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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,247,414.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The current claims are drawn to a handleset that comprises a lever handle, a spindle, a rotatable component, and a bias element. These and other limitations are presented in the ‘414 claims.
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 21-40 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.
Claims 21, 30 and 37 require that the spindle is longitudinally movable from the engaged position to a disengaged position. At the instant, it is unclear how that is possible.
As previously mentioned during the parent prosecution, in order to perform the movement, the interior handleset needs to be removed to then allow the user to do the operation claimed. Also, is only the distal end of the spindle the portion that is accessible.
Therefore, in order to continue with the examination, the limitation will be interpreted as “wherein, the spindle is longitudinally movable from the engaged position to a disengaged position in which the spindle is disengaged from the rotatable component, when a distal end of the spindle is accessible (broadly claiming that the other handleset was removed).
Correction is required.
As to claims 32 and 39, the claim requires that the spindle is in the disengaged position, movement of the spindle beyond the disengaged position is prevented via abutment of the spindle with a structural component of the lockset.
At the instant, it is unclear what is a structural component. As shown in fig 9, in the disengaged position, the spindle abutment 132 will engage the end of the lever handle 124, so as to prevent further movement.
Therefore, in order to continue with the examination, the limitation will be interpreted as abutting the end of the handle lever. Correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21-23, 26-31, and 35-36 is/are rejected under 35 U.S.C. 102a1 as being anticipated by CN 107675942 to Tang et al (Tang).
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Regarding claims 21 and 37, Tang discloses a handleset and a method, that comprises a lever handle (1) rotatable about a longitudinal axis and including a lever portion (11) movable between a first orientation and a second orientation different from the first orientation; a spindle (2) slidably and rotationally coupled with the lever handle; a rotatable component (3); and a bias element (8) engaged with the spindle to longitudinally bias the spindle into an engaged position with the rotatable component to rotationally couple the lever handle with the rotatable component; wherein the spindle is longitudinally movable from the engaged position to a disengaged position in which the spindle is disengaged from the rotatable component; and wherein, with the spindle in the disengaged position, the lever handle is rotatable between the first orientation and the second orientation while the lever handle remains rotationally coupled with the spindle.
As to claim 22, Tang discloses that the lever portion extends in a first direction when in the first orientation, wherein the lever portion extends in a second direction when in the second orientation, and wherein the second direction is different from the first direction.
As to claim 23, Tang discloses that the second direction is opposite the first direction.
As to claim 26, Tang discloses that the lever handle in the second orientation, the bias element biases the spindle to the engaged position, thereby rotationally coupling the lever handle with the rotatable component.
As to claim 27, Tang discloses that the spindle is longitudinally moved from the engaged position to the disengaged position via a longitudinal force applied to an accessible portion of the spindle.
As to claim 28, Tang discloses that the accessible portion of the spindle is accessible from outside the handleset such that an inserted tool is operable to move the spindle from the engaged position to the disengaged position.
As to claim 29, Tang discloses that the handleset further comprises a spring cage assembly comprising the rotatable component and a bias mechanism, the bias mechanism urging the rotatable component toward a home position, thereby urging the lever handle toward a selected one of the first orientation or the second orientation when the spindle is in the engaged position.
As to claim 30, Tang discloses a handleset that comprises a spring cage (3); a spindle (2) having an engaged position in which the spindle is rotationally coupled with the spring cage and a disengaged position in which the spindle is rotationally decoupled from the spring cage; and a lever handle (1) rotationally coupled with the spindle.
Wherein, the spindle is longitudinally movable relative to the lever handle along a longitudinal axis between the engaged position and the disengaged position via application of a longitudinal force to the spindle; and wherein, with the spindle in the disengaged position, the lever handle is rotatable between a first orientation and a second orientation different from the first orientation while the lever handle remains rotationally coupled with the spindle.
As to claim 31, Tang discloses that the spindle is biased toward the engaged position.
As to claim 35, Tang discloses that the longitudinal force is applied to an accessible portion of the spindle.
As to claim 36, Tang discloses that the accessible portion of the spindle is accessible from outside the handleset such that an inserted tool is operable to move the spindle from the engaged position to the disengaged position.
As to claim 38, tang discloses that movement of the spindle is prevented beyond the disengaged position (by means of the bias element).
As to claim 40, Tang discloses that the longitudinal force is applied to accessible portion of the spindle to move the spindle from the engaged position to a disengaged position.
Allowable Subject Matter
Claims 24, 32 and 39 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Clams 25, 33 and 34 are also allowed since the claims depend from claims 24 and 32 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS LUGO whose telephone number is (571)272-7058. The examiner can normally be reached M-F 9-6pm.
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/Carlos Lugo/
Primary Examiner
Art Unit 3675
July 20, 2026
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