DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The Amendment filed 20 January 2026 has been entered and considered. Claims 14, 27, 30, 34-35, 37, and 44 have been amended. Claims 24, 31, and 38 have been cancelled. Claims 14, 27-30, 34-37, and 43-47 are all the claims pending in the application. Claims 14, 27-30, 34-37, and 43-47 are rejected. All new grounds of rejection set forth in the present action were necessitated by Applicant’s claim amendments.
Response to Amendment
Claim Interpretation – 35 USC 112(f)
In view of the amendments to Claim 30, the claim interpretation under 35 USC 112(f) is withdrawn.
Prior Art Rejections
In view of the amendments to independent Claims 14, 30, and 37, and their dependent claims by extension, the rejection under 35 USC 102(a)(2) using previously cited art Robertson is withdrawn. However, a rejection under 35 USC 103 is presented using previously cited art Robertson in view of Marsh. On pages 6-11 of the Amendment, the Applicant clarifies in Claim 14 that the method includes determining whether the automobile key includes a blade based on the input. On page 9 of the Amendment, the Applicant argues that Marsh fails to teach this limitation as it “merely describes receiving data from the transponder chip by bringing the transponder chip into close proximity to the kiosk”. Examiner respectfully disagrees.
With respect to the newly added limitation of Claim 14, and analogous limitations in Claims 30 and 37, Robertson as modified by Marsh teaches determining, based on the input, that the automobile key is bladeless (Marsh: Par. [0048], [0119], and Fig. 14; Par. [0048]: the key detector 106 can be any suitable device that detects the bitting pattern and/or blank type of a key using any suitable technology such as optical technologies, etc.; Par. [0119]: such an arrangement can facilitate sensing information from the transponder chip in parallel with sensing of geometric properties of the key (e.g., using detector(s) 106), potentially reducing the total time required to scan a transponder key, in cases in which the transponder key does not include a blade and/or a bitting pattern, and/or where such information is unnecessary for accessing the property for which the transponder key; Fig. 14 showcases the detection of the key blade). Marsh teaches a key being inserted into a slot as the input and the transponder chip being sensed as well as the geometric properties of the key itself. It then goes on to provide an example situation of a bladeless key, though it may be a fragmented sentence. However, it is reasonable to interpret that in this situation, the system Marsh cites would at least determine the lack of blade from the inserted transponder key first, and then proceed to only sense the transponder chip. Thus, contrary to Applicant’s assertions, the proposed combination of Robertson and Marsh does indeed teach the newly added features of Claims 14, 30, and 37.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14, 27-30, 34-37, and 43-47 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson et al. (U.S. Patent App. Pub No. 2022/0139138 A1, hereafter referred as Robertson) in view of Marsh et al. (U.S. Patent App. Pub No. 2016/0004892 A1, hereafter referred as Marsh).
Regarding Claim 14:
Robertson teaches a method for duplicating an automobile key (Robertson: Par. [0009]; method for effectively and accurately capturing information from a master key to be copied), the method comprising: receiving input via a user interface of a self-service kiosk indicative of a make, model, and year of an automobile associated with the automobile key (Robertson: Par. [0011]; unsupervised or semi-supervised key cutting and vehicle pairing operation such as a kiosk having an interactive display with a set of user interfaces to assist a user in entering key identifying information, such as make, model, and year); determining, based on the input, that the automobile key includes a transponder (Robertson: Par. [0021] and Fig. 2; FIGS. 1-5 provide a series of flowcharts illustrating an exemplary user-interface driven process for identifying a master key, duplicating the master key and cutting a key blank; Fig. 2 specifically showcases determining if the key is a transponder or not in this exemplary user-interface); capturing at least one image of the automobile key provided by a user of the self-service kiosk (Robertson: Par. [0041]; user inserts original or master key, vision system may include a camera or imaging device to capture one or more images of an outline of the master key); verifying, based on the at least one image, a match with a remote control device associated with the make, model, and year of the input received by the user interface (Robertson: Par. [0056], [0060] and Fig. 12; if the captured image and associated data do not match an actual valid key code for an identified make, model and year for a vehicle then the system can issue a warning; otherwise, variant keys that match the make-model-year entered by the user are displayed; see Chrysler Dodge Jeep transponder key in Fig. 12); and transmitting the input of the make, model, and year of the automobile received by the user interface and the at least one image to a remote server over a network (Robertson: Par. [0050]; network server 702 and is the conduit, or interface, through which the remote kiosk 710 and the iKeyless System 701 sends and receives information to/from the iKeyless DB 703).
Robertson fails to teach determining, based on the input, that the automobile key is bladeless.
Marsh, like Robertson, is directed to identifying and duplicating access control devices such as house keys, automobile keys, motorcycle keys, recreational vehicle keys, RFID fobs, etc. Marsh does teach determining, based on the input, that the automobile key is bladeless (Marsh: Par. [0048], [0119], and Fig. 14; Par. [0048]: the key detector 106 can be any suitable device that detects the bitting pattern and/or blank type of a key using any suitable technology such as optical technologies, etc.; Par. [0119]: such an arrangement can facilitate sensing information from the transponder chip in parallel with sensing of geometric properties of the key (e.g., using detector(s) 106), potentially reducing the total time required to scan a transponder key, in cases in which the transponder key does not include a blade and/or a bitting pattern, and/or where such information is unnecessary for accessing the property for which the transponder key; Fig. 14 showcases the detection of the key blade). March clearly contemplates using the transponder to identify what replacement key is appropriate, and indicates at minimum that some transponder keys are bladeless and/or do not have a bitting pattern cut in the key shaft. By determining that one of these transponders is identified it is determining that the transponder is bladeless. The most reasonable interpretation of this portion of March is that when the transponder key does not include a blade it does not try to access/retrieve/compare that information, “potentially reducing the total time required to scan the key” consistent with the overall objective of this embodiment of Marsh.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Robertson to utilize determining geometric properties about the transponder key, as taught by Marsh, to arrive at the claimed invention discussed above. Such a modification is the result of combining prior art elements according to known methods to yield predictable results. As taught by Marsh, the proposed modification would allow potentially reducing the total time required to scan a transponder key by ignoring unnecessary information (Marsh: Par. [0119]).
In regards to Claim 27, Robertson as modified by Marsh further teaches the method of claim 14, wherein the self-service kiosk further comprises one or more imaging devices capturing the at least one image of the automobile key (Robertson: Par. [0041]; vision system may include a camera or imaging device to capture one or more images of an outline of the master key).
In regards to Claim 28, Robertson as modified by Marsh further teaches the method of claim 14, the method further comprising: receiving, via the user interface, customer information (Robertson: Par. [0050]; transaction data associated with key cutting operations may be stored locally at the kiosk 710 and uploaded to System 701 such as for use in auditing sales data, inventory maintenance, machine maintenance, customer data and other valuable uses; a customer information module 738); determining order information; and displaying, via the user interface, the order information (Robertson: Par. [0064]; user interface 1110 provides for the display of information, instructions, and for the input of user command related to functions or services provided by the key scanning and cutting apparatus 1100 including the scanning, selecting, cutting, and ordering of replacement or cut keys for a customer's master key).
In regards to Claim 29, Robertson as modified by Marsh further teaches the method of claim 28, wherein the order information includes at least one of key information, pricing information, or shipping information (Robertson: Fig. 12 and 14; showcases the comparison of the Kiosk price compared to the dealership cost).
Regarding Claim 30:
Robertson as modified by Marsh further teaches a system for duplicating an automobile key (Robertson: Par. [0009]; system for effectively and accurately capturing information from a master key to be copied), the system comprising: a self-service kiosk in communication with a remote server via a network (Robertson: Par. [0050]; network server 702 and is the conduit, or interface, through which the remote kiosk 710 and the iKeyless System 701 sends and receives information to/from the iKeyless DB 703), the self- service kiosk having a housing; a display (Robertson: Par. [0048]; key cutting machine or kiosk 600 includes a display 602), the display displaying a user interface, the user interface capturing input indicative of a make, a model, and a year of an automobile associated with the automobile key (Robertson: Par. [0011]; unsupervised or semi-supervised key cutting and vehicle pairing operation such as a kiosk having an interactive display with a set of user interfaces to assist a user in entering key identifying information, such as make, model, and year); and an automobile key identification system disposed within the housing, the automobile key identification system verifying, a match with a remote control device associated with the input indicative of the make, the model, and the year of the automobile captured using the user interface (Robertson: Par. [0060] and Fig. 12; variant keys that match the make-model-year entered by the user are displayed; see Chrysler Dodge Jeep transponder key in Fig. 12), the match verified by determining, based on the input, that the automobile key includes a transponder (Robertson: Par. [0021] and Fig. 2; FIGS. 1-5 provide a series of flowcharts illustrating an exemplary user-interface driven process for identifying a master key, duplicating the master key and cutting a key blank; Fig. 2 specifically showcases determining if the key is a transponder or not in this exemplary user-interface) and that the automobile key is bladeless (Marsh: Par. [0048], [0119], and Fig. 14; Par. [0048]: the key detector 106 can be any suitable device that detects the bitting pattern and/or blank type of a key using any suitable technology such as optical technologies, etc.; Par. [0119]: such an arrangement can facilitate sensing information from the transponder chip in parallel with sensing of geometric properties of the key (e.g., using detector(s) 106), potentially reducing the total time required to scan a transponder key, in cases in which the transponder key does not include a blade and/or a bitting pattern, and/or where such information is unnecessary for accessing the property for which the transponder key; Fig. 14 showcases the detection of the key blade) and using at least one image corresponding to the automobile key obtained via the self-service kiosk (Robertson: Par. [0056]; if the captured image and associated data do not match an actual valid key code for an identified make, model and year for a vehicle then the system can issue a warning), the self-service kiosk transmitting the at least one image and the input indicative of the make, the model, and the year of the automobile captured to the remote server over the network (Robertson: Par. [0050]; network server 702 and is the conduit, or interface, through which the remote kiosk 710 and the iKeyless System 701 sends and receives information to/from the iKeyless DB 703).
In regards to Claim 34, Robertson as modified by Marsh further teaches the system of claim 30, wherein the self-service kiosk further comprises one or more imaging devices capturing the at least one image of the automobile key (Robertson: Par. [0041]; vision system may include a camera or imaging device to capture one or more images of an outline of the master key).
In regards to Claim 35, Robertson as modified by Marsh further teaches the system of claim 30, the self-service kiosk receiving, via the user interface, customer information (Robertson: Par. [0050]; transaction data associated with key cutting operations may be stored locally at the kiosk 710 and uploaded to System 701 such as for use in auditing sales data, inventory maintenance, machine maintenance, customer data and other valuable uses; a customer information module 738), determine order information, and displaying, via the user interface, the order information (Robertson: Par. [0064]; user interface 1110 provides for the display of information, instructions, and for the input of user command related to functions or services provided by the key scanning and cutting apparatus 1100 including the scanning, selecting, cutting, and ordering of replacement or cut keys for a customer's master key).
In regards to Claim 36, Robertson as modified by Marsh further teaches the system of claim 35, wherein the order information includes at least one of key information, pricing information, or shipping information (Robertson: Fig. 12 and 14; showcases the comparison of the Kiosk price compared to the dealership cost).
Regarding Claim 37:
Robertson as modified by Marsh further teaches an automobile key identification system (Robertson: Par. [0009]; system for effectively and accurately capturing information from a master key to be copied) comprising: one or more processors; and memory storing instructions that, when executed by the one or more processors (Robertson: Par. [0018]; processor in communication with a memory having a set of instructions executable by the processor stored therein), cause the automobile key identification system to: receive input via a user interface indicative of a make, model, and year of an automobile associated with an automobile key (Robertson: Par. [0011]; unsupervised or semi-supervised key cutting and vehicle pairing operation such as a kiosk having an interactive display with a set of user interfaces to assist a user in entering key identifying information, such as make, model, and year); determine, based on the input, that the automobile key includes a transponder (Robertson: Par. [0021] and Fig. 2; FIGS. 1-5 provide a series of flowcharts illustrating an exemplary user-interface driven process for identifying a master key, duplicating the master key and cutting a key blank; Fig. 2 specifically showcases determining if the key is a transponder or not in this exemplary user-interface); determine, based on the input, that the automobile key is bladeless (Marsh: Par. [0048], [0119], and Fig. 14; Par. [0048]: the key detector 106 can be any suitable device that detects the bitting pattern and/or blank type of a key using any suitable technology such as optical technologies, etc.; Par. [0119]: such an arrangement can facilitate sensing information from the transponder chip in parallel with sensing of geometric properties of the key (e.g., using detector(s) 106), potentially reducing the total time required to scan a transponder key, in cases in which the transponder key does not include a blade and/or a bitting pattern, and/or where such information is unnecessary for accessing the property for which the transponder key; Fig. 14 showcases the detection of the key blade); capture at least one image of the automobile key provided by a user (Robertson: Par. [0041]; user inserts original or master key, vision system may include a camera or imaging device to capture one or more images of an outline of the master key); verify, based on the at least one image, a match with a remote control device associated with the make, model, and year of the input received by the user interface (Robertson: Par. [0056], [0060] and Fig. 12; if the captured image and associated data do not match an actual valid key code for an identified make, model and year for a vehicle then the system can issue a warning; otherwise, variant keys that match the make-model-year entered by the user are displayed; see Chrysler Dodge Jeep transponder key in Fig. 12); and transmit the input of the make, model, and year of the automobile received by the user interface and the at least one image to a remote server over a network (Robertson: Par. [0050]; network server 702 and is the conduit, or interface, through which the remote kiosk 710 and the iKeyless System 701 sends and receives information to/from the iKeyless DB 703).
In regards to Claim 43, Robertson as modified by Marsh further teaches the method of claim 28, the method further comprising: transmitting the order information to a remote scheduling server (Robertson: Par. [0087]; the local key cutting machine may include QR Code Generation capabilities or be capable of establishing a connection with a remote central service having QR Code Generation capabilities; the central service utilizes database structures to associate the transaction ID with the QR code and master key image data captured by and uploaded from the key cutting kiosk).
In regards to Claim 44, Robertson as modified by Marsh further teaches the system of claim 35, wherein the self-service kiosk transmits the order information to a remote scheduling server (Robertson: Par. [0087]; the local key cutting machine may include QR Code Generation capabilities or be capable of establishing a connection with a remote central service having QR Code Generation capabilities; the central service utilizes database structures to associate the transaction ID with the QR code and master key image data captured by and uploaded from the key cutting kiosk).
In regards to Claim 45, Robertson as modified by Marsh further teaches the automobile key identification system of claim 37, the memory storing instructions that, when executed by the one or more processors, further cause the automobile key identification system to: receive, via the user interface, customer information (Robertson: Par. [0050]; transaction data associated with key cutting operations may be stored locally at the kiosk 710 and uploaded to System 701 such as for use in auditing sales data, inventory maintenance, machine maintenance, customer data and other valuable uses; a customer information module 738); determine order information; and display, via the user interface, the order information (Robertson: Par. [0064]; user interface 1110 provides for the display of information, instructions, and for the input of user command related to functions or services provided by the key scanning and cutting apparatus 1100 including the scanning, selecting, cutting, and ordering of replacement or cut keys for a customer's master key).
In regards to Claim 46, Robertson as modified by Marsh further teaches the automobile key identification system of claim 45, wherein the order information includes at least one of pricing information or shipping information (Robertson: Fig. 12 and 14; showcases the comparison of the Kiosk price compared to the dealership cost).
In regards to Claim 47, Robertson as modified by Marsh further teaches the automobile key identification system of claim 45, the memory storing instructions that, when executed by the one or more processors, further cause the automobile key identification system to: transmit the order information to a remote scheduling server (Robertson: Par. [0087]; the local key cutting machine may include QR Code Generation capabilities or be capable of establishing a connection with a remote central service having QR Code Generation capabilities; the central service utilizes database structures to associate the transaction ID with the QR code and master key image data captured by and uploaded from the key cutting kiosk).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENAE BITOR whose telephone number is (703)756-5563. The examiner can normally be reached Monday to Friday: 8:00 - 5:30 but off the 1st Friday of the biweek.
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/RENAE A BITOR/
Examiner, Art Unit 2663
/GREGORY A MORSE/Supervisory Patent Examiner, Art Unit 2698