DETAILED ACTION1
REJECTIONS UNDER 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-5, 7-13, & 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 2546102 to Stem.
Claim 1 recites a door lock kit tool. Stem relates to such a tool. See Stem [0001]. Figures 3a-b of Stem shows the tool (120) has an edge wall (126) including a first side, a second side opposite the first side, and an edge bore cavity (176) that extends through the first and second sides. See Stem [0025]-[0028]. Figures 3a-b further shows this edge bore cavity defines a first axis (176A) that extends through the edge wall and through the first and second sides. Id. Figures 3a-b also shows a side wall (146) adjacent the edge wall, the side wall including a first side, a second side opposite the first side, and a side wall cavity (152, 154) defined between the first and second sides; and an insert (156) at least partially positioned within…the side wall cavity. Id. Stem further teaches that the insert (156) [is] rotatable between a first position and a second position without removing the insert from within the edge bore cavity or side wall cavity as shown by comparing figures 4 and 6, which show the eccentrically oriented guide aperture (162) in two alternating positions. See Stem [0028].
Regarding claim 4, Stem shows the insert [as] a cross bore insert positioned within the side wall cavity. See Stem Figures 3a-b. Regarding claim 5, Stem teaches the recited backset distances in metric, rather than imperial units. See Stem [0002]. Regarding claim 7, Stem teaches at least one visual indicator configured to indicate if the insert is in the first position or the second position. See Stem [0032]. Regarding claim 8, Stem further teaches a viewing window (164) formed through…the side wall for viewing the indicator. See Stem [0032]. Regarding claim 9, figure 8A of Stem teaches a flange (196) configured to abut…the second side of the side wall. Regarding claim 10, Stem teaches a securing mechanism (160) configured to secure the insert in the first position or the second position. See Stem [0028]. Regarding claim 11, figure 8A of Stem shows the side wall comprising a guide wall extending from the first side of the side wall, the guide wall surrounding at least a portion of the side wall cavity. Regarding claim 12, figure 5 of Stem shows a second side wall (122) adjacent the edge wall and substantially parallel to the first side wall. Regarding claim 13, figure 5 also shows a clamping mechanism (128, 136) configured to secure a door between the first side wall and the second side wall. (The term clamping mechanism may invoked 35 USC 112f and if so is equivalent to a clamp according to the specification.) Regarding claim 15, figure 5 shows the edge wall and the side wall are substantially perpendicular.
Claims 1, 4-5, 7, 10, 12-13, & 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 11,359,404 to Sawa.
Claim 1 recites a door lock kit tool. Sawa teaches such a tool (100). See Sawa Fig. 2. Figure 2 shows an edge wall (104) including a first side, a second side opposite the first side, and an edge bore cavity (128) that extends through the first and second sides…defin[ing] a first axis. Figure 2 further shows a side wall (108) adjacent the edge wall, the side wall including a first side, a second side opposite the first side, and a side wall cavity defined between the first and second sides; and an insert (172) at least partially positioned within…the side wall cavity [that is] rotatable between a first position and a second position without removing the insert from within the edge bore cavity or side wall cavity. Figure 9 shows the insert rotates (although on a different axis that applicants). Figures 2 and 9 also shows the insert including an eccentrically oriented guide aperture. The insert is a cross bore insert as recited in claim 4. The backset is 2 3/8 or 2¾ inches as recited in claim 5. The sizes can be seen based on two visual indicator[s] on either side of the insert, showing the values as recited in claim 7. The insert has a securing mechanism as recited in claim 10 in the form of the axle (177a) in a slot (149). Sawa teaches a second side wall (112) as recited in claim 12, a clam[p] (280) as recited in claim 13, and the edge wall and the side wall are substantially perpendicular as recited in claim 15.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-3, 6, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2546102 to Stem in view of U.S. 11,359,404 to Sawa.
Claim 2 recites the insert comprises an edge bore insert positioned within the edge bore cavity. Stem does not teach a rotatable edge bore insert. But it would have been obvious to modify Stem to have one in view of Sawa. Sawa teaches that typical doors can have two known latch edge widths: either 1 3/8” or 1¾”. See Sawa col. 3, ll. 1-5. Stem and Sawa both already teach having rotatable inserts to allow two different side-offsets using a single jig. It likewise would have been obvious to modify Stem to also have second rotatable insert to allow doors with both known edge widths to be easily drill because it is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, the prior art teaches rotatable inserts allowing two different offsets to be drilled using a single jig (either Stem or Sawa’s approach). It would have been obvious to use either insert in the jig of Stem for this flexibility of use. Regarding claim 3, Sawa teaches the two recited widths. Id. Regarding claim 6, the modification results in both an edge bore insert positioned within the edge bore cavity…[and] a cross bore insert positioned within the side wall cavity. Claim 16 recites the combination of claim 1 and 6 and is rejected for the same reasons. Clam 17 recites the edge bore insert is rotatable in a single direction. Clam 17 does not recite that it is only rotatable in this direction. As such, Stem (and Sawa) teach this feature. Regarding claim 18, Stem teaches the insert can be rotated in either direction (there are no structures limiting rotation).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over GB 2546102 to Stem.
Claim 14 recites that the first side wall, the second side wall,and the edge wall are integrally formed. Stem is a modular jig. But MPEP 2144.04 V teaches that it is obvious to make multi-piece components integral. The jig of Stem could easily be modified to function as an integral unit.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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