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`Appln. No. 14/134,884
`Docket No. LSG0347USC
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`Status of Claims
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`REMARKS / ARGUMENTS
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`Claims 35-58 are pending in the application. Claims 1-34 were previously
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`cancelled. Claims 35-50 and 54—58 stand rejected. Claims 51-53 are objected to as being
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`dependent upon a rejected claim, but would be allowable if rewritten in independent form
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`including all of the limitations of the base claim and any intervening claims. Applicant
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`makes no claim amendments in this response paper, leaving Claims 35-58 for further
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`consideration in view of the accompanying remarks.
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`Applicant respectfully submits that the rejections under 35 U.S.C. §102(b) and 35
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`U.S.C. §103(a) have been traversed, that no new matter has been entered, and that the
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`application is in condition for allowance.
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`Rejections Under 35 U.S.C. §102(b)
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`Claims 35—44, 46—50 and 54-58 stand rejected under pre-AlA 35 U.S.C. §102(b)
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`as being anticipated by Zhang (US. Patent No. 7,722,227, hereinafter Zhang).
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`Applicant overcomes this rejection for the following reasons.
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`Applicant respectfully submits that “[a] claim is anticipated only if each and every
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`element as set forth in the claim is found, either expressly or inherently described, in a
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`single prior art reference.” Verdegaal Bros. V. Union Oil Co. of California, 814 F.2d
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`628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (emphasis added). Moreover, “[t]he
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`identical invention must be shown in as complete detail as is contained in the *** claim.”
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`Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir.
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`1989). Furthermore, the single source must disclose all of the claimed elements
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`“arranged as in the claim.” Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d
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`707, 716, 223 U.S.P.Q. 1264, 1271 (Fed. Cir. 1984). Missing elements may not be
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`supplied by the knowledge of one skilled in the art or the disclosure of another reference.
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`Titanium Metals C_o_rp. v. Banner, 778 F.2d 775, 780, 227 U.S.P.Q. 773, 777 (Fed. Cir.
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`1985). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’
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`Page 7 of 13
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`PETITIONERS, Ex. 1018; PG. 1
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`PETITIONERS, Ex. 1018; PG. 1
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`Appln. No. 14/134,884
`Docket No. LSGO347USC
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`a prior art reference.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346 (Fed. Cir.
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`1999) (quoting Titanium Metals Corp. ofAm. V. Banner, 778 F.2d 775, 781 (Fed. Cir.
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`1985)).
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`“[A] prior art reference may anticipate without disclosing a feature of the claimed
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`invention if that characteristic is necessarily present, or inherent, in the single anticipating
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`reference.” Taro Co. v. Deere & C0., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed.
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`Cir. 2004) (emphasis added) (citing Schering Corp. v. Geneva Pharmaceuticals, Inc., 339
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`F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)).
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`The fact that a certain result or characteristic may occur or be present in the prior
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`art is not sufficient to establish the inherency of that result or characteristic. In re
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`Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversed rejection
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`because inherency was based on what would result due to optimization of conditions, not
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`what was necessarily present in the prior art); In re Oelrich, 666 F.2d 578, 581—82, 212
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`USPQ 323, 326 (CCPA 1981). "To establish inherency, the extrinsic evidence ’must make
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`clear that the missing descriptive matter is necessarily present in the thing described in
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`the reference, and that it would be so recognized by persons of ordinary skill. Inherency,
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`however, may not be established by probabilities or possibilities. The mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient.’ " In re
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`Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950—51 (Fed. Cir. 1999).
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`Independent Claim 35 recites, inter alia:
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`“. . .wherein the power conditioner is disposed, configured and sized to fit at least
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`partially within an interior space of: a nominally sized can light fixture; gun—d, a nominally
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`sized electrical junction box.” (Emphasis added).
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`Independent Claim 58 recites, inter alia:
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`“. . .wherein the power conditioner is disposed, configured and sized to fit at least
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`partially within an interior space of: a nominally sized can light fixture; m, a nominally
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`sized electrical junction box. . .”. (Emphasis added).
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`Here, Applicant is claiming not only a power conditioner, but a power conditioner
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`that is specifically disposed, configured and sized to fit at least partially within an interior
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`Page 8 of 13
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`PETITIONERS, Ex. 1018; PG. 2
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`PETITIONERS, Ex. 1018; PG. 2
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`Appln. No. 14/134,884
`Docket No. LSG0347USC
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`space of a nominally sized can light fixture, m is specifically disposed, configured and
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`sized to fit at least partially within an interior space of a nominally sized electrical
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`junction box.
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`In alleging anticipation, the Examiner fails to show how Zhang anticipates the
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`claim limitation directed to the power conditioner being disposed, configured and sized to
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`fit at least partially within an interior space of: a nominally sized can light fixture; 11g, a
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`nominally sized electrical junction box, as claimed. Applicant finds Zhang to be absent
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`any disclosure of a can light fixture m an electrical junction box. In fact, a search for
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`the term “junction box” or “junction” finds no such terms, and even a cursory review of
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`the drawings shows no such structure.
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`As such, Applicant submits that Zhang fails to disclose each and every element of
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`the claimed invention arranged as claimed and therefore cannot be anticipatory.
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`In the event that the Examiner relies on anticipation by inherency, Applicant
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`respectfully submits that anticipation by inherency requires that the missing element
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`necessarily be present in the reference relied upon, which Applicant submits Zhang fails
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`to do, as Zhang is specifically directed to “a recessed lighting fixture that provides
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`improved heat dissipation and grounding” (col. 1, lines 16-17). Nowhere in Zhang does
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`Applicant find even a hint of Zhang’s power conditioner (driver 42) being configured and
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`sized to fit at least partially within an interior space of a nominally sized electrical
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`junction box.
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`Regarding Claim 41 more specifically, here Applicant is claiming a continuous
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`and uninterrupted heat flow path through the heat spreader and the heat sink. In alleging
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`anticipation, the Examiner merely refers to Fig. 7 without any explanation as to where
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`Zhang’s continuous and uninterrupted flow path is. In fact, Zhang specifically discloses a
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`non-continuous and interrupted heat flow path between the heat spreader (trim cap 112,
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`Fig. 5) and the heat sink (100, Fig. 5), as evidenced by the disassembled assembly
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`drawing of Fig. 5 showing that the two parts are separate from one another, contrary to
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`the claimed invention.
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`Page 9 of 13
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`PETITIONERS, Ex. 1018; PG. 3
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`PETITIONERS, Ex. 1018; PG. 3
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`

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`Appln. No. 14/134,884
`Docket No. LSGO347USC
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`Regarding Claim 43 more specifically, here Applicant is claiming that the power
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`conditioner be configured and sized to fit completely within an interior space of a
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`nominally sized electrical junction box, which Applicant submits Zhang fails to disclose
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`or even suggest, for reasons remarked upon above.
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`Regarding Claim 46 more specifically, here Applicant is claiming that the heat
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`sink forms a trim plate (one and the same feature) that is disposed completely external of
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`the can light fixture or the electrical junction box. In alleging anticipation, the Examiner
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`merely refers to Fig. IA without any explanation as to how the heat sink (100) forms the
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`trim plate (44 in Fig. 1A, 52 in Fig. 5), to be one and the same feature, where they are
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`both disposed completely external of the can light fixture. In fact, Zhang specifically
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`discloses the heat sink (100) being disposed completely internal of the can light fixture
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`(see Fig. 1A, for example), contrary to the claimed invention.
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`Regarding Claim 54 more specifically, here Applicant is claiming a specific
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`structure where the heat spreader has mounting holes for securing it to an electrical
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`junction box. In alleging anticipation, the Examiner merely refers to Fig. 1A without any
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`explanation as to where Zhang’s heat spreader (trim cap 112, see Fig. 5) has holes for
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`mounting it to an electrical junction box. In fact, Zhang specifically discloses a complete
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`absence of an electrical junction box (see Fig. 1A, for example), contrary to the claimed
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`invention.
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`Regarding Claim 55 more specifically, here Applicant is claiming that the power
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`conditioner be configured and sized to fit at least partially within an interior space of a
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`nominally sized four~inch electrical junction box, which Applicant submits Zhang fails to
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`disclose or even suggest, for reasons remarked upon above.
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`Regarding Claim 57 more specifically, here Applicant is claiming that the heat
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`sink also serves as a trim plate (one and the same feature), where the heat sink/trim plate
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`and the outer optic in combination have an overall height H, where the heat sink/trim
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`plate has an overall diameter D, and where the ratio H/D is equal to or less than 0.25. In
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`alleging anticipation, the Examiner merely refers to Fig. 7 without any explanation of
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`how Zhang’s heat sink (100) forms the trim plate (44 in Fig. 1A, 52 in Fig. 5), to be one
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`Page 10 of13
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`PETITIONERS, Ex. 1018; PG. 4
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`PETITIONERS, Ex. 1018; PG. 4
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`Appln. No. 14/134,884
`Docket No. LSGO347USC
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`and the same feature, where the heat sink/trim plate (100 and 44, 52 in combination) have
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`an overall height H that satisfies the claimed ratio H/D being equal to or less than 0.25.
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`Regarding Claim 58 more specifically, here Applicant is claiming, in addition to
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`other remarks provided herein above, that the heat sink forms a trim plate (one and the
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`same feature) that is disposed completely external of the can light fixture or the electrical
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`junction box. In alleging anticipation, the Examiner does not specifically address this
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`limitation of Claim 58 (see pp. 2—3 of the Office action, for example). However, with
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`respect to Claim 46, which includes a similar limitation, the Examiner merely refers to
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`Fig. 1A without any explanation as to how the heat sink (100) forms the trim plate (44 in
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`Fig. 1A, 52 in Fig. 5), to be one and the same feature, where they are both disposed
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`completely external of the can light fixture. In fact, Zhang specifically discloses the heat
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`sink being disposed completely internal of the can light fixture (see Fig. 1A, for
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`example), contrary to the claimed invention.
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`Dependent claims inherit all of the limitations of the respective base claim and
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`any respective intervening claim.
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`In view of the foregoing remarks, Applicant submits that Zhang does not disclose
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`each and every element of the claimed invention arranged as claimed and therefore cannot
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`be anticipatory. Accordingly, Applicant respectfully submits that the rejection under 35
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`U.S.C. §102(b) has been traversed, and requests reconsideration and withdrawal of this
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`rejection.
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`Rejections Under 35 U.S.C. §103§a1
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`Claim 45 stands rejected under pre-AIA 35 U.S.C. §lO3(a) as being unpatentable
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`over Zhang in view of Roberge et al, (U.S. Patent No. 7,828,465, hereinafter Roberge).
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`Applicant overcomes these rejections for the following reasons.
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`Applicant respectfully submits that the obviousness rejection based on the
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`References is improper as the References fail to teach or suggest each and every element
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`of the instant invention in such a manner as to perform as the claimed invention performs.
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`For an obviousness rejection to be proper, the Examiner must meet the burden of
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`Page 11 ofl3
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`PETITIONERS, Ex. 1018; PG. 5
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`PETITIONERS, Ex. 1018; PG. 5
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`Appln. No. 14/134,884
`Docket No. LSG0347USC
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`establishing a prima facie case of obviousness. In re Fine, 5 U.S.P.Q.2d 1596, 1598
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`(Fed. Cir. 1988). The Examiner must meet the burden of establishing that all elements of
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`the invention are taught or suggested in the prior art. MPEP §2143.03.
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`Claim 45 is dependent upon Claim 35. Applicant has already herein remarked on
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`the deficiency of Zhang in disclosing each and every element of the claimed invention
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`arranged as claimed, and further submits that Roberge fails to cure these deficiencies,
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`particularly with respect to those remarks above that refer to a nominally sized electrical
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`junction box, as Roberge is equally deficient in disclosing, teaching, suggesting or
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`illustrating a nominally sized electrical junction box. See also Applicant’s remarks in
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`Response Paper dated July 31, 2014, pp. 9—10. As such, Applicant submits that Zhang in
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`view of Roberge is also deficient in obviating Claim 45.
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`Accordingly, Applicant respectfully requests reconsideration and withdrawal of
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`this rejection under 35 U.S.C. §103(a), which Applicant considers to be traversed.
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`In light of the forgoing, Applicant respectfully submits that the rejections under 35
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`U.S.C. §102(b) and 35 U.S.C. §103(a) have been traversed, and respectfully requests
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`reconsideration and withdrawal of these rejections.
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`If a communication with Applicant’s Attorneys would assist in advancing this
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`case to allowance, the Examiner is cordially invited to contact the undersigned so that any
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`remaining issues may be promptly resolved.
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`The Commissioner is hereby authorized to charge any additional fees that may be
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`required for this amendment, or credit any overpayment, to Deposit Account No. 06-
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`1130.
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`Page 12 of 13
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`PETITIONERS, Ex. 1018; PG. 6
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`PETITIONERS, Ex. 1018; PG. 6
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`App1n. No. 14/134,884
`Docket No. LSG0347USC
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`In the event that an extension of time is required, or may be required in addition to
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`that requested in a petition for extension of time, the Commissioner is requested to grant
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`a petition for that extension of time that is required to make this response timely and is
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`hereby authorized to charge any fee for such an extension of time or credit any
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`overpayment for an extension of time to the above-identified Deposit Account.
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`Respectfully submitted,
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`CANTOR COLBURN LLP
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`Applicant’s Attorneys
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`By:
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`/David Arnold/
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`David Arnold
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`Registration No: 48,894
`Customer No. 15915
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`
`
`Date:
`Address:
`Telephone:
`Fax:
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`November 13, 2014
`20 Church Street, 22nd Floor, Hartford, CT 06103
`(860) 286-2929
`(860) 286-0115
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`Page 13 of 13
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`PETITIONERS, Ex. 1018; PG. 7
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`PETITIONERS, Ex. 1018; PG. 7
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