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 .
Response to Amendment
The Response to Office Action arguments filed May 13, 2026 have been entered. Claims 1-8 remain pending in the application. Applicant’s response did resolve the Claim Interpretation issue previously set forth in the Non-Final Office Action mailed February 19, 2026.
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive.
Regarding the Applicant’s arguments, pages 2-21, about the teachings of Einberg, US 11094153 B2, the Examiner respectfully disagrees. The use of broadly claimed device structure and mounting without accompanying detailed structural limitations allows for the broadest reasonable interpretation of the limitations in question.
Many arguments are based on the adjective “separate”. The word “separate” is used 54 times throughout the specification as both an adjective and verb. A specific definition defining a limiting structure is not provided. Instant specification paragraph [0031] equates “separate” with “fitted together” which disagrees with the arguments. In absence of a specific definition, the broadest reasonable interpretation of the term can be used. Merriam-Webster defines the adjective separate to mean “set apart: detached” which describes the Einberg apparatus as well as “fitted together”.
Many arguments are based on the mounting of apparatus components “on an outer side of the door panel” or “an inner side of the door panel” with no door structure claimed to limit the broad interpretation of those phrases. While the instant specification and drawings provide one interpretation of those limitations, Einberg’s column 4, lines 32-37 positioning of lock in barrier 15 itself is a broadest reasonable interpretation of “mounted on an inner side of the door panel” which covers positioning inside of a mortise.
In response to applicant's page 15-19 arguments that Einberg and Harris et al., US 4893852 A, are directed to different technical purposes so would not be combinable, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Einberg and Harris both teach a digital lock apparatus which use a variety of sensors to “automate” lock activation.
Claim Interpretation
The claim 1 preamble recites “A separate auxiliary digital lock structure, adapted to be mounted on a door panel” with the “adapted to be mounted on a door panel” recited merely as an intended use, however, the body of the claim contains positive recitations of the door panel. Consequently, it cannot be determined whether applicant intends to claim the subcombination of the digital lock structure or the digital lock structure in combination with the door panel. In formulating an evaluation on the merits, the examiner is considering that the claims are drawn to the combination and the claims will be rejected accordingly. If applicant indicates by amendment that the combination claim is the intention, the language of the preamble should be made consistent with the language of the body of the claims. If the intent is to claim the subcombination, then the body of the claim must be amended to remove positive recitations of the combination. Applicant’s intention in regards to the scope of the claim must be clearly established by the claim language.
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, and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Einberg, US 11094153 B2.
Regarding claim 1, Einberg teaches a separate auxiliary digital lock structure (lock device 12), adapted to be mounted on a door panel (barrier 15; Fig 1 depicts 12 mounted on 15; in re Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim), comprising:
a panel device (handle 5) mounted on an outer side of the door panel (Fig 1) and having at least one trigger module (fingerprint sensor 6) and a wireless signal transmission module (wireless communication interface 20), the trigger module generating and sending an unlocking trigger signal to the wireless signal transmission module (col 6, lines 55-61 discusses and Fig 3A depicts 6 of 5 collecting fingerprints, processing, and then communicating to unlock lock 4); and
a latch device (lock 4) mounted on an inner side of the door panel (col 4, lines 32-37 discuss 4 being mounted in multiple locations each supporting the operation of the device; In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), the court held claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; therefore, Einberg teaches 4 mounted on an inner side of the door panel) and having at least one latch control module (lock controller 27), a wireless signal receiving module (wireless interface 21) and a lock module (col 6, lines 51-54 discusses the lock module to be the solenoid, coils, etc. as known in the art per se which are controlled by the lock controller 27), the wireless signal receiving module receiving and sending the unlocking trigger signal to the latch control module, allowing the latch control module to controllably cause the lock module to separate from a door frame (col 6, lines 55-61 discusses and Fig 3A depicts 22 of 5 communicating with 21 of 4 to operate the lock).
Regarding claim 2, Einberg teaches the separate auxiliary digital lock structure of claim 1, wherein the panel device (5) further comprises a panel power supply module (power source 23) electrically connected to the trigger module (6; Fig 2; col 5, lines 59-65).
Regarding claim 3, Einberg teaches the separate auxiliary digital lock structure of claim 1, wherein the latch device (4) further comprises a latch power supply module (power source 33) electrically connected to the latch control module (27; Fig 2; col 6, lines 42-50).
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Einberg, US 11094153 B2. (Note: a different interpretation of the panel device is used in these rejections)
Regarding claim 1, Einberg teaches a separate auxiliary digital lock structure (lock device 12), adapted to be mounted on a door panel (barrier 15; Fig 1 depicts 12 mounted on 15; in re Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim), comprising:
a panel device (fingerprint sensor 6; wireless communication interface 20; circuit board 29) mounted on an outer side of the door panel (Fig 1) and having at least one trigger module (6) and a wireless signal transmission module (20), the trigger module generating and sending an unlocking trigger signal to the wireless signal transmission module (col 6, lines 55-61 discusses and Fig 3A depicts 6 collecting fingerprints, processing, and then communicating to unlock lock 4); and
a latch device (lock 4) mounted on an inner side of the door panel (col 4, lines 32-37 discuss 4 being mounted in multiple locations each supporting the operation of the device; In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), the court held claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; therefore, Einberg teaches 4 mounted on an inner side of the door panel) and having at least one latch control module (lock controller 27), a wireless signal receiving module (wireless interface 21) and a lock module (col 6, lines 51-54 discusses the lock module to be the solenoid, coils, etc. as known in the art per se which are controlled by the lock controller 27), the wireless signal receiving module receiving and sending the unlocking trigger signal to the latch control module, allowing the latch control module to controllably cause the lock module to separate from a door frame (col 6, lines 55-61 discusses and Fig 3A depicts 20 communicating with 21 to operate the lock).
Regarding claim 4, Einberg teaches the separate auxiliary digital lock structure of claim 1, wherein the latch device further comprises a handle (base piece 31, outer piece 34; Fig 5) connected to the latch control module (Figs 1;2 depict 31;34 connected to 27), and the latch control module controllably causes the lock module (col 6, lines 51-54 discusses the lock module to be the solenoid, coils, etc. as known in the art per se which are controlled by the lock controller 27) to separate from the door frame (col 5, lines 1-11; col 9, lines 35-45).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Einberg, US 11094153 B2, as applied to claim 1 above, and further in view of Harris et al., US 4893852 A (hereinafter Harris).
Regarding claim 5, Einberg teaches the separate auxiliary digital lock structure of claim 1, wherein the lock structure further comprises a sensing module (touch sensor 7) spaced apart from the trigger module (6) on the panel device (5).
Einberg does not teach wherein the latch device further comprises a sensing module sensing spaced apart from a baffle at a top of the door frame by a distance.
Harris teaches it is known in the art for a lock structure (dual sensor electromagnetic door lock system 10) to further comprise wherein the latch device (housing 20; electromagnetic element 30; transmitter/receiver 36; passive infrared (PIR) sensor 38) further comprises a sensing module (38) sensing spaced apart from a baffle (Fig 1 depicts the baffle to be door jamb surface adjacent 20 which checks the passage of door 14 thereby meeting the Merriam-Webster definition of baffle and the broadest reasonable interpretation of the term) at a top of the door frame (door frame 12) by a distance (Fig 1 depicts the baffle to be spaced apart from 38).
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 A, to modify Einberg’s lock apparatus to be have the door frame mounted sensing module of Harris. The prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single reference. One of ordinary skill in the art would have been motivated to add a door frame mounted sensor in order to expand the system sensing detection zone to provide additional coverage and operational information for enhanced access control. One of ordinary skill in the art could have combined the elements as claimed by known methods with a reasonable expectation of success and, that in combination, each element merely performs the same function as it does separately; and further recognized the results of the combination were predictable, namely a digital lock with door and door frame mounted sensors providing approach and contact sensing to operate the lock apparatus.
Allowable Subject Matter
Claims 6, 7, and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Regarding claim 6, while Einberg teaches the separate auxiliary digital lock structure of claim 1 and Xu, CN 107845163 A, teaches it is known in the art for access control systems for intelligent doors to comprise a driving module connected with a wireless communication module to a door lock control module, one of ordinary skill in the art would not find it obvious to modify Einberg in view of Xu as claimed in the instant application wherein further comprising a driving device mounted on the inner side of the door panel, the driving device having at least one driving control module and a wireless signal communication module, the wireless signal communication module receiving and sending the unlocking trigger signal to the driving control module, the driving control module receiving, reading and sending the unlocking trigger signal to the wireless signal communication module, the wireless signal communication module sending the unlocking trigger signal to the wireless signal receiving module, the wireless signal receiving module receiving and sending the unlocking trigger signal to the latch control module, allowing the latch control module to controllably cause the lock module to separate from the door frame; without the use of impermissible hindsight and/or destroying the references.
Regarding claims 7 and 8, they are allowable because they pend from claim 6.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A TULLIA whose telephone number is (571)272-6434. The examiner can normally be reached M-F 8-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina 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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/STEVEN A TULLIA/Examiner, Art Unit 3675
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