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
`
`ART UNIT
`2844
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/30/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`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
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 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
`
`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
`
`1). Responsive to communication(s) filed on 10/21/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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.
`
`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`
`5)
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`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
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`is/are allowed.
`
`8)
`Claim(s 1_—11Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
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`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191206
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 2
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`DETAILED ACTION
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`Continued Examination under 37 CFR 1.114
`
`A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth
`
`in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible
`
`for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been
`
`timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR
`
`1.114. Applicant's submission filed on 11/22/2019 has been entered.
`
`Status
`
`1.
`
`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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`2.
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`Claims 1—11 are currently pending in this Non—Final Office Action.
`
`Double Patenting
`
`The non—statutory 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
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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
`
`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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`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 3
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`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,
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`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
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`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
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`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. A terminal
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`disclaimer must be in compliance with 37 CFR 1.321(b). The USPTO Internet website contains
`
`terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents—forms.
`
`Claims 1-11 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over 1-17 of U.S. Patent No. 9,814,115.
`
`Although not every limitation of the claims at issue are identical verbatim, they are not
`
`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.
`
`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
`
`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
`
`device flowing in the light source, and that modulates the illumination light of the light source,
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 4
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`the illumination light communication apparatus comprising: a switch that is connected in series
`
`to the light source, a signal generator circuit that generates a binary communication signal which
`
`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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`suppresses the current flowing in the light source so that a current setting value corresponding
`
`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.
`
`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
`
`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
`
`claimed twice, utilizing slightly marginal obvious claim language.
`
`Claim Rejections - 35 USC § 103
`
`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:
`
`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 of this title, 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
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`negated by the manner in which the invention was made.
`
`
`Note: 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
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
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`Page 5
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`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.
`
`Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Haruyama [US
`
`2015 0016825 in view of Nakamura US 2018 0063918 in further view of Cuzner US
`
`2014(0334210].
`
`Regarding claims 1, 10 and 11
`
`Haruyama discloses in an illumination light communication apparatus to be connected to
`
`a light source that emits illumination light due to a current from a constant current generation
`
`device flowing in the light source, and that modulates the illumination light of the light source,
`
`the illumination light communication apparatus (illumination light communication apparatus and
`
`constant current generation device and the light source, Abstract and Figs. 1 & 8, [0025] constant
`
`current source is power source) comprising:
`
`0
`
`a switch that is connected in series to the light source (Fig. 1 switch Q1 and
`
`[0029]);
`
`o
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`a signal generator circuit that generates a binary communication signal which
`
`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;
`
`o
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`a current suppression circuit that is connected in series to the light source and
`
`the switch, and that suppresses the current flowing in the light source ([0028—
`
`0029] impedance element 10 suppresses the current, connected in series with
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`light and [0085—0086]); and
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`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 6
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`o
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`a controller (Control circuit 11 via the communication signal controlling switches,
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`[0022] and [0029—0034]).
`
`Although all of the limitations are taught by Haruyama, it may not explicitly specify the
`
`intended result of the current suppression circuit suppresses current so that a current setting
`
`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
`
`source, and [0027] and [0039—0040]).
`
`Thus, it would have been obvious to one having ordinary skill in the art, at the time of the
`
`invention, to include a current setting value corresponding to the reference value not being
`
`exceeded as taught by Nakamura. Such combination would have been obvious since the claimed
`
`invention is merely a combination of old elements and in the combination each element merely
`
`would have performed the same function as it did separately.
`
`Although Haruyama discloses a controller that is capable of changing the ON duty ratio,
`
`it may not explicitly specify, yet Cuzner more explicitly recites:
`
`a controller that is connected to the signal generator circuit and command the signal
`
`generator circuit to change an ON duty ratio of the switch through the communication signal
`
`([0007] The duty cycle calculation unit 130 coupled to the controller calculates the duty cycles
`
`which are adjusted to control the signal pulses that are provided to the current source rectifier
`
`to control the switches ofthe current source rectifier, [0025—0027] controller linearly modulates
`
`the duty ratio/cycles linearly and [0030] controller is adapted to output control signals to turn on
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 7
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`one or more of the electrical switches based on the calculated duty cycles. The controller ensures
`
`transitioning nearly sinusoidal or linear input current and linear input—to—output voltage control
`
`during discontinuous or continuous conduction modes of operation and [0032—0035] switching
`
`between the calculations for the on—time of active switches, two PWM—controlled switches, and
`
`controller (301) has a duty cycle calculation unit for calculating duty cycles for a current source
`
`rectifier, and a set of drivers which is coupled with the controller’s calculation unit to output
`
`electrical control signals to turn on electrical switches based on the calculated duty cycles, where
`
`time periods at which the electrical switches are turned on are determined by the calculated duty
`
`cycles, level of a voltage output by the current control unit may be adjusted in response to control
`
`of the duty ratio).
`
`Thus,
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`it would have been obvious to incorporate coupling the signal generator to the
`
`controller since the controller controls the switching signals for linearly and gradually controlling
`
`the signal generator of Cuzner into the controller of Haruyama for controlling duty cycles and
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`change the ON duty ratio of the switch ”to transition between continuous and discontinuous
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`modes of operation" (Cuzner [0030]).
`
`Regarding Claim 2, the illumination light communication apparatus according to Claim 1,
`
`comprising a multiple—use control circuit that has functions of both the signal generator circuit
`
`and the current suppression circuit (MPEP 2144.04 directed to various common practices which
`
`has been considered routine expedients that support an obviousness rationale, such as making
`
`integral, making separable, duplication and resizing, or rearrangement of components for the
`
`benefit of optimizing the system design for cost—savings benefits, thus combining the signal
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 8
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`generator and current suppression function into a combined circuit would have been obvious
`
`under MPEP 2144.04 rearrangement of parts and making integral).
`
`Regarding Claim 3, the illumination light communication apparatus according to Claim 1,
`
`wherein the current suppression circuit suppresses the current flowing in the light source using
`
`a transistor ([0086] suppress the occurrence of undesired blink of light also known as flickering).
`
`Regarding Claim 4, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set during switching between a first modulation mode and a
`
`second modulation mode having a constant average current flowing in the light source but
`
`different ON duty ratios, and the controller linearly and gradually_changes the ON duty ratio of
`
`the switch during the transition period (Nakamura [0040—47] control circuit 61 outputs the
`
`control signal Vc, thereby preventing a sudden increase in the load current |L through the light
`
`source module 11. The second control circuit 61 sets the signal voltage of the control signal Vc
`
`to 0, thereby completing a transition from the first time period T1 to the second time period T2,
`
`first transition).
`
`Regarding Claim 5, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set during switching of a lighting state of the light source from a
`
`DC lighting mode to a modulation mode, and the controller linearly and gradually_decreases the
`
`ON duty ratio of the switch during the transition period (Nakamura [0040—47], transition time
`
`Ttr).
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 9
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`Regarding Claim 6, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set during switching of a lighting state of the light source from a
`
`modulation mode to a DC lighting mode, and the controller linearly and gradually_increases the
`
`ON duty ratio of the switch during the transition period (Nakamura [0040—47], transition time
`
`Ttr).
`
`Regarding Claim 7, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set after the constant current generation device is started up and
`
`immediately before the modulation mode is started, and the controller linearly and gradually
`
`decreases the ON duty ratio of the switch during the transition period (Nakamura [0040—47],
`
`transition time Ttr).
`
`Regarding Claim 8, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set immediately after the constant current generation device is
`
`stopped and the modulation mode is completed, and the controller linearly and gradually
`
`increases the ON duty ratio of the switch during the transition period (Nakamura [0040—47],
`
`transition time Ttr).
`
`Regarding Claim 9, the illumination light communication apparatus according to Claim 1,
`
`wherein the transition period is set during switching between a first light adjustment state and a
`
`second light adjustment state having different values for the average current flowing in the light
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 10
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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).
`
`Response to Amendment and Arguments
`
`Applicant’s arguments have been considered but have been found unpersuasive. Cuzner
`
`discloses the amended limitation as recited in the office action above, specifically, Cuzner
`
`discloses a controller that is connected to the signal generator circuit and command the signal
`
`generator circuit to change an ON duty ratio of the switch through the communication signal
`
`([0007] The duty cycle calculation unit 130 coupled to the controller calculates the duty cycles
`
`which are adjusted to control the signal pulses that are provided to the current source rectifier
`
`to control the switches ofthe current source rectifier, [0025—0027] controller linearly modulates
`
`the duty ratio/cycles linearly and [0030] controller is adapted to output control signals to turn on
`
`one or more of the electrical switches based on the calculated duty cycles. The controller ensures
`
`transitioning nearly sinusoidal or linear input current and linear input—to—output voltage control
`
`during discontinuous or continuous conduction modes of operation and [0032—0035] switching
`
`between the calculations for the on—time of active switches, two PWM—controlled switches, and
`
`controller (301) has a duty cycle calculation unit for calculating duty cycles for a current source
`
`rectifier, and a set of drivers which is coupled with the controller’s calculation unit to output
`
`electrical control signals to turn on electrical switches based on the calculated duty cycles, where
`
`time periods at which the electrical switches are turned on are determined by the calculated duty
`
`cycles, level of a voltage output by the current control unit may be adjusted in response to control
`
`of the duty ratio).
`
`

`

`Application/Control Number: 15/942,934
`Art Unit: 2844
`
`Page 11
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure can be found in the PTO—892 Notice of References Cited.
`
`Wonhong et al. US Pub. No. 2018/0050631 ([0053] current switching controller 110 may
`
`generate a current with the predetermined level by adjusting the duty cycle either by increasing
`
`or reducing the duty ratio of the PWM signal so as to raise/lower an output voltage).
`
`Any inquiry concerning this communication or earlier communications from the Examiner
`
`should be directed to Laura Yesildag whose telephone number is
`
`(571)270—5066.
`
`For
`
`transmitting interview agendas,
`
`the Examiner’s direct
`
`fax number
`
`is
`
`(571) 270—6066.
`
`Communications via email are at the discretion of the Applicant by filing an Authorization for
`
`Internet Communication. The Examiner's work schedule and general availability during the week
`
`is 8:00 AM — 4:30 PM.
`
`If attempts to reach the Examiner are unsuccessful and immediate
`
`assistance is required, the Examiner’s Supervisor, Alexander Taningo, can be reached at (571)
`
`272—8048.
`
`For more information about the PAIR system, see http://pair—direct.uspto.gov. Should you
`
`have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC)
`
`at 1—866—217—9197(toll—free).
`
`/Laww YWLag/
`
`Patent Examiner, Art Unit 2844
`
`/JIMMY T VU/
`
`Primary Examiner, Art Unit 2844
`
`