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 .
Terminal Disclaimer
The terminal disclaimer filed on July 16 of 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Pat. 12,435,867 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Applicant’s filing of a Terminal Disclaimer have overcome the rejections under the judicially created doctrine of non-statutory double patenting, as detailed in sections 7-22 of the previous Office Action (mailed May 1, 2026). Therefore, the cited rejections have been withdrawn.
Response to Amendment
Applicant's amendment, filed on July 16 of 2026, has been entered. Claim 1 has been amended. No claim has been cancelled, or added. Claims 1-13 are still pending in this application, with claims 1 and being independent.
The new drawings were received on July 16 of 2026. These drawings are acceptable.
Applicant’s amendment to the specification have overcome the objections detailed in sections 2-6 of the previous Office Action (mailed May 1, 2026).
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), wherein the lighting device 10 is configured for simultaneous activation and use by hand (the configuration of element 10 enables it to be held and activated by a user hand, as evidenced by Figure 1).
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.
Allowable Subject Matter
Claims 2 and 4-8 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.
Claims 11-13 are allowed.
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. In a first embodiment, the body portions include metal, with the housing has a substantially non-circular cross-sectional shape with a 5:3 ratio of maximum height and width dimensions. In a second embodiment, the housing has a substantially non-circular cross-sectional shape, and the body portions include metal; and the device further includes a subframe enclosed within the housing and defining an interior volume, the subframe having a sealing surface surrounding an opening in the subframe.
Response to Arguments
Applicant's arguments, filed July 16 of 2026, have been fully considered but they are not persuasive.
Regarding the Examiner’s rejection of independent claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by MAYHEW (U.S. Pat. 5,103,383), the applicant argues that the cited reference fails to disclose all the features of the claimed invention, specifically the device 10 being configured for “simultaneous activation and use by hand”. The applicant further argues that the device 10 of MAYHEW is intended to be activated and then left unattended; the applicant further concludes that MAYHEW teaches away from hand-held operation as the device 10 is directed towards stationary, unattended operation.
Regarding the Examiner’s rejection of claims 3, 9 and 10, the applicant present no arguments, except stating that such claims depend directly, or indirectly, from independent claim 1, and would be allowable when/if the independent claim is allowed. Applicant’s failure to distinctly and specifically traverse such rejections, as required by 37 C.F.R. 1.111(b), has been interpreted as an admission that the individual features added by claims 3, 9 and 10 fail to further distinguish the subject matter defined by the independent claims over the Prior Art already made of record.
In response to applicant’s arguments that MAYHEW (U.S. Pat. 5,103,383) failed to disclose individually, or even suggest, the device 10 being configured for “simultaneous activation and use by hand”, the applicant is respectfully advised that while the claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 70 USPQ2d 1827 (Fed. Cir. May 13, 2004).
In this case, it is first noted that the phrase “simultaneous activation and use by hand” is not found in the originally filed description, but the applicant argues, convincingly, that disclosure of such functional feature is inherently supported by paragraphs 0044 and 0047-0051. Careful review of the cited passages in the originally filed description finds a disclosure of a hand-actuated switching structure for an illumination device capable of being hand held.
MAYHEW, as previously detailed, explicitly teaches an illumination device 10 including a housing 11 formed by first and second bodies 16/18 secured together by fasteners 22; a light source 38; and a switch assembly 14 electrically coupled to the light source 38; the switch 14 is clearly configured to be actuated by hand (as admitted by the applicant) and the housing 11 is clearly capable of being held by hand (as admitted by the applicant. Therefore, since the device 10 of MAYHEW is configured to be both held and activated at the same time (i.e., instantaneously), it was considered as reasonably anticipating a “lighting device configured for simultaneous activation and use by hand”.
Regarding applicant’s arguments that MAYHEW teaches away from the proposed modification, it is noted that the applicant is using “teaching away” in a much broader sense that it is legally accepted. For a reference to be considered to teach away from a proposed modification such reference must criticize, discredit, or otherwise discourage the proposed combination. In re Fulton, 73 USPQ2d 1141 (Fed. Cir. 2004). The applicant is further advised that disclosed examples and/or preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, even if such nonpreferred embodiments are described as somewhat inferior. See In re Susi, 169 USPQ 423 (CCPA 1971), and In re Gurley, 31 USPQ2d 1130 (Fed. Cir. 1994).
In this case, while the applicant might be correct in that the device 10 of MAYHEW is capable of being manually activated and then left in stationary, unattended operation; applicant’s attention is directed to paragraph 0048 of the originally filed disclosure, where applicant’s flashlight assembly 10 is disclose as having the same capability as MAYHEW of being manually activated and then left in stationary, unattended operation (e.g., the flashlight assembly 10 remaining in the ON state even when the user is not contacting the switch assembly 40).
Therefore, MAYHEW, as previously detailed, was considered as reasonably anticipating the claimed invention as disclosed (i.e., without any modification).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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