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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
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 8-9 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.
Claims 8-9 recite the limitation "the heat sink". There is insufficient antecedent basis for this limitation in the claim.
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 1-8, 10, 12-17 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,226,087 in view of O’Brien (U.S. PG Publication No. 2015/0198324).
Instant Application 19329502
Patent 11,226,087
Reasoning for Double Patenting
1
1
Broadly claiming same invention In view of O’Brien teaching first and second connectors 42
2
1
In view of O’Brien teaching first and second connectors 42
3
3
Both teaching rotation of the base of LED module or LED light engine
4
2
Both teach pressing the end of LED module/engine to the heat sink or connector
5
2
Both teach pressing the end of LED module/engine to the heat sink or connector
6
2
Both teach pressing the end of LED module/engine to the heat sink or connector
7
2
Both teach pressing the end of LED module/engine to the heat sink or connector
8
3
Both teaching rotation of the base of LED module or LED light engine
10
3
Both teaching rotation of the base of LED module or LED light engine where the electrical connector would in turn rotate.
12
1
Broadly claiming same invention In view of O’Brien teaching first and second connectors 42
13
1
In view of O’Brien teaching first and second connectors 42
14
3
Both teach pressing the end of LED module/engine to the heat sink or connector
15
1,3
In view of O’Brien teaching first and second connectors 42 where the issued Claim 3 recites urging the LED module into a connected state.
16
1,3
The term urging the module in electrical connected state is equivalent to issued claim 3.
17
1,3
Recites the same rotation manner of the LED module with respect to the base.
19
1
Claim 1 In view of O’Brien teaching first and second connectors 42
20
3
Both teaching rotation of the base of LED module or LED light engine
21
3
Both teach pressing the end of LED module/engine to the heat sink or connector
Allowable Subject Matter
Claims 1-8, 10, 12-17 and 19-21 would be allowable with a timely filed terminal disclaimer obviating the non-statutory double patenting rejection.
Regarding the sole independent Claims 1, 12 and 19, applicant teaches a ceiling light fixture with removable LED module having a housing with aperture with a heat sink within housing with thermal interface. The LED module removably inserted into the housing aperture along an axis. The LED module having a base with two ends made from high thermal conductive material that is coupled to the interface of the heat sink where the module is removably connected thereto. The interfaces are pressed together when in the connected state and module being turned in order to be connected and disconnected.
Mandy (U.S. Pat. 8,092,035) discloses a ceiling light fixture with LED module and housing. However, the cited reference fails to individually disclose, or suggest when combined, the LED module in a connected state being urged into the aperture in a mechanical, and electrical state where first and second connectors are connected and in and a disconnected state where the LED module is dismounted where the mechanical and electrical disconnection is performed, in combination with the recited structural limitations of the claimed invention.
Claims 11 and 18 are 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.
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: Regarding Claims 9, 11 and 19, the closest art does not teach or suggest the first and or second set of electrical connectors being disposed on a ring around an interface or heat sink of the housing that is operable to rotate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 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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/ROBERT J MAY/Primary Examiner, Art Unit 2875