DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election
In the paper received June 17, 2026, applicant elects without traverse the design shown in Group I (Figs. 1.1-1.8). Accordingly, the designs shown in Groups II-III stand withdrawn from further prosecution. 37 CFR 1.142(b).
The applicant's request to cancel Figs. 2.1-4.7 in the response dated June 17, 2026 is acknowledged. Figs. 1.1-1.8 remain in the application, and will be considered on the merits.
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed with WIPO on December 01, 2023. It is noted, however, that applicant has not filed a certified copy of the 141488 application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Objections to the Specification
The specification is objected to for the following:
The title “Stage lighting” does not correspond to the claim (stage lightings). Since 37 CFR 1.153 requires that the title must designate the particular article, and since the claim must be in formal terms to the "ornamental design for the article (specifying name) as shown, or as shown and described," the title and claim must correspond. Moreover, the claim “stage lightings” is objectionable for being directed to more than one article of manufacture. Therefore, the claim must be amended to read similar to:
--The ornamental design for stage lighting as shown and described.--
A substitute specification to the claim is required pursuant to 37 CFR 1.125 and must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Refusal - 35 U.S.C. § 112(a) and (b)
The claim is refused under 35 U.S.C. 112(a) and (b) as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling because the claim is not consistently or clearly disclosed. Specifically:
The disclosure does not provide certainty as to the exact appearance and three-dimensional configuration of the elements shown shaded below without resorting to conjecture.
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Applicant may attempt to overcome this refusal by indicating that protection is not sought for the elements shaded above by amending the reproductions to convert the elements to broken lines, thus disclaiming those surfaces. See 37 C.F.R. 1.1026 and Hague Administrative Instructions Section 403.
If applicant chooses to do so, the surface contour shading must be removed as well. An appropriate statement must be added to the specification following the figure descriptions, but prior to the claim, to clearly describe the portions of the claim that form no part thereof. For example, if applicant converts the unclaimed portions to broken lines, the following statement would be acceptable:
--The broken lines in the drawings are for the purpose of illustrating portions of the stage lighting that form no part of the claimed design.--
Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view of an amended drawing should not be labeled as “amended”. If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet, and where necessary, the remaining views must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbered of the remaining views. Each drawing sheet of reproductions submitted after the filing date of an application must be labeled in the top margin as either “REPLACEMENT SHEET” or “NEW SHEET” pursuant to 37 CFR 1.121(d). Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02). If the changes are not accepted by the Examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
Care must be exercised to avoid introduction of anything which could be construed as new matter prohibited by 35 U.S.C. 132 and 37 C.F.R. 1.121 when preparing amended reproductions.
The claim as rejected above is indefinite because it is subject to more than one interpretation. As explained in the above rejection, at least one of the interpretations is the elements are dimensional. Acting on this interpretation, the claim is also rejected under 35 U.S.C. 103 as follows. See MPEP 2143.03(I).
General Information
Absent a certified copy of the priority application, pursuant to 35 U.S.C. 384(a), the filing date of an international design application in the United States is the "effective registration date", subject to review pursuant to 35 U.S.C. 384(b). The "effective registration date" means "the date of international registration determined by the International Bureau under the treaty". See 35 U.S.C. 381(a)(5).
Claim Refusal - 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness refusals 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.
The claim is refused under 35 U.S.C. 103 as being unpatentable over the “Prolights” NPL reference by PROLIGHTS dated March 04, 2024 in view of Souvay and Hamel (D693,500; published November 12, 2013).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The “Prolights” NPL reference has an overall similar visual appearance with design characteristics that are visually similar to those of the claimed design. The overall shape is circular with parallel ribbing along the side surfaces and a flat rear surface. Attached to either side of the body is a handle.
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The claim differs from the “Prolights” NPL reference in that the front surface is flat, smooth and opaque.
Souvay and Hamel teach a light with a front surface that is flat, smooth and opaque.
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Therefore, it would have been obvious to a designer of ordinary skill not later than the effective filing date of the present claimed invention to modify the teaching of the “Prolights” NPL reference by substituting a front surface that is flat, smooth and opaque as demonstrated by Souvay and Hamel because such modification is no more than a simple substitution of one known design element for another. Moreover, such substitution of one known design element for another known design element in the same field would have been within the skill of an ordinarily skilled designer. For at least these reasons the claimed design would have no patentable distinction over the combination of references as discussed above.
Applicant may overcome this rejection by perfecting the claim for priority.
Alternatively, if applicable, the Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor. MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
Discussion of the Merits of the Case:
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or In Person Interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at brett.melliar@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. Applicants may submit replies to Office actions only by:
• Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
o https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
• Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
• Facsimile to the USPTO's Official Fax Number (571-273-8300)
• Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
The claim is refused under 35 U.S.C. 112(a) and (b) and 35 U.S.C. 103 as set forth above.
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Number Search” button.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to W. BRETT MELLIAR whose telephone number is (571) 272-6130. The examiner can normally be reached on Monday through Thursday from 7am to 5pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's Supervisor, Lakiya G Rogers, can be reached at telephone number 571-270-7145. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
/WILLIAM B MELLIAR/Examiner, Art Unit 2934
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