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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-7, 1, 5, 16, 19-20, 30, 22, 29, 32, 21 respectively of U.S. Patent No. 12159498. Although the claims at issue are not identical, they are not patentably distinct from each other because the existing patent recites the method steps & system of the instant claims with only minor differences in phrasing (e.g. ‘providing parameters to a cutting machine that cuts a blank’ as opposed to ‘cutting a key blank based on provided parameters’) with the same result (a duplicate key).
Instant Application Claim 1
US 12159498 Claim 1
1. A method for making duplicate keys comprising:
1. A method for making duplicate keys comprising the following steps:
presenting by a display a user interface having a first set of selectable elements configured to receive user inputs; identifying a make, model and year (“MMY”) and/or Vehicle Identification Number (“VIN”) representing a target vehicle for purposes of cutting a key blank based on a master key to operate the target vehicle; receiving a user input selecting a desired key blank from a set of at least one suggested key blank;
instructing a user in a manner of presenting a master key for scanning and receiving, on a scannable surface, a physical master key having a keyblade;
instructing a user in a manner of presenting the master key for scanning and receiving on a scannable surface a physical master key having a keyblade;
capturing, by a vision system comprising a camera, a set of images of the master key, determining a feature location of the master key, and targeting a laser and determining a set of locations of the master key keyblade;
capturing by a vision system comprising a camera a set of images of the master key, determining a feature location of the master key, and targeting a laser and determining a set of locations of the master key keyblade;
determining, by a processor, a set of physical parameters of the master key keyblade;
determining by a processor a set of physical parameters of the master key keyblade;
inserting the selected key blank in a key blank holder for duplication;
providing the set of physical parameters to a key cutting component, wherein the set of physical parameters cause the key cutting component to cut a key blank inserted into a key blank holder based at least in part on the set of physical parameters, resulting in a duplicate key; and
cutting by a key cutting component the selected key inserted in the key blank holder based at least in part on the set of physical parameters of the master key keyblade resulting in a duplicate key;
determining, by a processor, whether the key blank requires programming to pair with a target vehicle and if the key blank requires programming, presenting one or more user interfaces configured to instruct the user in programming the duplicate key.
determining by a processor whether the selected key blank requires programming to pair with the target vehicle and if the key blank requires programming, presenting a user interface configured to instruct the user in programming the duplicate key.
Further correspondences between the claims are shown below:
Instant Claim
US 12159498
2
2
3
3
4
4
5
6
6
7
7
1
8
5
9
16
10
19
11
20
12
30
13
22
14
29
15
32
16
21
Allowable Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken alone or in combination, fails to disclose or render obvious a method for making duplicate keys comprising instructing a user in a manner of presenting a master key for scanning and receiving, on a scannable surface, a physical master key having a keyblade; capturing, by a vision system comprising a camera, a set of images of the master key, determining a feature location of the master key, and targeting a laser and determining a set of locations of the master key keyblade; determining, by a processor, a set of physical parameters of the master key keyblade and determining, by a processor, whether the key blank requires programming to pair with a target vehicle and if the key blank requires programming, presenting one or more user interfaces configured to instruct the user in programming the duplicate key, in combination with the rest of the limitations of the claim.
As to claim 9, the prior art of record, taken alone or in combination, fails to disclose or render obvious a system comprising one or more processors and memory storing instructions that, in response to execution by the one or more processors, cause the one or more processors to instruct a user in a manner of presenting a master key for scanning and receiving, on a scannable surface, a physical master key having a keyblade; capture, by a vision system comprising a camera, a set of images of the master key, determining a feature location of the master key, and targeting a laser and determining a set of locations of the master key keyblade; determine, by a processor, a set of physical parameters of the master key keyblade and determine, by a processor, whether the key blank requires programming to pair with a target vehicle and if the key blank requires programming, presenting one or more user interfaces configured to instruct the user in programming the duplicate key, in combination with the rest of the limitations of the claim.
Claims 17-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
As to claim 17, the prior art of record, taken alone or in combination, fails to disclose or render obvious a non-transitory computer-readable medium comprising instructions that, in response to execution by one or more processors, cause the one or more processors to instruct a user in a manner of presenting a master key for scanning and receiving, on a scannable surface, a physical master key having a keyblade; capture, by a vision system comprising a camera, a set of images of the master key, determining a feature location of the master key, and targeting a laser and determining a set of locations of the master key keyblade; determine, by a processor, a set of physical parameters of the master key keyblade and determine, by a processor, whether the key blank requires programming to pair with a target vehicle and if the key blank requires programming, presenting one or more user interfaces configured to instruct the user in programming the duplicate key, in combination with the rest of the limitations of the claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The following art made of record but not relied upon is considered pertinent to applicant’s disclosure: Spangler (US 20170225242) teaches a processor (paragraph 0032 “microprocessor”), a display & user interface (Figure 2, screen 22), a scanning device (paragraph 0026 “camera”), a key blank selection interface (Figure 5, steps 525 / 575), and a key cutting device (Figure 3, element 36 “fabrication module”), but does not provide instructions on programming the new key. Freeman (US 20110301738) teaches a kiosk with a processor (Figure 3, element 24), display & UI (Figure 3, element 11) and a key blank selector (paragraph 0103), but the key shape is obtained by physical contact (paragraphs 0109-0110, Figures 29-30) and there is no mention of programming a new key. Overman (US 20130204423) teaches a user programming a new key (Figure 3, paragraph 0017), but teaches obtaining a “key code” from a manufacturer (and not a local camera-based system), and requires a locksmith to have specialized software to decrypt the key code (paragraph 0039). It is not obvious to combine the references as Spangler and Freeman are directed to free-standing kiosks, and Overman requires a trained professional to create a new key. As such, one looking to improve the inventions of Spangler and Freeman would not add the teachings of Overman to create the applicant’s invention. Mutch (US 20190287332) teaches the programming of a duplicated key (Figure 7) but does so by having a cloning application perform the programming (paragraphs 0032, 0047), and not by providing instructions for the user to follow, and it would not be obvious to combine this reference to obtain the applicant’s invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARREAS UNDERWOOD whose telephone number is (571)272-1536. The examiner can normally be reached M-F 0600-1400 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 2705789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.U/Examiner, Art Unit 2877
/MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877
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