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.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
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`11/303,247
`
`1211612005
`
`Simon Nicholas Richmond
`
`5847-1 02US//P32,061-A-USA
`
`8542
`
`09/20/2007
`7590
`20802
`SYNNESTVEDT LECHNER & WOODBRIDGE LLP
`POBOX 592
`112 NASSAU STREET
`PRINCETON, NJ 08542-0592
`
`EXAMINER
`
`MEHMOOD, JENNIFER
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`ART UNIT
`
`PAPER NUMBER
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`2612
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`MAIL DATE
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`DELIVERY MODE
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`09/20/2007
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`PAPER
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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.
`
`PTOL-90A (Rev. 04/07)
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`Richmond, Exh. 2015, p.1
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`

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`Office Action Summary
`
`11/303,247
`
`Examiner
`
`RICHMOND, SIMON NICHOLAS
`
`Art Unit
`
`Application No.
`
`Applicant(s)
`
`2612
`Jennifer A. Mehmood
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`.
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;l MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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.
`If 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)[8] Responsive to communication(s) filed on 16 December 2005.
`2a}0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8] Claim(s) 1-20 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8] Claim(s) 1-20 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)[8] The specification is objected to by the Examiner.
`10)[8] The drawing(s) filed on 16 f!ecember 2005 is/are: a)[8J accepted or b}O 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).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some * c)O None of:
`1. 0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ ·.
`3.0 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) 18] Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) i8]1nformation Disclosure Statement(s) (PTO/SB/08)
`· Paper No(s)/Mail Date 1211612005.
`
`4) D Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20070914
`
`Richmond, Exh. 2015, p.2
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`

`

`Application/Control Number: 11/303,247
`Art Unit: 2612
`
`Page 2
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`Specification
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`1.
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`The· specification is objected to as failing to provide proper antecedent basis for
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`the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction
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`of the following is required: Claims 14 discloses a second light source having a suitable
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`wavelength and being situated such that said second light source causes said first light
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`source to emit light. How does a second light source cause a first light source to emit
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`light? Examiner requires applicant, in the specification, to include the particulars of how
`a second light source cause a first light source to emit light. rJo f\OW ~ ;i.,.,tlloe 1'"tfl7dv-ul.
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`Claim Rejections- 35 USC§ 112
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`2.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`.art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
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`3.
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`Claim 14 is rejected under 35 U.S.C. 112, first paragraph, as failing to·comply
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`with the enablement requirement. The claim(s) contains subject matter which was not
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`described in the specification in such a way as to enable one skilled in the art to which it
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`pertains, or with which it is most nearly connected, to make and/or use the invention.
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`The specification does not describe how a second light source causes a first light
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`source to emit light.
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`Richmond, Exh. 2015, p.3
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
`
`Page 3 ·
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`Claim Rejections - 35 USC § 112
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`4.
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
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`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`">-S"'
`Claims 1. K and 20 are rejected under 35 U.S.C. 112, second paragraph, as
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`5.
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`being indefinite for failing to particularly point out and distinctly claim the subject matter
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`which applicant regards as the invention.
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`6.
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`The phrase "capable of' renders the claims indefinite because it is unclear
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`whether the limitations following the phrase are part of the claimed invention. See
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`MPE~ § 2173.05(d).
`
`~.L.
`
`'~
`'1-'t' ·"~~·" ~~611o\.t. \,e-.. :rt1
`Claim Rejections - ~5 USC § 102
`
`\ · ~ ~"tec~~'t 6~ •
`A-"
`.,
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`7.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under t.his section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(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.
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`8.
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`Claims 1. 5-11. 13. 14. 16. and 18 are rejected under 35 U.S.C. 102(b) as being
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`anticipated by Chang (GB 2 186 108 A).
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`For claim 1. Chang discloses an illuminated wind indicator, comprising: a housing
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`(lines col 2, Ins 120-123; Fig. 1, item 11); at least one chime member movably
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`suspended from said housing (Fig. 1, item 18); a pendulum assembly suspended from
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`Richmond, Exh. 2015, p.4
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
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`Page4
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`said housing such that said pendulum assembly and said at least one chime member
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`are capable of colliding with each other (Fig. 1, item 20; col 1, Ins 11-16); and a first light
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`source situated such that a portion of said pendulum assembly emits light (col 3, Ins 1-
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`8; Fig. 1, item 20).
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`For claim 5. Chang discloses said pendulum assembly comprises a pendulum
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`and a striker element capable of colliding with said at least one chime member (col3,
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`Ins 35-39).
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`For claim 6. Chang discloses said pendulum emits light (col3, Ins 21-27).
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`For claim 7. Chang discloses said pendulum is movably connected to said striker
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`element (col 3, Ins 35-39).
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`For claim 8. Chang discloses said striker element emits light (Fig. 1, item 20).
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`For claim 9. Chang discloses said pendulum assembly has at least one light
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`transmitting region and said first light source is situated such that light is emitted from
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`said pendulum assembly via said light transmitting region (Fig. 1, items 20).
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`For claim 10. Chang discloses said first light source comprises a light emitting
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`diode (col1, In 42).
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`For claim 11. Chang discloses said first light source comprises a luminescent
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`material (col1, In 9).
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`For claim 13. Chang discloses said. luminescent material comprises a fluorescent
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`material (col1, Ins 121-127).
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`Richmond, Exh. 2015, p.5
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
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`Page 5
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`For claim 14. Chang discloses a second light source having a suitable
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`wavelength and being situated such that said second light source causes said first light
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`source to emit light (Fig. 3, item 20; col 3, Ins 55-65).
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`For claim 16. Chang disclos~s said at least one chime member is a bell (col1,
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`Ins 5-10).
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`For claim 18. Chang discloses said pendulum assembly varies in color (col 1, Ins
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`121-127).
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`Claim Rejections - 35 USC § 103
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`9.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`10.
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`Claims 2 and 3 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Chang (GB 2 186 108 A) and further in view of Tal et al. (US 6,491 ,516).
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`Chang discloses neither a solar cell nor a rechargeable battery, however, Tal
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`discloses a rechargeable battery connected so as to provide power to said first light
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`source (col16, Ins 55-60). In addition, Tal discloses at least one solar panel connected
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`such that said rechargeable battery accumulates charge when said solar panel is
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`exposed to ambient light level of sufficient intensity (col16, Ins 55-60; Fig. 1). It would
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`have been obvious to one of ordinary skill in the art, at the time the invention was made
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`Richmond, Exh. 2015, p.6
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
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`Page 6
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`to disclose a solar panel that uses a rechargeable battery to provide for an
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`environmentally friendly and cost efficient light fixture.
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`11.
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`Claim 12 is rejected under 35 U.S.C. 103(a) as being unpatentable over Chang
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`(GB 2 186 108 A) and further in view of Volpe et al. (US 6,288,633).
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`Chang does not disclose phosphorescent material; however, Volpe discloses
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`phosphorescent material (col4, Ins 56-60). It would have been obvious to disclose
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`phosphorescent material so that an object can glow in the dark without a continuous
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`light source thereby conserving energy.
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`13.
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`Claim 17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Chang
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`(GB 2 186 108 A) and further in view of Baarman et al. (US 7, 126,450).
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`Chang does not disclose that the pendulum assembly varies in brightness;
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`however, Baarman discloses a pendulum assembly that varies in brightness (col 14, Ins
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`30-39; Figs. 29-31 ). It would have been obvious to disclose varying brightness
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`pendulum in order to conserve energy (varying brightness based on ambient light
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`conditions).
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`14.
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`Claim 19 is rejected under 35 U.S.C. 103(a) as being unpatentable over Chang
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`(GB 2 186 108 A) and further in view of Lowe (US 4,854,214).
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`Chang discloses a DC source (battery), but does not disclose an ACto DC
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`transformer.· Lowe, on the other hand, discloses an ACto DC transformer {col 3, Ins 25-
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`32). It would have been obvious to disclose an AC to DC transformer so that a
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`continuous source of power is available {AC) as opposed to a power source requiring
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`replacement (DC battery).
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`Richmond, Exh. 2015, p.7
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
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`Page 7
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`15.
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`Claim 20 is rejected under 35 U.S.C. 1 03(a) as being unpatentable over Chang
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`(GB 2 186 108 A) and further in view of Thomas et al. (US 6,604,691 ).
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`Chang discloses a hanging member attached to said housing for suspending
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`said housing from said support frame (Fig. 1, item 121 ), but does not disclose a spike
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`capable of insertion into a ground surface and holding the support frame upright.
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`Thomas, however, discloses a spike capable of insertion into a ground surface and
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`holding the support frame upright (Fig. 5, items 262-278; col 5, Ins 48-55). It would
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`have been obvious to disclose a spike for securing the housing to the ground for
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`stability and support of the housing.
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`Allowable Subject Matter
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`16.
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`Claims 4 and15 would be allowable if rewritten to overcome the rejection(s)
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`under 35 U.S.C. 112, 1st paragraph, set forth in this Office action and to include all of
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`the limitations of the base claim and any intervening claims.
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`Conclusion
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`17.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure:
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`Kraft, Sr. (US 6,124,782) and Kube (US 2005/0279403) disclose a wind chime
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`operated via a solar panel.
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`Collier (US 2003/0092352) and Samen (US 4,978,948) disclose wind chimes that
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`include lights.
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`Richmond, Exh. 2015, p.8
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`

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`Application/Control Number: 11/303,247
`Art Unit: 2612
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`Page 8
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`18.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jennifer A Mehmood whose telephone number is (571)
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`272.2976. The examiner can normally be reached on M-F from 8:00am to 4:30pm.
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`· If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Mr. Daniel Wu, can be reached at (571) 272.2964. The fax phone number
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`for the organization where this application or proceeding is assigned is (571) 273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
`
`Jennifer A. Mehmood
`September 10, 2007
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`Richmond, Exh. 2015, p.9
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`