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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/12/2026 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 US 7125058 in view of Ohara US 6750568.
Re-claim 1, Hawthorne teaches a barrel lock (fig1) for use in securing an enclosure, 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 head portion 2);
wherein the head portion comprises at least a portion (2 comprises a portion of 6a and 6b of lock control circuit – 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 US 7125058 in view of Ohara US 6750568 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 US 7125058 in view of Ohara US 6750568 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 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 16/983,891. 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 06/12/2026 have been fully considered but they are not persuasive.
Although Examiner acknowledges Applicant’s request to communicate over the phone, 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. Applicant must submit amendments (should they wish to amend claims) and relevant arguments in their response to office actions. Examiner has no suggestion to provide to overcome the prior art rejections at this time that would advance prosecution other than the already indicated allowable subject matter.
Applicant discusses amendments to claims in order to overcome statutory double patenting rejections, however amendments were not made to the claims so the Examiner is unclear what Applicant is referring to. Generally, if Applicant does amend claims so they are patentably distinct from the copending applications and patents referenced in the double patenting rejections above, then they would render the double patenting rejections moot as claims would (presumably) no longer claim identical subject matter. However, all amendments are subject to re-evaluation; should Examiner find the amended claims of the present application still not patentably distinct from the copending applications or patents mentioned above, the double patenting rejections would still be maintained. 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). Changing a few words or the actual structure of a claim is not sufficient if the claims of the present application are still anticipated by or would have been obvious over the reference claims of the copending applications/patents referenced above.
Regarding Applicant’s argument that Hawthorne lacks motivation to communicate wirelessly: this is argument is moot because Hawthorne is not relied upon to teach the motivation to communicate wirelessly. Rather, the secondary reference, Ohara, is the teaching reference, which teaches essentially distanced communication (wireless communication).
Referring to Hawthorne’s desire to “provide a large margin of safety in design” (page 3 Remarks) does not negate the combination of Hawthorne and Ohara being obvious. Applicant relies on assumptions or the possibility of issues to argue that Hawthorne cannot be modified by Ohara (pages 2-3 of Remarks), however none of these are proven based on evidence. Other than stating that Hawthorne requires a large margin of safety in design, Applicant does not provide any justification, based on evidence or other disclosure in Hawthorne, as to why Hawthorne would no longer operate the same way should it be combined with Ohara. Applicant essentially only states that the combination would jeopardize this ‘margin of safety’ because wireless communication “would be highly susceptible to EMP disruption” (page 1 Remarks Part 2). Examiner would like to draw attention to Applicant’s own words – “would be” and “susceptible” – neither of which are definitive language that would indicate that the wireless communication will always create an issue in safety. Applicant cannot prove with evidence that wireless communication does (definitively) create a safety issue that would render Hawthorne unusable. Secondly, Applicant has not provided any evidence that does explain or show why wireless communication would be susceptible to EMP disruption and how that affects the safety of a device.
Regarding Applicant’s further reiteration that there is no reason to combine Ohara and Hawthorne: Once again, Examiner maintains the position taken in the office action. Applicant relies on Hawthorne not suggesting interchangeability as a reason why there is a lack of motivation to combine. However, Examiner once again clarifies that Hawthorne is not relied upon to teach interchangeability (i.e. replacement of one feature with another). Rather the combination involves modifying Hawthorne to add the reading of a signal from a key (over a distance), as taught by Ohara. Adding remote control function is a well-known to that of routine skill in the art, as evidence by the prior art(s) used above. Applicant relies on the physical differences of Hawthorne (pages 3-4 Remarks) as to why it cannot be used with Ohara’s key, however, the key of Ohara is one that is used remotely. There is no limitation in the claim that requires the key must interact with the device of Hawthorne physically. The relationship between the key and the circuit, and thus the rest of the device, is electrical as described in claim 1. This same relationship is shown in Ohara, and adding another electrical feature (remote communication via signal of key) to Hawthorne is clearly obvious in view of Ohara. Claim 11 is the only claim that does require the key physically interacting with the head portion, which was indicated has continuously been indicated as allowable subject matter in prosecution history. However, Applicant has not amended claim 1 to include this allowable subject matter, nor has Applicant amended claim 11 to be in independent form. Rejection maintained.
Regarding premature deployment of Hawthorne: the argument is considered moot because this function is not relied upon in the rejection above.
Regarding Ohara not teaching a barrel lock: Ohara is not relied upon to teach this feature. (page 6 Remarks)
Applicant repeatedly used the argument that there is a lack of motivation to combine the references in the prior art rejection, and Examiner has repeatedly addressed such arguments in prior prosecution history. Once again, Examiner respectfully reminds the Applicant that 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, which are well known in the prior art to provide remote key actuation and authorized key actuation to a locking device. Note that secondary references, all together, 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.
The double patenting rejection is applicable because the claims are not patentably distinct. Since the last rejection (Final Office Actions 01/12/2026), the claims have not been amended to overcome the double patenting rejection, nor has a terminal disclaimer been filed. Double patenting rejections are maintained.
It is respectfully noted that Applicant has not amended the claims to address any of the prior art rejections in the Final Office Action (01/12/2026).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Art is related to locks.
Prior PTO892s 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.
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 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.
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.
/F.F.A./
Examiner
Art Unit 3675
/CHRISTINE M MILLS/ Supervisory Patent Examiner, Art Unit 3675
