Double Patenting
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 .
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.
Claims 1-3, 5, 6-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Misner (US 7,497,103).
Regarding claim 1, Misner discloses a door lock comprising:
a mounting bracket (200) adapted to be mounted to a first side of a door; and
a body (100) adapted to be mounted to the mounting bracket, the body including a latch (140,141) movable along a path (Fig.9, 10) relative to the body to an open position(Fig.10) that permits positioning of the body adjacent to the mounting bracket and to a closed position (Fig.9) that secures the body to the mounting bracket (Fig.9).
Regarding claim 2, Misner discloses the door lock of claim 1, wherein the latch is movable relative to the body in a plane of a door surface to which the mounting bracket is mounted (Fig.9, 10).
Regarding claim 3, Misner discloses the door lock of claim 2, wherein the latch is movable relative to the body to capture a portion of the mounting bracket (200) between the latch (140,141) and the body (Fig.9).
Regarding claim 5, Misner discloses the door lock of claim 1, wherein the latch is a first latch (140), the door lock further comprising a second latch (141) attached to the body and movable along a linear path relative to the body between open and closed positions (Fig.9), wherein the first and second latches are movable toward each other to the closed positions to attach the body to the mounting bracket (Fig.9 and 10).
Regarding claim 7, Misner discloses the door lock of claim 1, further comprising a detent (170) to hold the latch in the closed position relative to the body.
Regarding claim 8, Misner discloses the door lock of claim 1, wherein the mounting bracket (200) includes a plate (212) arranged in a first plane, and a tab (215) attached to the plate and positioned above the first plane, the latch (140,141) having a catch (440,441) to engage the tab to attach the body to the mounting bracket (Fig.9).
Regarding claim 9, Misner discloses the door lock of claim 8, wherein the mounting bracket (200) includes a lock mechanism (130) engaging portion that is positioned below the first plane (212) and adapted to secure the mounting bracket to a door to which the door lock is mounted.
Regarding claim 10, Misner discloses the door lock of claim 1, wherein the latch (140,141) is slidably mounted to the body, and the body has a rail or groove to guide movement of the latch relative to the body( (rail annotated Fig. 9 below).
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Annotated Figure taken from Misner (US 7,497,103)
Regarding claim 11, Misner discloses the door lock of claim 10, wherein the body has a rail (annotated Fig.9) to guide movement of the latch (140,141), and the latch has a groove (1440) to receive and engage with the rail (Fig.9).
Regarding claim 12, Misner discloses the door lock of claim 11, wherein the latch has an elongated slot (laterally oriented to receive a fastener 117) to attach the latch to the body, the elongated slot extending in a same direction as the groove.
Regarding claim 13, Misner discloses a latch for securing a door lock to a mounting bracket (200) on a door, the latch (140,141) comprising:
a body having one or more grooves (1440 in which(140,141) reside) extending in a first direction and configured to guide movement of the latch relative to the door lock, a slot (space either side in which fastener has clearance with latches) formed in the body and extending along the first direction, the slot configured to engage with a fastener (117) to attach the latch to the door lock and permit movement of the latch relative to the door lock along the first direction (lateral as on page), and one or more catches (440,441) configured to engage with a corresponding tab of the mounting bracket to secure the door lock on the mounting bracket (200).
Regarding claim 14, Misner discloses the latch of claim 13, comprising first and second grooves extending in the first direction, the slot (space either side in which fastener has clearance with latches) being positioned between the first and second grooves (1440).
Regarding claim 15, Misner discloses the latch of claim 14, comprising first and second catches (440,441) positioned between the first and second grooves (1440).
Regarding claim 16, Misner discloses the latch of claim 13, wherein the one or more catches (440,441) each include a recess formed in the body (Fig.9).
Regarding claim 17, Misner discloses the latch of claim 13, wherein the one or more catches (440,441) each include a ramp (Fig.9).configured to aid in engagement with the corresponding tab (215).
Regarding claim 18, Misner discloses a mounting bracket (200) for securing a door lock to a door, the mounting bracket comprising:
a plate (212) including a top portion and a bottom portion arranged in first and second planes respectively, the second plane being below the first plane, and the plate including
a plurality of tabs (215) within the top portion of the plate and extending above the first plane, individual tabs being located on opposite sides of the plate and extending away from the plate to allow the tabs to be captured between a latch (140,141) and a body of the door lock to secure the body to the plate, and
a hole (in which fasteners are inserted 117) located within a bottom portion of the plate such that upon installation of the plate onto the door the plate is partially received into an opening of the door where a lock mechanism is located to allow a tailpiece of the lock through the plate.
Regarding claim 19, Misner discloses the mounting bracket (200) of claim 18, wherein the lock mechanism engaging portion includes one or more openings to secure the door lock to a lock cylinder positioned within the door.
Regarding claim 20, Misner discloses the mounting bracket (200) of claim 18, further comprising third and fourth tabs attached to the plate and positioned above the first plane, the third and fourth tabs positioned on opposite sides of the plate and extending away from the plate.
Allowable Subject Matter
Claims 4 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claims 4 and 6, Misner discloses the claimed door lock with the exception of wherein the latches are movable relative to the body between open and closed positions, wherein in the open position a portion of the latch is extended laterally from an outer periphery of the body, and in the closed position the latch is positioned within the outer periphery of the body.
Note: Roup et al US 11,091,934 demonstrate latch movement outside the perimeter in a rotation, but not a linear lateral extension, applicant should make that distinction clear.
There is no teaching or suggestion, absent the applicant’s own disclosure, for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the door lock disclose by Misner to have the above mentioned elemental features. Furthermore, such modifications would not be obvious.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-12, 21-31 of U.S. Patent No. 12,398,580. Although the claims at issue are not identical, they are not patentably distinct from each other because:
A door lock, a mounting bracket, latches, a plate, a catch, a rail or groove, a fastener, a slot, a recess, a ramp, tail piece, lock cylinder, tabs of the instant application are structurally the same and recited in claims 1-3, 7-12, 21-31 of US Patent 12,398,580.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as it may affect the patentability of applicant’s claimed invention is listed on the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas L. Neubauer whose telephone number is 571.272.4864. The examiner can normally be reached on Monday - Friday, 8:00 AM through 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina R. 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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/T. L. N./
Examiner, Art Unit 3675
/KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
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