DETAILED ACTION
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 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-38 of U.S. Patent No. 12,084,895 Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially overlap in scope and are not more than merely obvious variants over one another.
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 (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.
Claims 19-38 are rejected under 35 U.S.C. 103 by, Miao, US Patent 7,458,240.
Regarding claim 19, Miao provides the great majority of the claimed invention, including a cable lock, comprising a first locking plate (see figure 1) defining a first inner surface, wherein the first locking plate includes a first indent; a first channel connected to the first indent; a second channel connected to the first indent, wherein the second channel is separated from the first channel by the first indent; a second indent; and a third channel connected to the second indent; a second locking plate configured to be coupled with the first locking plate, the second locking plate defining a second inner surface configured to be arranged adjacent the first inner surface of the first locking plate when the second locking plate is coupled with the first locking plate, wherein the second locking plate includes: a third indent; a fourth channel connected to the third indent; a fifth channel connected to the third indent, wherein the fifth channel is separated from the first channel by the third indent; a fourth indent; and a sixth channel connected to the fourth indent (note, at least broadly, that each of these first, second, third, fourth, etc. indents and channels can be selected from particular elements of 113 as indents and the space between each 113 that receives each element 32 are considered channels, all meeting the claim limitations); and, broadly, a security cable like element including a first stop member (at least broadly in the region of 42, 43, 511) and a second stop member (at least broadly in the region of 42, 43, 511) extending therefrom, wherein the first stop member is disposed in the first indent and the third indent (in the region of the bottom most indent(s), as seen in figure 1) when the second locking plate is coupled with the first locking plate, and wherein the second stop sleeve is disposed in the second indent and the fourth indent when the second locking plate is coupled with the first locking plate to fixedly secure the security cable to the first locking plate and the second locking plate, wherein the security cable defines a loop portion extending from the first locking plate and the second locking plate when the security cable is fixedly secured to the first locking plate and the second locking plate.
Regarding claim 19, a security cable is not explicitly taught by the disclosure of Miao. However, the examiner serves Official Notice that the use of security cables in such configurations is very old and well known in the art and are considered essentially art recognized equivalent structures, and would have sufficiently performed a desired security function in common cable lock applications. It would have been obvious at the time the effective filing date of the invention was made for one of ordinary skill in the art to have alternatively used an art recognized equivalent security structure of a security cable in the device of Miao for the purpose of performing a desired security function in common cable lock applications, as well known in the art.
Regarding claims 20-38, for each of these claims, the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification, and such structure are considered art recognized equivalent structures and would have functional at least equally as well. It would have been obvious to modify the device in this way for the purpose of providing an alternative arrangement that would have functioned at least equally as well. In addition, (a) combining prior art elements according to known methods to yield predictable results; (b) simple substitution of one known element for another to obtain predictable results; (c) use of known technique to improve similar devices in the same way; (c) applying a known technique to a known device ready for improvement to yield predictable have each been held as being obvious to one having ordinary skill in the art. Further, (e) it would be obvious to try such a modification, since choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success has been held as obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A WILLIAMS whose telephone number is (571)272-7064. The examiner can normally be reached Monday through Friday.
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/MARK A WILLIAMS/ Primary Examiner, Art Unit 3675