DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/05/2026 has been entered.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 2, 4, 6, 8-9, 12-14 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne US 7,125,058 in view of Ohara US 6,750,568.
Regarding claim 1, Hawthorne teaches a barrel lock (fig1), comprising:
a longitudinal axis (along length of lock, fig1);
a head portion (2 in fig. 1) having a radial extent (i.e. radius of 2);
a shank portion (2a) having a radial extent (radius of 2a) smaller than the radial extent of the head portion (see fig1);
a movable retaining member (8),
the movable retaining member being radially extensible (I.e. movement left and right of page, fig1) and retractable relative to the longitudinal axis;
an electrically controlled actuator (6,4b),
the electrically controlled actuator comprising an opened position (when unlocked, fig2) and a locked position (fig1),
the electrically controlled actuator maintaining at least partial radial extension of the retaining member when in the locked position (fig1) and allowing radial retraction of the retaining member when in the opened position (fig2); and
a lock control circuit (12,6a,6b) in electrical communication with the electrically controlled actuator (used with the head portion 2). (fig1-2)
Hawthorne does not teach a key and therefore does not explicitly teach:
the lock control circuit capable of receiving a signal from a key and of providing an electric signal to the electrically controlled actuator when the proper signal is received from the key by the control circuit,
wherein the head portion comprises at least a portion of the the lock control circuit.
Ohara teaches a lock wherein a control circuit (5,20,21,22) is capable of receiving a signal (fig6) from a key (R, fig1) and of providing an electric signal (not explicitly labeled, see flow charts in fig6-7, see col.3 lines 25-col.4 line 4) when the proper signal is received from the key by the lock control circuit (col3 lines 58-65), wherein a head portion (J) comprises at least a portion of the lock control circuit (Ohara fig1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lock and circuit 12, 6a, 6b of Hawthorne such that it is capable of receiving a signal from a key to control its circuit, with the control circuit in the head portion, in view of the teaching of Ohara, to provide expected unlocking capabilities, and to allow the lock to be actuated from a distanced location.
Regarding claim 2, Hawthorne in view of Ohara teaches the barrel lock of claim 1 in combination with a locking hardware (Hawthorne 20, 22, 120) comprising an aperture (not labeled see Hawthorne fig2) for receiving the barrel lock and wherein the locking hardware (Hawthorne 120) is locked when the electrically controlled actuator is in the locked position. (Hawthorne fig1-2)
Regarding claim 4, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electronically controlled actuator comprises a solenoid (Hawthorne 6). (fig1-2, Hawthorne)
Regarding claim 6, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a motor (Ohara, actuator 3 includes M = motor, actuator also includes G,10,8, and 11 and 9 and C – see fig3a-3b).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, fig3a-3c, col2 lines 27-32)
Regarding claim 8, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a spur gear speed reducer (Ohara, actuator 3 includes M & essentially G, see fig3a-3b, col.3 25-37).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, fig3a-3c, col2 lines 27-32)
Regarding claim 9, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the electrically controlled actuator comprises a planetary gear speed reducer (Ohara, actuator 3 includes M & essentially G which includes gears 10,11,12 – wherein gear 12 revolves around centers of gears 10 and 11, therefore meets the understanding of a planetary gear, see fig3a-3b, col.3 25-37).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, fig3a-3c, col2 lines 27-32)
Regarding claim 12, Hawthorne in view of Ohara teaches the barrel lock of claim 1 wherein the electrically controlled actuator (Ohara, gears of G of actuator 3) is changed between the locked position to the opened position by rotating at least a part of the electrically controlled actuator (Ohara gears) relative to the retaining member (Hawthorne).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne with the actuator of Ohara in order to provide a means for opening the lock from inside the door without using the remote control (Ohara, fig3a-3c, col2 lines 27-32)
Regarding claim 13, Hawthorne in view of Ohara teaches the barrel lock of claim 1 wherein the electrically controlled actuator (Hawthorne) is changed between the locked position to the opened position by moving at least part of the electrically controlled actuator linearly relative to the retaining member (Hawthorne, the driver 4b moves linearly). (fig1-2 Hawthorne)
Regarding claim 14, Hawthorne in view of Ohara teaches the barrel lock of claim 1, wherein the lock control circuit (Hawthorne) is capable of receiving power (Ohara) from the key (Ohara, ) and of providing power (Ohara) to the electrically controlled actuator (Hawthorne, taught by Ohara) to change the electrically controlled actuator to the opened position. (Hawthorne fig1-2, Ohara col.4 lines 45- col.5 line 9)
Claims 3 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne US 7,125,058 in view of Ohara US 6,750,568 as applied to claim 1 above, and further in view of Larson et al. US 6046558.
Regarding claim 3, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach the shape memory alloy.
Larson teaches a lock wherein the electrically controlled actuator comprises a shape memory alloy (col.8 lines 12-19).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne (in view of Ohara) with the shape memory alloy, as taught by Larson, in order to provide a means for actuating that is temperature dependent since both actuators are functionally equivalent to each other.
Claims 5 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne US 7,125,058 in view of Ohara US 6,750,568 as applied to claim 1 above, and further in view of Piccirillo et al. US 8274365.
Regarding claim 5, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach the piezoelectric actuator.
Piccirillo teaches a lock wherein the electrically controlled actuator comprises a piezoelectric actuator (AL2, col. 5 lines 40-52)
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the actuator of Hawthorne (in view of Ohara) with the piezoelectric actuator, as taught by Piccirillo, in order to provide a means for low power consumption (Piccirillo, col.5 lines 47-53).
Claims 7, 10 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Hawthorne US 7,125,058 in view of Ohara US 6,750,568 as applied to claim 1 above, and further in view of Thomas et al. US 6,442,983.
Regarding claim 7, Hawthorne in view of Ohara teaches the barrel lock of claim 1 however does not teach the electrically controlled actuator comprises a screw.
Thomas teaches a lock wherein the actuator (510+260+272+275) comprises a screw (260).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the actuator of Hawthorne (in view of Ohara) with the actuator of Thomas in order to provide a means for maintaining the lock in a free running configuration (Thomas fig7a, col. 7 lines 33-45).
Regarding claim 10, Hawthorne in view of Ohara & Thomas teaches the barrel lock of claim 7 wherein the screw (Thomas) is driven by an electric motor (of the actuator of Thomas – motor 510 – see claim 7 for combination rejection) in communication with the lock control circuit (Hawthorne). (Thomas, fig6-7a, col. 7 lines 33-45)
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and /n re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope.
The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 16/983,891. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 16/983,858. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 17/087,612. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of copending Application No. 17/143,146. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 13/835,722. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-14 of this application are set forth within claims 1- 14 of copending Application No. 13/835,722. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,822,835. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially claim the same subject matter, and the limitations of claims 1-14 of this application are set forth within claims 1-20 of U.S. Patent No. 10,822,835.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-l.jsp.
Allowable Subject Matter
Claim 11 is 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.
Although barrel locks with key that must grip the head portion of the lock in a recess are known, these keys are not electronic keys but physical keys that must turn to actuate. However, Hawthorne teaches a linearly moving lock (that must slide to actuate). Claim 1 only requires the key must send an electric signal to the actuator. However, related references such as Trempala US 20100236306 teaches a key 200 however the lock requires rotation by the key which is unlike the movement of the Hawthorne reference. Furthermore, Trempala does not teach a movable retaining member that radially extends and retracts. Examiner can find no reason to combine or modify references of record without the use of impermissible hindsight.
Response to Arguments
Applicant's arguments filed 01/05/2026 have been fully considered but they are not persuasive.
Firstly, regarding Applicant’s M865E request: A PTO-AIR request was also submitted on 06/23/2026. Examiner responded to the PTO-AIR on 06/24/2026, however no follow up reply had been received.
Regarding the pending double patenting rejections: The nonstatutory provisional double patenting rejection over 16/983,891 has been amended to include claim 14. Examiner acknowledges that Applicant traverses the nonstatutory double patenting rejections above, however, they can only be overcome via amendments to claims of the present invention or via terminal disclaimer. At present, the claims of the present invention have not been amended in such a way as to overcome the provisional and regular nonstatutory double patenting rejections.
Referring to Hawthorne’s desire to “provide a large margin of safety in design” (page 6. 10-11 Remarks) does not negate the combination of Hawthorne and Ohara being obvious. Applicant relies on assumptions or the possibility of issues to argue that Hawthorne cannot be modified by Ohara (pages 6-7 of Remarks), however none of these are proven based on evidence. Other than stating that Hawthorne requires a large margin of safety in design, Applicant does not provide any justification, based on evidence or other disclosure in Hawthorne, as to why Hawthorne would no longer operate the same way should it be combined with Ohara. Applicant essentially only states that the combination would jeopardize this ‘margin of safety’ because wireless communication “would be highly susceptible to EMP disruption” (page 1 Remarks Part 2). Examiner would like to draw attention to Applicant’s own words – “would be” and “susceptible” – neither of which are definitive language that would indicate that the wireless communication will always create an issue in safety. Applicant cannot prove with evidence that wireless communication does (definitively) create a safety issue that would render Hawthorne unusable. Secondly, Applicant has not provided any evidence that does explain or show why wireless communication would be susceptible to EMP disruption and how that affects the safety of a device.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Hawthorne does teach the circuit (12) connected to the actuator (6) (col. 3 lines 26-38). The motivation to combine the references is found in the teaching (Ohara) reference – which is to provide a means for electrical remote actuation of the lock, therefore Ohara does not teach away from the Hawthorne reference. Applicant goes on to argue the other combinations for the other claims (page 8 of Remarks) however the remarks do not provide any evidence as to why Hawthorne cannot be modified in such ways. Hawthorne having a manually pressing plunger or circuit does not render these combinations for adding a remote key, etc., unusable.
Regarding Hawthorne’s interchangeability and the other combinations, such as with Thomas or Larson or Piccirillo, which teach additional features that can be added to the lock of Hawthorne in view of Ohara but not render the lock unusable. Thomas involves modifying the actuator, which would not render the lock itself unusable – it is only changing the mechanism of the actuator and how the actuator alone functions. Piccirillo teaches a different type of actuator, regardless of actuator, the lock would remain functionally equivalent. Larson also teaches a different type of actuator, and regardless of actuator, the lock would remain functionally equivalent. The combinations do not render the original use of the Hawthorne device as useless, or alter the function of the Hawthorne device. Therefore, rejection maintained.
Once again, Examiner maintains the position taken in the previous office action. Applicant relies on Hawthorne not suggesting interchangeability as a reason why there is a lack of motivation to combine. However, Examiner once again clarifies that Hawthorne is not relied upon to teach interchangeability (i.e. replacement of one feature with another). Rather the combination involves modifying Hawthorne to add the reading of a signal from a key (over a distance), as taught by Ohara. Adding remote control function is a well-known to that of routine skill in the art, as evidence by the prior art(s) used above. Applicant relies on the physical differences of Hawthorne (pages 7-9 Remarks) as to why it cannot be used with Ohara’s key, however, the key of Ohara is one that is used remotely. There is no limitation in the claim that requires the key must interact with the device of Hawthorne physically. The relationship between the key and the circuit, and thus the rest of the device, is electrical as described in claim 1. This same relationship is shown in Ohara, and adding another electrical feature (remote communication via signal of key) to Hawthorne is clearly obvious in view of Ohara. Claim 11 is the only claim that does require the key physically interacting with the head portion, which was indicated has continuously been indicated as allowable subject matter in prosecution history. However, Applicant has not amended claim 1 to include this allowable subject matter, nor has Applicant amended claim 11 to be in independent form. Rejection maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Art is related to locks.
Related but not relied upon prior art (previously cited): US 20120210757, US 20120167369, US 20090013736.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARIA F. AHMAD whose telephone number is (571)270-1334. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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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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/F.F.A./
Examiner
Art Unit 3675
/CHRISTINE M MILLS/ Supervisory Patent Examiner, Art Unit 3675
