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 .
Drawings
The drawings are objected to because Figs 8-9 depict the specification objections regarding reference characters. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
First lock base is referred to by reference characters 212 and 211
Second lock base is referred to by reference characters 210 and 207
First lock shroud is referred to by reference characters 210 and 211
Appropriate correction is required.
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.
Claims 1, 2, 3, 4, 5, 6, 7, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ufkes et al., US 12033448 B2 (hereinafter Ufkes), in view of DeForrest, Sr, US 4852920 A (hereinafter DeForrest).
Regarding claim 1, Ufkes teaches a hasp (hasp 124) for coupling an opening with a first side and a second side (see Annotated excerpt Fig 3-Ufkes), where the first side is secured to the second side with a hidden shackle padlock (puck lock 122; Fig 2), the hasp comprising: a first lock base (second hasp section 128) with a specified thickness (Annotated excerpt Fig 3-Ufkes depicts 128 with a specified thickness), the first lock base for securing the hasp to the first side of the opening to be secured (Fig 2); where the first lock base comprises a first lock shroud (shroud 130 located on 128) and a first raised vertical tab (hasp portion 134 located on 128), and where the first raised vertical tab comprises a first shackle slot for coupling with shackle of the pad lock (aperture 136 located on 128; col 7, lines 49-56); a second lock base (first hasp section 126), with a specified thickness (Annotated excerpt Fig 3-Ufkes depicts 126 with a specified thickness) for securing the hasp to the second side of the opening to be secured (Fig 2); where the second lock base comprises a second lock shroud (shroud 130 located on 126) and a second raised vertical tab (hasp portion 134 located on 126), and where the second raised vertical tab comprises a second shackle slot for coupling with the shackle of the pad lock (aperture 136 located on 128; col 7, lines 49-56), where the first side of the opening is secured to the second side of the opening when the shackle of the pad lock is coupled with the first shackle slot and the second shackle slot and placed in a locked position (col 7, line57-col 8, line 5).
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Annotated excerpt Fig 3-Ufkes
While Ufkes teaches a hinged hasp configuration (col 5,lines 4-14), Ufkes is silent on the exact structure wherein the hasp comprising: a first securing plate with a specified thickness and comprising a first hinge knuckle, the first securing plate for securing the hasp to the first side of the opening to be secured; a second securing plate with a specified thickness and comprising a second hinge knuckle; a pin routed through the first hinge knuckle and the second hinge knuckle, the pin coupling the first hinge knuckle to the second hinge knuckle; a first lock base positioned on the second securing plate; and a third securing plate with a specified thickness for securing the hasp to the second side of the opening to be secured, the third securing plate comprising a second lock base.
DeForrest teaches it is known in the art for a hasp to comprise: a first securing plate (hinge plate 40) with a specified thickness (Annotated excerpt Fig 1-Forrester depicts 40 with a specified thickness) and comprising a first hinge knuckle (see Annotated excerpt Fig 1-Forrester), the first securing plate for securing the hasp to the first side of the opening to be secured (see Annotated excerpt Fig 1-Forrester; col 1, lines 9-17); a second securing plate (flap 44) with a specified thickness (Annotated excerpt Fig 1-Forrester depicts 44 with a specified thickness) and comprising a second hinge knuckle (see Annotated excerpt Fig 1-Forrester); a pin (pin 48) routed through the first hinge knuckle and the second hinge knuckle, the pin coupling the first hinge knuckle to the second hinge knuckle (Annotated excerpt Fig 1-Forrester depicts 48 routed through and coupling the knuckles); a first lock base (cover member 52) positioned on the second securing plate (see Annotated excerpt Fig 1-Forrester); and a third securing plate (eye plate 34) with a specified thickness (Annotated excerpt Fig 1-Forrester depicts 34 with a specified thickness) for securing the hasp to the second side of the opening to be secured (see Annotated excerpt Fig 1-Forrester; col 1, lines 9-17), the third securing plate comprising a second lock base (eye 38).
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Annotated excerpt Fig 1-DeForrest
The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
(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 (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness. See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, using KSR Rationale B, to substitute the silent hinge structure taught by Ufkes with the securing plate and lock base hinge structure taught by DeForrest. The prior art contains a hasp apparatus which differs from the claimed device by the substitution of a component structure (the silent hinge structure taught by Ufkes) with another component structure (the securing plate and lock base hinge structure taught by DeForrest). Hinged hasps are well known in the art, as evidenced by DeForrest, and Perfetto, US 5172574 A, which both teach a hinged hasp structure comprising a securing plate and lock base. Best, US 3901058 A, teaches it is known in the art for a fixed hasp to comprise a securing plate and lock base structure. One of ordinary skill in the art would have been motivated to substitute the securing plate and lock base structure in order to increase the rigidness of the apparatus to impede forceful attacks (as taught by Best) as well as to better define the apparatus to facilitate marketing of product variants (as taught by Ufkes). One of ordinary skill in the art could have substituted one known element for another with a reasonable expectation of success and the results of the substitution would have been predictable, namely a hinged hasp structure with lock bases mounted on securing plates configured to function in the same manner as the silent hinged hasp of Ufkes.
Regarding claim 2, Ufkes in view of DeForrest teaches the hasp of claim 1 where the specified thickness (see Annotated excerpt Fig 3-Ufkes ad Annotated excerpt Fig 1-DeForrest) is equal or greater than .5 inches (In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the apparatus of Ufkes in view of DeForrest performs the same function in the same manner as the instant invention).
Regarding claim 3, Ufkes in view of DeForrest teaches the hasp of claim 1 wherein the second securing plate (DeForrest, 44) further comprises a third lock shroud (In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose. Instant specification paragraph [0036] discusses the reason for a third shroud was to provide protection against accessing the rear the securing lock. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that DeForrest’s first shroud fulfills this reason so as to provide the same benefit of a separate third shroud).
Regarding claim 4, Ufkes in view of DeForrest teaches the hasp of claim 1 where the first securing plate (DeForrest, 40) and first hinge knuckle (see Annotated excerpt Fig 1-Forrester) are formed of a single piece of high strength steel (Annotated excerpt Fig 1-Forrester depicts 40 and the first hinge knuckle to be formed as a single piece; col 7, lines 9-19 discuss DeForrest’s apparatus to be case hardened. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the case hardened hasp would have therefore been made of steel and the hardening would have strengthened the apparatus; instant specification paragraph [0014] discusses high strength steel to be steel that is hard to cut, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the case hardened hasp would also satisfy this description and is taught by DeForrest as the reason for the case hardening in col 7, lines 9-19).
Regarding claim 5, Ufkes in view of DeForrest teaches the hasp of claim 1 where the second securing plate(DeForrest, 44) and second hinge knuckle (see Annotated excerpt Fig 1-Forrester) are formed of a single piece of high strength steel (Annotated excerpt Fig 1-Forrester depicts 44 and the second hinge knuckle to be formed as a single piece; col 7, lines 9-19 discuss DeForrest’s apparatus to be case hardened. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the case hardened hasp would have therefore been made of steel and the hardening would have strengthened the apparatus; instant specification paragraph [0014] discusses high strength steel to be steel that is hard to cut, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the case hardened hasp would also satisfy this description and is taught by DeForrest as the reason for the case hardening in col 7, lines 9-19).
Regarding claim 6, Ufkes in view of DeForrest teaches the hasp of claim 1 where first hinge knuckle (see Annotated excerpt Fig 1-Forrester) is attached to first securing plate (DeForrest, 40) by welding ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the DeForrest’s first hinge knuckle and first securing plate, which appear to be attached by a different process, function in the same manner as the instant invention).
Regarding claim 7, Ufkes in view of DeForrest teaches the hasp of claim 1 where second hinge knuckle (see Annotated excerpt Fig 1-Forrester) is attached to second securing plate (DeForrest, 44) by welding ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the DeForrest’s second hinge knuckle and second securing plate, which appear to be attached by a different process, function in the same manner as the instant invention).
Regarding claim 8, Ufkes in view of DeForrest teaches the hasp of claim 1 where the hasp (Ufkes, 124) is made from a material selected from the group comprising high strength steel, stainless steel, aluminum, and cast iron (col 7, lines 21-25).
Regarding claim 9, Ufkes in view of DeForrest teaches the hasp of claim 1 where the hasp (Ufkes, 124) is manufactured using a method selected from the group comprising casting, molding, forging, welding, and CNC cutting ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the hasp of Ufkes in view of DeForrest is structured and functions in the same manner as the instant invention; while Ufkes is silent on the specific manufacturing techniques for producing his hasp, DeForrest, col 4, lines 22-33, teaches cover member 52 can be attached to flap 44 using appropriate connecting means 56 such as welding).
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 for hasps.
Vellani, US 20140260445 A1, teaches a locking device comprising a fixed hasp for use with a hidden shackle padlock with two lock bases comprising three shrouds.
Morton, US 20230104420 A1, teaches a puck lock security hasp system with two lock bases comprising three shrouds.
Odom, US 10513159 B2, teaches a trailer coupler lock for use with a hidden shackle padlock with two lock bases comprising three shrouds.
Taylor, US 7562546 B2, teaches a locking system comprising a fixed hasp for use with a hidden shackle padlock with two lock bases comprising two shrouds.
Braun, US 20170037662 A1, teaches a shielded lock hasp for vehicle door for use with a hidden shackle padlock with two lock bases comprising three shrouds.
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/STEVEN A TULLIA/Examiner, Art Unit 3675