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 § 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, 3, 5, 7, 8, 9, 10, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Burger et al., WO 2010105374 A1 (hereinafter Burger). Note; page and paragraph references are from the attached Espacenet machine translation of WO 2010105374 A1.
Regarding claim 1, Burger teaches a padlock [0002] comprising:
a body (housing 2);
a shackle (shackle 3) manually movable relative to the body between a locked shackle position (Fig 4) and an unlocked shackle position (Fig 5);
a blocking mechanism arranged to adopt a blocked state and an unblocked state for blocking and unblocking, respectively, the shackle in the locked shackle position ([0071] discusses mechanisms for fixing or releasing the shackle);
a locking element (output part 45) rotatable relative to the body for controlling the blocking mechanism [0071];
an actuator (outer coupling element 51) configured to adopt a locked state for locking the locking element ([0072] page 61), and an unlocked state for unlocking the locking element ([0072] page 62);
an actuating element (rotary handle 7) operatively connected to the locking element ([0071]; Fig 5) and arranged to be manually manipulated to move the locking element when the actuator adopts the unlocked state [0071];
an electronic control system arranged to control the actuator ([0016; 0072] discusses an electronic module which brings 51 into coupled and uncoupled states); and
at least one energy harvesting device (generator 40);
wherein a movement of the actuating element from an unblocked actuating position to a blocked actuating position causes the blocking mechanism to switch from the unblocked state to the blocked state [0071], and wherein each energy harvesting device is arranged to be actuated by at least one of movement of the actuating element from the unblocked actuating position to the blocked actuating position (claim 1 discusses 40 actuated by 7), by a movement of the shackle, or by a movement of the locking element (Note: the claim recites alternative limitations therefore only one rejection is required).
Regarding claim 3, Burger teaches the padlock [0002] according to claim 1, wherein the at least one energy harvesting device (40) comprises an energy harvesting switch (instant specification page 14 discusses ZF Electronics product AFIG-0007 to be an energy harvesting switch. The AFIG-0007 is a generator as is Burger 40 therefore, it would have been obvious to one of ordinary skill before the effective filing date of the instant application that Burger 40 is an energy harvesting switch).
Regarding claim 5, Burger teaches the padlock [0002] according to claim 3, wherein the energy harvesting switch (40) is arranged to be actuated multiple times by a single movement of the shackle, of the locking element, or of the actuating element (7) in a single direction (it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that turning rotary handle 7 in a single direction would result in the rotor of 40 also being turned and actuating 40 multiple times as the rotor engages with the motor stator).
Regarding claim 7. Burger teaches the padlock [0002] according to claim 1, further comprising an energy storage (capacitor 61) arranged to store electric energy harvested by the energy harvesting device (40; [0070]).
Regarding claim 8, Burger teaches the padlock [0002] according to claim 1, wherein the electronic control system ([0016; 0072] discusses an electronic module which brings 51 into coupled and uncoupled states) is configured to wirelessly receive electric energy from an external device ([0004] discusses the lock being electronically controlled key-side electronics distinct from lock-side electronics thereby wirelessly receiving electric energy from an external device).
Regarding claim 9, Burger teaches the padlock [0002] according to claim 1, wherein the locking element (45) is a locking shaft (([0072] discusses and Fig 4 depicts 45 being a shaft and locked when engaged with 51).
Regarding claim 10, Burger teaches the padlock [0002] according claim 1, wherein the actuating element (7) comprises a knob (Fig 1 depicts 7 to be a knob).
Regarding claim 11, Burger teaches the padlock [0002] according to claim 1 wherein the actuating element (7) is rotatable relative to the body [0072].
Regarding claim 12, Burger teaches the padlock [0002] according to claim 1 wherein the actuating element (7) is positioned on an opposite side of the body (2) with respect to the shackle (3; Fig 4).
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Burger, WO 2010105374 A1, as applied to claims 1 and 3 above, and further in view of Kamp et al., US 8422293 B2 (hereinafter Kamp).
Regarding claim 2, Burger teaches the padlock [0002] according to claim 1.
Burger doesn’t teach wherein one of the at least one energy harvesting device is arranged to be actuated by movement of the shackle from the unlocked shackle position to the locked shackle position.
Kamp teaches it is known in the art for a padlock (lock 2) to comprise a shackle (piece 6; Fig 1) and at least one energy harvesting device (spring 8; sensor 10; electronic unit 12; col 5, lines 47-61 discusses 8;10;12 being a piezoelectric energy harvesting device) each wherein one of the at least one energy harvesting device is arranged to be actuated by movement of the shackle from the unlocked shackle position to the locked shackle position (Fig 1 depicts the upward and downward movement of 6 to be the motion to activate the piezoelectric energy generation).
The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness. See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, using KSR Rationale E, to modify Burger’s padlock apparatus with the energy harvesting structure of Kamp. At the time of the invention, there had been a recognized design need in the art to generate energy using apparatus component movement. There had been a finite number of identified, predictable solutions to the recognized need to generate energy (e.g. use a separate manual actuator to generate energy as taught by Burger; use a different lock component to generate energy such as the shackle as taught by Kamp or Fiske et al., US 7423515 B1; or a self-contained energy generator contained within the lock as taught by La et al., CN 104047480 B). One of ordinary skill in the art would have been motivated to pursue different energy generation techniques in order to determine the most effective and efficient manner to power their locking device apparatus. One of ordinary skill in the art could have pursued the known potential solutions, as taught by Burger, Kamp, La, or Fiske, and redesigned Burger with a reasonable expectation of success resulting a predictable change of energy harvesting structure.
Regarding claim 4, Burger teaches the padlock [0002] according to claim 3.
Burger doesn’t teach wherein the padlock further comprising at least one tooth provided on the shackle or on the locking element for actuating the energy harvesting switch.
Kamp teaches it is known in the art for a padlock (lock 2) to comprise a shackle (piece 6; Fig 1) and at least one energy harvesting device (spring 8; sensor 10; electronic unit 12; col 5, lines 47-61 discusses 8;10;12 being a piezoelectric energy harvesting device) further comprising at least one tooth (Fig 1 depicts the tooth to be the tooth shaped structure upon which spring 8 is mounted) provided on the shackle (shackle 6) or on the locking element (Note: the claim recites alternative limitations therefore only one rejection is required) for actuating the energy harvesting switch.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, using KSR Rationale E, to modify Burger’s padlock apparatus with the energy harvesting structure of Kamp. At the time of the invention, there had been a recognized design need in the art to generate energy using apparatus component movement. There had been a finite number of identified, predictable solutions to the recognized need to generate energy (e.g. use a separate manual actuator to generate energy as taught by Burger; use a different lock component to generate energy such as the shackle as taught by Kamp or Fiske et al., US 7423515 B1; or a self-contained energy generator contained within the lock as taught by La et al., CN 104047480 B). One of ordinary skill in the art would have been motivated to pursue different energy generation techniques in order to determine the most effective and efficient manner to power their locking device apparatus. One of ordinary skill in the art could have pursued the known potential solutions, as taught by Burger, Kamp, La, or Fiske, and redesigned Burger with a reasonable expectation of success resulting a predictable change of energy harvesting structure.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Regarding claim 6, while it is well known in the art for electric generators to comprise multiple tooth shaped brushes which, when turned in one direction, generate energy to be harvested, one of ordinary skill in the art would not find it obvious to modify Burger or Burger in view of Kin as claimed in the instant application wherein the padlock further comprises a plurality of teeth provided on the shackle, on the locking element, or on the actuating element configured to actuate the energy harvesting switch multiple times by a single movement of the shackle, of the locking element, or of the actuating element, respectively, in a single direction; without the use of impermissible hindsight and/or destroying the references.
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 for padlocks and locking apparatus.
Burk et al., US 20240360697 A1, teaches a portable electronic lock with a locking element mounted energy harvesting device.
Fiske et al., US 7423515 B1, teaches a FPALM II finger authentication lock mechanism II with a shackle mounted energy harvesting device.
Zhou et al., CN 112377010 A, teaches an electronic padlock with an energy harvesting device and an external actuating element.
La et al., CN 104047480 B, teaches an electronic lock with a vibration powered energy harvesting device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A TULLIA whose telephone number is (571)272-6434. The examiner can normally be reached M-F 8-5 ET.
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/STEVEN A TULLIA/Examiner, Art Unit 3675
