DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the claims filed on 07/23/2026.
Claims 1-20 are currently pending and have been examined below.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12516561. Although the claims at issue are not identical, they are not patentably distinct from each other because the US Patent includes all features presented for claims 1-20, therefore the present claims are not patentably distinct from the US Patent.
Claim Interpretation
In claim 19, “each of the plurality of pre-wired receptacles” was interpreted to be referring to all pre-wired receptacles recited in both claims 11 and 19. This interpretation was supported via at least figures 3-5, therefore the scope of the claim is clear and the indefinite issue below was withdrawn.
In claim 7, “means for providing both” was interpreted to invoke 112(f), the original disclosure provides sufficient structure for the limitation (par. 0053).
Claim Objections
Claims 10, 14, and 20 are objected to because of the following informalities:
In claim 10, “one or more of a motion sensor to tum on LED lighting, electric powered door latch, a motion sensor to control an electric powered door latch” is objected and brought to applicant’s attention. Is the motion sensor actually turns on another motion sensor to control an electric latch? This issue is also present in claim 20.
In line 1 of claim 14, “an inner door frame” should read --the inner door frame--.
Appropriate correction is required. Above provides non-limiting examples, the applicant(s) must find and correct all issues similar to those discussed above.
Claim Rejections - 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, 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yulkowski et al. (US 6259352) (hereinafter “Yulkowski”) in view of Rehberg et al. (US 3629972) (hereinafter “Rehberg”) in further view of King et al. (US 11189948) (hereinafter “King”).
Claim 1
(Yulkowski discloses) A door system (figures 1-8) comprising:
a door frame (frame discussed on lines 21-22 of col. 5) adapted to be mounted within an opening (the opening that the door in figure 1 opens and closes); a door (10) pivotally attached to the door frame (hinges discussed on lines 60-62 of col. 8); the door comprising:
an inner door frame (14 and 16),
an exterior door skin (exterior 18; figure 2) and an interior door skin (interior 18) secured to opposite sides of the inner door frame (figure 2).
Yulkowski teaches an AC/DC converter (38) and plurality of DC electric devices, however, fails to disclose:
(i) a slot in the door; and
a pre-wired receptacle disposed in the slot, the pre-wired receptacle comprising:
(ii) an insulated housing having a continuous side wall and a bottom wall defining an
open cavity,
(iii) a standardized electrical connector comprising one of a plug connector and a socket connector and electrically connected to an AC/DC converter configured to be electrically connected to an AC power unit operably associated with the door, and
(iv) a DC electric device removably disposed in the pre-wired receptacle and electrically connected to the AC/DC converter through the standardized electrical connector of the pre-wired receptacle.
However, Rehberg teaches:
A door system (Rehberg figures 1-6) comprising:
(i) a slot (116; Rehberg figures 5-6) in a door (22); and
a pre-wired receptacle (118) disposed in the slot.
However, King teaches:
(i) a pre-wired receptacle (box 4402; King figure 44) comprising:
(ii) an insulated housing (housing of 4402) having a continuous side wall and a bottom wall (King figure 44) defining an open cavity (4410),
(iii) a standardized electrical connector (connector of the box 4402 which receives conduit 4404) comprising one of a plug connector and a socket connector (King figure 44; this was interpreted as ‘or’ clause therefore only one of the options are required to be taught by the prior art) and configured to be electrically connected to an AC power unit operably associated with the door (via wiring 4404; King figure 44), and
(iv) a DC electric device (102) removably disposed in the pre-wired receptacle (lines 24-35 of col. 44).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the door system of Yulkowski with the slot and a dedicated pre-wired receptacle disposed in the slot of Rehberg and the pre-wired receptacle with a standardized electrical connector and a DC electric device of King for organizing the devices within the door and for an efficient manner of storing the wiring inside the door without affecting the movement of the door. Furthermore, the door of Yulkowski would operate equally as well when having a cavity formed in the door to house the DC electrical devices and specifically a receptacle box.
(Yulkowski, as modified above, discloses) the standardized electrical connector electrically connected to an AC/DC converter (38);
the DC electric device electrically connected to the AC/DC converter through the standardized electrical connector of the pre-wired receptacle (both of these clauses would be inevitably taught via the combination above).
Claim 2
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the plug connector comprises one of a universal serial bus (USB) connector and a high-definition multimedia interface (HDMI) connector, and wherein the socket connector comprises a multi-pin electrical socket connector mounted within the cavity (these are inevitably taught via the combination above; see socket of King being a multi-connector).
Claim 3
(Yulkowski, as modified above, discloses) The door system of claim 1 wherein the slot is formed in a peripheral edge of the door (the slot of Rehberg is located at an edge/facing of the door therefore this is taught via the combination above).
Claim 4
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the inner door frame comprises top and bottom rails (14) and first and second stiles (16; figure 1), and wherein the slot is formed in one of the stiles or rails (this is taught via the combination above).
Claim 5
(Yulkowski, as modified above, discloses) The door system of claim 4, wherein the inner door frame is rectangular (figure 1).
Claim 6
(Yulkowski, as modified above, discloses) The door system of claim 4, wherein the top and bottom rails are parallel and spaced apart vertically and/or, wherein the first and second stiles are parallel and spaced apart horizontally (both are taught by modified Yulkowski).
Claim 7
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the door system further comprises: means for providing both high-voltage and low-voltage electrical power (system of 102 connecting to the power supply 36) for operation of a plurality of electric devices; and a power management controller (60; figure 8) integrated into the door system.
Claim 8
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the DC electric device comprises one of a powered door latch, a sensor (for this claim, the DC electric device was interpreted as sensor 98), a door state sensor, and a LED.
Claim 9
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the pre-wired receptacle opens on a facing of the door (the slot/pre-wired receptacle of Rehberg opens at an edge/facing of the door therefore this is taught via the combination above).
Claim 10
(Yulkowski, as modified above, discloses) The door system of claim 1, wherein the DC electric device comprises one or more of a motion sensor to turn on LED lighting, electric powered door latch (for this claim, the DC electric device was interpreted as latch 84), a motion sensor to control an electric powered door latch (the limitation ‘one of’ was interpreted such that only one of these options were required to be taught by the prior art).
Allowable Subject Matter
Claims 11-20 could be found allowable if the Double Patenting rejection is overcome via terminal disclaimer.
The following is an examiner’s statement of reasons for allowance: the prior art Yulkowski et al. (US 6259352) (hereinafter “Yulkowski”) in view of Bryant (US 5531086) appears to teach most of the limitations of claim 11.
However, claim 11 recites “a pre-wired receptacle in the door, the pre-wired receptacle comprising an electrical connector electrically mounted in an open cavity of the pre-wired receptacle and electrically connected to an AC/DC converter located in a slot formed in a first jamb member of the door frame” and the AC/DC converter of Yulkowski is located within the door and not within a slot formed in a first jamb member of the door frame. Examiner considered applying case law to move the placement of the AC/DC converter, however the rejection was not set forth as creating additional hole or slot within the jamb of the door frame would only seem to negatively affect the structural integrity of the entire door frame such that examiner finds no rational reasoning behind the modification other than hindsight to applicant’s invention.
Examiner also cites the following relevant prior art: EP 3734000, FR 2850798, and FR 2667105. All three discloses a converter but none teaches placing the converter within a slot of a jamb member nor within the door frame. For example, figure 2 of EP 3734000 discloses its converter (52) within the door (14), while figure 1 of FR 2850798 discloses its converter (11) located to the wall and outside of the door frame (2).
Further modifications such the any of these prior art meets the limitations of the claim would require significant hindsight and/or piecemeal rejection such that examiner has found these modifications unreasonable to apply and reject the claims as recited.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicated noted that “Without conceding to the propriety of this rejection, Applicant is filing a terminal disclaimer herewith, thereby rendering this rejection moot. Withdraw of this double patenting rejection is respectfully requested”, however since no Terminal Disclaimer has been filed, the double patenting rejection has been maintained.
Applicant’s amendments directed to the claim objections have been considered and some of the objections were withdrawn.
Applicant’s amendments directed to the claim 112(b) rejections have been considered and the rejections were withdrawn.
Applicant's arguments filed on 07/23/2026 have been fully considered but are moot.
Applicant argues “The Office Action acknowledges that Yulkowski is silent regarding… Nonetheless, the Office Action relies on Bryant to allegedly teach these missing features. However, as explained below, Bryant fails to cure these deficiencies”, Examiner notes that this was found moot as Bryant was not relied upon in the rejection above.
Applicant also argues “Applicant further notes that the Office Action relies on annotated Figure 5 of Yulkowski to allege that Yulkowski discloses "a slot in the door." However, a close examination of Figure 5 of Yulkowski reveals that the item in the annotated Figure 5 actually simply points to a door latch housing mounted to an exterior surface of a door”, examiner also notes that this argument was found moot as the rejection above does not rely to Yulkowski in teaching the slot in the door.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK B PONCIANO whose telephone number is (571)272-9910. The examiner can normally be reached M-F 6:30-4:00.
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, Daniel Cahn can be reached at (571) 270-5616. 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.
/PATRICK B. PONCIANO/Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634
