Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory 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 improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably 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, 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, 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 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 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. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 16/983858. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-16 of this application are set forth within claims 1- 14 of copending Application No. 16/983858. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 26 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 16/983,858 in view of Trempala et al 2008/0066507 or Luo 8,276,414. Trempala et al teaches a key head portion including an insulating material spacer therein (paragraph 0073, lines 7-12), and a key interface (see the open end at 176, 178 in fig. 2) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. Luo teaches a key head portion 2 including an insulating material spacer 12 (column 5, line 14) therein, and a key interface (see the open end surrounding portion 1 in fig. 1) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. It would have been obvious to provide an insulating material within the head portion of claims 1-14 of SN 16/983,858, and a key interface to couple with the key, with the key interface defining an open end and interior surface, in view of the teaching of either Trempala et al or Luo, to provide expected lock actuating capabilities.
This is a provisional nonstatutory double patenting rejection.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 16/983891. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-16 of this application are set forth within claims 1- 14 of copending Application No. 16/983891. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 26 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 16/983,891 in view of Trempala et al 2008/0066507 or Luo 8,276,414. Trempala et al teaches a key head portion including an insulating material spacer therein (paragraph 0073, lines 7-12) and a key interface (see the open end at 176, 178 in fig. 2) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. Luo teaches a key head portion 2 including an insulating material spacer 12 (column 5, line 14) therein and a key interface (see the open end surrounding portion 1 in fig. 1) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. It would have been obvious to provide an insulating material within the head portion of claims 1-14 of SN 16/983,891, and a key interface to couple with the key, with the key interface defining an open end and interior surface, in view of the teaching of either Trempala et al or Luo, to provide expected lock actuating capabilities.
This is a provisional nonstatutory double patenting rejection.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/143146. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-16 of this application are set forth within claims 1- 14 of copending Application No. 17/143146. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 26 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/143,146 in view of Trempala et al 2008/0066507 or Luo 8,276,414. Trempala et al teaches a key head portion including an insulating material spacer therein (paragraph 0073, lines 7-12), and a key interface (see the open end at 176, 178 in fig. 2) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. Luo teaches a key head portion 2 including an insulating material spacer 12 (column 5, line 14) therein and a key interface (see the open end surrounding portion 1 in fig. 1) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. It would have been obvious to provide an insulating material within the head portion of claims 1-14 of SN 17/143,146, and a key interface to couple with the key, with the key interface defining an open end and interior surface, in view of the teaching of either Trempala et al or Luo, to provide expected lock actuating capabilities.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 25, of copending Application No. 17/087612. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-16 of this application are set forth within claims of copending Application No. 17/087612. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 26 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 25 of copending Application No. 17/087,612 in view of Trempala et al 2008/0066507 or Luo 8,276,414. Trempala et al teaches a key head portion including an insulating material spacer therein (paragraph 0073, lines 7-12) and a key interface (see the open end at 176, 178 in fig. 2) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16). Luo teaches a key head portion 2 including an insulating material spacer 12 (column 5, line 14) therein and a key interface (see the open end surrounding portion 1 in fig. 1) to couple with the key, the key interface defining an end portion open end and interior surface, as claimed in claims 15-16. It would have been obvious to provide an insulating material within the head portion of claims of SN 17/087,612, and a key interface to couple with the key, with the key interface defining an open end and interior surface, in view of the teaching of either Trempala et al or Luo, to provide expected lock actuating capabilities.
Claim Rejections - 35 USC § 103
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 statutory basis (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, 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 negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6, 8, 9, 12-14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hawthorne 7,125,058 (hereinafter Hawthorne) in view of O’Hara 6,750,568 (hereinafter O’Hara).
Re Claim 1. (Previously presented)
Hawthorne discloses a locking device (Fig.1-2), the locking device configured to engage locking hardware (20,22,120) disposed separately from the locking device, the locking device, comprising: a barrel lock (Fig.1) comprising a longitudinal axis (along length of lock in Fig.1), a head portion (2) having a radial extent, a shank portion (2a) comprising an outer surface having a radial extent smaller than the radial extent of the head portion (Fig.1), a movable retaining member (8), the movable retaining member being radially extensible and retractable relative to the longitudinal axis (Fig.1), wherein at least a portion of the movable retaining member is extensible outside the outer surface of the shank portion and is configured to engage locking hardware (Fig.1), an electrically controlled actuator (6,4b), the actuator comprising an opened position (Fig.2, unlocked) and a locked position (Fig.1), the actuator maintaining at least partial radial extension of the retaining member (8) when in the locked position and allowing radial retraction of the retaining member (8) when in the opened position, and a control circuit (12,6a,6b)) in electrical communication with the actuator (6,4b), the control circuit capable of receiving a signal from the , wherein the head portion (2) comprises at least a portion of the control circuit (6a,6b).
Hawthorne does not teach a key and therefore does not explicitly teach the italicized portion above.
However, O’Hara teaches a lock wherein a lock control circuit (5,20,21,22) is capable of receiving a signal (Fig 6) from a key (R, Fig1) and of providing an electric signal (not explicitly labeled, see flow charts in Fig 6- 7, see col 3, lines 25-col 4 line 4) when the proper signal is received from the key by the control circuit (col 3, lines 58-65).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lock and circuit (12, 6a, 6b) of Hawthorne such that it is capable of receiving a signal from a key to control its circuit, in view of the teaching of Ohara, to provide expected unlocking capabilities, and to allow the lock to be actuated from a distanced location.
Re Claim 2. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1 in combination with locking hardware (Hawthorne (20,22,120) comprising an aperture (unlabeled, Fig.2 Hawthorne) for receiving the barrel lock and wherein the locking hardware is locked when the actuator is in the locked position (Fig.1).
Re Claim 4. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator comprises a solenoid (6).
Re Claim 6. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator comprises a motor (O’Hara 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, Fig 3a-3c, col 2, lines 27-32)
Re Claim 8. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator comprises a spur gear speed reducer (O’Hara 3, Fig. 3a,3b, col. 3, lines 25-37).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control
Re Claim 9. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator comprises a planetary gear speed reducer (O’Hara 3, includes M/ G which includes gears 10,11,12 — wherein gear 12 revolves around centers of gears 10 and 11, therefore meets the understanding of a planetary gear).
Re Claim 12. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator is changed between the locked position to the opened position by rotating at least a part of the electrically controlled actuator (O’Hara - G) relative to the retaining member.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, Fig 3a-3c, col. 2, lines 27-32)
Re Claim 13. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the electrically controlled actuator is changed between the locked position to the opened position by moving at least a part of the electrically controlled actuator linearly relative to the retaining member (Hawthorne, the driver 4b moves linearly).
Re Claim 14. (Previously presented)
Hawthorne as modified by O’Hara discloses the locking device of claim 1, wherein the control circuit (Hawthorne 6a,6b,12) is capable of receiving power from the key (O’Hara) and of providing power to the actuator to change the actuator to the opened position.
Ohara teaches the concept of supplying power to the circuit via the key (see col.5, lines 6-9).
It would have been obvious to supply power to the lock of Hawthorne by a signal from the key, to supply power to the actuator, in view of the teaching of Ohara, to provide expected unlocking capabilities.
Claim 3 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hawthorne in view of O’Hara as applied to claims 1,2,4,6,8,9,12-14 above, and further in view of Larson et al 6,046,558 (hereinafter Larson).
Re Claim 3. (Previously presented)
Hawthorne in view of O’Hara discloses the locking device of claim 1, but fails to teach wherein the electrically controlled actuator comprises a shape memory alloy.
Larson teaches a lock wherein the electrically controlled actuator comprises a shape memory alloy (col.8 lines 12-19).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne (in view of Ohara) with the shape memory alloy, as taught by Larson, in order to provide a means for actuating that is temperature dependent since both actuators are functionally equivalent to each other.
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hawthorne in view of O’Hara as applied to claims 1,2,4,6,8,9,12-14 above, and further in view of Piccirillo et al 8,274,365 (hereinafter Piccirillo).
Re Claim 5. (Previously presented)
Hawthorne in view of O’Hara disclose the locking device of claim 1, but fail to teach wherein the electrically controlled actuator comprises a piezoelectric actuator.
Piccirillo teaches a lock wherein the electrically controlled actuator comprises a piezoelectric actuator (AL2, col. 5, lines 40-52)
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne (in view of Ohara) with the piezoelectric actuator, as taught by Piccirillo, in order to provide a means for low power consumption (Piccirillo, col.5 lines 47- 53).
Claims 7, 10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hawthorne in view of O’Hara as applied to claims 1,2,4,6,8,9,12-14 above, and further in view of Thomas et al 6,442,983 (hereinafter Thomas).
Re Claim 7. (Previously presented)
Hawthorne in view of O’Hara disclose the locking device of claim 1, but fail to teach wherein the electrically controlled actuator comprises a screw.
Thomas teaches a lock wherein the actuator (510,260,272,275) comprises a screw (260).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the actuator of Hawthorne (in view of Ohara) with the actuator of Thomas in order to provide a means for maintaining the lock in a free running configuration (Thomas Fig 7a, col. 7, lines 33-45).
Re Claim 10. (Previously presented)
Hawthorne in view of O’Hara and Thomas disclose the locking device of claim 7, wherein the screw is driven by an electric motor (Thomas motor 510) in communication with the control circuit (Hawthorne; Thomas, claim 7, Fig 7a, col. 7, lines 33-45).
18. Claims 11,15,16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hawthorne in view of O’Hara as applied to claims 1,2,4,6,8,9,12-14 above, and further in view of Trempala et al 2010/0236306 (hereinafter Trempala).
Re Claim 11. (Previously presented)
Hawthorne in view of O’Hara discloses the locking device of claim 1, wherein the head portion (2) comprises a radial direction (Fig.1-2) generally perpendicular to the longitudinal axis and fails to teach wherein the head portion comprises an interface for a key comprising a recess formed generally in the radial direction for gripping of the head portion by a key.
Trempala teaches said head portion (100) further comprises a key interface (176,178, Fig2) configured to couple with said key (200).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to provide the device of Hawthorn in view of Ohara with the addition of the key interface as taught by Trempala in order optimize the lock by restricting unlocking access only authorized by a key (Trempala, paragraph 9)
Re Claim 15. (Previously presented)
As described above with respect to claim 11, Hawthorne in view of O’Hara and Trempala discloses the locking device of claim 1, wherein said head portion further comprises a key interface configured to couple with said key.
Re Claim 16. (Previously presented)
As described above with respect to claim 11, Hawthorne in view of O’Hara and Trempala discloses the locking device of claim 15, wherein said key interface comprises an end portion, said end portion forming an open end, and wherein said end portion comprises an interior surface defining a cavity extending within the end portion.
Allowable Subject Matter
Claims 17-25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 7/24/25 have been fully considered but they are not persuasive.
Initially it is noted that the Examiner attempted to discuss the RCE amendment, per his request.
With respect to the double patenting rejections, it is noted that applicant has requested reconsideration on page 3 of the remarks of 7/24/25, however, the argument is not persuasive and the double patenting rejections are reiterated above.
With respect to applicant’s arguments regarding the prior art of record, it is respectfully submitted that these arguments are not persuasive. Applicant argues the combination of Hawthorne and O’Hara, as well as the secondary teaching references, Larson, Piccirillo, Thomas and Trempala on pages 5-12, however, it is respectfully submitted that the combined teachings of Hawthorne and O’Hara read on all limitations as reiterated above. And the addition of the secondary references further provides teachings for the dependent claims as discussed above. Applicant’s arguments are not persuasive.
Accordingly, claims 1-26 stand rejected. This action is non-final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUZANNE DINO BARRETT whose telephone number is (571)272-7053. The examiner can normally be reached M-TH 8AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached on 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SUZANNE DINO BARRETT
Primary Examiner
Art Unit 3675B
Sdb
/SUZANNE L BARRETT/Primary Examiner, Art Unit 3675
Prosecution Insights