DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
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 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 negatived by the manner in which the invention was made.
Claims 1, 2, 4, 6, 8-9, 12-14 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne 7,125,058 in view of Ohara 6,750,568.
Re-claim 1, Hawthorne teaches a barrel lock (fig1) for use in securing the utility locking hardware, the barrel lock, comprising:
a longitudinal axis (along length of lock, fig1);
a head portion (2 in fig. 1) having a radial extent (i.e. radius of 2);
a shank portion (2a) having a radial extent smaller than the radial extent of the head portion (see fig1);
a movable retaining member (8),
the movable retaining member being radially extensible (I.e. movement left and right of page, fig1) and retractable relative to the longitudinal axis;
an electrically controlled actuator (6,4b),
the actuator comprising an opened position (when unlocked, fig2) and a locked position (fig1),
the actuator maintaining at least partial radial extension of the retaining member when in the locked position (fig1) and allowing radial retraction of the retaining member when in the open position (fig2); and
a lock control circuit (12,6a,6b) in electrical communication with the actuator (used with the t dhead portion 2);
wherein the head portion comprises at least a portion (contains part of 6a and 6b, see fig1) of the lock control circuit. (fig1-2)
Hawthorne does not teach a key and therefore does not explicitly teach:
the lock control circuit capable of receiving a signal from a key and of providing an electric signal to the actuator when the proper signal is received from the key by the lock control circuit,
Ohara teaches a lock wherein a lock control circuit (5,20,21,22) is capable of receiving a signal (fig6) from a key (R, fig1) and of providing an electric signal (not explicitly labeled, see flow charts in fig6-7, see col.3 lines 25-col.4 line 4) when the proper signal is received from the key by the control circuit (col3 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, Hawthorne in view of Ohara teaches the barrel lock of claim 1 in combination with a locking hardware (Hawthorne 20, 22, 120) having an aperture (not labeled see Hawthorne fig2) for receiving the barrel lock and wherein the locking hardware (Hawthorne 120) is locked when the actuator is in the locked position. (Hawthorne fig1-2)
Re-claim 4, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electronically controlled actuator comprises a solenoid (Hawthorne 6). (fig1-2, Hawthorne)
Re claim 6, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a motor (Ohara, actuator 3 includes M = motor, actuator also includes G,10,8, and 11 and 9 and C – see fig3a-3b).
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, fig3a-3c, col2 lines 27-32)
Re claim 8, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a spur gear speed reducer (Ohara, actuator 3 includes M & essentially G, see fig3a-3b, col.3 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 (Ohara, fig3a-3c, col2 lines 27-32)
Re claim 9, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a planetary gear speed reducer (Ohara, actuator 3 includes M & essentially 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, see fig3a-3b, col.3 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 (Ohara, fig3a-3c, col2 lines 27-32)
Re claim 12, Hawthorne in view of Ohara teaches the barrel lock of claim 1 wherein the electrically controlled actuator is changed between the locked position to the open position by rotating at least a part (Ohara, G of actuator 3) of the electrically controlled actuator.
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, fig3a-3c, col2 lines 27-32)
Re claim 13, Hawthorne in view of Ohara teaches the barrel lock 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). (fig1-2 Hawthorne)
Re claim 14, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the lock control circuit (Hawthorne) is capable of receiving power from the key (Ohara) and 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.
Claims 3 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne 7,125,058 in view of Ohara 6,750,568 as applied to claim 1 above, and further in view of Larson et al. US 6046558.
Re claim 3, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach the 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.
Claims 5 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne 7,125,058 in view of Ohara 6,750,568 as applied to claim 1 above, and further in view of Piccirillo et al. US 8274365.
Re claim 5, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach the 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-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne 7,125,058 in view of Ohara 6,750,568 as applied to claim 1 above, and further in view of Thomas et al 6,442,983.
Re claim 7, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach 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 fig7a, col. 7 lines 33-45).
Re claim 10, Hawthorne in view of Ohara & Thomas teaches the barrel lock of claim 7 wherein the screw (Thomas) is driven by an electric motor (of the actuator of Thomas – motor 510 – see claim 7 for combination rejection) in communication with the lock control circuit (Hawthorne). (Thomas, fig6-7a, col. 7 lines 33-45)
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and /n re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope.
The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 17/087,612. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 13/835,722. 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 1-14 of this application are set forth within claims 1- 14 of copending Application No. 13/835,722. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,822,835. 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 1-14 of this application are set forth within claims 1-20 of U.S. Patent No. 10,822,835.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-l.jsp.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim (and its double patenting rejections), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Although barrel locks with key that must grip the head portion of the lock in a recess are known, these keys are not electronic keys but physical keys that must turn to actuate. However, Hawthorne teaches a linearly moving lock (that must slide to actuate). Claim 1 requires the key must send an electric signal to the actuator. However, related references such as Trempala US 20100236306 teaches a key 200 however the lock requires rotation by the key which is unlike the movement of the Hawthorne reference. Furthermore, Trempala does not teach a radially movable retaining member. Examiner can find no reason to combine or modify references of record without the use of impermissible hindsight.
Response to Arguments
Applicant's arguments regarding the prior art & double patenting rejections of claims 1-14, filed 12/15/2025 have been fully considered but they are not persuasive.
Regarding the combination of Hawthorne and Ohara and the lack of motivation to combine Hawthorne with Ohara (page 5-7 Remarks): Applicant respectfully disagrees. Firstly, Hawthorne is not relied upon to provide motivation or suggestion of the combination. Ohara is the secondary reference, Hawthorne being the primary reference. The motivation, or suggestion to combine in the obvious statement in the above rejections is found in Ohara.
Regarding “large margin of safety”: Applicant does not provide any evidence-based support to prove Applicant’s statement that remote control via wireless transmission ‘could be defective and dangerous’ thus compromises the large margin of safety that is important in Hawthorne (page 5-8 Remarks). Applicant repeats this argument several times in the Remarks by simply stating that the combination would because Applicant states that wireless communication is highly susceptible to EMP disruption. The arguments are based on assumption that the combination would, rather that explaining and providing evidence to show how the combination does “compromise the importance of a large margin of safety (of Hawthorne)”. A component being “highly susceptible” to something (although there is no evidence provided to support such a claim) does not mean that it always will be susceptible. The term “highly susceptible” does not mean that it occurs in every circumstance or that there is a definite chance it will happen. Rejection maintained.
Regarding Applicant’s argument that Ohara lacks interchangeability with Hawthorne (page 6 Remarks): This is an irrelevant argument as Ohara is not used to be interchangeable with Hawthorne, vice versa. The combination requires that a component of Ohara is added to the device of Hawthorne. This does not require the two devices to be interchangeable, but rather Hawthorne must be capable of maintaining its function with the addition – which it is as the addition does not alter the other sub components of the device of Hawthorne. Rejection maintained.
Regarding the control circuit of Hawthorne: (pages 7 Remarks): Stating that the identified components in Hawthorne are not part of the circuit is not enough to render the rejection invalid. Exmainer explains above how and why the circuit is part of the head portion, etc., however, Applicant merely states that it is not contemplated by Hawthorne but does not explain why or how it is not possible.
Regarding the other references - Thomas, Larson, Piccirillo: Examiner disagrees. The motivation to use any of these references in combination are provided above and cited. Simply stating that there is no motivation or that it would destroy the Hawthorne reference is not sufficient evidence to overcome the prior art rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Art is related to locks.
Prior PTO892 lists related but not relied upon prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARIA F. AHMAD whose telephone number is (571)270-1334. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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/F.F.A./
Examiner
Art Unit 3675
/CHRISTINE M MILLS/ Supervisory Patent Examiner, Art Unit 3675
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