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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The 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.
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Claims 1, 2, 4, 5, 6, 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 11 and 22 of U.S. Patent No. 12,448,813. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 5, 6, 10 and 11 are generic to all that is recited in claims 1, 2, 4, 6, 11 and 22 of U.S. Patent No. 12,448,813. In other words, claims 1, 2, 4, 6, 11 and 22 of U.S. Patent No. 12,448,813fully encompasses the subject matter of claims 1, 2, 4, 5, 6, 10 and 11 and therefore anticipates claims 1, 2, 4, 5, 6, 10 and 11.
Claim Objections
Claims 9 and 11 are objected to because of the following informalities: the respective claims include the word “lockenly”, it is believed this term to be --lockingly--. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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) 1 and 10-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 7,104,092 to Yu.
Yu discloses a padlock (figure 1), comprising: an external cover (2) coupled to a base body to form a housing of the padlock; a cable (8) having a fixed end (end retained in 22) retained within the housing, and a flexible end (1) retained within the housing when the padlock is in a locked mode (figure 1), and removable from the housing when the padlock is in an unlocked mode (figure 3); a combination mechanism (6) comprising at least one combined dial (61) and configured to allow operation of the padlock from the locked mode to the unlocked mode; a key mechanism (7) comprising a cylinder (71) configured for operation by a correct cut key (A), wherein the key mechanism is configured to allow operation of the padlock from the locked mode to the unlocked mode; a cam (42) operable between a locked position and a first unlocked position by the combination mechanism, and operable between the locked position and a second unlocked position by the key mechanism, wherein when the cam is in the first unlocked position or the second unlocked position the padlock may be placed in the unlocked mode; and a short cam (72) operably coupling the cylinder and the cam, wherein the short cam is configured to provide either captive key functionality or non-captive key functionality of the correct cut key when the padlock is in the unlocked mode, as in claim 1.
Yu also disclose the key mechanism further comprises an extended cam (5) operatively coupled to the cam and the short cam, wherein the extended cam comprises a slot (531) configured for engagement with the short cam, and wherein rotational movement of the cylinder is transferred to the extended cam by the short cam, and to the cam by the extended cam, as in claim 10, and a bolt (41) configured to lockingly engage the flexible end of the cable when the padlock is in the locked mode, and having a flat end and a round end; wherein the cam comprises a lock surface (422) configured for contact with the flat end of the bolt when the padlock is in the locked mode, and a flat side configured for contact with the flat end of the bolt when the padlock is in the unlocked mode (shown in figure 3), as in claim 11, wherein the correct cut key is configured to cause rotational movement of the cylinder, and the rotational movement of the cylinder is transferred to the cam by the short cam and the extended cam, wherein the rotational movement of the cam causes movement of the cam from the locked position in which the lock surface of the cam is in contact with the flat end of the bolt to the second unlocked position in which the flat side of the cam is in contact with the flat end of the bolt (column 4, lines 20-29), as in claim 12.
Yu further discloses the extended cam further comprises a pass way (cutout on the upper surface of cam 5), and the cam further comprises a tail of the cam (lower protrusion of 421) configured for at least partial insertion into the pass way of the extended cam, wherein the pass way and the tail have complementary shapes such that rotational movement of the extended cam is transferred to the cam (figures 1 and 3), as in claim 13, and the short cam comprises a surface (contact surface of 72) to contact the slot of the extended-cam when the padlock has been operated to the unlocked mode by the key mechanism, and wherein as a result of the contact between the surface and the slot a captive key mechanism is configured to retain the correct cut key within the cylinder until the padlock has been returned to the locked mode (figures 4-7), as I in claim 14, further comprising a torque spring (52) configured to rotate the extended-cam when the padlock is returned to the locked mode so the correct cut key can be withdrawn from the cylinder, as in claim 15.
Yu additionally discloses the short cam comprises a free rotate area to allow rotation of the short cam and cylinder without rotation of the extended cam to provide a non-captive key mechanism so that the correct cut key may be withdrawn from the cylinder while the padlock is in the unlocked mode (column 4, lines 9-29), as in claim 16, as well as a rod (43) engaged with a spring (431) configured for operable engagement with the flexible end of the cable to cause the flexible end of the cable to pop out of the housing of the padlock when the cam is in the first unlocked position or the second unlocked position, as in claim 17.
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.
Claim(s) 4-9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu, as applied above, in view of U.S. Patent Number 5,918,489 to Yang.
Yu discloses the invention substantially as claimed. However, Yu does not disclose the specific structure of the combination mechanism. Yang teaches of a padlock (figure 1), comprising: an external cover (10) coupled to a base body (20) to form a housing of the padlock; a combination mechanism (40, 50) comprising at least one combined dial (41) and configured to allow operation of the padlock from the locked mode to the unlocked mode; wherein the combination mechanism further comprises at least one clutch (42) for each of the at least one combined dial; wherein each combined dial comprises a plurality of teeth, and each clutch comprises a teeth slot for each of the plurality of teeth of the combined dial; and wherein the teeth slots of the clutch are configured for operative engagement with the plurality of teeth of the combined dial such that rotation of the combined dial is transferred to rotation of the clutch (combination dial 41 and the corresponding clutch 42 of each wheel means are cooperated with each other by means of a plurality of domes and lugs (not numbered) respectively formed thereon in a conventional manner; column 2, line 55-column 3, line 3), as in claim 4.
All of the component parts are known in Yu and Yang. The only difference is the combination of the “old elements” into a single device by mounting them on a single chassis. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the clutches as taught by Yang onto the combination mechanism in Yu, since Yu displays a similar combination mechanism and the clutch could be used in combination with combination mechanism to achieve the predictable results of allowing for changeable combinations.
Yu also disclose the combination mechanism further comprises at least one control plate (plate of 6 shown in figure 2), wherein each control plate is operatively connected to at least one clutch of the at least one clutches (figures 1 and 2); wherein the combination mechanism further comprises a connecting plate (62) operatively connecting the at least one control plate with the cam; and wherein the combination mechanism further comprises a button (3) operatively connected to the at least one control plate, as in claim 5, wherein each of the at least one control plate comprises at least one extended pin (triangular protrusion extending therefrom), and each clutch of the at least one clutch contains a true gate (corresponding cutout thereof) and at least one false gate configured for engagement with one of the at least one extended pin, wherein the padlock may be operated from the locked mode to the unlocked mode when each of the at least one extended pin engages with the true gate of the corresponding clutch of the at least one clutch (figure 3), and wherein the false gates do not allow the padlock to be operated from the locked mode to the unlocked mode if at least one extended pin of the at least one extended pin is engaged with the false gate (figure 1), as in claim 6.
Yu further discloses the control plate comprises at least one cutout (opening in the middle protrusion) configured to receive an extended-pointer (control protrusion) of the connected plate and a wing of the button (figure 4), wherein movement of any of the control plate, connected plate or button will be transferred to other two, and wherein the control plate, connected plate and button move jointly together, as in claim 7, and where the connected plate comprises a contact wall (62) having two halves and configured for engagement with the cam, wherein the cam further comprises an extended radius (511) configured for positioning between the two halves of the contact wall, and wherein rectilinear movement of the connected plate within the housing of the padlock controls movement of the cam between the locked position and the first unlocked position (figures 1 and 3), as in claim 8, and a bolt (41) configured to lockingly engage the flexible end of the cable when the padlock is in the locked mode, and having a flat end and a round end; wherein the cam further comprises a lock surface (422) configured for engagement with the flat end of the bolt when the padlock is in the locked mode, and a slope (distal lip of 42; figure 3) configured for engagement with the flat end of the bolt when the cam is in the first unlocked position and the padlock is in the unlocked mode; and wherein rectilinear movement of the connected plate within the housing of the padlock controls movement of the cam between the locked position and the first unlocked position (figures 1 and 3), as in claim 9.
Allowable Subject Matter
Claims 2, 3, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the prior art of record because the teachings of the references taken as a whole do not teach or render obvious the combination set forth, including that of the external cover has an appearance of a wheeled vehicle, and the at least one combined dial has an appearance of a wheel of the wheeled vehicle; as well as each clutch of the at least one clutch comprises a reset button extending therefrom, and each control plate of the at least one control plate comprises at least one curved surface configured for contact with the corresponding clutch when the padlock is in the locked mode, and configured to be spaced apart from the corresponding clutch when the padlock is in the unlocked mode, and wherein the reset button is configured for receipt of a reset tool configured to separate the clutch from the corresponding combined dial to operate the padlock into a reset mode.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to further show the state of the art with respect to combination padlock assemblies:
U.S. Patent Number 11,828,089 to Yu; U.S. Patent Number 9,663,970 to Yang; U.S. Patent Number 7,891,220 to Yen et al.; U.S. Patent Number 7,832,238 to Misner et al.; U.S. Patent Number 7,007,520 to Lin; U.S. Patent Application Publication Number 2023/0212887 to Lai.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BOSWELL whose telephone number is (571)272-7054. The examiner can normally be reached M-R: 9-4; F 9-12.
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/CHRISTOPHER J BOSWELL/ Primary Examiner, Art Unit 3675
CJB /cb/
January 23, 2026