`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www wepto.gov
`
`SPEeTON
`
`ORETOOCREING
`
`CONFIRMATION NO.
`
`12/775,310
`
`05/06/2010
`
`Fredric 8. Maxik
`
`LSG0347US82
`
`9888
`
`7590
`15915
`Cantor Colburn L1P-LSG
`20 Church Street, 22 FL.
`Hartford, CT 06103-3207
`
`1ortar2014
`
`EXAMINER
`
`,
`
`ALAVI, ALI
`
`ART UNIT
`2875
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODB
`
`10/12/2011
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period forreply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`usptopatentmail @cantorcolburn.com
`
`PTOL-90A (Rev. 04/07)
`
`PETITIONERS, Ex. 1006; PG. 1
`
`PETITIONERS, Ex. 1006; PG. 1
`
`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`
`
`12/775,310
`Examiner
`ALi ALAVI
`
`MAXIK ET AL.
`Ant Unit
`
`2875
`
`+ The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PER!OD FOR REPLY IS SET TO EXPIRE 3 MONTH(S} OR THIRTY(30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`-
`Extensionsof lime may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`afler SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, ihe maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this carmmunication,
`Failure to reply within the set or extended periad for reply will, by stalute, cause the application tc become ABANDONED (35 U.S.C. § 133),
`Any reply received by the Office Jater than three months after ine mailing date of this communication, even if timely filed, may reduce any
`sarned patent term adjustment. See 37 GFA 4.704(5}.
`
`-
`
`Status
`
`1j)L Responsive to communication(s) filed on
`2a)LI This action is FINAL.
`2b)—X] This action is non-final.
`3)L] Anelection was made by the applicant in responseto a restriction requirement set forth curing the interview on
`___; the restriction requirement and election have been incorporated into this action.
`4)L] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)X] Claim(s} 1-20 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withcrawn from Consideration.
`6) Claim(s)
`is/are allowed.
`7)EX] Claim(s) 1-20 is/are rejected.
`8)L] Claim(s)
`is/are objected to.
`9)C] Clain(s
`are subject to restriction and/or election requirement.
`(Ss)
`
`
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`11)BX] The drawing(s) filed on
`is/are: ajL_] accepted or b}[_] 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 tne drawing(s) is objected to. See 37 CFR 1.121 (d).
`12)L] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)L Acknowledgment is madeof a claim forforeign priority under 35 U.S.C. § 119(a)-(d) or(4).
`ajL} Al bj] Some * ci] None of:
`1.0] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a}).
`“ See the attached detailed Office action foralist of the certified copies not received.
`
`Attachment(s)
`1) cx Notice of References Cited (PTO-892)
`2) Cl Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) BX] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s}/Mail Date 3/03/77.
`U.S. Patent and Trademark Office
`
`4) L] Interview Summary (PTO-473}
`Paper Nofs)/Mail Date.
`5) [_] Notice of tnformal Patent Application
`6) L] Other:
`
`PTOL-326 (Rev. 03-11}
`
`Office Action Summary
`
`Parl of Paper No./Mail Date 20111003
`
`PETITIONERS, Ex. 1006; PG. 2
`
`PETITIONERS, Ex. 1006; PG. 2
`
`

`

`Application/Control Number: 12/775,310
`Art Umit: 2875
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 102
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`form the basis for the rejections underthis section madein this Office action:
`A person shall be entitled to a patent unless —
`(b) the invention was patented or described in a printed publication in this or a
`foreign country or in public use or on sale in this country, more than one year
`prior to the date of application for patent in the United States.
`
`(2) the invention was described in (1) an application for patent, published under section 122(b), by anotherfiled in the United
`States before the invention by the applicant for patent or (2) a patent granted on an application for patent by anotherfiled in the
`United States before the invention by the applicant for patent, except that an international application filed under the treaty
`defined in section 351 (a) shall have the effects for purposes of this subsection of an application filed in the United States onlyif
`ihe international application cesignated the United States and was published under Article 21(2) of such treaty in the English
`language.
`
`Claims 1-8, and 10-16 are rejected under 35 U.S.C. 102(b) as being anticipated
`
`by Roberge et al (WO 2008/137732).
`
`Regarding claim 1, Roberge discloses a luminaire (figs. 3a, 3b), comprising: a
`
`heat spreader (330) and a heat sink (320) thermally coupled to and disposed
`
`diametrically outboard of the heat spreader; an outer optic (315)securely retained
`
`relative to at least one of the heat spreader and the heat sink, and a light source
`
`disposed in thermal communication with the heat spreader, the light source comprising
`
`a plurality of light emitting diodes (LEDs); wherein the heat spreader, the heat sink and
`
`the outer optic, in combination, have an overail height H and an overall outside
`
`dimension D such that the ratio of H/D is equal to or less than 0.25; wherein the
`
`combination defined by the heat spreader, the heat sink and the outer optic, is so
`
`dimensioned as to: cover an opening defined by a nominally sized four-inch can light
`
`PETITIONERS, Ex. 1006; PG. 3
`
`PETITIONERS, Ex. 1006; PG. 3
`
`

`

`Application/Control Number: 12/775,310
`Art Unit: 2875
`
`Page 3
`
`fixture; and, cover an opening defined by a nominally sized four-inch electrical junction
`
`box (3b).
`
`Regarding claim 2, Roberge further discloses that the heat spreader and the heat
`
`sink are integrally formed such that a heat flow path from the light source through the
`heat spreaderto the heatsink is continuous and uninterrupted (fig. 3a).
`
`Regarding claim 3, Roberge further discloses that 3.The luminaire of Claim 1,
`
`further comprising: a power conditioner mechanically supported by the heat spreader,
`
`~
`
`the powerconditioner being configured and disposed to receive AC voltage from an
`
`electrical supply line and to deliver be voltage to the plurality of LEDs.
`
`Regarding claim 4, Roberge further discloses that a reflector disposed on the
`
`heat spreader, the reflector having an aperture in which the plurality of LEDs are
`
`disposed (fig. 3a, 0094).
`
`Regarding claim 5, Roberge further discloses that the heat spreader comprises
`
`mounting holes suitably spaced apart to receive mounting fasteners to secure the heat
`
`spreader to an electrical junction box.
`
`Regarding claim 6, Robergefurther discloses that he heat spreader comprises
`
`mounting holes and the reflector comprises mounting holes suitably spaced apart to
`
`receive mounting fasteners to secure the heat spreaderto an electrical junction box
`
`(3b).
`
`Regarding claim 7, Roberge further discloses that further comprising: a
`
`mounting bracket; and a powerconditioner, the power conditioner being configured and
`
`disposed to receive AC voltage from an electrical supply line and to deliver DC voltage
`
`PETITIONERS, Ex. 1006; PG. 4
`
`PETITIONERS, Ex. 1006; PG. 4
`
`

`

`Application/Control Number: 12/775,310
`Art Unit: 2875
`
`Page 4
`
`to the plurality of LEDs; wherein the power conditioner is supported by the mounting
`
`bracket on one side thereof, and the heat spreader and heatsink are supported by the
`
`mounting bracket on another opposing side thereof; and wherein the mounting bracket
`
`comprises mounting holes disposed to secure the luminaire to an electrical junction box
`
`(0097).
`
`Regarding claim 8, Roberge further discloses that at least one torsion spring
`
`configured and disposed so as to secure the luminaire to a canlightfixture (fig. 3b).
`
`Regarding claim 10, Roberge further discloses that the power conditioneris
`
`disposed on an opposite side of the heat spreaderas the plurality of LEDs, the power
`
`conditioner being so dimensionedasto fit within: a nominally sized four-inch can light
`
`fixture; and, a nominally sized four-inch electrical junction box (0097).
`
`Regarding claim 11, Roberge further discloses that comprising: an inner optic
`
`disposed overthe plurality of LEDs(fig. 3a).
`
`Regarding claim 12, Roberge further discloses that the inner optic is integrally
`
`formed with the reflector (fig. 3a).
`
`Regarding claim 13, Roberge further discloses that the inner optic comprises a
`
`color mixing diffuser (fig. 3b).
`
`Regarding claim 14, Roberge further discloses that a phosphor disposed overthe
`
`plurality of LEDs comprising material to produce a color temperature output of 2700
`
`deg-Kelvin (0100)
`
`Regarding claim 15, Roberge further discloses that a trim ring; wherein the outer
`
`optic is securely retained relative to at least one of the heat spreader and the heat sink
`
`PETITIONERS, Ex. 1006; PG. 5
`
`PETITIONERS, Ex. 1006; PG. 5
`
`

`

`Application/Control Number: 12/775,310
`Art Unit: 2875
`
`Page 5
`
`via fasteners; and wherein the trim ring snap-fits onto the outer optic in such a manner
`
`as to cover the fasteners securely retaining the outer optic (3a).
`
`Regarding claim 16, Robergefurther discloses that the heat spreader and the
`
`heat sink are integrally formed to define a base, wherein a back side of the base
`
`comprisesa plurality of heat sink fins andair flow channels configured and disposed to
`
`transport heat generated by the light source away from the light source (3b).
`
`Claims 1-3, 7-10, and 17-20 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Chou (US 2009/0086474).
`
`Regarding claims 1 and 17-19, Chou discloses a luminaire (figs 4a, 4b) a heat
`
`spreader (12) and a heat sink (14) thermally coupled to and disposed diametrically
`
`outboard of the heat spreader; an outer optic (23) securely retained relative to at least
`
`one of the heat spreader and the heat sink (14) and a light source disposed in thermal
`
`communication with the heat spreader, the light source comprising a plurality of light
`
`emitting diodes (LEDs 15), wherein the heat spreader, the heat sink and the outer optic,
`
`in combination, have an overall height H and an overall outside dimension D suchthat
`
`the ratio of H/D is equal to or less than 0.25; wherein the combination defined by the
`
`heat spreader, the heat sink and the outer optic, is so dimensioned as to: cover an
`
`opening defined by a nominally sized four-inch can light fixture; and, cover an opening
`
`defined by a nominally sized four-inch electrical junction box (4a).
`
`PETITIONERS, Ex. 1006; PG. 6
`
`PETITIONERS, Ex. 1006; PG. 6
`
`

`

`Application/Control Number: 12/775,310
`Art Unit: 2875
`
`Page 6
`
`—
`
`Regarding claim 2, Chou further teaches that the heat spreader and the heat sink
`
`are integrally formed such that a heat flow path from the light source through the heat
`
`spreaderto the heat sink is continuous and uninterrupted (4a, 0028).
`
`Regarding claim 3, Chou further teaches that a power conditioner mechanically
`
`supported by the heat spreader, the power conditioner being configured and disposed
`
`to receive AC voltage from an electrical supply line and to deliver DC voltage to the
`
`plurality of LEDs (0028).
`
`Regarding claim 7, Chou further teaches that e luminaire of Claim 1, further
`
`comprising: a mounting bracket; and a powerconditioner, the power conditioner being
`
`configured and disposed to receive AC voltage from an electrical supply line and to
`
`deliver DC voltage to the plurality of LEDs;
`
`wherein the power conditioner is supported by the mounting bracket on one side
`
`thereof, and the heat spreader and heat sink are supported by the mounting bracket on
`another opposing side thereof: and wherein the mounting bracket comprises mounting
`
`holes disposed to secure the luminaire to an electrical junction box.
`Regarding claim 8, Chou further teaches that at least one torsion spring
`
`configured and disposed so as to secure the luminaire to a can lightfixture.
`
`Regarding claim 9, Chou further teaches that the powerconditioneris disposed
`
`on a same side of the heat spreader asthe plurality of LEDs (4b).
`
`Regarding claims 10 & 20, Chou further teaches that the power conditioneris so
`
`dimensioned asto fit completely within at least one of: a nominally sized four-inch can
`
`light fixture; and, a nominally sized four-inch electrical junction box.
`
`PETITIONERS, Ex. 1006; PG. 7
`
`PETITIONERS, Ex. 1006; PG. 7
`
`

`

`
`
`Application/Control Number: 12/775,310
`Art Unit: 2875
`
`Page 7
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`Any inquiry concerning this communication or earlier communication from the
`
`examiner should be directed to Ali Alavi whose telephone numberis (571) 272-2365.
`The examiner can normally be reached between 7:00 A.M. to 5:30 P.M. Tuesday to
`
`Friday. If attempts to reach the examiner by phone are unsuccessful, the examiner’s
`
`supervisor, Diane Lee can be reached at (571) 272-2399 or you may fax your inquiry to
`
`the Central Fax at (571) 273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for published
`
`applications may be obtained from either Private PAIR or Public PAIR. Status
`
`information for unpublished applications is available through Private PAIR only. For
`
`more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
`
`have questions on accessto the Private PAIR system, contact the Electronic Business
`
`Genter (EBC) at 866-217-9197 (toll-free).
`
`{Ali Alavi/
`
`Primary Examiner, Art Unit 2875
`
`PETITIONERS, Ex. 1006; PG. 8
`
`PETITIONERS, Ex. 1006; PG. 8
`
`