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 .
Continuation
Current application is a continuation of U.S. Application No. 17/927,123, which was issued as U.S. Patent No. 12,297,676.
Specification
The disclosure is objected to because the specification is silent about claim 8 limitations,
“an identical axial length of the cylinder lock body” in line 7,
“a plurality of pins that are not more in number than the plurality of pin holes are slidably disposed in the plurality of pin holes, sequentially from the pin hole at the other end corresponding to a tip of the one common key” in line 11, and
“a difference in number of the pins disposed in the pin holes results in a different number of keys with different shapes” last paragraph.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 8 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by D1 (DiVito, US Pub. 2004-0129044).
For claim 8, D1 discloses, in Figures 1-13, a set of cylinder locks including a plurality of cylinder locks, each of the plurality of cylinder locks including a cylinder lock body (10) that has one end and an other end and includes a key insertion portion disposed at the other end, the key insertion portion allowing a key (40) to be inserted therethrough, the set of cylinder locks (Different cylinder locks have different keys 40, 48. Figures 3D, 4D) comprising:
one common key (40) capable of locking and unlocking all of the plurality of cylinder locks, wherein the plurality of cylinder locks have an identical inner structure and an identical axial length of the cylinder lock body (Each cylinder lock in Figures 1-13 has identical inner structure and an identical axial length of the cylinder lock body),
the cylinder lock body of each of the plurality of cylinder locks has a plurality of pin holes provided at predetermined intervals in an axial direction (Holes that receive pins 13 define spin holes.),
a plurality of pins that are not more in number than the plurality of pin holes are slidably disposed in the plurality of pin holes, sequentially from the pin hole at the other end corresponding to a tip of the one common key (Figures 1-13), and
a difference in number of the pins disposed in the pin holes results in a different number of keys with different shapes (Keys 40, 48)
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 1-7 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,297,676. Although the claims at issue are not identical, they are not patentably distinct from each other because
the subject matter of the current application is directed to a cylinder lock configured to lock and unlock a plurality of mortise locks via plurality tail pieces, comprising: a cylinder lock body; a key insertion portion; a displacement transmission member mounting portion; all of the plurality of the cylinder locks that are different in an axial length of the cylinder lock body are able to be locked and unlocked by one common key (claim 1.)
New claims 9-10, depending from claim 1, are directed to intended use of cylinder lock on a door. Prior art DiVito (US Pub. 2004-0129044, prior art used in 17/927,123) shows a cylinder lock 10 fixed on a door 41 (Figure 1.) Using a cylinder lock on a door is not an inventive concept, and the lock can be used in any door (MPEP 2114).
The subject matter of the issued patent is directed to a cylinder lock configured to lock and unlock a plurality of mortise locks via plurality tail pieces, comprising: a cylinder lock body; a key insertion portion; and a displacement transmission member mounting portion (claim 1.) Each of a plurality of the cylinder locks that are different in an axial length of the cylinder lock body (claim 3.) A key of an identical type that is suitably applicable to all of the plurality of the cylinder locks different in axial length of the cylinder lock body (claim 4.)
The subject matter of the current application and that of the issued patent are not patentably distinct.
Generally, a continuation application will have claims directed to different aspects of what is set forth in the original description and drawings.
Conclusion
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides example of invention. A few of the prior art cited but not applied includes Chong (US Pub 2003-0107223); Meyer (US 4,884,424); Yorio (US 4,162,623).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN CUMAR whose telephone number is (571)270-3112. The examiner can normally be reached Monday thru Friday, 8:00 am to 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KRISTINA FULTON can be reached at 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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/NATHAN CUMAR/Primary Examiner, Art Unit 3675
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