REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Lastly the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances where applicants have included lexicographic definitions, either express or implied. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which Applicants are acting as their own lexicographer. See MPEP § 2111.01.IV.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which would invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Oath/Declaration
The Oath/Declaration filed on April 17, 2025 is objected to because the U.S. Patent Application No. 15/338,971 (now US Patent No. 9,743,494) filed on October 31, 2016 has been filed under rule 37 CFR 1.46, however the Oath/Declaration on page 2 fails to indicate that.
35 U.S.C. 251
Claim 18 is rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. US Patent No. 9,743,494 issue date was August 22, 2017. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
In addition, claims 1 and 3-18 are rejected as being based upon a defective reissue Oath/Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect in the Oath/Declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251
Claim 18 is rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case, the Applicant seeks to broaden original independent claims 1, 4 and 12 by deleting/omitting at least the patent claim language requiring, “further including an ambient light detector associated with the motion detector and for interrupting to the light source in the closed position of the cover” (claim 1) , “wherein the ambient light detector has a variable control to control the level of excitation of the ambient light detector causes illumination of the light source even at low levels of ambient light when the cover is open” (claim 4) and “wherein the motion detector is coupled in series with the ambient light detector and furthermore in series with the light source” (claim 12).
(Step 2: MPEP 1412.02(B)) The record of the prior patent application (15/338,971) prosecution history indicates that in a Response filed on May 12, 2017, the Applicant amended the claims in such a manner as to rewrite previously objected dependent claims, into the independent form. Accordingly, the newly amended claims recited the allowable subject matter as explained in the step 1 above, hence they overcame the cited prior art (Cea et al (U.S. Patent No. 7,325,940) and Wells (U.S. Patent No. 7,950,819)).
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. In the remarks filed on May 12, 2017, the Applicant submitted “The Applicant notes that there is a rejection of claims based upon prior art but also indication of allowable subject matter for claims 4, 7, 15 and 16. Claims 4, 7 and 15 have been written into independent form. The dependency of other dependent claims has been changed to be aligned with these revisions” (page 8). The limitations recited in step 1, correspond to the dependent claims 4, 7 and 15 (before renumbering), which have been objected as reciting allowable subject matter. It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitations of “further including an ambient light detector associated with the motion detector and for interrupting to the light source in the closed position of the cover” (claim 1) , “wherein the ambient light detector has a variable control to control the level of excitation of the ambient light detector causes illumination of the light source even at low levels of ambient light when the cover is open” (claim 4) and “wherein the motion detector is coupled in series with the ambient light detector and furthermore in series with the light source” (claim 12) are surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. The surrendered subject matter, noted above, has been entirely eliminated from new independent reissue claim 18. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claim 18 attempts impermissible recapture of subject matter surrendered during prosecution of the 15/338,971 application.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (U. S. PAT. 7,325,940) in view of Wells (U. S. PAT. 7,950,819).
With respect to claim 1, Cea teaches in Fig. 1, a display case (1) comprising:
a base (12) for supporting an item (18) is being displayed;
a cover (14) engaged with the base, with the base forming an interior compartment for the item and having respective opened and closed positions relative to the base;
a light source (LED assembly 20) disposed in the interior compartment, supported at an internal surface of said cover (14) and, when illuminated, casting a light beam (light shining) on the item to highlight the item (ring 18); wherein the sensor comprises a motion detector responsive to a motion of the user for activating the light source (C2, L29-47, the magnet forms a physical switch (senses/detects whether the box is being opened or closed (i.e. motion)) wherein when the box is open it closes the circuit and when the box is closed the circuit is interrupted and illumination is turned off. The process of closing and opening the display box corresponds to user’s motion), with the exception of teaching of an ambient light detector associated with at least one of the base and cover and for activating the light source.
However, in the same field of endeavor, Wells in Figure 1, teaches an ambient light detector (i.e. light sensor) associated with the motion sensor (switch which detects the position of the lid (i.e. open or closed)) for interrupting energy to the light source in the closed portion of the cover (Figure 1, 48; col. 4, lines 44-49, wherein the light sensor (i.e. ambient sensor) senses the light from the outside (i.e. ambient light) when the box is open and facilitates moving the switch to “on” position. Conversely, when the box is closed the energy source is interrupted and light is turned off) associated with at least one of the base (bottom portion 14) and cover and for activating the light source (46).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings to include motion detector and ambient light detector automatically turn on the light when the case is opened and to automatically turn off the light when the case is closed in order to provide robust fails safe system for illuminating item contained in a box.
With respect to claim 3, Wells teaches the display case wherein the ambient light detector is disposed within the interior compartment formed by the base and cover (as illustrated in Figure 1, sensor 48 is disposed within the interior compartment), the ambient light detector controlling the light source to interrupt activation of the light source in the closed position of the cover and to activate the light source in the open position of the cover (Figure 1, 48; col. 4, line 44, wherein the light sensor senses the light from the outside (i.e. ambient light) when the box is open and facilitates moving the switch to “on” position. Conversely, when the box is closed the energy source is interrupted and light is turned off).
Claims 4-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (U. S. PAT. 7,325,940) in view of Wells (U. S. PAT. 7,950,819) and further in view of Chemel et al (US Patent Publication No. 2017/0019970).
With respect to claim 4, Cea teaches in Fig. 1, a display case (1) comprising:
a base (12) for supporting an item (18) is being displayed;
a cover (14) engaged with the base, with the base forming an interior compartment for the item and having respective opened and closed positions relative to the base;
a light source (LED assembly 20) disposed in the interior compartment, supported at an internal surface of said cover (14) and, when illuminated, casting a light beam (light shining) on the item to highlight the item (ring 18), with the exception of teaching of an ambient light detector associated with at least one of the base and cover and for activating the light source.
However, in the same field of endeavor, Wells in Figure 1, teaches an ambient light detector (i.e. light sensor) associated with the motion detector for interrupting energy to the light source in the closed portion of the cover (Figure 1, 48; col. 4, line 44, wherein the light sensor senses the light from the outside (i.e. ambient light) when the box is open and facilitates moving the switch to “on” position. Conversely, when the box is closed the energy source is interrupted and light is turned off) associated with at least one of the base (bottom portion 14) and cover and for activating the light source (46).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings to include motion detector and ambient light detector automatically turn on the light when the case is opened and to automatically turn off the light when the case is closed in order to provide robust fails safe system for illuminating item contained in a box.
However, Cea and Wells do not explicitly recite wherein the ambient light detector has a variable control to control a level of excitation of the ambient light detector so that the ambient light detector causes illumination of the light source even at low levels of ambient light when the cover is open.
On the other hand, Chemel teaches lighting system wherein the ambient light detector has a variable control to control a level of excitation of the ambient light detector so that the ambient light detector causes illumination of the light source even at low levels of ambient light (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to further improve modified Cea’s teaching, and incorporate a variable ambient light sensor as taught by Chemel, in order to provide sufficient illumination with varying ambient conditions, such that it is more pleasant for a user to look inside the box without excessive lighting and also to preserve the battery life by not using excessive lighting is not needed.
With respect to claims 5, 6 and 9, Chemel further teaches the display case wherein the sensor further comprises one of a touch sensor, proximity sensor and sound sensor (para. [0530], wherein the sensor may operate based on “various physical, environmental or chemical parameters such as but not limited to temperature, pressure, lighting, touch, smell, voice, perception and the like”).
With respect to claims 7 and 10, Wells teaches the display case wherein the sensor is disposed within the base and cover (Figure 1, wherein sensor 48 is disposed within the base 16). Chemel teaches touch sensor (para. [0530]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (U. S. PAT. 7,325,940) in view of Wells (U. S. PAT. 7,950,819) and further in view of Chemel et al (US Patent Publication No. 2017/0019970) and Kim (US Patent No. 10,443,925).
With respect to claims 8 and 11, Cea, Wells and Chemel do not explicitly teach the display case, wherein the proximity sensor or the sound sensor is disposed external to the base and cover.
On the other hand, Kim teaches a device wherein the sound sensor is disposed external to the base and cover (C3, L53-59).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify Cea’s display box and install a sensor on the outside of the compartment, as taught by Kim, in order to improve sensor reading by being closer to the source.
Claims 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cea et al. (U. S. PAT. 7,325,940) in view of Wells (U. S. PAT. 7,950,819) and further in view of Carabajal (US Patent No. 9,642,430).
With respect to claim 12, Cea teaches in Fig. 1, a display case (1) comprising:
a base (12) for supporting an item (18) is being displayed;
a cover (14) engaged with the base, with the base forming an interior compartment for the item and having respective opened and closed positions relative to the base;
a light source (LED assembly 20) disposed in the interior compartment, supported at an internal surface of said cover (14) and, when illuminated, casting a light beam (light shining) on the item to highlight the item (ring 18); wherein the sensor comprises a motion detector responsive to a motion of the user for activating the light source (C2, L29-47, the magnet forms a physical switch wherein when the box is open it closes the circuit and when the box is closed the circuit is interrupted and illumination is turned off. The process of closing and opening the display box corresponds to user’s motion), with the exception of teaching of an ambient light detector associated with at least one of the base and cover and for activating the light source and wherein the motion detector is coupled in series with an ambient light detector and furthermore in series with the light source.
However, in the same field of endeavor, Wells in Figure 1, teaches an ambient light detector (i.e. light sensor) associated for interrupting energy to the light source in the closed portion of the cover (Figure 1, 48; col. 4, line 44, wherein the light sensor senses the light from the outside (i.e. ambient light) when the box is open and facilitates moving the switch to “on” position. Conversely, when the box is closed the energy source is interrupted and light is turned off) associated with at least one of the base (bottom portion 14) and cover and for activating the light source (46).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings to include motion detector and ambient light detector automatically turn on the light when the case is opened and to automatically turn off the light when the case is closed in order to provide robust fails safe system for illuminating item contained in a box.
Furthermore, Carabajal teaches motion sensing illumination system wherein the motion detector is coupled in series with an ambient light detector and furthermore in series with the light source (Figure 3, motion sensor 110, ambient detector is located within the solar cell 220 which upon detection of the sunlight starts charging battery and illumination LEDs 130, all connected in series (C2, L39-40)).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify Cae’s circuit and connect ambient detector in series with lighting and light source, as this configuration is one of the most common well known ways to effectively control lighting circuit based on the sensed conditions.
With respect to claim 13, Carabajal further teaches the device further including a battery for powering the light source and also disposed in series with the motion detector and the ambient light detector (C3, L18-25, wherein solar cell corresponds to ambient light detector).
To the extent to which one could argue that element 220 and 210 are not in series, it is well know in the art to use series configuration for arranging elements which depend on each other such as sensor and load. Accordingly making changes from parallel to series would have been obvious design choice, well within a skill of one of ordinary skill in the art.
With respect to claim 14, Cea teaches the display case wherein the light source comprises an LED (Figure 1, LED assembly 20).
With respect to claim 15, Cea teaches the display case wherein the item is a piece of jewelry, and the base and cover are constructed in the form of a clam shell or rocket box construction (Figure 1).
With respect to claim 16, Carabajal further teaches a circuit including a controller for controlling a duration of time that the light source is illuminated (C3, L46-55).
Therefore, it would have been obvious o one ordinary skill in the art before the effective filing date of the claimed invention to further modify Cea’s circuit to include controller, as taught by Carabajal and keep the light on for a predetermined duration of time after closing, as taught by Carabajal, in order to prevent switching light back and forth if user decides to reopen the box. Additionally set duration of the illumination time would also prevent excessive use of battery by ensuring that the light would be turned off after preset delay.
With respect claim 17, Carabajal further teaches the circuit wherein the controller comprises a mono- stable device (the switch remains closed until condition is met and the switch is open) that sets a predetermined time interval with the light source controlled to interrupt after the duration of time (C3, L46-55).
With respect to claim 18, Cea teaches a display case comprising: a base (Figure 1, 12) for supporting an item (Figure 1, 18) that is being displayed; a cover (Figure 1, 14) engaged with the base (Figure 1, 12) and movable between an open position and a closed position relative to the base (as illustrated in Figure 1, the cover 14 can be swung open or closed), wherein the base forms an interior compartment for the item (as illustrated in Figure 1, base 12 forms in an interior wall 32 in which covering 48, for a ring, can be placed): a light source disposed in the interior compartment (Figure 1, 62), supported at an internal surface of the cover positioned such that when illuminated, it casts light on the item (as illustrated in Figure 1, the LEDs 62 illuminate a piece of jewelry) to highlight the item a motion detector (magnet 64 corresponds to a motion detector. Its position with respect to reed switch 66 will change when a case is open and when it is closed, resulting in turning on or turning off the light) associated with at least one of the base and cover and operable to activate the light source responsive to motion and disposed within the interior compartment formed by the base and cover, the motion detector activated upon opening of the cover and operably connected to the light source to, in turn, activate the light source (C2, L38-47, wherein the motion detector is activated upon opening or closing the case. Switch controlled by the magnet is in communication with a ribbon cable 68, and the ribbon is in communication with LEDs).
However, Cea does not appear to explicitly disclose a controller operably connected to the light source and the motion detector, the controller controlling the light source to remain active for a period of time following activation of the light source by the motion detector.
On the other hand, Carabajal teaches a lighting system wherein controller operably connected to the light source and the motion detector, the controller controlling the light source to remain active for a period of time following activation of the light source by the motion detector (Figure 3, motion sensor 110, ambient detector is located within the solar cell 220 which upon detection of the sunlight starts charging battery and illumination LEDs 130, all connected in series (C2, L39-40) and C3, L46-55).
Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings and keep the light on for a predetermined duration of time after closing, as taught by Carabajal, in order to prevent switching light back and forth if user decides to reopen the box. Additionally set duration of the illumination time would also prevent excessive use of battery by ensuring that the light would be turned off after preset delay.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 7:30 am - 3:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
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