UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/942,934
`
`04/02/2018
`
`Teruhito TAKEDA
`
`YKIPP0102US
`
`7830
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`YESILDAG LAURA G
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`ART UNIT
`2844
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`08/22/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`15/942,934
`Examiner
`LAU RA YESILDAG
`
`Applicant(s)
`TAKEDA et al.
`Art Unit
`2844
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 8/7/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—11 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:l Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190814
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`In the event the determination of the status of the
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`application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre— AIA 35 U.S.C. 102 and
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`103) is incorrect, any correction of the statutory basis for the rejection will not be considered a
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`new ground of rejection if the prior art relied upon, and the rationale supporting the rejection,
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`would be the same under either status.
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`Double Patenting
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`The non—statutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper extension of the ”right to exclude" granted by a patent and to prevent possible
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`harassment by multiple assignees.
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`A non—statutory obvious—type double patenting rejection is appropriate where the
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`conflicting claims are not identical, but at least one examined application claim is not patentably
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`distinct from the reference claim(s) because the examined application claim is either anticipated
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`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428,
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`46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993);
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`In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214
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`USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington,
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`418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 3
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be
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`used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`examined application, or claims an invention made as a result of activities undertaken within the
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`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
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`under the first inventor to file provisions of the AIA as explained in MPEP § 2159. A terminal
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`disclaimer must be in compliance with 37 CFR 1.321(b). The USPTO Internet website contains
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`terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents—forms.
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`Claims 1-11 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over 1-17 of U.S. Patent No. 9,814,115.
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`Although not every limitation of the claims at issue are identical verbatim, they are not
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`patentably distinct from each other because claims 1—11 of the instant application recite
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`substantially similar limitations of claims 1—17 of U.S. Patent '115.
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`Claims 1—17 of the '115 Patent recites substantially similar limitations of claims 1—11 ofthe
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`instant application. Claims 1—1lofthe instant application is anticipated and/or obvious by Claims
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`1—17 of the ’115 patent regarding an illumination light communication apparatus to be connected
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`to a light source that emits illumination light due to a current from a constant current generation
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`device flowing in the light source, and that modulates the illumination light of the light source,
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`the illumination light communication apparatus comprising: a switch that is connected in series
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`to the light source, a signal generator circuit that generates a binary communication signal which
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`controls ON and OFF states of the switch to modulate the illumination light and; a current
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`suppression circuit that is connected in series to the light source and the switch, and that
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 4
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`suppresses the current flowing in the light source so that a current setting value corresponding
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`to a reference value is not exceeded and a controller that can change an ON duty ratio of the
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`switch through the communication signal, wherein the controller changes the ON duty ratio of
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`the switch during a transition period in which a current flowing in the current suppression circuit
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`changes, in combination with other limitations.
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`Both applications recite substantially similar language equivalent and/or obvious variants
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`of each other regarding the appliance features of instant application. It would have been obvious
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`to one of ordinary skill in the art at the time the invention was made to recognize the conflicting
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`claims are not patentably distinct from each other since the substantially similar concept is being
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`claimed twice, utilizing slightly marginal obvious claim language.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
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`invention is not identically disclosed as set forth in section 102 of this title, if the differences
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`between the claimed invention and the prior art are such that the claimed invention as a whole
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`would have been obvious before the effective filing date of the claimed invention to a person
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`having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
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`negated by the manner in which the invention was made.
`
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`Note: In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Haruyama (US
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`2015 0016825 in view of Nakamura US 2018 0063918 in further view of Cuzner US
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`2014(0334210j.
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Regarding claims 1, 10 and 11
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`Page 5
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`Haruyama discloses in an illumination light communication apparatus to be connected to
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`a light source that emits illumination light due to a current from a constant current generation
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`device flowing in the light source, and that modulates the illumination light of the light source,
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`the illumination light communication apparatus (illumination light communication apparatus and
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`constant current generation device and the light source, Abstract and Figs. 1 & 8, [0025] constant
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`current source is power source) comprising:
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`0
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`a switch that is connected in series to the light source (Fig. 1 switch Q1 and
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`[0029]);
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`o
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`a signal generator circuit that generates a binary communication signal which
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`controls ON and OFF states of the switch to modulate the illumination light
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`([0004] signal generation circuit, [0033—0034 and [0042] high frequency driving
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`circuit 13 controls the switch Q1 by generating signal for turning it on and off
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`communication signal is a binary signal and [0044]) and;
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`o
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`a current suppression circuit that is connected in series to the light source and
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`the switch, and that suppresses the current flowing in the light source ([0028—
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`0029] impedance element 10 suppresses the current, connected in series with
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`light and [0085—0086]); and
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`o
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`a controller that can change an ON duty ratio of the switch through the
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`communication signal (Control circuit 11 via the communication signal,
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`[0022]
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`and [0029-0034]).
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 6
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`Although all of the limitations are taught by Haruyama, it may not explicitly specify the
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`intended result of the current suppression circuit suppresses current so that a current setting
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`value corresponding to the reference value is not exceeded.
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`Nevertheless, Nakamura teaches the feature of suppressing current so that a current
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`setting value corresponding to the reference value is not exceeded ([0005] decreasing
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`withstand current requisite for a switch device and suppressing an over—current through a light
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`source, and [0027] and [0039—0040]).
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`Thus, it would have been obvious to one having ordinary skill in the art, at the time of the
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`invention, to include a current setting value corresponding to the reference value not being
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`exceeded as taught by Nakamura. Such combination would have been obvious since the claimed
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`invention is merely a combination of old elements and in the combination each element merely
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`would have performed the same function as it did separately.
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`Although Haruyama discloses a controller that is capable of changing the ON duty ratio,
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`it may not explicitly specify, yet Cuzner more explicitly recites a controller:
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`wherein the controller linearly and gradually changes the ON duty ratio of the switch
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`during a transition period in which a current flowing in the current suppression circuit changes
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`(Abstract and [0025—0027] controller linearly modulates the duty ratio/cycles linearly and [0030]
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`controller is adapted to output control signals to turn on one or more of the electrical switches
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`in the current source rectifier based on the calculated duty cycles. The controller ensures
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`transitioning nearly sinusoidal or linear input current and linear input—to—output voltage control
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`during discontinuous or continuous conduction modes of operation).
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 7
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`Thus,
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`it would have been obvious to incorporate the linear and gradual controlling
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`techniques of Cuzner into the controller of Haruyama for controlling duty cycles linearly ”to
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`transition between continuous and discontinuous modes of operation" (Cuzner [0030]).
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`Regarding Claim 2, the illumination light communication apparatus according to Claim 1,
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`comprising a multiple—use control circuit that has functions of both the signal generator circuit
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`and the current suppression circuit (MPEP 2144.04 directed to various common practices which
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`has been considered routine expedients that support an obviousness rationale, such as making
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`integral, making separable, duplication and resizing, or rearrangement of components for the
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`benefit of optimizing the system design for cost—savings benefits, thus combining the signal
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`generator and current suppression function into a combined circuit would have been obvious
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`under MPEP 2144.04 rearrangement of parts and making integral).
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`Regarding Claim 3, the illumination light communication apparatus according to Claim 1,
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`wherein the current suppression circuit suppresses the current flowing in the light source using
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`a transistor ([0086] suppress the occurrence of undesired blink of light also known as flickering).
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`Regarding Claim 4, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set during switching between a first modulation mode and a
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`second modulation mode having a constant average current flowing in the light source but
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`different ON duty ratios, and the controller linearly and gradually changes the ON duty ratio of
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`the switch during the transition period (Nakamura [0040—47] control circuit 61 outputs the
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 8
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`control signal Vc, thereby preventing a sudden increase in the load current |L through the light
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`source module 11. The second control circuit 61 sets the signal voltage of the control signal Vc
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`to 0, thereby completing a transition from the first time period T1 to the second time period T2,
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`first transition).
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`Regarding Claim 5, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set during switching of a lighting state of the light source from a
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`DC lighting mode to a modulation mode, and the controller linearly and gradually decreases the
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`ON duty ratio of the switch during the transition period (Nakamura [0040—47], transition time
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`Ttr).
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`Regarding Claim 6, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set during switching of a lighting state ofthe light source from a
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`modulation mode to a DC lighting mode, and the controller linearly and gradually increases the
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`ON duty ratio of the switch during the transition period (Nakamura [0040—47], transition time
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`Ttr).
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`Regarding Claim 7, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set after the constant current generation device is started up and
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`immediately before the modulation mode is started, and the controller linearly and gradually
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`decreases the ON duty ratio of the switch during the transition period (Nakamura [0040—47],
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`transition time Ttr).
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 9
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`Regarding Claim 8, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set immediately after the constant current generation device is
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`stopped and the modulation mode is completed, and the controller linearly and gradually
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`increases the ON duty ratio of the switch during the transition period (Nakamura [0040—47],
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`transition time Ttr).
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`Regarding Claim 9, the illumination light communication apparatus according to Claim 1,
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`wherein the transition period is set during switching between a first light adjustment state and a
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`second light adjustment state having different values for the average current flowing in the light
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`source, and the controller first increases the ON duty ratio of the switch and then decreases the
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`ON duty ratio during the transition period (Nakamura [0040—47] and transition time Ttr).
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`Response to Amendment and Arguments
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`Applicant’s arguments have been considered but have been found unpersuasive in view
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`of Applicant’s amendment which necessitated new prior art. Cuzner, in combination with the
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`previous prior art, discloses gradually and linearly changing the ON duty ratio ofthe switch as
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`recited in the office action above.
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 10
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`Conclusion
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`Applicant's amendment necessitate new ground(s) of rejection presented in this Office
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`Action. THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant
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`is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
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`from the mailing date ofthis action. In the event a first reply is filed within TWO MONTHS ofthe
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`mailing date of this final action and the advisory action is not mailed until after the end of the
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`THREE—MONTH shortened statutory period, then the shortened statutory period will expire on
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`the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action. In no event, however, will the statutory
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`period for reply expire later than SIX MONTHS from the date of this final action
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure can be found in the PTO—892 Notice of References Cited.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to LAURA YESILDAG whose telephone number is (571)270—5066. For sending
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`applicant—initiated interview agendas, the Examiner’s direct fax number is (571) 270—6066.
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`Communications via Internet email are at
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`the discretion of the Applicant by filing an
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`Authorization for Internet Communication. Without filing a formal written authorization by
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`Applicant in place, the USPTO will not respond via email to any email correspondence which
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`contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. For
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`more information about
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`filing Authorization for
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`Internet Communication, please see
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`

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`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 11
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`https://www.uspto.gov/sites/default/files/documents/sb0439.pdf.
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`The Examiner's work
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`schedule and general availability is typically 8:00 AM — 4:30 PM.
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`If attempts to reach the Examiner by telephone are unsuccessful,
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`the Examiner’s
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`Supervisor, DOUGLAS W. OWENS can be reached at (571) 272—1662.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`
`//f/
`Examiner, Art Unit 2844
`
`/JIMMYT VU/
`
`Primary Examiner, Art Unit 2844
`
`