DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
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 1-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Graute et al. (US 11,959,314) view of Negishi et al. (US 9,781,849) further in view of Schuldt et al. (DE 10 2006 034 923) .
Regarding claim 1, Graute et al. discloses a motor vehicle lock for a motor vehicle, the motor vehicle lock comprising:
a locking mechanism (2) with a rotary catch and at least one locking pawl, wherein the rotary catch is latched in at least one latching position by the locking pawl,
a lock housing (38) including a dry chamber in an interior of the locking housing and having at least one housing cover (14), and
a printed circuit board (16) arranged in an interior of dry chamber separated at least from the locking mechanism, wherein the dry chamber is sealed with a plastic film .
Graute et al. does not disclose: chamber is sealed with a plastic film
-permeable waterproof membrane an opening in the housing cover connecting the interior of the lock housing and an exterior environment.
wherein the opening is closed by a membrane, and
wherein plastic film is arranged between the printed circuit board and the membrane.
Negishi et al. teaches air permeable ePTFE membrane (5; Negishi et al.) for the purpose of providing a breathable seal of circuit board housing space an opening (abstract) in the housing cover connecting the interior of the lock housing and an exterior environment (abstract).
wherein the opening is closed by a membrane(abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Graute et al. with chamber is sealed with a plastic film as taught by Negishi et al. for the expected benefit of a breathable seal of circuit board housing space.
Graute et al. does not explicitly discuss: an opening in the housing cover connecting the interior of the lock housing and an exterior environment.
Schuldt et al. teaches plastic film (54; Schuldt et al.) is arranged between the printed circuit board and the membrane (last paragraph before claims) for the purpose of providing a sealed circuit board and pressure equalization within a cavity as is old and known in various electronic devices.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Graute et al. with plastic film is arranged between the printed circuit board and the membrane as taught by Schuldt et al. for the expected benefit of a sealed circuit board and pressure equalization within a cavity as is old and known in various electronic devices.
Regarding claim 2, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is connected at least partially to a contact surface (between 14 and 38 contact; Graute et al.) comprising, in particular an edge of the lock housing (38).
Regarding claim 3, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is arranged at least in partially between the housing cover (14; Graute et al.) and the lock housing (38; Graute et al.).
Regarding claim 4, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is inseparably connected to the lock housing and/or the housing cover (38; Graute et al.) in such a way that the dry chamber (Fig.1; Graute et al.) is defined by the lock housing (14; Graute et al.) and the plastic film.
Regarding claim 5, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is elastic.
Regarding claim 6 Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is at least partially corrugated (at edge of vent 2, membrane 5 deformed into hole forming at least a partial corrugation).
Regarding claim 7, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, further comprising housing (38; Graute et al.) opening arranged in the lock housing and/or in the housing cover (38; Graute et al.).
Regarding claim 8, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 7,wherein the housing (38; Graute et al.) opening is closed by a membrane (5, Negishi et al.).
Regarding claim 9, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein a volume of the dry chamber is greater than a volume between the plastic film (5, Negishi et al.)and the housing cover (14, Fig.1 Graute et al.).
Regarding claim 10, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is connected to the lock housing and/or the housing cover by a forming process and/or integrally.
Regarding claim 11, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 8, wherein the membrane is a semi-permeable membrane (5, Negishi et al.) that permits passage of air through membrane and prevents passage of water through the membrane (c.9, l, 30-34; Negishi et al.).
Regarding claim 12, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 11, wherein an installation space is defined between the housing cover (14; Graute et al.) and the plastic film (5, Negishi et al.), and the semi- permeable membrane is arranged in the housing cover.
Regarding claim 13, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 8, wherein the membrane has a two-layer structure including a semi-permeable plastic layer (5, Negishi et al.) arranged on an environment side, supported by a carrier material (Fig.1; Graute et al.)..
Regarding claim 14, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, further comprising a cover cap (14; Graute et al.) that defines the dry area and separates the dry area from a wet area that contains the locking mechanism (14, Fig.1; Graute et al.).
Regarding claim 15, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 14, wherein the printed circuit board (16; Graute et al.) is arranged between the cover cap and the plastic film (last paragraph before claims; Schuldt et al.).
Regarding claim 16, Graute et al. as modified by Negishi et al. and Schuldt et al. discloses the motor vehicle lock according to claim 1, wherein the plastic film (5, Negishi et al.) is fusion-welded to the lock housing.
(note: fusion welding is a process, a such can be given little to no patentable weight. Film of Schuldt once assembled adheres to the elements on which it was provided establishing a fusion of separate elements)
Double Patenting
Claim 1 of this application is patentably indistinct from claim 1 and claim 8 of Application No. 18/577,754. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No.18/577,754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure is identical:
Locking mechanism, rotary catch, locking pawl, lock housing, dry chamber, housing cover, printed circuit board, plastic film location, opening, membrane Application No. 18/840,545.
Lock(1), rotary catch, pawl, lock housing (2), dry space (11), housing cover(3), printed circuit board (5), plastic material (19), located in the housing so that a pressure compensation through (opening), plastic film (stretched claim 8) arrangement (location, claim 1) between printed circuit board and the membrane application No. 18/577,754.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments from the response filed on 11 November 2025 have been fully considered and will be addressed below in the order in which they appeared.
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on the reference combination applied in the prior rejection of record for teaching or matter specifically challenged in the argument.
Regarding the applicant’s request that the double patenting rejection be withdrawn, the request is denied. The instant application provides no structural recitation that is not also present in the application No. 18/577,754. The double patenting rejection is updated to also include claim 1 and 8 together in double patenting rejection of claim 1 of the instant application. The claims of the instant application are not patentably distinct from the claims of application No. 18/577,754, therefore the applicant’s argument is unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as it may affect the patentability of applicant’s claimed invention is listed on the attached PTO-892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas L. Neubauer whose telephone number is 571.272.4864. The examiner can normally be reached on Monday - Friday, 8:00 AM through 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina R. Fulton can be reached on 571.272.7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. L. N./
Examiner, Art Unit 3675
/KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675