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 .
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 9,17,26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10,13,14 of U.S. Patent No. 12,523,368 . Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
19/417821
Claim 9:
A door assembly comprising: a door frame defining a doorway, the door frame comprising: a first jamb, a second jamb opposing the first jamb, and a header extending between the first jamb and the second jamb; a door pivotally secured to the door frame, the door having a closed position in which the door fills the doorway and an open position in which passage through the door frame is allowed; and a light fixture secured to the header, the light fixture comprising a light element having an on-state in which the light element illuminates the doorway and an off-state, the light fixture configured to switch to the on-state independently of input from a sensor.
12,523,368
Claim 10:
A door frame assembly having an interior side and an exterior side, the door frame assembly comprising: a first jamb; a second jamb; a header having a bottom surface extending between the first jamb and the second jamb; and a light fixture disposed within the header between the interior side and the exterior side of the door frame assembly, such that an outer surface of the light fixture is substantially flush with the bottom surface of the header, the light fixture configured to switch between an on-state and an off- state in response to environmental conditions.
Claim 17
A door frame assembly comprising: a first jamb; a second jamb; a header having a bottom surface extending between the first jamb and the second jamb; and a light fixture disposed within the header such that an outer surface of the light fixture is substantially flush with the bottom surface, the light fixture having an on-state in which the light fixture illuminates a doorway defined by the door frame assembly and an off-state.
Claim 14
A door assembly comprising: a door frame defining a doorway, the door frame comprising: a first jamb; a second jamb opposing the first jamb; and a header having a bottom surface extending between the first jamb and the second jamb; and a light fixture disposed within the bottom surface of the header such that an outer surface of the light fixture is substantially flush with the bottom surface, the light fixture comprising: a light element having an on-state in which the light element is configured to illuminate the doorway and an off-state;.
Claim 26
A light fixture for a door frame, the light fixture comprising: a case defining a plurality of ports, the case configured to be disposed within a bottom surface of a header of a door frame such that an outer surface of the light fixture is substantially flush with the bottom surface, the bottom surface extending between a first jamb of the door frame and a second jamb of the door frame; and a light element disposed within the case, the light element having an on-state in which the light element is configured to illuminate a doorway defined by the door frame and an off-state, the light fixture configured to switch to the on-state independently of input from a sensor.
Claim 13
A light fixture for a door frame, the light fixture comprising: a case defining a plurality of ports, the case configured to be disposed within a bottom surface of a header of a door frame such that an outer surface of the light fixture is substantially flush with the bottom surface, the bottom surface extending between a first jamb of the door frame and a second jamb of the door frame; a light element disposed within the case, the light element having an on-state in which the light element is configured to illuminate a doorway defined by the door frame and an off-state; a first sensor disposed through one port of the plurality of ports; and a second sensor disposed through another port of the plurality of ports, the first sensor or the second sensor in signal communication with the light element to switch the light element between the on-state and the off-state in response to environmental conditions.
Allowable Subject Matter
Claims 1-8 are allowed.
Claims 10-16,18-25 and 27-32 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the closest prior art of record is Bodurka (12,723,462) in view of Brychell (10,927,591). Bodurka discloses a door assembly (fig. 1) comprising: a door frame(10) defining a doorway, the door frame comprising: a first jamb(12.1), a second jamb opposing the first jamb(12.2), and a header having(12C) a bottom surface and extending between the first jamb and the second jamb (Fig. 1); a door pivotally secured to the door frame (23) and an energy transfer device (WPT)configured to wirelessly transfer energy between the door frame and the door. Bodurka does not specifically disclose; and an energy transfer device configured to wirelessly transfer energy between the door frame and the door. Brychell discloses a light fixture disposed within the header such that an outer surface of the light fixture (115) is substantially flush with the bottom surface of the header.
Although Bodurka has its earliest application 17/982,268 filed on 11/7/2022, the subject matter does not corroborate with the current Bodurka patent, filed on 02/21/2024, therefore it cannot be used to predate the earliest filing date/provisional filing of the instant invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fare (9,163,428) discloses a door with lighting on the header (figs. 1-2). Anderson et al (12,073,674) discloses an electric door system. (Abstract, Fig.1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANABEL TON whose telephone number is (571)272-2382. The examiner can normally be reached Monday -Friday 9:00pm -6:00pm (EST).
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, ABDULMAJEED AZIZ can be reached at (571)270-5046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANABEL TON/ Primary Examiner, Art Unit 2875
