...
`
`PATENT
`Attorney Docket No. SPRUSON-08795
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of: Simon Nicholas Richmond
`Group No.: 2821
`Serial No.:
`10/789,488
`Examiner: Minh, A.
`02/26/2004
`Filed:
`Entitled:
`A Solar Powered Light Assembly To Product Light Of Varying
`Colours
`
`AMENDMENT AND RESPONSE TO OFFICE ACTION
`MAILED SEPTEMBER 7, 2005
`
`MS Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. § 1.8
`
`I hereby certifY that this correspondence (along with any referred to as being attached or enclosed) is being facsimile
`transmitted or is being deposited with the U.S. Postal Service with sufficient postage as first class mail in an envelope
`313-1450, on the date shown below.
`addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA
`
`Dated: January 30 2006
`
`Dear Sir or Madam:
`
`The following communication is responsive to the Office Action mailed September 7,
`
`2005, having a period for reply ending December 7, 2005. A petition for a two-month extension
`
`of time is attached, extending the period for reply to February 7, 2006. Applicant respectfully
`
`requests reconsideration of the application in view of the following:
`
`amendments to the specification beginning on page 2;
`
`amendments to the drawings on page 4, including as attachments a replacement sheet and
`
`an annotated sheet showing changes;
`
`amendments to the claims reflected in the listing of claims beginning on page 5; and
`
`remarks and arguments beginning on page 10.
`
`- 1 -
`
`Richmond, Exh. 2015, p.1
`
`

`

`·,
`
`PATENT
`Attorney Docket No. SPRUSON-08795
`
`AMENDMENTS TO THE SPECIFICATION
`
`Please replace the paragraph beginning on page 6, at line 30, as follows:
`
`The light circuit 60 contains an integrated circuit (IC) 61 for controlling lighting effects
`
`provided by the lighting device 10. In the embodiments shown, the IC 61 is a 16-pin, three
`
`colour LED IC for controlling first, second and third light emitting diodes (LEDs) 34A, 348 and
`
`34C. Each of pins 1, 15 and 16 is connected in series to respective switches 69, 70, 60 69, 70,
`11. Each of the switches 69, 70 and 71 is then connected to the negative terminal ofthe battery
`
`33. In one embodiment, the switches 69, 70, 71 correspond to the LEDs 34A, 348, and 34C to
`
`enable or disable a particular colour range. In another embodiment, the switches 69, 70, 71
`
`determine the frequency of a colour changing effect. In a further embodiment, the switches 69,
`
`70, 71 determine the intensity oflight emitted by each of the LEDs 34A, 34B, and 34C. Various
`
`combinations ofthe frequency and intensity oflight are also possible. The switches 69, 70, 71
`
`can be made accessible to a user to create custom lighting effects. Alternatively, the switches 69,
`
`70, 71 are set according to a predetermined configuration and are not readily accessible by a
`
`user.
`
`Please replace the paragraph beginning on page 7, at line 19, as follows:
`
`Pins 6 and 8 of the IC 61 are tied to one another via a ninth resistor 72, which in the
`
`embodiment shown is a 20K.Q resistor. The valve of the ninth resistor 71 resistor 72 determines
`
`the frequency of a colour change created by the IC 61. Accordingly, using different resistor
`
`values for the ninth resistor 71 resistor 72 produces colour changes of different frequencies. Pin
`
`9 ofthe IC 61 is tied to the negative terminal ofthe battery 33.
`
`Please replace the paragraph beginning on page 8, at line 24, as follows:
`
`The IC 61 preferably includes a cut-off circuit that is voltage dependent. As the capacitor
`
`57 discharges, the voltage across the cut-off circuit decreases. Once the voltage across the cut(cid:173)
`
`off circuit reaches a predetermined threshold value, the cut-off circuit prevents further power
`
`being consumed by the LEDs. As no power is being consumed by the light circuit 60, the
`
`capacitor 57 retains a residual charge. The residual charge maintains a voltage across the IG--6G,
`
`IC 61, which enables the selected colour to be retained by the memory in the IC 61.
`
`- 2-
`
`Richmond, Exh. 2015, p.2
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`Please replace the paragraph beginning on page 9, at line 7, as follows:
`
`The switch 40 and/or switch 65 is/are mounted on the base 26 so as to be on a
`
`downwardly facing external smfaee 72 surface ofthe base 26. This enables a user to control the
`
`device via readily accessible switches, without needing to remove the cap assembly 24. The
`
`switches 40 and 65 are each operable to control delivery of electric power from the batteries to
`
`the LEDs 34A, 34B and 34C. The circuit 29 is only rendered operative when there is insufficient
`
`light, that is, by operation of a light sensitive switch, ie the diode 43.
`
`- 3-
`
`Richmond, Exh. 2015, p.3
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`AMENDMENTS TO THE CLAIMS
`
`1. (currently amended) A lighting device to produce light of varying colour, said device
`
`including:
`
`a body;
`
`a lens mounted on the body and generally enclosing a chamber having an upper rim
`
`surrounding a top opening, and a bottom region;
`
`a reflector mounted in the bottom region;
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`a cap assembly including securing means to releasably engage the rim so that the cap
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`assembly can be selectively removed from the lens; said assembly including:
`
`a base;
`
`a circuit having at least two lamps of different colours to produce a desired colour
`
`including a varying colour, the lamps being mounted to direct light into said chamber,
`
`connections for at least one rechargeable battery to power the circuit and a solar cell mounted on
`
`aH eKpeseel sl:lrfaee a surface of the assembly so as to be exposed to light and operatively
`
`associated with the connections to charge the battery, and a switch operated to control delivery of
`
`electric power from the battery to operate said circuit, the switch being exposed to provide for
`
`access thereto by a user.
`
`2. (original) The light device of claim 1 wherein, said circuit includes a light sensitive
`
`switch that renders the circuit operation at low light levels.
`
`3. (original) The device of claim 2 wherein, said switch is on an exposed downwardly
`
`facing surface.
`
`4. (original) The device of claim 1 wherein, said circuit includes three lamps, each of a
`
`different colour.
`
`- 5-
`
`Richmond, Exh. 2015, p.4
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`5. (original) The device of claim 1 wherein, said lens is a first lens, and said device
`
`includes a second lens, said second lens being attached to said base and providing a cavity into
`
`which the LEDs direct light, with the light leaving said second lens then passing through said
`
`first lens.
`
`6. (original) The device of claim 5 wherein, the first and second lenses diffuse light.
`
`7. (original) The device of claim 6 wherein, said body includes a post having opposite
`
`first and second ends, with a spike attached to said first end, and said first lens attached to said
`
`second end.
`
`8. (original) The device of claim 7 wherein, said second lens is detachably secured to
`
`said post.
`
`9. (previously presented) The lighting device of claim 1 wherein, said circuit includes a
`
`light sub-circuit connected to the lamps to deliver electric power thereto so that the lamps
`
`produce said desired colour, with said switch being an on/off switch to deliver electric power
`
`from the batteries to said sub-circuit.
`
`10. (original) The lighting device of any one of claims 1 wherein, said circuit includes a
`
`light sub-circuit having an integrated circuit operable to select a desired fixed colour, with said
`
`switch being connected to said integrated circuit and operated to select said desired fixed colour.
`
`11. (original) The device of claim 9 wherein, said switch is a first switch, and said
`
`sub-circuit includes an integrated circuit and a second switch connected to said integrated circuit,
`
`the second switch being operable to select a desired fixed colour and exposed to provide for
`
`access thereto by a user.
`
`12. (original) The device of claim 11 wherein, said second switch is on said exposed
`
`external surface.
`
`- 6-
`
`Richmond, Exh. 2015, p.5
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`13. (original) The device of claim 1 wherein, said switch is on an exposed downwardly
`
`facing surface.
`
`14. (original) The device of claim 13 wherein, said circuit includes three lamps, each of
`
`a different colour.
`
`15. (original) The device of claim 14 wherein, said lens is a first lens, and said device
`
`includes a second lens, said second lens being attached to said base and providing a cavity into
`
`which the LEDs direct light, with the light leaving said second lens then passing through said
`
`first lens.
`
`16. (original) The lighting device of claim 14 wherein, said circuit includes a light
`
`sub-circuit connected to the lamps to deliver electric power thereto so that the lamps produce
`
`said desired colour, with said switch being an on/off switch to deliver electric power from the
`
`batteries to said sub-circuit.
`
`17. (original) The lighting device of claim 14 wherein, said circuit includes a light
`
`sub-circuit having an integrated circuit operable to select a desired fixed colour, with said switch
`
`being connected to said integrated circuit and operated to select said desired fixed colour.
`
`18. (original) The device of claim 16 wherein, said switch is a first switch, and said
`
`sub-circuit includes an integrated circuit and a second switch connected to said integrated circuit,
`
`the second switch being operable to select a desired fixed colour and exposed to provide for
`
`access thereto by a user.
`
`19. (original) The device of claim 18 wherein, said second switch is on said exposed
`
`external surface.
`
`- 7-
`
`Richmond, Exh. 2015, p.6
`
`

`

`20. (currently amended) A lighting device to produce light of varying colour, said
`
`PATENT
`Attorney Docket No. SPRUSON-08795
`
`device including:
`
`a body;
`
`a lens mounted on the body and generally enclosing a chamber;
`
`a circuit having at least two lamps of different colours to produce a desired colour
`
`including a varying colour, the lamps being mounted to direct light into said chamber,
`
`connections for at least one rechargeable batt:ery to power the circuit and a solar cell mounted on
`
`an eJt}3aseel sHrfaee a surface of the assembly so as to be exposed to light and operatively
`
`associated with the connections to charge the battery, and a user operated on/off switch operable
`
`to control delivery of electric power from the battery to operate said circuit, the switch being
`
`exposed to provide for access thereto by a user thereby enabling a user to manipulate the switch
`
`to control the delivery of electric power from the battery.
`
`21. (original) The lighting device of claim 20 wherein, said circuit includes a light
`
`sensitive switch that renders the circuit operative at low light levels.
`
`22. (original) The lighting device of claim 20 wherein, said circuit includes a light
`
`sub-circuit connected to the lamps to deliver electric power thereto so that the lamps produce
`
`said desired colour, with said switch being an on/off switch to deliver electric power from the
`
`batteries to said sub-circuit.
`
`23. (original) The lighting device of claim 20 wherein, said circuit includes a light
`
`sub-circuit having an integrated circuit operable to select a desired fixed colour, with said switch
`
`being connected to said integrated circuit and operable to select said desired fixed colour.
`
`24. (original) The device of claim 20 wherein, said circuit includes a sub-circuit, said
`
`switch is a first switch said first switch being an on/off switch to deliver electric power from the
`
`battery to said sub-circuit, and said sub-circuit includes an integrated circuit and a second switch
`
`connected to said integrated circuit, the second switch being operable to select a desired fixed
`
`colour and exposed to provide for access thereto by a user.
`
`- 8 -
`
`Richmond, Exh. 2015, p.7
`
`

`

`,
`
`PATENT
`Attorney Docket No. SPRUSON-08795
`
`25. (original) The device of claim 24 wherein, said second switch is on said exposed
`
`external surface.
`
`26. (original) The lighting device of claim 21 wherein, said circuit includes a light
`
`sub-circuit connected to the lamps to deliver electric power thereto so that the lamps produce
`
`said desired colour, with said switch being an on/off switch to deliver electric power from the
`
`batteries to said sub-circuit.
`
`27. (original) The lighting device of claim 26 wherein, said circuit includes a light
`
`sub-circuit having an integrated circuit operable to select a desired fixed colour, with said switch
`
`being connected to said integrated circuit and operable to select said desired fixed colour.
`
`28. (original) The device of claim 21 wherein, said circuit includes a sub-circuit, said
`
`switch is a first switch said first switch being an on/off switch to deliver electric power from the
`
`battery to said sub-circuit, and said sub-circuit includes an integrated circuit and a second switch
`
`connected to said integrated circuit, the second switch being operable to select a desired fixed
`
`colour and exposed to provide for access thereto by a user.
`
`29. (original) The device of claim 28 wherein, said second switch is on said exposed
`
`external surface.
`
`- 9 -
`
`Richmond, Exh. 2015, p.8
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`REMARKS
`
`Claims 1-29 are currently pending. Applicant thanks the Examiner for indicating that
`
`Claims 1-19 are allowed and that Claims 24, 25, 28 and 29 would be allowable if rewritten in
`
`independent form including all of the limitations of the base claim and any intervening claims.
`
`In the Office Action mailed September 7, 2005, the Examiner has raised the following issue:
`
`1)
`
`Claims 20-23, 26 and 27 stand rejected under 35 U.S.C. § 102(b) as allegedly
`
`anticipated by U.S. Patent No. 6,120,165 to Shalvi (Shalvi).
`
`Applicant hereby amends the Specification, Drawings and Claims 1 and 20, in order to
`
`further the prosecution of the present application and Applicant's business interests, yet without
`
`acquiescing to the Examiner's arguments. Applicant reserves the right to prosecute the original,
`
`similar, or broader claims in one or more future application(s). In particular, Applicant hereby
`
`amends the Specification and Figure 9 to properly label the switch element as 71 and the ninth
`
`resistor element as 72. Support for these amendments can be found in the description of Figure
`
`9.
`
`1)
`
`The Claims Are Novel
`
`The Examiner has rejected Claims 20-23, 26 and 27 under 35 U.S.C. § 102(b) as
`
`allegedly anticipated by U.S. Patent No. 6,120,165 to Shalvi (Shalvi). The Examiner states:
`
`[r]egarding claim 20, Shalvi discloses an outdoor solar lamp including: a body
`(13); a lens mounted on the body (13) and generally enclosing a chamber; a
`circuit (21) having at least two lamps of different colours to produce a desired
`colour including a varying colour, the lamps being mounted to direct light into the
`chamber, connections for at least one rechargeable battery to power the circuit
`and a solar cell (12) mounted on an exposed surface of the assembly and
`operatively associated with the connections to charge the battery, and a switch
`being exposed to provide for access hereto by a user. See figures 1-3, col. 1, lines
`40-67, to col. 3, lines 1-28 (Office Action, pages 2 and 3).
`
`Applicant respectfully disagrees that the claims are anticipated by Shalvi. Nonetheless,
`
`Applicant has amended Claims 1 and 20, in order to further the prosecution of the present
`
`application and Applicant's business interests, yet without acquiescing to the Examiner's
`
`arguments, and while reserving the right to prosecute the original, similar, or broader claims in
`
`one or more future application(s). In particular, Applicant has amended Claims 1 and 20 to
`
`- 10-
`
`Richmond, Exh. 2015, p.9
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`recite "a solar cell mounted on a surface of the assembly so as to be exposed to light." Support
`
`for this amendment is found for instance in Figures 2, 3 and 6, and in the description, which
`
`teaches:
`
`the upper surface of the assembly 27 is provided with the solar cell 30. The cell
`30 is exposed [to light] through a central rectangular aperture of the cap 25
`(Specification, at page 4, lines 19-21 ).
`
`In addition, Applicant has amended Claim 20 to recite "a user operated on/off switch operable to
`
`control delivery of electric power from the battery to operate said circuit, the switch being
`
`exposed to provide for access thereto by a user thereby enabling a user to manipulate the switch
`
`to control the delivery of electric power from the battery. Support for this amendment is found
`
`for instance, in the text of original Claim 24, in Figure 5 and 9, and in the description, which
`
`teaches:
`
`[t]he switch 40 and/or switch 65 is/are mounted on the base 26 so as to be on a
`downwardly facing external surface 72 of the base 26. This enables a user to
`control the device via readily accessible switches, without needing to remove the
`cap assembly 24. The switches 40 and 65 are each operable to control delivery of
`electric power from the batteries to the LEDS (Specification, at page 9, lines 7-
`11).
`
`It is noted that the Examiner considered original Claim 24 to be allowable. In this regard, Claim
`
`20 has been amended to include a portion of Claim 24 relating to specific operation(s) that are
`
`performed by the switch element.
`
`In contrast to the invention of Claims 20-29, the power switch (31) of Shalvi is not
`
`exposed. Specifically, Shalvi teaches:
`
`[a] power switch 31 is used to connect the battery 19 to the rest of the circuit. The
`main switch 31 is normally hidden or not immediately accessible from outside the
`housing 13 to prevent switching ON and OFF by an unauthorized person (Shalvi,
`column 2, lines 31-35) .... More importantly, any intruder is unable to dis-arm or
`tum off the solar lamp by operating the switch 31, or some other manual switch
`on the solar lamp (Shalvi, column 3, lines 7-10).
`
`- 11 -
`
`Richmond, Exh. 2015, p.10
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`As the switch of the pending claims is a "switch being exposed to provide for access thereto by a
`
`user thereby enabling a user to manipulate the switch to control the delivery of electric power
`
`from the battery," Shalvi does not teach or suggest at least one element of the claims. In
`
`addition, unlike amended Claims 20-29, the lamps of Shalvi are not lamps of different colours
`
`for producing a desired colour, and/or lamps of different colours for producing a varying colour.
`
`In fact, Shalvi provides no teaching or suggestion in regard to lamp colour(s), let alone desired
`
`light colour(s) or varying light colour(s). As the lamps of the pending claims are "at least two
`
`lamps of different colours to produce a desired colour including a varying colour," Shalvi does
`
`not teach or suggest at least two elements of the claims. Since the claims are novel over Shalvi,
`
`Applicant respectfully requests that this rejection be withdrawn.
`
`CONCLUSION
`
`Applicant believes the amendments and arguments set forth above traverse the
`
`Examiner's rejections and therefore request that these grounds for rejection be withdrawn.
`
`Should the Examiner believe a telephone interview would aid in the prosecution of this
`
`application, the Applicant encourages the Examiner to call the undersigned collect before the
`
`mailing of a further Office Action.
`
`Dated:
`
`January 30. 2006
`
`Christine A. Lekutis
`Registration No. 51,934
`
`MEDLEN & CARROLL, LLP
`101 Howard Street, Suite 350
`San Francisco, California 94105
`415.904.6500
`
`- 12-
`
`Richmond, Exh. 2015, p.11
`
`

`

`PATENT
`Attorney Docket No. SPRUSON-08795
`
`AMENDMENTS TO THE DRAWINGS
`
`The attached sheetof drawings includes changes to Figure 9, and replaces the original
`
`sheet including Figure 9. In original Figure 9, the switch element 71 was erroneously labeled 60,
`
`while the ninth resistor element 72 was erroneously labeled 71.
`
`Attachment: Replacement Sheet
`
`Annotated Sheet Showing Changes
`
`- 4-
`
`Richmond, Exh. 2015, p.12
`
`

`

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`
`Richmond, Exh. 2015, p.13
`
`

`

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`Richmond, Exh. 2015, p.14
`
`