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 .
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. If a satisfactory title is not supplied by the applicant, the examiner may, at the time of allowance, change the title by an examiner’s amendment, per MPEP 606.01. Any changes to claim scope at time of allowance may also result in an additional title amendment.
At this time, the following title is suggested: Metal Flashlight Assembly with Fastened Body Portions.
Abstract
Applicant is reminded of the proper content, language and format of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or use thereof. If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
Where applicable, the abstract should include the following:
(1) if a machine or apparatus, its organization and operation;
(2) if an article, its method of making;
(3) if a chemical compound, its identity and use;
(4) if a mixture, its ingredients;
(5) if a process, the steps.
Extensive mechanical and design details of apparatus should not be given.
The abstract of the disclosure is objected to because it uses phrases which could be implied, and fails to concisely disclose the instant invention. Correction is required. See MPEP § 608.01(b).
The Examiner respectfully suggests amending the originally filed abstract as indicated below.
ABSTRACT. A flashlight assembly includes a housing having first and second body portions secured together by a plurality of fasteners, a light source, a rechargeable battery, a switch assembly electrically coupled to the light source and battery, and internal sealed subframe. The housing having an approximately 5:3 between maximum width and height dimensions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-6 of U.S. Patent No. 12,435,867 (SHARRAH) in view of MAYHEW (U.S. 5,103,383).
Regarding independent claim 1, SHARRAH teaches in Patented Claim 1 a lighting device (see preamble), comprising: a housing (see line 4) having a substantially non-circular cross-sectional shape (see lines 4 and 5); and a light source (see line 2).
Patented Claim 1 of SHARRA fails to teach the housing including a first body and a second body that are secured together with a plurality of fasteners extending through a plurality of fastener holes in the first body and into a plurality of fastener holes in the second body, the first body and the second body each comprising metal, or a switch assembly and the light source are electrically coupled together.
However, MAYHEW discloses a lighting device 10 (as seen in Figure 1) having a housing 11 (as seen in Figure 1) including first and second body portions 16/18 (as seen in Figure 1) secured together with a plurality of fasteners 22 (as seen in Figure 1) extending through holes 20 (as seen in Figure 1) in the first body portion 16 and into holes in the second body portions 18 (see lines 41-43 of column 3), the body portions 16/18 each comprising metal (see lines 43-45 of column 3), a light source 38 (as seen in Figure 2); and a switch 14 (as seen in Figure 1) electrically coupled to the light source 38 (as seen in Figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of MAYHEW with the patented lighting device of SHARRAH (as defined in Patented Claim 1), according to the known methods taught by MAYHEW, to yield the predictable result of providing the invention of SHARRAH with a sturdy weather resistant housing, and means to control activation of the light source (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397).
Regarding dependent claim 2, SHARRAH further teaches in Patented Claim 1 the housing has a maximum height and a maximum width (see lines 5 and 6), the maximum height and the maximum width having dimensions in approximately a 5:3 ratio (see lines 6 and 8).
Regarding dependent claim 3, SHARRAH further teaches in Patented Claim 2 a power source (see line 3 of Patented Claim 1) that is electrically coupled to the light source (see lines 4-5 of Patented Claim 2).
Patented Claim 2 of SHARRA fails to teach the power source being configured as a rechargeable battery that is configured to be connected to an exterior power source through an exterior opening.
However, MAYHEW further discloses a power source 26 (as seen in Figure 2) that is electrically coupled to the light source 38 (as seen in Figure 2), the power source 26 being a rechargeable battery 26 (see lines 60 and 61 of column 3) connected to an exterior power source 56 (as seen in Figure 2) through an exterior opening 50.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of MAYHEW with the patented lighting device of SHARRAH (as defined in Patented Claim 1), according to the known methods taught by MAYHEW, to yield the predictable result of providing the invention of SHARRAH (as previously modified by MAYHEW) with a rechargeable battery source capable of being connected to an external power source for recharging (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397).
Regarding dependent claim 4, SHARRAH further teaches in Patented Claim 4 a subframe enclosed within the housing (see line 3), the subframe having an interior volume (see line 3) and a sealing surface that surrounds an opening in the subframe (lines 3 and 4).
Regarding dependent claim 5, SHARRAH further teaches in Patented Claim 5 the opening has a substantially non-circular shape (see lines 1 and 2).
Regarding dependent claim 6, SHARRAH further teaches in Patented Claim 6 the opening has a substantially rectangular shape (see lines 1 and 2).
Regarding dependent claim 8, SHARRAH further teaches in Patented Claim 7 the subframe comprises plastic material (see lines 1 and 2).
Regarding dependent claim 9, Patented Claim 1 of SHARRAH fails to teach, or even suggest when combined with MAYHEW, the first body and the second body each comprise aluminum.
However, the Examiner takes Official Notice of the use and advantages of aluminum, specifically as a metal material for manufacturing housings, are old and well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to manufacture the housing of the patented device of SHARRAH of aluminum, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). One would have been motivated to achieve the predictable result of forming the housing of SHARRAH (as previously modified by MAYHEW) of a relatively cheap and easy to shape material having excellent durability, weather resistant characteristics, and high heat conductivity.
Regarding dependent claim 10, Patented Claim 1 of SHARRAH fails to teach the plurality of fastener holes are countersunk so that a head of each fastener of the plurality of fasteners is nested within the first body.
However, MAYHEW further discloses the plurality of fastener holes 20 are countersunk (as seen in Figure 1) so that a head of each fastener 22 is nested within the first body 16 (as seen in Figure 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the nested fastener arrangement of MAYHEW with the patented lighting device of SHARRAH (as defined in Patented Claim 1), according to the known methods taught by MAYHEW, to yield the predictable result of providing the invention of SHARRAH (as previously modified by MAYHEW) with a smoother profile devoid of any projecting fastener heads (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397).
Regarding independent claim 11, SHARRAH teaches in Patented Claim 1 a lighting device (see preamble), comprising: a housing (see line 4) having a substantially non-circular cross-sectional shape (see lines 4 and 5), wherein the housing has a maximum height and a maximum width (see lines 5 and 6), the maximum height and the maximum width having dimensions in approximately a 5:3 ratio (see lines 6-8); and a light source (see line 2).
Patented Claim 1 of SHARRA fails to teach the housing including a first body and a second body that are secured together with a plurality of fasteners extending through a plurality of fastener holes in the first body and into a plurality of fastener holes in the second body, the first body and the second body each comprising metal, or a switch assembly and the light source are electrically coupled together.
However, MAYHEW discloses a lighting device 10 (as seen in Figure 1) having a housing 11 (as seen in Figure 1) including first and second body portions 16/18 (as seen in Figure 1) secured together with a plurality of fasteners 22 (as seen in Figure 1) extending through holes 20 (as seen in Figure 1) in the first body portion 16 and into holes in the second body portions 18 (see lines 41-43 of column 3), the body portions 16/18 each comprising metal (see lines 43-45 of column 3), a light source 38 (as seen in Figure 2); and a switch 14 (as seen in Figure 1) electrically coupled to the light source 38 (as seen in Figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of MAYHEW with the patented lighting device of SHARRAH (as defined in Patented Claim 1), according to the known methods taught by MAYHEW, to yield the predictable result of providing the invention of SHARRAH with a sturdy weather resistant housing, and means to control activation of the light source (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397).
Regarding dependent claim 12, SHARRAH further teaches in Patented Claim 4 a power source (see line 3 of Patented Claim 1); and a subframe enclosed within the housing (see line 3 of Patented Claim 4), the subframe having an interior volume (see line 3 of Patented Claim 4) and a sealing surface that surrounds an opening in the subframe (lines 3 and 4 of Patented Claim 4), wherein the power source is configured to be received within the interior volume of the subframe (lines 4 and 5 of Patented Claim 4).
Patented Claim 4 of SHARRA fails to explicitly teach the power source electrically coupled to the light source; however, one of ordinary skill in the art at the effective filing date of the instant application, would have readily recognized such coupling as required for operation of the patented device, as taught by MAYHEW.
Regarding dependent claim 5, Patented Claim 1 of SHARRAH fails to teach, or even suggest when combined with MAYHEW, at least one of the first body and the second body comprises aluminum, and the subframe comprises plastic material.
However, the Examiner takes Official Notice of the use and advantages of aluminum and plastic materials, specifically as a material for manufacturing housings and sub-housings, are old and well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to manufacture the housing of the patented device of SHARRAH of aluminum, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). One would have been motivated to achieve the predictable result of forming the housing of SHARRAH (as previously modified by MAYHEW) of a relatively cheap and easy to shape material having excellent durability, weather resistant characteristics, and high heat conductivity.
It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to manufacture the subframe of the patented device of SHARRAH of a plastic material, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). One would have been motivated to achieve the predictable result of forming the subframe of SHARRAH (as previously modified by MAYHEW) of a relatively cheap and easy to shape material having excellent durability, and electrically insulating.
Claim Rejections Based on Prior Art
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 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.
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.
Claims 1, 3 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MAYHEW (U.S. Pat. 5,103,383).
Regarding independent claim 1, MAYHEW discloses a lighting device 10 (as seen in Figure 1) including a housing 11 (as seen in Figure 1) including a first body 16 (as seen in Figure 1) and a second body 18 (as seen in Figure 1) that are secured together with a plurality of fasteners 22 (as seen in Figure 1) extending through a plurality of fastener holes 20 (as seen in Figure 1) in the first body 16 (as seen in Figure 1) and into a plurality of fastener holes in the second body 18 (see lines 41-43 of column 3), the first body 16 and the second body 18 each comprising metal (see lines 43-45 of column 3), the housing 11 having a substantially non-circular cross-sectional shape (see lines 2 and 3 of column 3, as seen in Figure 1); a light source 38 (as seen in Figure 2); and a switch assembly 14 (as seen in Figure 1), wherein the switch assembly 14 and the light source 38 are electrically coupled together (as seen in Figure 2).
Regarding dependent claim 3, MAYHEW further discloses a power source 26 (as seen in Figure 1) that is electrically coupled to the light source 38 (as seen in Figure 2), the power source 26 being configured as a rechargeable battery 26 (see lines 60 and 61 of column 3) that is configured to be connected to an exterior power source 56 (as seen in Figure 2) through an exterior opening 50 (as seen in Figure 2).
Regarding dependent claim 10, MAYHEW further discloses the plurality of fastener holes 20 are countersunk (as seen in Figure 1) so that a head of each fastener 22 of the plurality of fasteners 22 is nested within the first body 16 (as seen in Figure 1).
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over MAYHEW (U.S. Pat. 5,103,383).
MAYHEW discloses all the limitations of the claims (as previously detailed), except the first body 16 and the second body 18 each comprise aluminum.
However, the Examiner takes Official Notice of the use and advantages of aluminum, specifically as a metal material for manufacturing housings, are old and well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to manufacture the first and second bodies 16/18 of the housing 11 of MAYHEW of aluminum, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). One would have been motivated to achieve the predictable result of forming the bodies 16/18 of the housing 11 of MAYHEW of a relatively cheap and easy to shape material having excellent durability, weather resistant characteristics, and high heat conductivity.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Carlini (U.S. Pat. 3,793,517), Penney et al. (U.S. Pat. 4,345,304), Kirkley et al. (U.S. Pat. 4,451,871), Lindner (U.S. Pat. 4,482,941), Chen (U.S. Pat. 4,590,543), Laidman (U.S. Pat. 6,486,797), Clemente at al. (U.S. Pat. 6,851,827), Workman et al. (U.S. Pat. 9,388,953), Ma et al. (U.S. Pat. App. Pub. 2017/0227202), Sharrah (U.S. Pat. 11,209,152), and Bellis et al. (U.S. Pat. 12,117,146) disclose lighting devices including a housing with a non-circular cross-section and having at least first and second portions coupled together by fasteners, a light source, a battery, and a switch electrically coupled to the battery and power source. Some further disclose the housings being made of metallic materials, and the battery being rechargeable.
Allowable Subject Matter
Independent claim 11 has been rejected under the judicially created doctrine of nonstatutory double patenting (se previous section 20). The applicant is advised that, since no rejection has been presented against the independent claim over Prior Art, a timely filed terminal disclaimer, in compliance with 37 CFR 1.321(c) or 1.321(d) (see previous section 8), would place 11-13 claims in condition for allowance.
Dependent claims 2 and 4-8 have been rejected under the judicially created doctrine of nonstatutory double patenting (se previous sections 10-17). The applicant is advised that, since no rejection has been presented against claims 2 and 4-8 over Prior Art, such dependent claims would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) (see previous section 8) is filed.
Independent claim 11 has been rejected under the judicially created doctrine of nonstatutory double patenting (se previous section 20). The applicant is advised that, since no rejection has been presented against the independent claim over Prior Art, a timely filed terminal disclaimer, in compliance with 37 CFR 1.321(c) or 1.321(d) (see previous section 8), would place 11-13 claims in condition for allowance.
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Applicant teaches a lighting device including a housing defined by first and second body portions secured together with a plurality of fasteners extending holes in the first body portion and into holes in the second body portion; a light source; a switch assembly electrically coupled to the light source; and a subframe enclosed within the housing and defining an interior volume. The body portions include metal, with the housing having a substantially non-circular cross-sectional shape. The subframe includes an opening facing an interior surface of one of the first and second body portions, and a sealing surface surrounding the opening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISMAEL NEGRON whose telephone number is (571)272-2376. The examiner can normally be reached on Monday - Friday from 10:00 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk Lee, can be reached at telephone number 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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/ISMAEL NEGRON/Primary Examiner
Art Unit 2875
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