DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 10,816,172 B2 (hereafter the’172 patent and equivalent) addressing the filing 19 June 2025.
The following is the status of the claims under current review:
Claims 1-26 are cancelled.
Claims 27-43 are new and examined.
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 .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 10,816,172 B2, which issued from App. No. 16/296611 having a filing date of 08 March 2019. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘172 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates no maintenance fees are due at this time. The next fee has a 7.5-year window opening 27 October 2027. The window with surcharge opens 28 April 2028, and the last day to pay the fee with surcharge is 27 October 2028.
Information Disclosure Statement
The Information Disclosure Statement dated 19 June 2025, is entered.
Specification
The amendments to the specification are entered.
Claim Rejections - 35 USC § 112
35 USC 112(a) – lack of written description:
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 35 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The language “minimal distance” did not appear in the disclosure as originally filed, and the disclosure does not provide what constitutes a “minimal distance”. As a result, the examiner concludes this language does not meet the written description requirement.
35 USC 112(b) – indefiniteness:
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 27-43 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.
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 27: A method of installing a recessed light fixture in a suspended ceiling for emitting light into a room, the suspended ceiling having a framework aligned with orthogonal X, Y and Z axes and including a grid of rails extending parallel to the X and Y axes, each rail (lacks antecedent basis, e.g., “each of said rails” or equivalent) having opposed flanges (lacks antecedent basis, e.g., “a first flange and a second flange opposed to the first flange” or equivalent; indefinite as written as to how many flanges are present) for supporting ceiling panels (lacks antecedent basis) and a vertical portion extending upwardly from the opposed flanges parallel to the Z axis, and the suspended ceiling having a ceiling panel (indefinite as to whether this is one of the ceiling panels previously presented or is a different panel) supported by at least first and second opposed rails (lacks antecedent basis, e.g., “a first rail and a second rail opposed to the first rail” or equivalent) of the framework disposed parallel to the X axis, the ceiling panel (indefinite as to which panel “the ceiling panel” references) having a panel opening therethrough and a center of the panel opening being disposed at a pre-determined distance from the first opposed rail parallel to the Y axis, the method comprising:
providing a light fixture system including a light fixture having a housing with an aperture, and a lighting element adapted to emit light through the aperture;
the light fixture having a collar connected to the housing and disposed around the aperture, and the collar having a wall extending from the housing and having a peripheral edge;
the light fixture system including first and second hanger bars (lacks antecedent basis, e.g., “a first hanger and a second hanger…”) each having first and second ends (lacks antecedent basis) disposed on a longitudinal axis thereof, and having a pair of mounting clips disposed on the first and second ends (indefinite as written as to whether each end has a pair of mounting clips, or if a single mounting clip is at a respective end), the mounting clips being adapted to mount to the first and second opposed rails in a vertically downward direction from above the grid of rails;
the housing including first and second mounting brackets (lacks antecedent basis) affixed to first and second ends (lacks antecedent basis) of the housing, respectively, and the first and second mounting brackets being configured to mount to the first and second hanger bars, respectively, such that a center of the collar is disposed at the pre-determined distance from the first opposed rail when the light fixture is mounted thereon;
providing an assembly of the housing and the first and second hanger bars, with each of the first and second hanger bars being connected to an associated mounting bracket (lacks antecedent basis, so it is indefinite as to whether these are separate mounting brackets from those previously referenced);
placing the assembly of the housing and the first and second hanger bars above the ceiling panel with the first and second mounting clips of the first and second hanger bars aligned with and contacting the stem portions (lacks antecedent basis) of the first and second opposed rails of the framework, respectively, such that the mounting clips can attach thereto in a vertically downward direction and such that the collar is disposed at the pre-determined distance from the first opposed rail;
after the placing step, shifting the assembly of the housing and hanger bars parallel to the first and second opposed rails and the X axis in a direction whereby the center of the collar moves toward the center of the panel opening until the center of the aperture is substantially aligned above the center of the panel opening;
during the shifting step, the mounting clips of the first and second hanger bars maintain contact with the first and second opposed rails of the framework and are operable to guide movement of the light fixture parallel to the X axis; and
after the shifting step, when the center of the collar is substantially aligned above the center of the panel opening, mounting the light fixture to the framework by urging the assembly of the housing and hanger bars downwardly to engage the first and second mounting clips with the first and second opposed rails, respectively.
Claim 28: The method of claim 28 (this claim depends from itself; for examination purposes the examiner interprets as though claim 28 depends from claim 27), further comprising:
the ceiling panel (indefinite for reasons previously provided) having a bottom room-facing surface and an top surface (objected to and suggests “a top surface”);
during the shifting step, the peripheral edge of the collar being disposed above a level of the top surface of the ceiling panel; and
after the mounting step, the collar extending partially into the panel opening such that the peripheral edge is disposed between a level of the bottom room-facing surface and the level of the top surface of the ceiling panel.
Claim 29: The method of claim 29 (this claim depends from itself; for examination purposes the examiner interprets as though claim 29 depends from claim 28), further comprising:
the light fixture system being configured such that, after the mounting step, the peripheral edge of the collar is disposed at a predetermined position between the level of the bottom room-facing surface and the level of the top surface of the ceiling panel.
Claim 31: The method of claim 31 (this claim depends from itself; for examination purposes the examiner interprets as though claim 31 depends from claim 30), further comprising:
a peripheral edge of the bottom of the cover having an upwardly and outwardly aligned chamfer which is operable to contact a peripheral edge of the panel opening and to guide the center of the collar toward the center of the panel opening during the mounting step.
Claim 32: (New) The method of claim 32 (this claim depends from itself; for examination purposes the examiner interprets as though claim 32 depends from claim 31), further comprising:
during the shifting step, the bottom of the cover contacting and sliding along the top surface of the ceiling panel (indefinite as to which ceiling panel is being referenced).
Claim 35: The method of claim 30, further comprising:
the panel opening having a size, shape and position that are predetermined with a very low tolerance (indefinite as to the metes and bounds as to with what the very low tolerance is predetermined; indefinite as to the metes and bounds of the range as to what constitutes a “very low tolerance”);
the collar having a size and shape closely corresponding to the size and shape of the panel opening; and
after the mounting step, a maximal gap between the wall of the collar and an interior wall of the panel opening being a minimal distance (indefinite as to the metes and bounds of what constitutes a “minimal distance”).
Claim 37: The method of claim 37 (this claim depends from itself; for examination purposes the examiner interprets as though claim 37 depends from claim 36), wherein:
the peripheral edge of the collar has an outer surface with a notch extending therearound; and
the end portion of the exterior wall of the trim element is adapted to extend into the notch of the collar.
Claim 38: The method of claim 39 (this claim depends from a later presented dependent claim), wherein:
the trim element is adapted to mount to the collar in any position with a range of positions at various distances from the housing (indefinite as written as to with what the various distances relate: the trim element or the collar with respect to the housing) to compensate for variations in a distance between the light fixture and the room-facing surface of the panel; and
the end portion of the exterior wall of the trim element being adapted to overlap the peripheral edge of the collar within the notch in the plurality of positions such that the light trap is formed in the plurality of positions.
Claim 39: The method of claim 39 (this claim depends from itself), wherein:
the light fixture has a trim mounting mechanism operable to mount the trim element to the collar and operable to bias the trim element toward the housing.
Claim 40: The method of claim 40 (this claim depends from itself; for examination purposes the examiner interprets as though claim 40 depends from claim 39), wherein:
the trim mounting mechanism comprises a spring-biased member of the trim element which is adapted to contact an interior surface of the collar, and the interior surface of the collar is aligned toward the housing and outwardly such that the trim element is biased toward the housing.
Claim 41: The method of claim 39, further comprising:
the trim element having a trim opening and having a flange around a perimeter of the trim opening, and the flange being adapted to abut the room-facing surface of the panel around a perimeter of the panel opening when the trim element is mounted to the collar;
the flange of the trim element having a width, as measured parallel to the room- facing surface of the panel, which is a small fraction (indefinite as to the metes and bounds of what constitutes a “small fraction”) of a width of the trim opening.
Claim 42: (New) The method of claim 42 (this claim depends from itself; for examination purposes the examiner interprets as though claim 42 depends from claim 41), wherein:
the width of the flange is not more than about 0.040 inches.
Claim 43: The method of claim 28, further comprising:
the housing including first and second mounting brackets (“first and second mounting brackets lacks antecedent basis, and is indefinite as this limitation has already been provided) affixed to the first and second ends of the housing, respectively, and the first and second mounting brackets being configured to mount to the first and second hanger bars, respectively, such that the center of the collar is disposed at the pre-determined distance from the first opposed rail when the light fixture is mounted thereon.
Those claims listed under this heading but not directly addresses are rejected as being dependent from a rejected claim, either directly or indirectly.
Allowable Subject Matter
The examiner reserves comment on the allowability of Claims 27-43 pending resolution of the rejections under 35 USC 112(a) and 112(b) raised above. The examiner has no art to cite against the claims at this time.
Relevant Subject Matter
The following art is considered relevant:
Nguyen (CA 2 691 480)
Crooks et al. (U.S. Publication 2011/0194299 A1)
Nevers et al. (U.S. Patent 7,784,754 B2)
O’Boyle et al. (U.S. Publication 2011/0193498 A1)
Each of the art has features directed to a lighting fixture with hanger bars, mounting brackets and light fixture (as shown generally in the figures); however, the art does not disclose the specified method of installing as claimed.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,816,172 B2 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
