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, 24, 26-28, 33, 37, and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 9, 10, 12, 13, and 19-23 of U.S. Patent No. 12,428,874. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 21, 24, 26-28, 33, 37, and 39-40 are generic to all that is recited in claims 1, 7, 8, 9, 10, 12, 13, and 19-23 of U.S. Patent No. 12,428,874. In other words, claims 1, 7, 8, 9, 10, 12, 13, and 19-23 of U.S. Patent No. 12,428,874 fully encompasses the subject matter of claims 21, 24, 26-28, 33, 37, and 39-40 and therefore anticipates claims 21, 24, 26-28, 33, 37, and 39-40.
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) 21-23, 25-26, 28-30, 33-36, 38-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 11,187,011 to Kwon.
Kwon discloses an electronic lock installable at a door (D) having an exterior side, an interior side, and an edge, the door having a borehole (H) extending through the door from the interior side to the exterior side and a mortise extending into the door from the edge, the electronic lock comprising: an exterior assembly (column 1, lines 14-17) mountable to the exterior side of the door at the borehole; an interior assembly (column 1, lines 14-17) mountable to the interior side of the door at the borehole; a latch (1) having a deadbolt (1a) movable between an extended position and a retracted position, wherein in the extended position, the deadbolt extends from the edge of the door, and in the retracted position, the deadbolt retracts at least partially into the door, the latch being movable in response to rotation of a torque blade (41, 42); a motor (10) positioned at least partially within the borehole; a driving mechanism (19) operatively connecting the motor to the torque blade to actuate the deadbolt between the extended position and the retracted position; and a control circuit (column 5, lines 35-44) operatively connected to the motor and configured to selectively actuate the motor to move the deadbolt between the retracted position and the extended position, as in claim 21.
Kwon also discloses the driving mechanism is positioned at least partially within the borehole (figures 2-4), as in claim 22, and the control circuit is positioned at least partially within the borehole (figures 2-4), as in claim 23, as well as the driving mechanism is positioned within the mortise (figures 2-4), as in claim 25, wherein the control circuit is positioned within the mortise (figures 2-4), as in claim 26.
Kwon further discloses the motor is positioned within the mortise (figures 2-4), as in claim 28, and the exterior assembly does not include electronic equipment (electronic equipment is within door; figure 4), as in claim 29, as well as the electronic lock further includes a mortise insert mountable within the mortise, wherein the mortise insert defines a housing (50) extending into the door from the edge, wherein the latch is positioned at least partially within the housing (figure 4), as in claim 30.
Kwon additionally discloses an electronic lock control module for installation within a door (D) having a borehole (H) and a mortise, the control module comprising: a housing (50) sized to be received at least partially within one of the borehole or the mortise of the door; a motor (10) disposed within the housing; a control circuit (column 5, lines 35-44) operatively connected to the motor; and a driving interface (19) configured to transmit torque from the motor to a torque blade (41, 42) of a latch assembly (1), as in claim 33.
Kwon also discloses the control circuit is configured to selectively actuate the motor to move a deadbolt (1a) of the latch assembly between an extended position and a retracted position (column 5, lines 35-44), as in claim 34, and the housing is sized to be installed entirely within the borehole of the door (figure 4), as in claim 35, as well as the housing is sized to be installed entirely within the mortise of the door (figure 4), as in claim 36.
Kwon further discloses the housing is removably installable within the door independent of the latch assembly (housing is installed from a single side; figure 3), as in claim 38, and all electronic components that actuate the deadbolt are located within the borehole and/or mortise (figure 4), as in claim 39.
Kwon additionally discloses a mortise insert for an electronic lock, the mortise insert comprising: a housing (50) configured to be installed within a mortise (H) of a door (D); a latch-receiving portion configured to support a latch (1) having a deadbolt (1a); and an electronics-receiving portion configured to receive an electronic lock control module operable to drive the latch (10; column 5, lines 35-44), as in claim 40.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 24, 27 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwon, as applied above, in view of U.S. Patent Number 11,527,121 to Johnson et al.
Kwon discloses the invention substantially as claimed. However, Kwon does not disclose a wireless communication interface.
Johnson et al. teach of an electronic lock installable at a door (12) having an exterior side, an interior side, and an edge, the door having a borehole (figure 1B) extending through the door from the interior side to the exterior side and a mortise extending into the door from the edge, the electronic lock comprising: an exterior assembly mountable to the exterior side of the door at the borehole (figure 1B); an interior assembly mountable to the interior side of the door at the borehole (figure 1B); a latch (22) having a deadbolt (24) movable between an extended position and a retracted position, wherein in the extended position, the deadbolt extends from the edge of the door, and in the retracted position, the deadbolt retracts at least partially into the door, the latch being movable in response to rotation of a torque blade (as best shown in figures 2D and 7A); a motor (38) positioned at least partially within the borehole; a driving mechanism (gear train 34 engaged with 38; figures 7A, 7D) operatively connecting the motor to the torque blade to actuate the deadbolt between the extended position and the retracted position; and a control circuit (PCB 18, 36) operatively connected to the motor and configured to selectively actuate the motor to move the deadbolt between the retracted position and the extended position; wherein the control circuit includes a wireless communication interface (via 40) configured to receive lock or unlock commands, as in claims 24, 27 and 37.
All of the component parts are known in Kwon and Johnson et al. The only difference is the combination of the “old elements” into a single device by mounting them on a single chassis. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a wireless communication interface as taught by Johnson et al. onto the borehole or mortise of in Kwon, since the manner the electronic lock is actuated is in no way dependent on the mechanical structure of the electronic lock, and the wireless communication interface could be used in combination with the electronic lock to achieve the predictable results of remotely access the electronic lock to lock or unlock the lock and monitor the use thereof.
Claim(s) 31-32is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwon, as applied above, in view of U.S. Patent Number 11,527,121 to Johnson et al.
Kwon discloses the invention substantially as claimed. However, Kwon does not disclose a battery subassembly.
Johnson et al. teach of and electronic lock installable at a door (12) having an exterior side, an interior side, and an edge, the door having a borehole (figure 1B) extending through the door from the interior side to the exterior side and a mortise extending into the door from the edge, the electronic lock comprising: an exterior assembly mountable to the exterior side of the door at the borehole (figure 1B); an interior assembly mountable to the interior side of the door at the borehole (figure 1B); a latch (22) having a deadbolt (24) movable between an extended position and a retracted position, wherein in the extended position, the deadbolt extends from the edge of the door, and in the retracted position, the deadbolt retracts at least partially into the door, the latch being movable in response to rotation of a torque blade (as best shown in figures 2D and 7A); a motor (38) positioned at least partially within the borehole; a driving mechanism (gear train 34 engaged with 38; figures 7A, 7D) operatively connecting the motor to the torque blade to actuate the deadbolt between the extended position and the retracted position; and a control circuit (PCB 18) operatively connected to the motor and configured to selectively actuate the motor to move the deadbolt between the retracted position and the extended position; wherein the mortise insert includes a battery subassembly (50) positioned within the housing, wherein the battery subassembly is electrically connected to the control circuit (figure 1G), as in claim 31, wherein the battery subassembly is removable from the housing independent of the latch (figures 4-7 and 12A-D), as in claim 32.
All of the component parts are known in Kwon and Johnson et al. The only difference is the combination of the “old elements” into a single device by mounting them on a single chassis. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a battery subassembly as taught by Johnson et al. onto electronic lock in Kwon, since the manner the electronic lock receives power is in no way dependent on the mechanical structure of the lock, and the battery subassembly could be used in combination with electronic lock to achieve the predictable results of having easily replaceable batteries powering the electronic lock.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to further show the state of the art with respect to electronic door locks:
U.S. Patent Number 11,802,423 to Chen; U.S. Patent Number 11,753,850 to Chen; U.S. Patent Number 11,753,848 to Tien; U.S. Patent Number 11,428,028 to Gell; U.S. Patent Application Publication Number 2025/0146326 to Hu et al.; U.S. Patent Application Publication Number 2022/0074234 to Chen; U.S. Patent Application Publication Number 2019/030120 to Kwon.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BOSWELL whose telephone number is (571)272-7054. The examiner can normally be reached M-R: 9-4; F 9-12.
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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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/CHRISTOPHER J BOSWELL/ Primary Examiner, Art Unit 3675
CJB /cb/
July 24, 2026
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