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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/22/2025 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 15, 25 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne US 7,125,058 in view of Ohara US 6,750,568 and further in view of Trempala et al. US 20100236306.
Re-claim 15, Hawthorne teaches a barrel lock (fig1) for use in securing an enclosure, the barrel lock, comprising:
a lock body (fig1) comprising a head portion (2 in fig. 1) and a shank portion (2a) arranged along a longitudinal axis (along length of lock, fig1) of the lock body, said head portion comprising a first radial extent (i.e. radius of 2) that is larger than a second radial extent of said shank portion (see fig1);
an electrically controlled actuator (6,4b) disposed within said lock body, the electrically controlled actuator moveable between an open position (when unlocked, fig2) and a locked position (fig1),
a control circuit (12,6a,6b) disposed within said lock body and in electrical communication with the electrically controlled actuator (used with the head portion 2);
a movable retaining member (8), that is radially extensible (I.e. movement left and right of page, fig1) and retractable from said shank portion relative to said longitudinal axis;
in said open position, the electronically controlled actuator maintaining allows at least partial radial retraction of the said movable retaining member relative to said shank portion; and
Hawthorne does not teach a key and therefore does not explicitly teach:
in response to receipt of a control signal from a key, said control circuit is configured to cause said electrically controlled actuator to move from the locked position to the opened position;
said head portion further comprises a key interface configured to couple with said key.
Ohara teaches a lock where in response to receipt of a control signal (fig6) from a key (R, fig1), said control circuit (5,20,21,22) is configured to cause said electrically controlled actuator to move from the locked position to the open position (fig1, see flow charts in fig6-7, see col.3 lines 25-col.4 line 4 and col3 lines 58-65)
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed 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.
Trempala further 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)
Regarding claim 25, Hawthorne (in view of Ohara and Trempala) teaches the barrel lock of claim 15 wherein said control circuit (Hawthorne) is disposed (partially, Hawthorne see 6a,6b) within said head portion. (Hawthorne fig2)
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 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.
Claims 15 is provisionally rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1, 11 of copending Application No. 16/983,891. 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 claim 15 of this application are set forth within claims 1, 11 of copending Application No. 16/983,891. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 15 is provisionally rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1, 11 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 claim 15 of this application are set forth within claims 1, 11 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 15 is provisionally rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1, 11 of copending Application No. 17/143,146. 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 15 of this application are set forth within claims 1, 11 of copending Application No. 17/143,146. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 15-22,24,26-27 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 15-22,24,26 of this application are set forth within claims 1-20 of U.S. Patent No. 10,822,835.
Allowable Subject Matter
Claim 16-24, 26-27 are objected to however these claims are either rejected under double patenting (claims 15-22,24,26 were subject to double patenting rejection) and/or dependent on a rejected claim (claims 15 and 25 are rejected under prior art), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and/or overcoming double patenting rejections.
Note: Claims 23 and 27 are objected to due to its dependency on claim 22.
Regarding claim 16, Hawthorne although teaches a head portion, does not teach a separate end cap that would comprise a key interface, wherein said key interface comprises a protrusion along the longitudinal axis of the lock body and a recess in a radial direction. Examiner can find no reason to combine or modify references of record without the use of impermissible hindsight.
Regarding claim 22, although references of record (Larson US 6046558) teach a shape memory alloy, Larson does not teach the shape memory alloy having the proximal end disposed in head portion and distal end disposed in shank portion. 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 and/or double patenting rejections of claims 15-27 filed 07/22/2025 have been fully considered but they are not persuasive.
Copending App No. 16/983,858 was abandoned 02/10/2025 therefore the double patenting rejection is now moot. The double patenting rejection is applicable because the claims are not patentably distinct. Double patenting rejections are overcome via terminal disclaimer, not by requesting abeyance. Other double patenting rejections are maintained.
Applicant request for interview is acknowledged however a formal request was not filed by the Applicant. Furthermore, Applicant is respectfully reminded that requests for interviews do not delay or pause the prosecution process and prosecution of an application is not conducted over an interview. The application is examined based on the latest filed reply.
Regarding the combination of Ohara with Hawthorne (page 6): Examiner respectfully disagrees.
Firstly, the purpose of Ohara is to teach a key that can send a control signal to the actuator. Ohara specifically teaches the purpose of the key, which is to open. In this instance, and as the claims are written, there is no difference in the purpose of the key in Ohara, and the claimed invention key in claim 15. Therefore, the use of the secondary teaching reference of Ohara does not teach away from Hawthorne. Regardless of Hawthrone’s function of preventing premature deployment, the key of Ohara is still functional with Hawthorne and does not impede its original function.
Ohara reference is used to only teach remote key control (i.e. enable actuation of lock via a distanced location). It is an added feature to Hawthorne (when combined), and would not teach away from the original function of Hawthorne as providing remote actuation of the lock does not negate the regular release function of Hawthorne. The purpose or motivation of the combination is found in Ohara – remote actuation – not Hawthorne. The teaching reference is often referred to as providing the motivation for combination, not the primary reference. The combination merely involves enabling the circuitry of Hawthorne to receive a remote signal and actuate the lock based upon that signal (from the key), a concept that exists in the prior art, as demonstrated by Ohara. Rejection maintained.
Regarding Trempala reference (page 7): Examiner respectfully disagrees and maintains the rejection. The interface of Trempala requires inductive coupling with the key for it to operate the lock, therefore, as long as that is possible between the key interface and key, the interface will properly function. Trempala is used to teach the concept of a key interface needing to couple with the key exists in the prior art and is not a novel concept. Including a key interface in Hawthorne will not alter the original functionality of Hawthorne. Rejection maintained.
Regarding Hawthorne’s circuit (page 8): Examiner respectfully disagrees. The circuit referenced in Hawthorne in the above rejection does in fact function as disclosed. See col. 3 lines 26-37. Portions 6a and 6ab are within the lock body, which encompasses 12 as well (the lock body is not just 2) as shown in fig1.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combinations do not alter the original functionality of the primary prior art reference, Hawthorne. Rather, the secondary references teach additions that can be added to Hawthorne, that are well known in the prior art in order to provide remote key actuation and authorized key actuation to a locking device. Note that secondary references as a whole are not included in the combination with the primary Hawthorne reference, rather they are used to teach different existing concepts in the prior art. Rejection maintained.
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 - Thursday 10am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M. Mills can be reached on 5712728322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.F.A./
Examiner
Art Unit 3675
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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