DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 9-16 in the reply filed on 12/04/2025 is acknowledged.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/04/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “imaging device” in claim 9; “conveying unit” in claim 11; and “gripper mechanism” in claim 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites in lines 3, 4, 5 and 7 “a master key”. However, it is unclear if all of these “master key(s)” are the same or different from one another. Furthermore, it is unclear if the “master key” of line 7 which is “identified as a flip-key type key” is a different one or not. Additionally, because it is unclear if this “flip-key type key” is different than the other “master keys” set forth in lines 3-4, it is also unclear if the “retractable key slot” is only adapted to receive this flip-key type key blade or if all other “master keys” are also capable of being used within the retractable key slot. The claim is unclear and confusing. Further clarification is needed.
Claim 9 recites in line 3 the phrase “configured to cut blank keys based on a master key”. However, it is unclear what exactly this key cutter “bases” the cutting of blank keys. Based on, in what sense. Further clarification is needed.
Claim 9 recites in lines 5 and 7, the phrase “associated with” a master key. However, it is unclear how exactly this is being associated with. Associated how? In what sense? Further clarification is needed.
Claim 9 recites in line 6 the phrase “a retractable key slot adapted to be positioned”. However, it is unclear if the retractable key slot is actually being position or not. Further clarification is needed.
Claim 9 recites in line 7 “master key identified as a flip-key type key”. It is unclear how exactly this master key is identified as “a flip-key type key”? What will happen if there is no “flip-key type key” identified? Is the retractable slot needed or not? Further clarification is needed.
Claim 10 recites in line 3 “the master key”. However, since claim 9, from which claim 10 directly depends on, sets forth a plurality of “master key”(s), it is unclear to which of these “master key”(s), the “master key” of claim 10 is referring to. Further clarification is needed.
Claim 11 recites in line 4 ‘a key product”. However, it is unclear what exactly does “a key product” entails. What is the difference between “a key blank” and a “key product”? “a master key” and a “key product”; a “flip-key type key” and a “key product”, etc. Further clarification is needed.
Claim 11 recites in line 5 “transported products”, however it is unclear what exactly these “transported products” are. Transported from where? Further clarification is needed.
Claim 11 recites in line 6 “a set of bins”, however since claim 11 already sets forth in line 5 that there are one or more bins, it is unclear if this set of “bins” is part of the one or more bins or not. Further clarification is needed.
Claim 11 recites in line 8 “products determined to be non-deliverable”, however it is unclear what exactly these “products” are. How they are being determined to be non-deliverable? Further clarification is needed.
Claim 11 recites in line 9 “key products”, however it is unclear what exactly these “key products” are. Further clarification is needed.
Claim 11 recites in lines 10-11 “combined transaction”. However, it is unclear what exactly determines a combined transaction? Combined transaction, of what? Further clarification is needed.
Claim 12 recites in lines 3-4 “key products”, however it is unclear what exactly these “key products” are. Further clarification is needed.
Claim 12 recites in line 6 “selectively moving” a gripper mechanism. However, it is unclear how exactly this gripper mechanism is being “selectively” moved. In what sense? What causes this gripper mechanism to be “selectively” moved? Further clarification is needed.
Claim 12 recites in line 8, the phrase “a storage cell associated with” the target cell location. However, it is unclear how exactly this storage cell is being associated with the target cell location. Associated how? In what sense? Further clarification is needed.
Claim 12 recites in line 12 “key product packaging of a first format”. However, it is unclear what are the metes and bounds of “a first format”. How is this format determined? Format in what sense? Further clarification is needed.
Claim 12 recites in line 13 “key product packaging of a second format”. However, it is unclear what are the metes and bounds of “a second format”. How is this format determined? Format in what sense? Further clarification is needed.
Claim 12 recites in lines 14-15 “a first dimension set corresponding to the first format”. However, it is unclear what the metes and bounds of this “first dimension set” are. Dimensions of what? Width? Height? Depth? Dimensions of a cell? Of the key product? Of the key product packaging? Additionally, it is unclear how exactly this “first dimension set” is corresponding to “the first format”. Corresponding in what sense? Further clarification is needed.
Claim 12 recites in lines 15-16 “a second dimension set corresponding to the second format”. However, it is unclear what the metes and bounds of this “second dimension set” are. Dimensions of what? Width? Height? Depth? Dimensions of a cell? Of the key product? Of the key product packaging? Additionally, it is unclear how exactly this “second dimension set” is corresponding to “the second format”. Corresponding in what sense? Further clarification is needed.
Claim 14 recites in lines 4-5 “a first format having a first set of dimensions and configured to accommodate a first set of key products”. However, it is unclear what are the metes and bounds of “a first format”. How is this format determined? Format in what sense? Further clarification is needed. It is also unclear what the metes and bounds of this “first set of dimensions” are. Dimensions of what? Width? Height? Depth? Dimensions of the first package? Of the first format? Additionally, it is unclear how exactly this “first set of dimensions” is determined? Furthermore, it is unclear what exactly these “key products” are. Further clarification is needed.
Claim 14 recites in lines 6-7 “a second format having a second set of dimensions and configured to accommodate a second set of key products”. However, it is unclear what are the metes and bounds of “a second format”. How is this format determined? Format in what sense? Further clarification is needed. It is also unclear what the metes and bounds of this “second set of dimensions” are. Dimensions of what? Width? Height? Depth? Dimensions of the second package? Of the second format? Additionally, it is unclear how exactly this “second set of dimensions” is determined? Furthermore, it is unclear what exactly these “key products” are. Further clarification is needed.
Claim 14 recites in each of lines 12 and 13, “the package”. However, since there is a first package and a second package, it is unclear to which of these packages, the “package” of line 12 and the “package” of line 13 is referring to. Further clarification is needed.
Claim 14 recites in each of lines 14 and 16 the phrase “closely match”. However, the metes and bounds of “closely match” are not clearly defined. Further clarification is needed.
Claim 14 recites in each of lines 15 and 16 the phrase “two dimensions”. However, the metes and bounds of what exactly these “two dimensions” are, is unclear. Further clarification is needed.
Claim 15 recites in line 2 “the blade access”. However, there is insufficient antecedent basis for “the blade access” since no blade access has been previously introduced in either claims 14 or 9, from which claim 15 depends on. Further clarification is needed.
Claim 15 recites in lines 2-3 “a first and second package”. However, since claim 14, from which claim 15 directly depends on, already introduces “a first package” and “a second package” on each of lines 4 and 6 of claim 14, respectively, it is unclear if these “first and second package” of claim 15 are in addition to the ones already set forth in claim 14 or not. Further clarification is needed.
Claim 15 recites in line 4, “the package”. However, since there is a first package and a second package, already set forth in claim 14 from which claim 15 depends on, and there is a first and second package also set forth in line 3 of claim 15, it is unclear to which of these packages, the “package” of line 4 of claim 15 is referring to. Further clarification is needed.
Claim 16 recites in line 8 “selectively moving” the gripper mechanism. However, it is unclear how exactly this gripper mechanism is being “selectively” moved. In what sense? What causes this gripper mechanism to be “selectively” moved? Further clarification is needed.
Claim 16 recites in line 10, the phrase “a storage cell associated with” the target cell location. However, it is unclear how exactly this storage cell is being associated with the target cell location. Associated how? In what sense? Further clarification is needed.
Claim 16 recites in line 12 “a set of key products”, however it is unclear what exactly these “set of key products” are. Further clarification is needed.
Claim 16 recites in line 14 “the key product package”, which has insufficient antecedent basis as no, “key product package” has been previously introduced on either claim 16 or claim 9, from which claim 16 directly depends on. Further clarification is needed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Titus et al. US 5,908,273 (hereafter—Titus--).
In regards to claim 9, Titus discloses a key cutting machine for making duplicate keys, the key cutting machine comprising: a key cutter (212) configured to cut blank key blades (246) based on a master key (206); a scannable surface (Figure 2) adapted to support (via 204) a master key (206) for imaging; an imaging device (210) adapted to capture images associated with a master key (206); a retractable key slot1 (refer to the narrow opening where key 206 is disposed at or to the slot 204 which holds key 206) adapted to be positioned to receive a flip-key type key blade (206) associated with a master key (206) identified as a flip-key type key (206); wherein the retractable key slot receives and supports the flip-key type key blade and positions the received master flip-key key blade in a desired position over the scannable surface for imaging (see Figures 2-3, refer to direction arrows, X, Y and pivoting of 204).
Allowable Subject Matter
Claims 10-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The reasons for indicating allowable subject matter will be given once any outstanding 112 issues aforementioned have been resolved.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
1 Slot: “a narrow opening or groove; a narrow passage or enclosure” SLOT Definition & Meaning - Merriam-Webster