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 .
Response to Arguments
The amendments overcome the prior art. However, they also introduce new 112 issues.
Specification
The amendment filed 5/25/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “pre-existing narrow stile mortise lock cylinder hole” (examiner emphasis added).
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a projection of at least part of the wire holes, a projection of the one or more installation hole and a projection of the axial through holes” (examiner emphasis added) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The previous claim objections have been overcome however new issues have arisen.
Claims 1 and 18 objected to because of the following informalities: “the one or more installation hole” should read “the one or more installation holes”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 7, 9, 11, 18-23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regards to claims 1-3, 5, 7, 9, 11, 18-23 “without boring” is new matter, the original disclosure only has support for no drilling. Boring is broader in scope than drilling.
In regards to claims 1, 7, 18-19, and 23 “pre-existing narrow stile mortise lock cylinder hole” is new matter. The original disclosure does not support the hole described as being pre-existing nor on a “narrow stile”. From the original disclosure is silent on the hole being preexisting. For instance the hole may have been expanded by methods other than drilling when replacing the old door lock. Additionally, although the hole appears to be on a stile the original disclosure does not support said style being “narrow”.
Claim Rejections - 35 USC § 112(b)
The previous 112b rejections have been overcome however new issues have arisen.
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 1-3, 5, 7, 9, 11, 18-23 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.
In regards to claims 1, 7, 18-19, and 23 “narrow stile ” is unclear. It’s unclear what the applicant considers a “narrow stile”. Although the hole appears to be on a stile “narrow” is a relative term and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the examiner assumes a stile width less than 48mm.
In regards to claims 1 and 18 “a projection of at least part of the wire holes, a projection of the one or more installation hole and a projection of the axial through holes falling within a boundary of the pre-existing narrow stile mortise lock cylinder hole” is unclear. First, the multiple “projection” is not shown or sufficiently described in the specification and thus it’s unclear what “projection” is referring to. For example, the “projection” could be the length the holes project into side plates, a material projection associated with the holes, or empty space beyond the holes. Also, it’s unclear how these “projections” fall within a boundary of the “pre-existing narrow stile mortise lock cylinder hole” as it appears these holes are not within a boundary of the mortise lock cylinder hole in the original disclosure (see fig 5). As best understood and for the purposes of examination the examiner assumes the limitation is claiming a cylindrical space within the mortise pocket and the pre-existing narrow stile mortise lock cylinder hole, has an outermost perimeter defined by an outer perimeter of the pre-existing narrow stile mortise lock cylinder hole, and at least part of the wire holes, the one or more installation holes and the axial through holes are within this space.
Claims 2-3, 5, 9, 11 and 20-23 are rejected due to their dependencies on the rejected claims above.
Allowable Subject Matter
Claims 1-3, 5, 7, 9, 11, 18-23 would be allowed if properly written to overcome 112 rejections and claim objections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER H WATSON whose telephone number is (571)272-5393. The examiner can normally be reached M-F 9 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Mills can be reached at (571) 272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER H WATSON/Examiner, Art Unit 3675
Prosecution Insights