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 .
The preliminary amendment filed 11/24/2025 has been entered.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 4/03/2026 is/are being considered by the examiner.
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.
Claim(s) 2-3, 5-6, 8-10, 13, 15-18 and 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smyth (US 11,486,563).
Claim 2: Smyth discloses a decorative assembly for covering and decorating a light fixture on a ceiling, comprising: a decoration (11, fig. 6) having an upper end (upper end of 11, fig. 6) and a lower end (lower end of 11, fig. 6) opposite the upper end, the decoration (11) including a frame (13, fig. 6) integrally formed (connecting 11 to 13 makes it integral) with the upper end of the decoration (see figs) and having an open central portion (central opening of 13, fig. 6); and at least one adhesive strip (21, fig. 6) formed on the frame; wherein the frame (13) is configured to be releasably mounted to the ceiling (ceiling of a structure, see Col. 2 lines 8-16) via the adhesive strip (21) and configured to secure the decoration (11) to the ceiling; and the decorative assembly (111) does not comprise the light fixture (see figs) and, when assembled, no part of the decorative assembly contacts the light fixture (not contact the light source, see Col. 2 line 64 – Col. 3 line 5).
Claim 3: Smyth discloses the at least one adhesive strip (21) further includes a removable release liner (release liner, see Col. 2 lines 8-16) prior to installation.
Claim 5: Smyth discloses the at least one adhesive strip (21, fig. 7) is disposed along an upper surface of the frame (upper surface of 13, fig. 7).
Claim 6: Smyth discloses the at least one adhesive strip (21, fig. 7) includes a plurality of adhesive strips (21) disposed about a perimeter of the frame (see fig. 7).
Claim 8: Smyth discloses the open central portion (center of 13, fig. 7) is sized to allow removal and replacement of a light bulb without detaching the decoration from the ceiling (see fig. 6).
Claim 9: Smyth discloses decorative assembly for covering and decorating a light fixture on a ceiling comprising: a decoration (11, fig. 6) having an upper end (upper end of 11, fig. 6) and a lower end (lower end of 11, fig. 6) opposite the upper end,
the decoration (11) including a frame (13) integrally formed (connecting 11 to 13 makes it integral) with the decoration (11) at the upper end (see figs) and defining an open central portion (central opening of 13, fig. 6) sized to surround at least a portion of the light fixture at the lower end; and an adhesive layer (21, fig. fig. 6) disposed along an upper surface (see fig. 7) of the frame (13) and configured to secure the decoration directly to the ceiling (ceiling of a structure, see Col. 2 lines 8-16) such that the decoration is suspended from the ceiling independently of the light fixture (see figs.).
Claim 10: Smyth discloses the adhesive layer (21) further includes a removable release liner (release liner, see Col. 2 lines 8-16) prior to installation.
Claim 13: Smyth discloses adhesive layer (21, fig. 7) includes a plurality of adhesive strips (21) disposed about a perimeter of the frame (see fig. 7).
Claim 15: Smyth discloses the open central portion (center of 13, fig. 7) is sized to allow removal and replacement of a light bulb without detaching the decoration from the ceiling (see fig. 6).
Claim 16: Smyth discloses the decoration (11) is spaced from the light fixture when the frame (13) is bonded to the ceiling.
Claim 17: Smyth discloses decorative cover for a ceiling-mounted light fixture comprising: a decorative body (11, fig. 6) having an upper portion (upper end of 11, fig. 6) and a lower portion (lower end of 11, fig. 6), the upper portion (upper end of 11) defining a ceiling-engaging attachment region (13, fig. 6) and the lower portion (lower end of 11) defining an open central area (opening of 31, fig. 6) configured to surround at least a portion of the ceiling-mounted light fixture; and an adhesive (21, fig. 6) disposed at the ceiling-engaging attachment region (upper region of 13, fig. 7) and configured to secure the decorative body (11) directly to the ceiling (ceiling of a structure, see Col. 2 lines 8-16), such that the decorative body (11) is supported from the ceiling independently of the light fixture (cover and decorate an existing light source, see Col. 3 lines 22-27).
Claim 18: Smyth discloses the adhesive further (21) includes a removable release liner (release liner, see Col. 2 lines 8-16) prior to installation.
Claim 20: Smyth discloses the decoration (11) is spaced from the light fixture (cover and decorate an existing light source, see Col. 3 lines 22-27) when the frame is bonded to the ceiling (ceiling of a structure, see Col. 2 lines 8-16).
Claim 21: Smyth discloses the decorative body (11) further includes at least one alignment feature (27, fig. 7) configured to assist a user in positioning the decorative cover (11) relative the ceiling-mounted light fixture during installation.
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(s) 4, 11-12 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smyth (US 11,486,563).
Claim 4: Smyth is silent about the at least one adhesive strip is an adhesive glue strip.
Smyth discloses the claimed invention except for an adhesive glue strip. It would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the adhesive strip with an adhesive glue strip to provide another means of fastening the frame, since it has been held that simple substitution of one known element for another to obtain predictable results would be routine to one with ordinary skill in the art. (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385).
Claim 11: Smyth is silent about the adhesive is an adhesive strip (21, fig. 6).
However, Smyth is silent about the adhesive is an adhesive glue strip.
Smyth discloses the claimed invention except for an adhesive glue strip. It would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the adhesive strip with an adhesive glue strip to provide another means of fastening the frame, since it has been held that simple substitution of one known element for another to obtain predictable results would be routine to one with ordinary skill in the art. (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385).
Claim 12: Smyth teaches the adhesive layer (21, fig. 7) extends about an upper surface of the frame (upper surface of 13, fig. 7).
However, Smyth fails to teach the adhesive layer extends entirely about the upper surface of the frame.
It would have been an obvious matter of design choice to change the shape of the adhesive layer to extend entirely around the upper surface of the frame to improve fastening of the frame, since it has been held that the configuration of the adhesive layer was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 19: Smyth teaches the adhesive is an adhesive strip (21, fig. 6).
However, Smyth is silent about the adhesive is an adhesive glue strip.
Smyth discloses the claimed invention except for an adhesive glue strip. It would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the adhesive strip with an adhesive glue strip to provide another means of fastening the frame, since it has been held that simple substitution of one known element for another to obtain predictable results would be routine to one with ordinary skill in the art. (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385).
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smyth (US 11,486,563) in view of Auerbach (US 3,388,248).
Claim 7: Smyth fails to teach the frame and the decoration are molded as a single piece of polymeric material.
Auerbach teaches a frame (20, fig. 2) and a decoration (36, fig. 2) are molded as a piece of polymeric material (plastic materials … injection molding, see Col. 3 lines 26-40).
Therefore, in view of Auerbach, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to mold the frame and decoration of Smyth into a single piece of polymeric material, in order to reduce the number of working components.
Furthermore, it has been held that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Claim 14: Smyth fails to teach the frame and the decoration are molded as a single piece of polymeric material.
Auerbach teaches a frame (20, fig. 2) and a decoration (36, fig. 2) are molded as a piece of polymeric material (plastic materials … injection molding, see Col. 3 lines 26-40).
Therefore, in view of Auerbach, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to mold the frame and decoration of Smyth into a single piece of polymeric material, in order to reduce the number of working components.
Furthermore, it has been held that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hammer et al. (US 2009/0103314), Juodvalkis (US 5,128,850), Vickers (US 6,467,209), Sender (US 6,851,211) and Colette (GB 2375900) disclose a similar decorative assembly.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHENG B SONG whose telephone number is (571)272-9402. The examiner can normally be reached Monday-Friday: 9AM - 5PM.
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/ZHENG SONG/ Primary Examiner, Art Unit 2875
