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 were received on 1 July 2026. These drawings are acceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 404.
The drawings are objected to because in Figure 9, the reference character “607” is used to indicate the structure of the partial gear, the label should be reference character “509.”
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Response to Arguments
Applicant’s arguments, see p. 9, with respect to the objections to the specification title have been fully considered and are persuasive in light of the present claim amendments. The claims presently do not recite a clutch or dynamo. The objection to the title has been withdrawn.
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
Regarding the preamble of claim 11, the confusion lies in whether the claim is directed toward the door lock using a configuration being called “a motor and blocking system” (as in one element) or if the door lock is using both a motor and a blocking system (as in separate elements). Because the body of the claim recites “the motor,” it becomes unclear if the term “a motor” in the preamble is intended to be a distinct structure from a blocking system rather than part of a larger motor-and-blocking system. The body of the claim does not recite a “blocking system” so it is unclear if a blocking system, distinct from the motor, is required or if the preamble merely refers to a door lock using an assembly called “a motor and blocking system.”
With regard to the patentable weight of the preamble, “[a]ny terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” MPEP 2111.02(I). See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) (The determination of whether preamble recitations are structural limitations can be resolved only on review of the entirety of the application "to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification."); Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 801, 14 USPQ2d 1871, 1876 (Fed. Cir. 1990) (determining that preamble language that constitutes a structural limitation is actually part of the claimed invention). Furthermore, a recitation of intended use in the preamble “must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference … between the claim and the prior art. If so, the recitation serves to limit the claim.” MPEP 2111.02(II). Looking to the rest of the disclosure does not easily resolve the issue, because the detailed description of the invention does not refer to “a motor and blocking system” or a “blocking system.” The claim positively recites “the motor” in the body of the claim as a component of the interior portion, suggesting that “a motor” in the preamble was intended to require a motor structure but, because the body of the claim does not refer to the blocking system, it remains unclear if a “blocking system” is also a required structure. Therefore, the metes and bounds of the claimed invention were not clear.
However, in light of the amendments to claim 11 removing the term “blocking system,” the argument(s) regarding interpretation of the preamble are moot, and the rejection has been withdrawn. Note that the “motor” remaining in both the preamble and body of the claim is being interpreted as a required structure of the device. If Applicant does not intend to require a motor, the claim should be amended so it does not positively recite the motor as a component of the device in the body of the claim.
Regarding the terms “when engaged” and “when disengaged” used in claim 11, the metes and bounds of the claim are not clearly defined. Claim 11 may be interpreted as “a spindle …, wherein: when engaged, … when disengaged, …” which may suggest to one skilled in the art that when the spindle is engaged, the key arm allows the spindle to be turned by the exterior knob without actuating the latch assembly and when the spindle is disengaged, the key arm allows the spindle to be turned by the knob to actuate the latch assembly. However, that is not a feature of the disclosed invention and it remains unclear what cooperative and/or structural relationship results in engagement.
Applicant points to several portions of the specification (note that paragraphs 0051-52 on page 11 correspond with paragraphs 0049-50 of the specification filed 10/28/2024) that provide the tooth on the gear can “engage with key arm 605” causing coupling between the spindle and hollow shaft and a pin moved by the key arm engages the spindle and hollow shaft to rotate them together. In light of these passages, claim 11 may be interpreted as referring to when the key arm is engaged, the key arm allows the spindle to be turned by the exterior knob without actuating the latch assembly and when the key arm is disengaged, the key arm allows the spindle to be turned by the exterior knob to actuate the latch assembly, corresponding to the recitation of “the key arm is engaged or the key arm is disengaged” in last line of the claim. However, it remains unclear what cooperative and/or structural relationship results in engagement.
Claim 11 also requires the key arm moves away from the interior knob to allows the spindle to be turned by the exterior knob to actuate the latch assembly, contrary to the specification. This leads to further confusion on what is intended by the terms “when engaged” and “when disengaged” because, as best understood, the disclosure teaches the key arm moves away from the interior knob to disengage the spindle and hollow shaft (i.e., turn the exterior knob without actuating the latch assembly). In paragraph 0049, the specification provides “engage with key arm 605 and push it forward” and in paragraph 0050, “moving key arm 605 towards internal knob 201” when describing moving the components to a condition that allows the spindle to be turned by the exterior knob to actuate the latch assembly. The disclosure does not clarify what claim 11 intends to require for the conditions of “when engaged” and “when disengaged” and it would not be clear to one of ordinary skill in the art what would constitute infringement.
Applicant also refers to portions of the specification describing a second embodiment (note that paragraphs 0069-70 on page 12 correspond to paragraphs 0067-68 of the specification filed 10/28/2024) and similarly describes the gear engaging the key arm to cause coupling between the spindle and hollow shaft to allow the exterior knob to actuate the latch assembly. But still, this does not clarify the cooperative and/or structural relationship that produces an engaged condition that results in the key arm allowing the spindle to be turned by the exterior knob without actuating the latch assembly. The disclosure also describes movement of the key arm towards the interior knob in this embodiment, which similarly conflicts with the claim limitation, shown above.
One of ordinary skill in the art would have a reasonable expectation that the terms “engaged” and “disengaged” in claim 11 refers to a condition of an element required in claim 11, but it is not clear which element because the spindle is not allowed to be turned by the exterior knob without actuating the latch assembly when the spindle and/or key arm are engaged. Additionally, the disclosure describes the key arm moving toward the interior knob, whereas the claim requires the key arm moves away from the interior knob. The specification describes the elements of claim 11 in an engaged state to allow the spindle to be turned by the exterior knob to actuate the latch assembly. The drawings also do not illustrate a state when disengaged, the key arm moves away from the interior knob and allows the spindle to be turned by the exterior knob to actuate the latch assembly. The specification describes the key arm is engaged with a key arm receiver to allow the spindle to be turned by the exterior knob without actuating the latch assembly and the key arm is disengaged from the key arm receiver to allow the spindle to be turned by the exterior knob to actuate the latch assembly. However, the key arm receiver is not recited by claim 11, making it unclear what structures are required. So, read in light of the specification, the scope of the claim would not be clear to one of ordinary skill in the art so as to understand how to avoid infringement.
With respect to the drawings, the drawings do not further clarify what structural relationship is required when engaged and when disengaged. Figures 6-8 depict a lock state (Spec. ¶¶ 0049, 0052-53), corresponding to when engaged, the key arm allows the spindle to be turned by the exterior knob without actuating the latch assembly, as claimed. Figures 9-10 depict an unlocked state (Spec. ¶¶ 0054-55), corresponding to when disengaged, the key arm moves away from the interior knob and allows the spindle to be turned by the exterior knob to actuate the latch assembly. Figures 6 and 9 depict the same view of the device, Figure 6 illustrates the locked state and Figure 9 illustrates the unlocked state (Spec. ¶¶ 0049, 0054). Movement of the key arm 605 is not readily apparent when comparing these two figures so it is not clear how, when disengaged, the spindle is allowed to be turned by the exterior knob to actuate the latch assembly. The figures also do not depict how the pin is dropped to couple the spindle and hollow shaft. Figures 16-19 illustrates another embodiment, but the figures also do not illustrate the movement(s) of the key arm and pin nor the pin coupling the spindle and hollow shaft.
Therefore, one of ordinary skill in the art would not be able to interpret the metes and bounds of the claim so as to understand how to avoid infringement of the patent. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). During prosecution the claims are given their broadest reasonable interpretation, but interpreting claim 11 to require something outside of the recited elements to be engaged or disengaged would import limitations from the specification and make the claim scope depend on interpretation. Claim 11 should be amended to avoid unwarranted interpretations and define the subject matter with a reasonable degree of clarity and particularity.
Claim 15 recites the limitation “when disengaged,” similar to claim 11 above, and it is not readily apparent what is disengaged for the same reasons. In light of the disclosure, it seems the claim intends to refer to the pin disengaged from the key arm receiver, or bolt, but the claim still does not require a key receiver or bolt, so it remains unclear what the scope of the claim is and whether a key arm receiver or bolt structure is required. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
One of ordinary skill in the art could reasonably interpret the term “when disengaged” in claim 15 as the same disengaged state in claim 11, referring to a result of the spindle and/or the key arm being disengaged; however, the claim remains indefinite for the same reasons as claim 11. One of ordinary skill in the art could also reasonably interpret the term as referring to the key arm and pin being disengaged, since the limitation “the key arm releases a pin” sounds like a description of disengagement; however, the disclosure appears to show key arm and pin are integral and incapable of disengaging from each other.
With respect to the term “drop” in claim 15, the portions of the specification to which Applicant refers briefly describe an embodiment where the key arm moves to “release a pin 801 (FIG. 8) previously coupled to key arm receiver 607” and an embodiment where the key arm moves to “release a pin within bolt 1613. Once released, the pin within bolt 1613 can drop down.” In light of Applicant’s arguments, the term “drop” will be interpreted as requiring the pin to be released from a retainer, such as the key arm receiver or bolt. Regarding the term “drop” in claims 23 and 30, the claims will be interpreted in the same way.
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 11, 13, 15, and 18-34 are 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.
Regarding claim 11, it is unclear what the limitations “when engaged” and “when disengaged” is intended to require. As best understood, the specification describes the key arm engaged by the motor to move toward the interior knob to allow the spindle to be turned by the exterior knob (Spec. ¶ 0050 (“moving key arm 05 towards internal knob 201”)) and the key arm is disengaged from the spindle and moved away from the internal knob to allow the spindle to be turned by the exterior knob without actuating the latch assembly (Spec. ¶ 0050 (“key arm 605 can move back away from internal knob 201, thereby removing the pin 801”)). However, the claim requires “when disengaged, the key arm moves away from the interior knob” so the exterior knob can actuate the latch assembly. Please refer to the response to arguments above for further explanation.
Claims 15 and 23 recites the limitation “when disengaged,” similar to claims 11 and 21. It is not readily apparent what is disengaged for the same reasons. In light of the disclosure, it seems the claim intends to refer to the pin disengaged from the key arm receiver, or bolt, but the claims do not require a key receiver or bolt. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It remains unclear what the scope of the claim is and what is required for infringement. Please refer to the response to arguments above for further explanation with respect to the limitations in claim 15.
Regarding claim 21, similar to claim 11, the claim recites “while a key arm of an interior portion of the door lock is engaged” for turning the exterior knob to cause the spindle to turn without actuating the latch assembly and recites “while the key arm is disengaged and moved away form an interior knob” for turning the exterior knob to cause the spindle to turn to actuate the latch assembly. The disclosure teaches the key arm is moved away from the interior knob when turning the exterior knob turns the spindle without actuating the latch assembly, opposite of what is claimed here. For example, paragraph 0049, the specification provides “engage with key arm 605 and push it forward” and in paragraph 0050, “moving key arm 605 towards internal knob 201” when describing moving the components to a condition that allows the spindle to be turned by the exterior knob to actuate the latch assembly. Therefore, it is unclear what is required to practice the claim for reasons similar to claim 11, discussed above.
Regarding claim 28, similar to claims 11 and 28, the claim recites “configuring the key arm, when engaged, to allow the spindle to be turned by the exterior knob without actuating the latch assembly.” It is unclear what the key arm is engaged with that allows the spindle to be turned without actuating the last assembly. The disclosure does not provide clarity; the specification teaches the key arm is moved “back away from the internal knob” to uncouple the spindle (Spec. ¶ 0050). The drawings also do not appear to depict a detailed view of the key arm being engaged or disengaged.
The claim recites “configuring the key arm, when disengaged, to move away from the interior knob and allows the spindle to be turned by the exterior knob to actuate the latch assembly.” In light of the disclosure, it is not clear what is intended by the limitation “configuring the key arm, when disengaged” because the specification describes the key arm configured to move “towards internal knob” for allowing the spindle to be turned by the exterior knob to actuate the latch assembly (Spec. ¶ 0050). The drawings also do not appear to depict a detailed view of the key arm being engaged or disengaged. The discrepancy between the claim limitations and the disclosure is discussed above with respect to similar limitations in claim 11.
Regarding claims 13, 15, 18-20, 22-27, 29-34, the claims are rejected for depending on an indefinite claim.
Allowable Subject Matter
Claims 11, 13, 15, and 18-34 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Although the references of record show some features similar to those of Applicant’s device, the prior art fails to teach or make obvious the invention of claims 11, 13, 15, and 18-34, as interpreted above.
Regarding independent claim 11, claim 11 includes every limitation of claim 17 which was indicated as allowable subject matter in the Non-final Office Action mailed 23 Jan. 2026. For the same reasons, Moon (US 10,260,253 B2), in view of Imedio Ocana et al. (US 8,001,818 B2), does not fairly teach or suggest the exact arrangement as claimed. The examiner can find no motivation to combine or modify the references that would not require the use of impermissible hindsight to define a fully functioning apparatus as claimed in the instant application.
Regarding claims 13, 15, and 18-20, the prior art fails to disclose each and every limitation of claim 11 from which the claims depend.
New independent claim 21 is directed to the process of using the allowable product and includes every limitation of amended claim 11. Moon, in view of Imedio Ocana et al., teaches a method of using a door lock having a motor, the method comprising turning an exterior knob while a key arm lined to the motor is engaged so the exterior knob turns the spindle without actuating the latch assembly (Moon col. 5 ln. 58-col. 6 ln. 4), turning the exterior knob while the key arm is disengaged so that the exterior knob turns the spindle (Moon col. 4 ln. 57-63), and turning an interior knob to rotate a spring housing and a hollow shaft and actuate the latch assembly regardless of whether the key arm is engaged or the key arm is disengaged (Imedio Ocana et al. col. 4 ln. 7-19). However, Moon, in view of Imedio Ocana et al., is silent to turning the interior knob to rotate a partial gear, rotate a gear mechanically linked to the partial gear, and rotate a spring housing coupled to the gear.
Greenbury et al. (WO 2019/033147 A1) teaches a method of using a door lock comprising turning an interior knob to rotate a partial gear and rotate a gear mechanically linked to the partial gear (Figs. 4-5; ¶ 0037). However, the examiner can find no teaching or suggestion, absent the applicant’s own disclosure, for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Moon, in view of Imedio Ocana et al., to include steps of turning the interior knob to rotate a partial gear and linked gear and to rotate a spring housing coupled to the gear without use of impermissible hindsight and/or destroying the intended operation of the device.
Regarding claims 22-27, the prior art fails to disclose each and every limitation of claim 21 from which the claims depend.
New independent claim 28 is directed to the process of making the allowable product and includes every limitation of amended claim 11. Moon, in view of Imedio Ocana et al. teaches a method of manufacturing a door lock having a motor, comprising coupling a latch assembly, an exterior knob, and an interior portion. However, Moon, in view of Imedio Ocana et al., is silent to the interior portion coupled to the latch assembly and comprising a gear mechanically linked to a partial gear and configured to be rotated upon rotating of the interior knob and a spring housing coupled to the gear and configured to be rotated upon rotating of the gear. The examiner can find no motivation to modify the method taught by Moon, in view of Imedio Ocana et al., to further include configuring the interior knob such that turning the interior knob rotates the hollow shaft and actuates the latch assembly regardless of whether the key arm is engaged or the key arm is disengaged without use of impermissible hindsight and/or destroying the intended function and structure of the device.
Regarding claims 29-34, the prior art fails to disclose each and every limitation of claim 28 from which the claims depend.
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 prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Clark et al. (US 2023/0049416 A1) teaches a method of using a door lock having a motor, the method comprising turning an exterior knob while a key arm of an interior portion of the door lock is engaged so that the exterior knob turns a spindle to actuate a latch assembly through a hollow shaft and turning an interior knob to rotate a spring housing and hollow shaft to actuate the latch assembly.
THIS ACTION IS MADE FINAL. 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.
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/EGB/Examiner, Art Unit 3675
/KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
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