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 I in the reply filed on 2/3/2026 is acknowledged.
Double Patenting
Claim 1, 2-10, 12-13, 15-17, 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10, 12-16, and 18-19 of copending Application No. 19/278,184 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In regards to claim 1, claim 1 of ‘184 teaches a security device in which a metallic elongate body has at least one end attachable to a lock unit, wherein the body has at least one track extending longitudinally on the surface thereof, the material of the track having particles of a hard cut-resistant material dispersed in a self-fluxing matrix of lower melting point than that of the body and comprising one of nickel, iron and cobalt in composition with chromium, silicon and boron, the or each track being metallurgically bonded with the elongate body (‘184 is substantially similar, claim 1 of ‘184 just further defines by welding).
In regards to claim 2-10, claims 2-10 of ‘184 are substantially similar.
In regards to claim 12-13, claims 12-13 of ‘184 are substantially similar.
In regards to claim 15, claim 14 of ‘184 anticipates a circular cross section.
In regards to claim 16, claim 15 of ‘184 is substantially similar.
In regards to claim 17, claim 16 of ‘184 is substantially similar
In regards to claim 19, claim 18 of ‘184 is substantially similar.
In regards to claim 20, claim 19 of ‘184 is substantially similar.
In regards to claim 21, claim 1 of ‘184 teaches a security device in which a metallic elongate body has at least one end attachable to a lock unit, wherein the body has at least one track welded to and on the surface thereof a cut-resistant material suspended in a low melting point self-fluxing metal based matrix (claim 1 of ‘184 also describes welding).
In regards to claim 22, claim 1 of ‘184 teaches a security device according to Claim 21 wherein the self- fluxing matrix comprises one of nickel, iron and cobalt in composition with chromium, silicon and boron, the or each track being metallurgically bonded with the elongate body (claim 1 of ‘184 describes the composition as well).
Claims 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/278,184 in view of Peterseim WO 2013017525 A1 . This is a provisional nonstatutory double patenting rejection.
In regards to claim 11, claim 1 of ‘184 teaches the security device according to claim 1.
However, claim 1 of ‘184 does not teach wherein a plurality of said tracks cross each other on the surface of the elongate body (see fig 3d).
Peterseim teaches wherein a plurality of said tracks cross each other on the surface of the elongate body (see fig 3d).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have a plurality of said tracks cross each other on the surface of the elongate body in order to allow the tracks to hit the cutting tool at each orientation (Peterseim para 41).
Claims 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/278,184 in view of Fantl US 20040011093 A1 This is a provisional nonstatutory double patenting rejection.
In regards to claim 18, claim 1 of ‘184 teaches the security device according to claim 21.
However, Peterseim does not teach wherein the elongate body is encapsulated in a layer of polymeric material.
Fantl teaches a elongate body (shackle) is encapsulated in a layer of polymeric material (40; rubber; see fig 1a).
It would have been obvious to one of ordinary skill in the art, before the time of filing of the invention, to have encapsulated the elongat5ed body in a layer of polymeric material in order to preserve and protect the shackle and the device to which the padlock is applied (Fantl para 18).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a plurality of said tracks cross each other on the surface of the elongate body” of claim 11 and “the elongate body is encapsulated in a layer of polymeric material” of claim 17 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-22 are objected to because of the following informalities:
In claims 1, 2 and 10 all instances of “the body” should read “the metallic elongated body”.
In claim 1 line 3 “the surface thereof” should be “a surface thereof”.
In claim 1 line 3 “the material” should read “a material”.
In claims 1, 11, 14, 15, and 18 “the elongate body” should read “the metallic elongate body”.
In claim 1, line 3 “the surface” should read “a surface”.
In claim 3 “the matrix” should be “the self-fluxing matrix”.
In claim 4 “the material of the cut-resistant particles” should read “a material of the cut-resistant particles”.
In regards to claim 5, “the cut-resistant particles” should just read “the particles”.
In claims 6 and 13 “the range” should be “a range of”.
In regards to claim 8 “the dimensions” should read just “dimensions”.
In claim 9 “the track material” should read “the material of the track”.
In claim 9 “the particles comprise 40- 65%” should be “the particles comprise 40- 65% by volume” (the 4th paragraph of page 2 of the spec points to this).
In regards to claim 10 “a plurality of tracks extend” should read “a plurality of tracks of the at least one track extend”.
In claim 19 “the padlock shackle” should be “a padlock shackle”.
In claim 19, “the elongated element” should be “the metallic elongated body”.
In claim 20 “the element” should be “the metallic elongated body”.
In claims 2-18, 20 and 22. “A security Device” should be “the security device”.
In claim 21 “the body” should be “the metallic elongated body”.
In claim 21 “the surface” should be “a surface”.
In claim 22 “self-fluxing matrix” should read “self-fluxing metal based matrix”
Appropriate correction is required.
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.
Claim 22 is 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.
In regards to claim 22, the limitation “the or each track being metallurgically bonded with the elongate body” is unclear as “welding” is already claimed in independent claim 21 from which claim 22 depends. It’s unclear how the broader limitation in claim 22 is intended to further define the scope. For the purposes of examination, the limitation is assumed to be omitted.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erfinder DE 102010047020 A1 (hereinafter Erfinder).
In regards to claim 1, Erfinder teaches a security device in which a metallic elongate body (lock cylinder body, see fig 4) has at least one end attachable to a lock unit (lock plug), wherein the body has at least one track extending longitudinally on the surface thereof (considering the covering as at least one track), the material of the track having particles of a hard cut-resistant material (tungsten carbide see para 28) dispersed in a self-fluxing matrix (para 26) of lower melting point than that of the body and comprising one of nickel (para 29), iron and cobalt in composition with chromium, silicon and boron (para 29), the or each track being metallurgically bonded with the elongate body (see fig 1; but also Note: The italicized limitation recites a product-by-process limitation. Even though product-by-process claims are limited by and define by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production, only the end result. See MPEP 2113. Since Erfinder teaches the track(s) coupled to the elongated body, the end result is the same regardless of the method used to bond the elongated body and the track).
In regards to claim 2, Erfinder teaches the security device according to claim 1, wherein the material of the track is bonded to the surface of the body by one of laser welding and laser cladding (Note: The italicized limitation recites a product-by-process limitation; see above).
In regards to claim 3, Erfinder teaches the security device according to claim 2, wherein the matrix includes a ceramic material (para 26 “ceramics”).
Claim(s) 1, 4-5, 7, 11, 14-15, 19 and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peterseim WO 2013017525 A1 (hereinafter Peterseim).
In regards to claim 1, Peterseim teaches a security device (1) in which a metallic elongate body (3) has at least one end attachable (described as a padlock) to a lock unit (2), wherein the body has at least one track (5) extending longitudinally on the surface thereof (see fig 3), the material of the track having particles of a hard cut-resistant material (para 20) dispersed in a self-fluxing matrix (material used and para 11 describe a self-fluxing matrix) of lower melting point than that of the body (body described as tempered steel; the fusible alloy is described at lower temperatures in para 11 then it’s melting point) and comprising one of nickel (para 16), iron (para 34) and cobalt in composition with chromium, silicon and boron (para 34), the or each track being metallurgically bonded with the elongate body (para 35).
In regards to claim 4, Peterseim teaches a security device according to Claim 1 wherein the material of the cut-resistant particles comprises at least one of tungsten carbide (para 20), silicon carbide and an industrial or synthetic diamond.
In regards to claim 5, Peterseim teaches a security device according to Claim 1, wherein the cut-resistant particles are in spherical form (rounded particles).
In regards to claim 7, Peterseim teaches a security device according to Claim 1, wherein the particles are in cast and crushed form (edged particles are described para 20, cast and crushed particles have an edged from therefore the edged particles of the prior art read on this limitation).
In regards to claim 11, Peterseim teaches a security device according to Claim 1 wherein a plurality of said tracks cross each other on the surface of the elongate body (see fig 3d).
In regards to claim 14, Peterseim teaches a security device according to Claim 21 wherein said at least one track is compressed into the elongate body (Note: The italicized limitation recites a product-by-process limitation. Even though product-by-process claims are limited by and define by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production, only the end result. See MPEP 2113. Since Peterseim teaches the track(s) within the elongated body, the end result is the same regardless of the method used to bond the elongated body and the track).
In regards to claim 15, Peterseim teaches a security device according to Claim 21, wherein the elongate body has a circular cross section (see fig 2).
In regards to claim 19, Peterseim teaches a padlock comprising a security device according to claim 21 wherein the elongate element is the padlock shackle (see figs 1-2).
In regards to claim 21, Peterseim teaches a security device (1) in which a metallic elongate body (3) has at least one end attachable (described as a padlock) to a lock unit (2), wherein the body has at least one track (5) welded (Note: The italicized limitation recites a product-by-process limitation. Even though product-by-process claims are limited by and define by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production, only the end result. See MPEP 2113. Since Peterseim teaches the track(s) coupled to the elongated body, the end result is the same regardless of the method used to bond the elongated body and the track) to and on the surface thereof a cut-resistant material (para 20) suspended in a low melting point self-fluxing metal based matrix (material used and para 11 describe a self-fluxing matrix).
In regards to claim 22, as best understood in light of previous 112 rejections, Peterseim teaches a security device according to Claim 21 wherein the self-fluxing matrix comprises one of nickel (para 16), iron (para 34) and cobalt in composition with chromium, silicon and boron (para 34), the or each track being metallurgically bonded with the elongate body (para 35).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Findeisen et al. US 6682580 B2 (hereinafter Findeisen).
In regards to claim 6, Peterseim teaches the security device according to claim 5.
However, Peterseim is silent on the size of the particles and therefore does not teach wherein the particle size varies in the range 50 - 160μm.
Findeisen teaches similar spherical particles between 20 and 250 μm (Col 2 lines 59-65).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the particle size varies in the range 50 - 160μm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Shrestha RU 2609114 C2 (hereinafter Shrestha).
In regards to claim 8, Peterseim teaches the security device according to claim 7.
However, Peterseim is silent on the particle size and there fails to teach the wherein the dimensions of the particles vary between 50 and 200μm.
Shrestha teaches similar particles varying in size between 74 μm to 177 μm (para 82).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the dimensions of the particles vary between 50 and 200μm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Berglund EP 2740553 A1 (hereinafter Berglund).
In regards to claim 9, Peterseim teaches the security device according to claim 1.
However, Peterseim is silent on what vol percent the particles makeup of the track. The particles comprise 40- 65% of the track material.
Berglund teaches a similar material with similar particles making 30-70 vol %.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the particles comprise 40- 65% of the track material, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Draca US 3552938 A (hereinafter Draca).
In regards to claim 10, Peterseim teaches the security device according to claim 1.
However, Peterseim does not teach on wherein a plurality of tracks extend contiguously side by side to fully clad the body. Although this appears it may be the case from fig 3 and para 38.
Draca teaches a body fully cladded with a similar protective material (see fig 1).
It would have been obvious to one of ordinary skill in the art, before the time of filing of the invention, to have a plurality of tracks of Peterseim extend contiguously side by side to fully clad the body in order to ensure maximum protection of the body.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Himself
In regards to claim 12, Peterseim teaches the security device according to claim 1.
However, Peterseim does not teach wherein said at least one track includes a maximum thickness of 2mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the at least one track include a maximum thickness of 2mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
In regards to claim 13, Peterseim teaches the security device according to claim 21.
However, Peterseim does not teach wherein said at least one track includes a width in the range 3-10mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the at least one track include a width in the range 3-10mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 16-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Abrahams US 20240344367 A1 (hereinafter Abrahams).
In regards to claim 16, Peterseim teaches a security device according to Claim 21 wherein said at least one end of the elongate body is attachable to the lock unit by entering an opening therein (paras 28-30 describe a padlock, padlocks have opening to receive the shackle), and wherein a track of material having particles of a hard cut-resistant material dispersed in a self-fluxing matrix comprising one of nickel (para 16), iron and cobalt in composition with chromium, silicon and boron (para 34) is metallurgically bonded with the lock unit (para 42) around the boundary of the opening.
However, Peterseim is silent on how the track would be applied to the lock unit and thus does not teach the track around the boundary of the opening.
Abrahams teaches a similar device with a track (7) attached to the lock unit around (as in in the vicinity of) the boundary of an opening (42, or 52; see figs 4 and 8).
It would have been obvious to one of ordinary skill in the art, before the time of filing of the invention, to have provided a track around the boundary of the opening such as in Abrahams in order to provide for a high level of protection to be achieved with a minimal use of the high performance material (Abrahams para 37).
In regards to claim 17, Peterseim in view of Abrahams teaches a security device according to Claim 16, wherein the material of the cut-resistant particles in the track around the opening comprises at least one of tungsten carbide (Peterseim para 20), silicon carbide and an industrial or synthetic diamond.
In regards to claim 20, Peterseim teaches the security device according to claim 1.
However, Peterson does not teach the security device is a part of a D-lock wherein each end of the element is adapted to engage a locking bar.
Abrahams teaches a D lock (see fig 8 and para 2) each end of the element (41 and 51) is adapted to engage a locking bar (10).
It would have been obvious to one of ordinary skill in the art, before the time of filing of the invention, to have Peterseim’s teachings applied to a D-lock in order to more conveniently allow the locking of a bike (para 13).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peterseim as applied to claims 1, 4-5, 7, 11, 14-15, 19 and 21-22 above, and further in view of Fantl US 20040011093 A1 (hereinafter Fantl).
In regards to claim 18, Peterseim teaches the security device according to claim 21.
However, Peterseim does not teach wherein the elongate body is encapsulated in a layer of polymeric material.
Fantl teaches a elongate body (shackle) is encapsulated in a layer of polymeric material (40; rubber; see fig 1a).
It would have been obvious to one of ordinary skill in the art, before the time of filing of the invention, to have encapsulated the elongat5ed body in a layer of polymeric material in order to preserve and protect the shackle and the device to which the padlock is applied (Fantl para 18).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER H WATSON whose telephone number is (571)272-5393. The examiner can normally be reached M-F 9 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Mills can be reached at (571) 272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER H WATSON/Examiner, Art Unit 3675
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