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 .
DETAILED ACTION
1. This Office Action is responsive to the communication filed 7/23/2026.
Claim Status
2. Claims 8-19 have been cancelled and newly added claims 20-25 have been added.
Response to Arguments
3. The applicant’s arguments filed 7/23/2026 have been taken into consideration, but are moot in view of new grounds of rejection.
A. In response to the applicant’s argument (disclosed on pg. 1-2 of the remarks segment) that the cited prior art fails to teach or suggest combining the key and the key code device in a single sealed package so that the key code device goes with the key:
See prior art reference Fowler (US 10,366,555), which discloses (fig. 3A of Fowler) a lock, keypad, and key code being aggregated into the same physical device (e.g., combining the key and the key code device in a single sealed package so that the key code device goes with the key).
B. In response to the applicant’s argument (disclosed on pg. 2 of the remarks segment) that the cited prior art fails to teach or suggest wherein creating the key code device comprises printing a QR code readable by a computing device, the QR code having the key identification and wherein creating the key code device comprises writing the key identification to a NFC tag:
See prior art reference Brown et al (EP 2,956,902 B1), which discloses (col. 30, lines 54-56 of Brown et al) wherein a key identifier is encoded in a QR code (e.g., wherein creating the key code device comprises printing a QR code readable by a computing device & the QR code having the key identification) & wherein an NFC tag may be encoded with a unique URL as the key identifier (e.g., wherein creating the key code device comprises writing the key identification to an NFC tag).
C. In response to the applicant’s argument (disclosed on pg. 2 of the remarks segment) that the cited prior art fails to teach or suggest closing the key register to linking the key structure data with any other user identification once the key structure data is linked with the user identification:
See prior art reference Koo (KR 2003/0069267 A), which discloses (pg. 2 , lines 28-33 & pg. 7, lines 16-19 of Koo) ending a fingerprint registration process used for utilizing a fingerprint recognition key for door opening access (e.g., closing the key register to linking the key structure data with any other user identification once the key structure data is linked with the user identification).
Claim Rejections – 35 USC 103
4. 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.
5. Claims 1, 4-5, 7, 20-22, and 24-25 are rejected under 35 USC 103 as being unpatentable over Marsh et al (US 2013/0173044) in view of Fowler (US 10,366,555).
Regarding claim 1, Marsh et al teaches a method for making a remotely duplicatable key (par [0063], lines ), comprising:
providing a key structure data to a server system (par [0009] & par [0036], which disclose hardware, which may be implemented as a server, receiving a key), the key structure data including key bitting information (par [0009], “determining a key type and bitting pattern of the first key”);
making a key using the key structure data (par [0009], which discloses creating a key using geometric information about the key and key type);
providing a key identification concerning the key (par [0068], lines 4-8, which discloses information identifying a key may be provided); and
linking the key identification to the key structure data (par [0071], lines 14-17, which discloses storing data compatible with an identified key) and saving the key identification and the key structure data in a key registry (par [0063], 15-17, “save a key template” & par [0071], lines 1-3, “database of known bitting specifications for keys”).
Marsh et al does not explicitly teach creating a key code device comprising the key identification; and combining the key and the key code device in a single sealed package so that the key code device goes with the key.
However, Fowler teaches creating a key code device comprising the key identification (col. 2, lines 48-52 & col. 11, lines 5-10, which disclose a keypad interface being generated containing a key identification portion of a key code); and
combining the key and the key code device in a single sealed package so that the key code device goes with the key (fig 3A, which discloses a lock, keypad, and key code being aggregated into the same physical device).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Fowler within the disclosure of Marsh et al in order to provide the predictive result of improving upon secure key generation by issuing authorization level privileges to device owners for creating master keys or changed keys (as disclosed in col. 10, lines 53-57 of Fowler) because this feature prevents unauthorized parties from being granted access to re-keying of keys belonging to other parties.
Regarding claim 4, Marsh et al and Fowler teach the limitations of claim 1.
Marsh et al further teaches wherein the key identification comprises a security certificate (claim 1, which discloses security information associated with a key).
Regarding claim 5, Marsh et al and Fowler teach the limitations of claim 1.
Marsh et al further teaches receiving an initiating transmission from a remote computing device (par [0063], lines 1-7), the initiating transmission having a user identification and the key identification (par [0068], which discloses user information and key identification being transmitted), and linking the user identification to the key structure data in the key register (par [0071], lines 17-20, which discloses the database storing user identification and aggregated key identification).
Regarding claim 7, Marsh et al and Lee teach the limitations of claim 1.
Marsh et al further teaches wherein making the key using the key structure data comprises transmitting the key structure data from the server system to a key making device (par [0006], which discloses a key shaping device creating key upon receiving key-related data from the hardware processor).
Regarding claim 20, Marsh et al and Fowler teach the limitations of claim 1.
Marsh et al further teaches wherein providing the key structure data comprises a computer generating key bitting information (par [0009], “bitting pattern determined by the processor”).
Regarding claim 21, Marsh et al and Fowler teach the limitations of claim 1.
Marsh et al further teaches wherein the key identification is linked with the key structure data before the step of making the key (par [0071], lines 16-18).
Regarding claim 22, Marsh et al does not explicitly teach combining the key, a lock associated with the key, and the key code device in a single sealed package.
However, Fowler teaches combining the key, a lock associated with the key, and the key code device in a single sealed package (fig 3A & fig. 7, ‘708, which disclose a lock, key, keypad, and key code being aggregated into the same physical device).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Fowler according to the motivation disclosed regarding claim 1.
Regarding claim 24, Marsh et al does not explicitly teach wherein providing the key structure data, providing the key identification, making the key, and combining the key, the lock associated with the key, and the key code devices in the single sealed package is performed at a key manufacturing facility.
However, Fowler teaches wherein providing the key structure data, providing the key identification, making the key, and combining the key, the lock associated with the key, and the key code devices in the single sealed package is performed at a key manufacturing facility (fig 8A).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Fowler according to the motivation disclosed regarding claim 1.
Regarding claim 25, Marsh et al does not explicitly teach wherein providing the key structure data, providing the key identification, making the key, and combining the key, the lock associated with the key, and the key code devices in the single sealed package is performed at a key manufacturing facility.
However, Fowler teaches combining the key, a lock associated with the key, and the key code device in a single sealed physical package (fig. 3A-4B).
6. Claims 2-3 are rejected under 35 USC 103 as being unpatentable over Marsh et al (US 2013/0173044) in view of Fowler (US 10,366,555), further in view of Brown et al (EP 2,956,902 B1).
Regarding claim 2, Marsh et al and Fowler do not explicitly teach wherein creating the key code device comprises printing a QR code readable by a computing device, the QR code having the key identification.
However, Brown et al teaches wherein creating the key code device comprises printing a QR code readable by a computing device (col. 30, lines 54-56), the QR code having the key identification (col. 30, lines 54-56, “key identifier is encoded in a QR code”).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Brown et al within the disclosure of Marsh et al and Flowler in order to provide the predictive result of improving upon regulating key distribution by using a key exchange server to manage key exchanges (as disclosed in par [0026] of Brown et al) because the server can prevent lock box access to parties that provide incorrect pin codes.
Regarding claim 3, Marsh et al does not explicitly teach wherein creating the key code device comprises writing the key identification to a NFC tag.
However, Fowler teaches wherein creating the key code device comprises writing the key identification to a NFC tag (par [0026], “NFC tag may be encoded with a unique URL as the key identifier”).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Brown et al within the disclosure of Marsh et al and Flowler according to the motivation disclosed regarding claim 2.
7. Claims 6 and 23 are rejected under 35 USC 103 as being unpatentable over Marsh et al (US 2013/0173044) in view of Fowler (US 10,366,555), further in view of Koo (KR 2003/0069267 A).
Regarding claim 6, Marsh et al and Fowler do not explicitly teach closing the key register to linking the key structure data with any other user identification once the key structure data is linked with the user identification.
However, Koo teaches closing the key register to linking the key structure data with any other user identification once the key structure data is linked with the user identification (pg. 2 , lines 28-33 & pg. 7, lines 16-19, which disclose ending a fingerprint registration process used for utilizing a fingerprint recognition key for door opening access).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Koo within the disclosure of Marsh et al and Flowler in order to provide the predictive result of improving upon security in regulating key generation for door opening authentication by requiring authentication before a secure lock mode is turned on or off (as disclosed in pg. 14, lines 18-20 of Koo).
Regarding claim 23, Marsh et al and Fowler do not explicitly teach receiving an account registration request comprising a user information and an information from the key code device, creating a user account having the user information on the server system, and linking the key identification to the user account.
However, Koo teaches receiving an account registration request comprising a user information and an information from the key code device (Abstract, “fingerprint registration request” & pg. 4, lines 30-33, “keypad”), creating a user account having the user information on the server system, and linking the key identification to the user account (pg. 2 , lines 28-33 “fingerprint recognition key” & “fingerprint identification key”).
It would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to be motivated to combine the teachings of Lee within the disclosure of Marsh et al according to the motivation disclosed regarding claim 6.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy A. Scott whose telephone number is (571) 272-3797. The examiner can normally be reached on Monday-Thursday 7:30 am-5:00 pm, second Fridays 7:30 am-4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Luu Pham can be reached on (571) 270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RANDY A SCOTT/Primary Examiner, Art Unit 2439 20260803
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