses (Figs. 1-8) the clamping strips (9) are resilient (“...brackets 9 or hooks can be designed as sheet metal parts...the brackets 9 in their intended places in the back 34 . 34 ' can be clipped and thereby already in their intended positions relative to the base part 3 are fixed in position...,” and their corresponding shape shown in Figs. 1-8, reasonably imply that they are resilient), and in which the clamping strips are configurable between an open configuration for passing the upper and lower jaws of the clamping strip over the upper and lower rims (e.g., by slightly bending 9 open, even if by pushing 9 into said rims), and a closed configuration in which the upper and lower jaws clamp the upper and lower rims together in the channel (as shown in Fig. 2, after the jaws of 9 have griped said rims, as shown in Figs. 1-2).
Regarding claim 12, ‘0972 discloses (Figs. 1-8) the upper jaw and/or lower jaw of the clamping strips comprise an opening (an opening through the upper jaw shown in Fig. 1 can receive a tool such as the tip of a screw driver to lever the jaws into the open configuration for removal), or a recess, or a lug (92, in Fig. 8, reasonably forms a lug which can contact or abut a screwdriver tip for levering the jaws into their open configuration), into which a tool is insertable for levering the jaws into their open configuration for removal from the upper and lower rims (as noted above).
Regarding claim 13, ‘0972 discloses (Figs. 1-8) a heat sink (5) arranged in the chamber on the underside of the upper housing (as shown in Fig. 2, e.g., “...intermediate element may, for example, advantageously be profile-shaped in terms of production technology. It is preferably made of aluminum. In this case, a particularly good heat conduction from the LEDs to the base body is possible...”).
Regarding claim 16, ‘0972 discloses (Figs. 1-8) the lower housing (6) comprises a one-piece molded polymer shell (“...the cover is made in a two-component injection molding process...”), the molded polymer shell comprising a transparent window for transmitting light from the light source (“...the cover can be formed, for example, advantageously with an opaque edge region and a light-permeable main region...”).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of DE 202014102003 U1, herein ‘2003.
Regarding claim 5, as is best understood, ‘0972 teaches or suggests that the upper and lower housings are in the shape of regular polygons (as shown in Figs. 1-8).
‘0972 does not explicitly teach that the lighting assembly comprises at least one clamping strip for each edge of the polygonal housings.
‘2003 teaches or suggests (Fig. 2) the lighting assembly comprises at least one clamping strip (40) for each edge of the polygonal housings (as shown in Fig. 2).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of the lighting assembly comprises at least one clamping strip for each edge of the polygonal housings, such as taught or suggested by ‘2003, since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, one skilled in the art would have been reasonably motivated to improve the performance or quality of the sealed connection between the housings.
Additionally, or alternatively, for two or more clamping strips for each edge of the polygonal housing, one skilled in the art would have found such a modification obvious for the same rationale outlined above.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ‘0972.
Regarding claim 9, as is best understood, ‘0972 does not explicitly teach that the clamping strips have a length of between 12 mm and 30 mm.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and formed the clamping strips with a length of between 12 mm and 30 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only ordinary skill in the art. In re Aller, 105 USPQ 233. In the instant case, one skilled in the art would have been reasonably motivated to produce a length of the clamping strips with sufficient surface area to extend and couple the housings along their length, and/or provide jaws that sufficiently reach the rims of each housing, or different sized housings.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of Qian (CN 201589205 U).
Regarding claims 7 and 8, ‘0972 does not explicitly teach a bumper which is configured to extend around the perimeters of the upper and lower housings and to cover the joint and the plurality of clamping strips, wherein the bumper is formed from a resilient material (as recited in claim 7); the upper housing comprises an upper bumper-retaining rim arranged around at least a portion of the perimeter of the upper housing, and a lower bumper-retaining rim arranged around at least a portion of the perimeter of the lower housing, and in which the bumper comprises a channel configured to receive the upper bumper-retaining rim and the lower bumper-retaining rim (as recited in claim 8).
Qian teaches or suggests (Figs. 1-3) a bumper (13) which is configured to extend around the perimeters of the upper and lower housings and to cover the joint and the plurality of connecting strips (114, 132, as shown in Figs. 1-3), wherein the bumper is formed from a resilient material (“...the plastic ring 13 is elastic, so it can use its own flexibility which can attach the upper and lower housing 11 and 12...”); the upper housing comprises an upper bumper-retaining rim (the top recess receiving 13 therein, as shown in Fig. 2) arranged around at least a portion of the perimeter of the upper housing (as shown in Figs. 1-3), and a lower bumper-retaining rim (124) arranged around at least a portion of the perimeter of the lower housing (as shown in Figs. 1-3), and in which the bumper comprises a channel configured to receive the upper bumper-retaining rim and the lower bumper-retaining rim (as shown in Figs. 1-3).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of a bumper which is configured to extend around the perimeters of the upper and lower housings and to cover the joint and the plurality of clamping strips, wherein the bumper is formed from a resilient material (as recited in claim 7); the upper housing comprises an upper bumper-retaining rim arranged around at least a portion of the perimeter of the upper housing, and a lower bumper-retaining rim arranged around at least a portion of the perimeter of the lower housing, and in which the bumper comprises a channel configured to receive the upper bumper-retaining rim and the lower bumper-retaining rim (as recited in claim 8), such as taught or suggested by Qian, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of improving the performance and/or longevity of the device (e.g., by providing an additional feature to cover the joint between the plurality of housings and connecting features therebetween), and/or improve the appearance of the device (e.g., by providing a feature to conceal the joint and connecting features between the two housings).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of Jesurun et al. (US 2003/0210559 A1, herein referred to as: Jesurun).
Regarding claim 14, ‘0972 does not explicitly teach an outer surface of the upper housing or the lower housing comprises a data connection port connected to control electronics housed in the chamber.
Jesurun teaches or suggests (Figs. 1-9) an outer surface of the upper housing or the lower housing comprises a data connection port (for connection with 20, 22, 120, 128, etc.) connected to control electronics housed in the chamber (70; Fig. 3, and note the master terminal in Fig. 7 communicates with respective 70 of each lighting unit via cables or wires).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of an outer surface of the upper housing or the lower housing comprises a data connection port connected to control electronics housed in the chamber, such as taught or suggested by Jesurun, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of improving the performance, utility, and/or marketability of the device (e.g., by providing features to add, program, or diversify lighting control functions of the lighting device).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of Betts et al. (WO 2016/064758 A1, herein referred to as: Betts).
Regarding claim 15, ‘0972 does not explicitly teach a plurality of handles on the upper housing.
Betts teaches or suggests (Fig. 2) a plurality of handles (014) on the upper housing (as shown in Fig. 2).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of a plurality of handles on the upper housing, such as taught or suggested by Betts, in order to improve the utility and/or marketability of the device (e.g., by providing features to make the housing easier for a user to maneuver or carry).
The combined teachings of ‘0972 and Betts teach or suggest all of the elements of the claimed invention, except for the plurality of handles are ridges molded integrally into the housing.
However, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and formed the handles as ridges molded integrally into the housing, since it has been held that forming in one piece a structure which has formerly been formed in two, or more pieces, involves only routine skill in the art. In re Larson, 144 USPQ 347, 349 (CCPA 1965). In the instant case, one skilled in the art would have been motivated to reduce the cost and/or complexity of manufacturing and/or assembling the device.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of Westenfelder, II et al. (US 20210236231 A1, herein referred to as: Westenfelder, II).
Regarding claims 17 and 18, ‘0972 teaches or suggests (Figs. 1-8) the upper housing is removable from the lower housing while the lower housing is connected to the supporting frame (via 10).
‘0972 does not explicitly teach a frame connector configured to connect to a supporting frame, wherein the frame connector comprises a rotatable connection for receiving power and hard-wired data transfer from the frame (as recited in claim 17); and wherein the lower housing comprises the frame connector configured to connect to the supporting frame (as recited in claim 18).
Westenfelder, II teaches or suggests (Figs. 1-18) a frame connector (24) configured to connect to a supporting frame (26), wherein the frame connector comprises a rotatable connection for receiving power and hard-wired data transfer from the frame (as shown in Fig. 4, also see paragraph [0131]); and wherein the lower housing comprises the frame connector configured to connect to the supporting frame (either upper or lower portion of said frame can form a lower housing, further, Figs. 1, 2, and 7 suggest the frame connector is a part of both upper and lower portions).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of a frame connector configured to connect to a supporting frame, wherein the frame connector comprises a rotatable connection for receiving power and hard-wired data transfer from the frame (as recited in claim 17); and wherein the lower housing comprises the frame connector configured to connect to the supporting frame (as recited in claim 18), since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of improving the utility and/or marketability of the device (e.g., by providing a feature to allow rotatable positioning or adjustment of beam emitted from the lighting device, while also providing a means to route power and control lines to the lighting device).
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over ‘0972, in view of Li (CN 209341155 U).
Regarding claims 20 and 21, ‘0972 does not explicitly teach that the upper and lower housing each comprise an opening configured to form a tunnel extending through the surgical lighting assembly (as recited in claim 20); wherein the upper and lower housings are sealed around the opening, such that the chamber extends as a ring bounded by the opening on the inside, and the perimeter of the upper and lower housings on the outside (as recited in claim 21).
Li teaches or suggests (Figs. 1-9) the upper and lower housing each comprise an opening (in a center thereof) configured to form a tunnel extending through the surgical lighting assembly (as shown in Fig. 1); wherein the upper and lower housings are sealed around the opening (via 2), such that the chamber extends as a ring bounded by the opening on the inside (as shown in Fig. 1), and the perimeter of the upper and lower housings on the outside (as shown in Fig. 1).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of ‘0972 and incorporated the teachings of the upper and lower housing each comprise an opening configured to form a tunnel extending through the surgical lighting assembly (as recited in claim 20); wherein the upper and lower housings are sealed around the opening, such that the chamber extends as a ring bounded by the opening on the inside, and the perimeter of the upper and lower housings on the outside (as recited in claim 21), such as taught or suggested by Li, since it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976). In the instant case, one skilled in the art would have been motivated to improve, or otherwise increase, the utility of the device (e.g., by providing an embodiment by which the device can have a different shape, and/or be utilized in surgical lighting applications with a particular housing configuration or design).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colin J Cattanach whose telephone number is (571)270-5203. The examiner can normally be reached Monday - Friday, 9:30 AM - 6:30 PM.
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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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/COLIN J CATTANACH/Primary Examiner, Art Unit 2875
