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 4/25/2024.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 4/29/2024 was filed after the mailing date of the instant application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restriction
3. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to remotely generating a remotely duplicatable key via using key structure data and combining a key and a key code device comprising a key ID, which is linked to a security certificate, classified in G06F21/62.
II. Claims 8-12, drawn to managing key information, linking user information with a key ID, and duplicating the key and selecting a key making machine, upon a request for duplication of the key being transmitted, classified in H04L9/32.
III. Claims 13-19, drawn to transmitting manufacturing instructions to a key making machine, including instructions for creating a duplicate key, upon receiving a request for duplication of a key from a remote device, classified in B23C 2235/12.
The application contains claims directed to patentably distinct species. The species are independent or distinct because:
Group I (claims 1-7) is drawn to remotely generating a remotely duplicatable key via using key structure data and combining a key and a key code device comprising a key ID, which is linked to a security certificate, while Group II (claims 8-12) is drawn to managing key information, linking user information with a key ID, and duplicating the key and selecting a key making machine, upon a request for duplication of the key being transmitted, and Group III (claims 13-19) is drawn to transmitting manufacturing instructions to a key making machine, including instructions for creating a duplicate key, upon receiving a request for duplication of a key from a remote device.
4. During a telephone conversation with attorney of record Glen Nuttall on 3/20/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections – 35 USC 103
5. 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.
6. Claims 1-7 are rejected under 35 USC 103 as being unpatentable over Marsh et al (US 2013/0173044) in view of Lee (US 2020/0038970).
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, Lee teaches creating a key code device comprising the key identification (par [0028], which discloses a key identifier containing 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 (par [0072], lines 1-10 and par [0073], lines, which disclose appending the key pin code with the information of the generated 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 in order to provide the predictive result of improving upon key generation by storing and providing digital images of keys (as disclosed in Abstract of Lee) because this feature allows for more efficient generation of keys that have previously been created by copying a stored digital pattern of a key that has already been created in order to generate a new copy of the key in an expeditious manner.
Regarding claim 2, Marsh et al and Lee teach the limitations of claim 1.
Marsh et al further teaches wherein creating the key code device comprises printing a QR code readable by a computing device (claims 6 and 21), the QR code having the key identification (claims 4 and 6-7).
Regarding claim 3, Marsh et al and Lee teach the limitations of claim 1.
Marsh et al further teaches wherein creating the key code device comprises writing the key identification to a NFC tag (par [0032], lines 6-7, “near field communication device”).
Regarding claim 4, Marsh et al and Lee 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 Lee 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 6, Marsh et al does 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, Lee 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 (fig. 3, ‘308, which discloses terminating the key database lookup process upon the key representation data being identified).
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 1.
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).
Conclusion
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 20260320
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