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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 21, 23, 25, 27, 28, 29, and 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10-12, 20, 21, and 23 of U.S. Patent No. 12,031,353. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 21, 23, 25, 27, 28, 29, and 35-40 are generic to all that is recited in claims 1-7, 10-12, 20, 21, and 23 of U.S. Patent Number 12,031,353. In other words, claims 1-7, 10-12, 20, 21, and 23 of U.S. Patent Number 12,031,353 fully encompasses the subject matter of claims 21, 23, 25, 27, 28, 29, and 35-40 and therefore anticipates claims 21, 23, 25, 27, 28, 29, and 35-40.
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.
Claims 33-34 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.
Claim 33 recites the limitation "a housing operable to receive the foot" in line 3. It is unclear if this limitation is referring back to the crossbar operable to receive the foot, or a new case that also receives the foot.
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)(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) 21, 22, and 27-34 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Number 6,799,446 to Tsai
Tsai discloses a portable lock apparatus, comprising: a shackle (73) comprising a foot (distal end of 73 with radial groove); and a crossbar (1, 2, 3, 4 5, 6, 7) operable to receive the foot (figure 2), the crossbar comprising: a bolt (6) mounted for movement between a locking position and an unlocking position; and a trigger (74) mounted for movement between an engagement position and a disengagement position; wherein the trigger in the engagement position retains the bolt in the unlocking position (figure 8); wherein the trigger in the disengagement position permits movement of the bolt toward the locking position (figure 2); and wherein the trigger is configured to move from the engagement position to the disengagement position when the first foot is received in the crossbar (figures 2 and 8), as in claim 21.
Tsai also discloses the bolt is operable to engage the foot when in the locking position, and to disengage from the foot when in the unlocking position (figures 2 and 8), as in claim 22, further comprising a lock device (2, 3, 4, 5, 6) operable to selectively prevent movement of the bolt from the locking position to the unlocking position, as in claim 27, further comprising a slider (64) selectively operable to move the bolt from the locking position to the unlocking position; wherein the slider is operable to move the bolt from the locking position to the unlocking position when the lock device is in an unlocked state; and wherein the slider is inoperable to move the bolt from the locking position to the unlocking position when the lock device is in a locked state (column 6, lines 18-49), as in claim 28.
Tsai further discloses a combination lock (2, 3, 4, 5, 6) operable to selectively prevent movement of the bolt from the locking position to the unlocking position, the combination lock comprising: a plurality of inner dials (4. 4’, 4”) mounted for rotation about a longitudinal axis; and a plurality of outer dials (3, 3’) mounted for rotation about the longitudinal axis and at least selectively engaged with the plurality of inner dials; and wherein each outer dial comprises: a first shoulder (34) formed on a first side of the outer dial, the first shoulder projecting in a first longitudinal direction and configured to inhibit insertion of a tampering tool toward the plurality of inner dials; and a second shoulder (36) formed on an opposite second side of the outer dial, the second shoulder projecting in a second longitudinal direction and configured to inhibit insertion of the tampering tool toward the plurality of inner dials (column 4, lines 1-9), as in claim 29, wherein a distal end face of the first shoulder of one of the outer dials faces a proximal end face of the second shoulder of an adjacent one of the outer dials (column 4, lines 1-9), as in claim 30, and the first shoulder of one of the outer dials is longitudinally spaced from the second shoulder of an adjacent one of the outer dials (shown in figure 3), as in claim 31, as well as the first shoulder of the one of the outer dials is longitudinally aligned with the second shoulder of the adjacent one of the outer dials, but does not longitudinally overlap the second shoulder of the adjacent one of the outer dials (shown in figure 3), as in claim 32, further comprising: a housing (7) operable to receive the foot; and wherein the combination lock is mounted to the housing and is operable to selectively prevent removal of the foot from the housing (figures 2 and 8), as in claim 33, and where a portion of the housing covers the first shoulder of one of the outer dials and the second shoulder of an adjacent one of the outer dials (as shown in figure 2), as in claim 34.
Claim(s) 35-39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 5,005,384 to Lo et al.
Lo et al. disclose a portable lock apparatus, comprising: a shackle (12) including a foot (20); a crossbar (11) operable to receive the foot; a bolt (15) operable to engage the foot when the foot is received in the crossbar and the bolt is in an extended position (figure 3), wherein the foot is operable to urge the bolt toward a retracted position (figure 2) in response to attempted removal of the foot from the crossbar; a cam (35) operable to selectively retain the bolt in the extended position; a slider (14) operable to move the cam between a blocking position and a releasing position; and a lock mechanism (13) operable to selectively prevent the slider from moving the cam, as in claim 35.
Lo et al. also disclose a ramp (concave structure of 39) configured to urge the bolt toward the retracted position in response to attempted removal of the foot from the crossbar, as in claim 36, wherein the foot comprises the ramp (39), as in claim 37, and an additional bolt (16) operable to engage an additional foot (end with 62) of the shackle when the additional foot is received in the crossbar and the additional bolt is in an additional extended position; and wherein the additional foot is operable to urge the additional bolt toward an additional retracted position in response to attempted removal of the additional foot from the crossbar (via ramped surface of 62), as in claim 38, as well as the bolt is biased toward the extended position (via 28), as in claim 39.
Allowable Subject Matter
Claims 23-26 and 40 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 shackle further comprises an additional foot; and wherein the crossbar further comprises an additional bolt configured to selectively engage the additional foot; as well as the cam comprises a pinion and is mounted for rotation between the blocking position and the releasing position; and wherein the slider is coupled to a rack engaged with the pinion.
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 portable locking devices:
U.S. Patent Application Publication Number 2024/0384563 to Ramakrishna et al.; U.S. Patent Application Publication Number 2007/0234765 to Tsai; U.S. Patent Number 9,495,820 to Li; U.S. Patent Number 4,887,441 to Ling; U.S. Patent Number 1,411,123 to Nadolny.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 571-272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER J BOSWELL/ Primary Examiner, Art Unit 3675
CJB /cb/
March 18, 2026