DETAILED ACTION
Claims Subject to Examination
Claims 1-13 of this application are subject to examination.
Application Data Sheet
The Application Data Sheet (ADS) filed on September 26, 2023 is defective/incomplete because it identifies the applicant as Altor Locks, LLC, but it fails to identify the type of applicant (assignee, legal representative, etc.).
Defective Priority Claim
The ADS filed on September 26, 2023 identifies the instant application as a “Division” of Application No. 17/625,133 (now US Patent No. 11,766,905 B2). This designation of the instant application is improper and inaccurate because the claims of the instant application are not directed to an invention that is patentably distinct from the claims of US Patent No. 11,766,905 B2. As explained in MPEP 201.06, a divisional application is a later application for an independent or distinct invention, carved out of an earlier application. Thus, the instant application should be designated as a continuation of Application No. 17/625,133 (now US Patent No. 11,766,905 B2) instead of as a divisional application.
To qualify as a divisional or continuation application, an application must be limited to the disclosure of an earlier application. In contrast, a continuation-in-part application is permitted to add to the disclosure of the earlier application. This application is not a proper divisional or continuation application because it introduces subject matter which fails to find sufficient support in the original disclosure of Application No. 17/625,133 (now US Patent No. 11,766,905 B2). Specifically, claim 13 of this application recites “a plurality of fins that radially extend from said locking assembly by a distance” (ll. 4-5). The broad phrase “by a distance” allows for the fins to extend away from the locking assembly by every and any possible distance. In contrast, the original disclosure of Application No. 17/625,133 only discloses that the fins should extend at least 35 mm away from the outer surface of the lock assembly, should preferably extend a distance in the range of 36-100 mm, and more preferably a distance within the range of 40-75 mm. Thus, new claim 13 adds to the original disclosure by allowing for the fins to extend away from the lock assembly by a distance less than 35 mm, and by allowing for the fins to extend away from the lock assembly by a distance substantially greater than 100 mm (including an essentially infinite distance). Applicant is required to either cancel the new matter added to this application, or designate this application as a continuation-in-part.
Claim Construction in Examination
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Examiner’s Claim Construction
The following claim limitations are construed by the examiner to aid in examination:
Claim Limitation:
lock mechanism (claim 1)
Examiner’s Construction:
a key-operated device that includes tumblers engaged by a key and a drive member operated by the key, and equivalents of such a device
Examiner’s Explanation:
The term “mechanism” is a generic placeholder for structure and is modified by functional language defining the function it performs. The claim does not recite (i) sufficiently definite structure, or (ii) sufficient structure for performing the claimed function.
The corresponding structure identified in the specification is lock mechanism 4, which includes a locking cam 16 that is turned by a key, and tumblers 28 (that are engaged by the key in a conventional manner).
The skilled artisan would appreciate that equivalents to such a lock mechanism include the locking mechanisms taught by Hsai, Jacques, Paré, Tsai ‘698, Tsai ‘973, Villalon, Jr. and Wyers.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 1: Claims 10 and 13 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. It is not enough that a skilled artisan could theoretically construct his/her own version of the claimed invention. Rather, applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. Rather, the specification must explain how the invention is structured and how it functions in order to achieve the desired results. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims which enable the claimed invention to achieve the desired results.
Claim 10 recites “wherein said shell is a unitary part that has been cast in place around said lock assembly.” The specification describes Fig. 1 as showing a shell that is cast as a single, unitary piece, and describes Fig. 7 as showing a unitary, cast shell. The specification also states that permanent mold casting is the preferred process to make the shell, and that die casting is a cheaper and faster process for casting aluminum parts. However, the specification provides no description of casting the shell as a unitary part “in place around said lock assembly”. The specification fails to explain how the embodiment encompassed by claim 10 is structured in order to achieve the desired results, or how such an embodiment is formed, including how the shell would be cast in place around the lock assembly. Thus, the scope of claim 10 exceeds the scope of the disclosure. Accordingly, the disclosure fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention.
This application is currently designated as a divisional application, but it introduces subject matter which fails to find sufficient support in the original disclosure of Application No. 17/625,133 (now US Patent No. 11,766,905 B2). Specifically, claim 13 of this application recites “a plurality of fins that radially extend from said locking assembly by a distance” (ll. 4-5). See the further explanation above. Applicant is required to either cancel the new matter added to this application, or designate this application as a continuation-in-part.
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.
GROUND 2: Claims 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 introduces “a lock assembly” (l. 1) and goes on to refer to “said locking assembly” (ll. 3 and 4-5) as well as “said lock assembly” (ll. 5-6). It is unclear whether the recited “locking assembly” refers to the same structure as the recited “lock assembly”, or to some different structure. Further, “said locking assembly” lacks proper antecedent basis.
Claim 1 recites “a plurality of fins that radially extend from said locking assembly” (ll. 4-5). The phrase “extend from” implies that the fins originate at the locking assembly and extend therefrom, which is inaccurate since the fins are part of the shell (while the lock assembly is separate from and received in the shell). The examiner suggests amending “extend from” (l. 4) to read “extend away from”.
Claim 2 recites “further comprising one or more seals around movable parts…” The broad term “movable parts” allows for the seals to be around every and any possible movable part of the trailer hitch lock, and further allows for such part to be movable in any manner. In contrast, the specification only discloses one seal 21 that is around the rotatable locking cam 21. (The other disclosed seal 22 is in/on the translatable lock body 3, but it is not around the lock body 3.) Since the scope of the claim far exceeds the scope of the disclosure, the scope of the claim cannot be ascertained with a reasonable degree of certainty, i.e., it is unclear what subject matter is encompassed by the claim, and what is excluded therefrom.
Claim 1 introduces “a lock assembly that includes a locking mechanism” (ll. 1-2). Claim 3 re-introduces “a locking mechanism” (l. 2). It is unclear whether the “locking mechanism” of claim 3 refers to the same structure as the “locking mechanism” of claim 1, or to some different structure. Further, the re-introduction of this term inaccurately suggests that the invention includes more than one locking mechanism.
Claim 3 recites “said ring having a central hole that tapers at an angle within the range of 75°-100° towards an opening that exposes said key opening” (ll. 2-4). This subject matter fails to accurately define the angle 72 illustrated in Fig. 5. As shown in Fig. 5, the tapered central opening 71 does not taper “at an angle within the range of 75°-100° towards an opening that exposes said key opening”. Instead, as shown in Fig. 5, the angle 72 (which is within the range of 75°-100°) is measured between a first imaginary line that extends through the tapered surface of the opening 71 on one side of the opening 71 and a second imaginary line that extends through the tapered surface of the opening 71 on an opposite side of the opening 71. Put another way, the angle 72 is not illustrated as being an angle at which the central hole tapers, but instead is shown as being an included angle (an angle formed between two sides or line segments that meet at a common vertex).
Claims 4 and 5 recite “wherein the shell is made from aluminum alloys…” The specification states that aluminum alloys are preferred for the shell and lists a number of different aluminum alloys that can be used. However, the specification does not describe a construction in which plural “aluminum alloys” are used to together to make the shell. The examiner suggests amending “aluminum alloys” to read “an aluminum alloy”.
Claim 1 introduces “a shell comprising a plurality of fins” (l. 4). Claim 8 re-introduces “a plurality of fins” (l. 1). It is unclear whether the “plurality of fins” of claim 8 refer to the same structures as the “plurality of fins” of claim 1, or to some different structures. Further, the re-introduction of this term inaccurately suggests that the invention includes more than one plurality of fins.
As explained more fully in GROUND 1, the specification fails to explain how the embodiment encompassed by claim 10 is structured in order to achieve the desired results, or how such an embodiment is formed, including how the shell would be cast in place around the lock assembly. Absent such supporting disclosure, the scope of the claim cannot be ascertained with a reasonable degree of certainty, i.e., it is unclear what subject matter is encompassed by the claim, and what is excluded therefrom.
Claim 12 recites “wherein the lock assembly further comprises a locking ring that is secured in position in said shell with a pair of opposing set screws that can only be accessed when the lock assembly is in an unlocked position and removed, wherein the set screws extend into a groove in said shell.” The locking ring 15 is disclosed as functioning to secure the lock assembly in the shell (this is how the locking ring is defined in claim 7). Therefore, it is not possible for the lock assembly to be “removed” (as recited in claim 12) prior to removal of the locking ring so that the set screws can be accessed (as recited in claim 12) to remove the locking ring. It appears from Fig. 2 that the lock body 3 can be moved fully downward to its unlocked position in order to provide access to the set screws 32 to remove the locking ring 15 and then remove the lock assembly.
Claim 13 introduces “a lock assembly” (l. 1) and goes on to refer to “said locking assembly” (ll. 3 and 4-5) as well as “said lock assembly” (l. 5). It is unclear whether the recited “locking assembly” refers to the same structure as the recited “lock assembly”, or to some different structure. Further, “said locking assembly” lacks proper antecedent basis.
Claim 13 recites “a plurality of fins that radially extend from said locking assembly” (ll. 4-5). The phrase “extend from” implies that the fins originate at the locking assembly and extend therefrom, which is inaccurate since the fins are part of the shell (while the lock assembly is separate from and received in the shell). The examiner suggests amending “extend from” (l. 4) to read “extend away from”.
Claim 13 recites “a plurality of fins that radially extend from said locking assembly by a distance” (ll. 4-5). The broad phrase “by a distance” allows for the fins to extend away from the locking assembly by every and any possible distance. In contrast, the specification only discloses that the fins should extend at least 35 mm away from the outer surface of the lock assembly, should preferably extend a distance in the range of 36-100 mm, and more preferably a distance within the range of 40-75 mm. Since the scope of the claim far exceeds the scope of the disclosure, the scope of the claim cannot be ascertained with a reasonable degree of certainty, i.e., it is unclear what subject matter is encompassed by the claim, and what is excluded therefrom. Further, claim 13 fails to conform to the description of the invention in the specification (i.e., the claim fails to accurately define the disclosed invention) because it allows for the fins to extend away from the lock assembly by a distance less than 35 mm.
Dependent claims are included in the rejection at least because of their dependencies.
AIA – First to File
The present reissue application contains claims to a claimed invention having an effective filing date on or after March 16, 2013. Accordingly, this application is being examined under the AIA first to file provisions.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Bernstrom”
US Patent No. 6,070,441
“Cato et al.”
US Patent No. 11,766,905 B2
“Gustafson”
US Patent No. 8,151,605 B1
“Harper”
US Publication No. 2016/0059648 A1
“Hsai”
US Publication No. 2007/0069501 A1
“Jacques”
US Publication No. 2006/0163842 A1
“Paré”
US Patent No. 7,040,646 B2
“Richter”
US Design Patent No. D350,054 S
“Tsai ‘698”
US Publication No. 2020/0023698 A1
“Tsai ‘973”
US Publication No. 2017/0100973 A1
“Villalon, Jr.”
US Patent No. 5,752,398
“Wyers”
US Publication No. 2006/0236730 A1
Claim Rejections - 35 USC § 103
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.
GROUND 3: Claims 1, 8, 9 and 13 are rejected under 35 U.S.C. 103 as obvious over Richter in view of Tsai ‘698 and Jacques.
As shown in the annotated figures below, Richter discloses a trailer hitch lock that comprises: (a) a lock assembly that is disposed in a vertically-oriented, central chamber located within (b) a shell comprising a plurality of fins that radially extend away from said lock assembly by a distance, wherein the shell surrounds said lock assembly.
PNG
media_image1.png
378
494
media_image1.png
Greyscale
PNG
media_image2.png
236
542
media_image2.png
Greyscale
PNG
media_image3.png
252
524
media_image3.png
Greyscale
With respect to claims 1 and 13, Richter fails to teach that the lock assembly includes a locking mechanism operably movable vertically from a first unlocked position into a second locked position. Richter also fails to fully teach that the shell is shaped to receive and engage a trailer hitch receiver coupling.
Tsai ‘698 includes prior art Fig. 1, which shows essentially the same structure as Fig. 1 of Richter.1 Tsai ‘698 explains that the trailer lock 1 comprises a shell (body) 11 that includes (i) a lock barrel portion 13 for locking and unlocking operation via a key 14, and (ii) a fitting portion 12 with a groove (rabbet) 121 shaped to receive and engage a trailer hitch receiver coupling (see coupling 5 shown in Fig. 6 of Tsai ‘698). See ¶ 0002. Thus, Tsai ‘698 makes it clear that the shell of Richter includes a cylinder (barrel) that defines a vertically-oriented, central chamber receiving a lock assembly, with the shell being shaped to receive and engage a trailer hitch receiver coupling.
Jacques teaches a trailer hitch lock 10 comprising a shell (body) 16 having a retention groove 18 shaped to receive and engage a flange (lip) 14 of a trailer hitch receiver coupling 12. See Figs. 1-7; ¶¶ 0030-0031. In the embodiment of Figs. 8-9, a lock assembly is disposed in a vertically-oriented, central chamber located within the shell 16, with the lock assembly including a lock cylinder 20 operated by a key 20 to drive a lock pin 30 to move vertically (translate) from a first unlocked position (Fig. 8) into a second locked position (Fig. 9). See ¶¶ 0039-0041.
From the teachings of Tsai ‘698 and Jacques, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Richter by:
Using a lock assembly that includes a locking mechanism operably movable vertically from a first unlocked position into a second locked position. The skilled artisan would appreciate that such a locking mechanism is consistent with Richter’s illustration of a lock assembly disposed in a vertically-oriented, central chamber (with a lock pin exposed to extend upward) and, thus, such a locking mechanism is suitable for use in Richter. Also, the lock assemblies taught by Tsai ‘698 (Fig. 1) and Jacques have the advantage of being small, compact, relatively simple, and hidden from view when installed. Further, the substitution of one known lock assembly for another known lock assembly is recognized to be within the level of ordinary skill in the art when, as here, the substitution yields only a predictable result.
Constructing the shell with its retention groove shaped to receive and engage a flange of a trailer hitch receiver coupling so that the lock can be used to prevent a thief from stealing the associated trailer.
With respect to claims 1 and 8, Richter shows that the fins radially extend away from the lock assembly by a substantial distance, but Richter fails to teach that the fins radially extend away from the lock assembly by a distance within the range of 36-100 mm, or within the range of 40-75 mm. The selection of a specific distance in order to achieve a desired characteristic (such as a desired reinforcement2 of the shell via the fins of Richter) is considered to be an obvious design choice. Further, a modification involving a mere change in dimension is recognized to be within the level of ordinary skill in the art.
With respect to claim 9, Richter shows a radial fin-to-fin distribution angle of about 90°. Adding additional fins in order to achieve a desired characteristic (such as a desired level of reinforcement of the shell via the fins of Richter) is considered to be an obvious design choice. With additional fins added, the radial fin-to-fin distribution angle would decrease (for example, to 30°-40°). Further, a modification involving a mere duplication of parts and/or a mere change in angle/spacing is recognized to be within the level of ordinary skill in the art.
GROUND 4: Claim 2 is rejected under 35 U.S.C. 103 as obvious over Richter in view of Tsai ‘698 and Jacques (GROUND 3) and further in view of Wyers and Harper.
The Richter, Tsai ‘698 and Jacques combination fails to teach one or more seals around movable parts to provide resistance to moisture infiltration.
Wyers teaches a trailer hitch lock 10 comprising a lock assembly including a lock core 32 operated by a key 34 to drive a lock pin 60 for selectively locking a movable lock body 22 relative to a shell (body) 20. See Figs. 1-11c; ¶¶ 0035-0048. Wyers further teaches a first seal in the form of a protective cap 36 around a movable part of the lock core 32, a second seal in the form of an O-ring 54 between relatively movable parts of the lock body 22 and the shell 20, and a third seal in the form of a protective sleeve 106 around the relatively movable parts of the lock body 22 and the shell 20, with the seals preventing ingress of unwanted contaminate. See Figs. 2-6 and 11a-11c; ¶¶ 0037-0038, 0043, 0049.
Harper teaches a trailer hitch lock comprising a lock assembly including a lock cylinder 36 operated by a key 33 to drive an actuating pin 44 to in turn drive a translatable lock pin 34 between unlocked and locked positions. See Figs. 1-2; ¶¶ 0008-0012. Harper further teaches a first seal in the form of an O-ring 62 around the movable actuating pin 44, and a second seal in the form of an O-ring 62 around the movable lock pin 34, with the seals preventing water and other substances from interfering with the operation of the lock assembly. See Figs. 1-2; ¶ 0012.
From the teachings of Wyers and Harper, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Richter by providing seals around movable parts of the lock assembly in order to prevent ingress of contaminates (like water/moisture) that would interfere with proper operation.
GROUND 5: Claims 4-6 and 10 are rejected under 35 U.S.C. 103 as obvious over Richter in view of Tsai ‘698 and Jacques (GROUND 3) and further in view of Gustafson and Paré.
The Richter, Tsai ‘698 and Jacques combination fails to teach that (i) the shell is made from an aluminum alloy having a Knoop hardness of at least 50 or within the range of 70-140, (ii) the shell is a unitary cast part, and (iii) the lock assembly is made of stainless steel.
Gustafson is concerned with the provision of a trailer hitch lock that is extremely durable, extremely tough to defeat, and positioned so as to not be exposed to burglary tools. See col. 1, ll. 19-48. Gustafson further teaches that trailer hitch lock can be made of (i) solid machined aluminum and hardened steel with substantial thickness such that it is very difficult to cut through, (ii) stainless steel, (iii) metal alloys, (iv) cast aluminum, and (v) cast metal alloy material. See col. 2, ll. 15-23; col. 3, ll. 61-64.
Paré teaches is concerned with the provision of a trailer hitch lock that is difficult to defeat using bolt cutters and the like. See col. 1, ll. 12-41. Paré further teaches that the trailer hitch lock can be made of stainless steel, and coated aluminum. See col. 2, ll. 28-34.
From the teachings of Gustafson and Paré, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Richter by constructing (i) the shell from machined or cast aluminum since aluminum is strong, relative lightweight and rust resistant, and (ii) the lock assembly from stainless steel since stainless steel is strong and corrosion resistant.
With respect to claims 4 and 5, the selection of a specific hardness in order to achieve a desired characteristic (such as a desired strength or toughness) is considered to be an obvious design choice. Further, a modification involving a mere change in hardness is recognized to be within the level of ordinary skill in the art.
GROUND 6: Claim 9 is rejected under 35 U.S.C. 103 as obvious over Richter in view of Tsai ‘698 and Jacques (GROUND 3) and further in view of Paré.
Richter shows a radial fin-to-fin distribution angle of about 90° and fails to teach such an angle within the range of 30°-40°.
The skilled artisan would appreciate that adding additional fins to Richter would (i) increase the benefit (e.g., reinforcing strength3) provided by the fins, and (ii) result in a decrease in the radial fin-to-fin distribution angle.
Paré teaches an embodiment in which a main body 390 defines a vertically-oriented, central chamber, and a shell 398 surrounds the main body 390. See Fig. 11; col. 4, ll. 49-58. As shown in Fig. 11, the shell 398 includes a plurality of fins that radially extend away from the main body 390. Twelve fins are shown in Fig. 11, yielding a radial fin-to-fin distribution angle of about 30° (360° ÷ 12).
From this teaching of Paré, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Richter by increasing the number of fins, thereby providing a radial fin-to-fin distribution angle of about 30°, in order to increase the benefit (e.g., reinforcing strength) provided by the fins. Further, a modification involving a mere duplication of parts and/or a mere change in angle/spacing is recognized to be within the level of ordinary skill in the art.
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).
GROUND 7: Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 12-14 and 21-23 of Cato et al. (U.S. Patent No. 11,766,905 B2).
Claims 1-13 of the instant application are directed to essentially the same trailer hitch lock as required by claims 1-5, 7-9, 12-14 and 21-23 of Cato et al., but claims 1-13 of the instant application omit some of limitations recited in claims 1-5, 7-9, 12-14 and 21-23 of Cato et al. The omission of one or more limitations (i.e., the additional limitations required by claims 1-5, 7-9, 12-14 and 21-23 of Cato et al.) with the consequent loss of their function is recognized to be within the level of ordinary skill in the art. Accordingly, claims 1-13 of the instant application are not patentably distinct from claims 1-5, 7-9, 12-14 and 21-23 of Cato et al.
Overcoming Double Patenting Rejection
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Pertinent Prior Art
The following prior art is considered pertinent to the claimed invention but is not relied upon to reject any claim.
Tsai ‘698 teaches a preferred embodiment of a trailer hitch lock comprising (a) a lock assembly that includes a latch set 4 operably movable vertically from a first unlocked position into a second locked position, wherein the latch set 4 is disposed in a vertically-oriented, central chamber located within (b) a shell 2 that surrounds the lock assembly and includes a structure 21 shaped to receive and engage a trailer hitch receiver coupling 5. As shown in Fig. 2, the shell 2 includes fins or gussets that radially extend away from the latch set 4 by a distance.
Tsai ‘973 teaches a trailer hitch lock comprising (a) a lock assembly that includes a latch 37 operably movable vertically from a first unlocked position into a second locked position, wherein the latch 37is disposed in a vertically-oriented, central chamber located within (b) a shell 31, 32, 33 that surrounds the lock assembly and includes a structure 31 shaped to receive and engage a trailer hitch receiver coupling 4. As shown in Fig. 3, the shell portion 32 includes fins or ribs that radially extend away from the latch 37 by a distance.
Hsai teaches a trailer hitch lock with a lock assembly 41 disposed in a vertically-oriented, central chamber of a shell 40 that is shaped to receive and engage a trailer hitch receiver coupling 5.
Bernstrom teaches a trailer hitch lock comprising a shell portion 31 having reinforcement fins 40 that provide limited access and security to locks 43, 44.
Villalon, Jr. teaches a trailer hitch lock 3 comprising a shell having at least one fin (gusset) 11 extending from a cylinder 6 that receives a lock assembly 7.
Claim Objections
The claims are objected to because: in claim 7, at l. 2, “threaded, openings” should read “threaded openings”.
Specification Objections
The specification is objected to under 37 CFR 1.75(d)(1) as failing to provide proper antecedent basis for the claimed subject matter. See MPEP 608.01(o). Specifically, the specification fails to describe:
The lock assembly as “made of stainless steel” (claim 6).
The locking ring set screws as extending radially outward “into a recess of” the shell (claim 7).
The shell as a unitary part that has been cast “in place around said lock assembly” (claim 10).
The locking ring set screws as extending “into a groove in said shell” (claim 12).
The specification is also objected to because:
¶ 0001 does not set forth a domestic benefit claim that corresponds to the domestic benefit claim in the ADS.
In ¶ 0001, “PCT/US21/39605 filed July 29, 2021” should read “PCT/US2021/ 039605 filed June 29, 2021”.
¶ 0027 first identifies element 101 as a “trailer’s hitch receiver” (l. 1), but then identifies it as a “channel” (l. 2). It appears that “trailer’s hitch receiver 101” (l. 1) should be changed to “trailer’s hitch receiver” since the trailer hitch receiver is not shown in the drawings, and ¶ 0029 refers to element 101 as a channel.
In ¶ 0029, “lock channel 24” (l. 6) does not comply with 37 CFR 1.84(p)(5) since reference number 24 does not appear in the drawings.
In ¶ 0031, it appears that “opposing set screws 30” (l. 2) should read “opposing set screws 32” since only one set screw 30 is shown in the drawings (Figs. 2-3) whereas opposing set screws 32 are illustrated.
¶ 0031 states that the locking ring’s opposing set screws “can only be accessed when the lock assembly is in an unlocked position and removed” (ll. 2-3). The locking ring 15 is disclosed as functioning to secure the lock assembly in the shell (this is how the locking ring is defined in claim 7). Therefore, it is not possible for the lock assembly to be “removed” prior to removal of the locking ring so that the set screws can be accessed to remove the locking ring. It appears from Fig. 2 that the lock body 3 can be moved fully downward to its unlocked position in order to provide access to the set screws 32 to remove the locking ring 15 and then remove the lock assembly.
In ¶ 0031, it appears that “lock body slider set screws 30” (l. 3) should read “lock body slider set screw 30” since only one lock body slider set screw 30 is shown in the drawings (Figs. 2-3).
In ¶ 0031, “vertical groove 31 formed in shell 2” (l. 4) should read “vertical groove 31 formed in lock body 3” in order to accurately describe what is shown in Figs. 2-3.
In ¶ 0031, “lowest position thus makes” (l. 6) should read “lowest position, which makes”.
In ¶ 0034, “drill attach” (l. 1) should read “drill attack”.
In ¶ 0034, “figure 4” (l. 2) should read “figure 5”.
In ¶ 0034, element 71 is identified as a “tapered central opening” (l. 3) and then element 9 is identified as a “central opening”. This is confusing since, as shown in Fig. 5, the anti-drilling ring 7 has only one central opening. Reference number 71 appears to label a tapered portion of the central opening whereas reference number 9 appears to label a non-tapered (cylindrical) portion of the central opening.
In ¶ 0037, “(figure 5)” (l. 6) should read “(figure 6)”.
In ¶ 0039, “figure 5” (l. 1) should read “figure 6”.
In ¶ 0039, “exhibit internal fins (not shown) in the same manner as discussed above” (ll. 4-5) is inaccurate since there is no prior discussion of internal fins.
In ¶ 0043, “while also eliminating the need for lock assembly” (ll. 4-5) is confusing and not understood. According to the specification and claims, the lock assembly is a necessary component of the trailer hitch lock.
¶ 0044 identifies elements 43 as “ribs”. This is confusing because the rest of the specification (including the claims) refers to these elements as “fins” (see ¶¶ 0014, 0051-0054).
In ¶ 0044, “(as shown in figures 2, 3, 7, and 8)” (l. 2) should read “(as shown in figures 2, 4, 7, and 8)”.
In ¶ 0044, “(Figure 3)” (l. 4) should read “(figures 4 and 8)”.
In ¶ 0044, “lower central support 47” (ll. 4-5) is inaccurate. As shown in the drawings, the support 47 is not a “lower” part of the shell since it is located in an intermediate position between the top and bottom of the shell.
In ¶ 0044, “Ribs 43 may, or may not, extend to a surface on the bottom or top of the rib” (ll. 6-7) is confusing and inaccurate. How can plural ribs extend to a surface on one rib? How can a rib extend to a surface on itself?
In ¶ 0047, “treatment, however” (l. 4) should read “treatment; however”.
¶ 0048 (Table 1) includes small text that fails to comply with 37 CFR 1.52(b)(2)(ii).
¶ 0048 (Table 1) includes the text “Rem” and “Rem.”, which is not defined, and which is not understood.
In ¶ 0052, “fins 23” (l. 1) should read “fins 43”.
In ¶ 0052, “supports 24, 25, 26, 27” (l. 1) should read “supports 44, 45, 46, 47”.
In ¶ 0052, “fins 23” (l. 3) should read “fins 43”.
In ¶ 0052, “fins 23” (l. 4) should read “fins 43”.
Drawing Objections
The drawings are objected to under 37 CFR 1.83(a) for failing to show every feature of the invention specified in the claims. Therefore, the features listed below must be shown in the drawings or canceled from the claims. No new matter should be entered.
A “first unlocked position” (claim 1, l. 2; claim 13, l. 2) of the locking mechanism.
A “trailer hitch receiver coupling” (claim 1, l. 6) that the shell engages.
A “trailer hitch receiver coupling” (claim 13, l. 6) that the shell is shaped to receive and engage.
The drawings are also objected to because:
The drawings fail to comply with 37 CFR 1.84(p)(5) since:
Reference number 13 appears in Fig. 1, but this reference number is not mentioned in the specification.
Reference number 24 is mentioned in the specification (¶ 0029, l. 6), but this reference number does not appear in the drawings.
In Fig. 1, the lead line for reference number 8 is not directed to shoulders of the lock mechanism 4. See ¶ 0034 and Fig. 3.
In Fig. 1, the lead line for reference number 37 is not directed to a threaded bore of the lock body 3. See ¶ 0035 and Fig. 3.
In Fig. 2, the lead line for reference number 8 is not directed to shoulders of the lock mechanism 4. See ¶ 0034 and Fig. 3.
In Fig. 2, the lead line for reference number 26 is not directed to a threaded opening of the lock mechanism. See ¶ 0032. See also Fig. 4, which shows the elements that make up the lock mechanism 4.
In Fig. 8, reference number 1 should be changed to reference number 3. See Figs. 1-2.
The objection to the drawings will not be held in abeyance.
Allowable Subject Matter
Claims 3, 7, 11 and 12 recite allowable claimed subject matter. These claims would be allowable if rewritten in independent form while overcoming all objections and rejections set forth above.
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Filing and Contact Information
All correspondence relating to this application should be directed:
By Patent Center4: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
1 While Tsai ‘698 teaches a different preferred embodiment, Tsai ‘698 is only relied upon for its explanation of the structure shown in the design patent to Richter.
2 The skilled artisan would appreciate that Richter’s fins are constructed in the form of conventional gussets used to reinforce a structure.
3 The skilled artisan would appreciate that Richter’s fins are constructed in the form of conventional gussets used to reinforce a structure.
4 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).