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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5, 7-10, 12-13, 16, 18-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Oceanbox I (Screen captures from YouTube video clip entitled “Locking Magnetic Frag Rack Demo”, 4 pages, uploaded February 15, 2018 by user “OceanboxDesigns”. Retrieved from Internet <https://www.youtube.com/watch?v=la6hL_STkUw>) and Oceanbox II (https://oceanboxdesigns.com/product/locking-magnetic-frag-racks-oceanbox-designs/), with Oceanbox I and Oceanbox II combined referred to as Oceanbox (both references show the same product, with Oceanbox II link provided in the YouTube video upload information), in view of CPR (https://web.archive.org/web/20200207074953/http://www.cpraquaticinc.com/citr-frag-rack, February 2020) and Dell’Elmo, Rob. ‘A Case for Using Adhesives and Mechanical Fasteners Simultaneously’. Austin Hardware & Supply, Inc., February 4, 2020 [retrieved on 2024-12-26]. Retrieved from the Internet: <URL: https://blog.austinhardware.com/a-case-for-using-adhesives-and-mechanical-fasteners-simultaneously>).
Regarding claim 1, Oceanbox discloses a frag retention system comprising: a frag rack (screenshot page 1) comprising: a base layer (screenshot page 2), the base layer comprising: a top base layer surface (surface closest to the top layer), a bottom base layer surface (surface shown in screenshot page 2), a base layer hole shape (bottom of frag is shown through the hole shape in screenshot page 2), the base layer hole shape having a base layer length and a base layer width (base layer hole shape by definition has a base layer length and base layer width); a retention layer (screenshot pages 1 and 4 show a white in between layer on top of the base layer and below a top layer, and shown in further detail in screenshot of Oceanbox II) on the base layer; the retention layer comprising: a top retention layer surface (surface against the top layer), a bottom retention layer surface (surface against the base layer), a retention layer hole shape (hole shape shown in screenshot page 1), the retention layer hole shape having a retention layer hole shape length and a retention layer hole shape width (retention layer hole shape by definition has a retention layer length and retention layer width), where the retention layer hole shape width is less than the base layer hole shape width (screenshot page 1); and a top layer (screenshot page 1), on the retention layer (screenshot page 1 shows the top layer on top of the retention layer); the top layer comprising: a bottom top layer surface (surface in contact with the retention layer), a top layer hole shape (screenshot page 1 shows the top layer hole shape), the top layer hole shape having a top layer hole shape length and a top layer hole shape width (top layer hole shape by definition has a top layer length and top layer width); and wherein the top layer hole shape length is substantially the same as the base layer hole shape length (screenshot page 1 shows both the base layer hole shape length and the top layer hole shape length are the same), and further comprising a fastening means (screws are shown in screenshot page 1), wherein the top base layer surface is in contact with and adhered by the fastening means to the bottom retention layer surface, and the top retention layer surface is in contact with and adhered to the bottom top layer surface (see screenshots pages 1 and 2).
Oceanbox does not explicitly disclose the base layer hole shape being a base layer slot, where the base layer slot length is at least two times the base layer slot width; the retention layer hole shape being a retention layer slot, where the retention layer slot width is less than the base layer slot width; the top layer hole shape being a top layer slot, where the top layer slot length is at least two times the top layer slot width, the fastening means is an adhesive.
CPR teaches a layer hole shape being a layer slot, where the layer slot length is at least two times the layer slot width. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the frag retention system of Oceanbox to provide a slot as the hole shape as taught by CPR in order to allow a user to place all sizes and shapes of frag plugs to reduce crowding, or time spent finding a correct hole (CPR: left side description under Figures).
Dell’Elmo teaches an issue that comes across numerous industries regarding the benefits of both mechanical fasteners and adhesives noting that a solution is to use both in certain situations (last two paragraphs of the blog note benefits of using both). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the fastening means of Oceanbox as modified by CPR to include an adhesive as taught by Dell’Elmo with a reasonable expectation of success in order to receive the benefits of both mechanical fasteners and adhesives (Dell’Elmo: last two paragraphs of the blog, along with the first two sections that highlight the benefits of each).
Regarding claim 5, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to CPR) the system further comprising a container (Figs. 1 and 2 show a container) and a lid (Figs. 1 and 2 show a lid on top of the container), the container and the lid being large enough to hold the frag rack inside the container (Figs. 1 and 2 show the container holds the frag rack).
Regarding claim 7, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 5, and teaches (references to CPR) the system further comprising legs (Figs. 1 and 2 show legs attached and below the frag rack), the legs adapted to space the frag rack off a bottom of the container (Figs. 1 and 2 show the legs spacing the frag rack off the bottom of the container).
Regarding claim 8, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to Oceanbox) wherein the retention layer slot width is less than the base layer slot width (screenshot page 1 shows the retention layer slot width less than the base layer slot width, however does not specify the specific percentage less). The instant specification does not disclose any criticality as to the percent relationship between the retention layer slot width and the base layer slot width. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the retention layer slot width size such that the retention layer slot width is at least 25% less than the base layer slow width, since this would allow for a wider range of frags to be added to frag rack because the retention layer can hold smaller items versus a wider retention layer slot width while still being able to hold larger items. It has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233. Additionally, it has further been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 225 USPQ 232 (1984).
Regarding claim 9, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to Oceanbox) wherein the retention layer slot width is less than the base layer slot width (screenshot page 1 shows the retention layer slot width less than the base layer slot width, however does not specify the specific percentage less). The instant specification does not disclose any criticality as to the percent relationship between the retention layer slot width and the base layer slot width. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the retention layer slot width size such that the retention layer slot width is at least 50% less than the base layer slow width, since this would allow for a wider range of frags to be added to frag rack because the retention layer can hold smaller items versus a wider retention layer slot width while still being able to hold larger items. It has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233. Additionally, it has further been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 225 USPQ 232 (1984).
Regarding claim 10, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to Oceanbox) the system further comprising retention pieces (screws, shown in video and pointed out in screenshot page 2 of Oceanbox II are an equivalent) between the top layer and the base layer, the retention pieces being adapted to secure the retention layer in place between the top layer and the base layer (the screws help hold the frag rack together). Additionally, no criticality has been provided as to the specific retention piece type, the specification noting that screws can be used interchangeably, see paragraph [0044]).
Regarding claim 12, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 10, and teaches wherein the retention pieces are adhered to the base layer and the top layer (the screws of Oceanbox adhere to the base layer and top layer through the adhesive as noted in Dell’Elmo).
Regarding claim 13, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 10, and teaches wherein the retention pieces (Oceanbox: screws) and the adhesive (Dell’Elmo: adhesives) are inserted between the top layer and the base layer, the adhesive being adapted to secure the top layer to the base layer (Dell’Elmo: the adhesive would have to be between each layer).
Regarding claim 16, Oceanbox discloses a frag retention system comprising: a frag rack (screenshot page 1) comprising: a base layer (screenshot page 2), the base layer comprising: a top base layer surface (surface closest to the top layer), a bottom base layer surface (surface shown in screenshot page 2), a base layer hole shape (bottom of frag is shown through the hole shape in screenshot page 2), the base layer hole shape having a base layer length and a base layer width (base layer hole shape by definition has a base layer length and base layer width); a fastening means (screws are shown in screenshot page 1); a retention layer (screenshot pages 1 and 4 show a white in between layer on top of the base layer and below a top layer, and shown in further detail in screenshot of Oceanbox II), laid on top of and in contact with the base layer, the retention layer comprising: a top retention layer surface (surface against the top layer), a bottom retention layer surface (surface against the base layer), a retention layer hole shape (hole shape shown in screenshot page 1), the retention layer hole shape having a retention layer hole shape length and a retention layer hole shape width (retention layer hole shape by definition has a retention layer length and retention layer width), where the retention layer hole shape width is less than the base layer hole shape width (screenshot page 1); a top layer (screenshot page 1) laid on top of and in contact with the retention layer (screenshot page 1 shows the top layer on top of the retention layer); the top layer comprising: a bottom top layer surface (surface in contact with the retention layer), a top layer hole shape (screenshot page 1 shows the top layer hole shape), the top layer hole shape having a top layer hole shape length and a top layer hole shape width (top layer hole shape by definition has a top layer length and top layer width); and wherein the top layer hole shape length is substantially the same as the base layer hole shape length (screenshot page 1 shows both the base layer hole shape length and the top layer hole shape length are the same) and wherein the top base layer surface is adhered by the fastening means to the bottom retention layer surface, and the top retention layer surface is adhered by the fastening means to the bottom top layer surface (see screenshots pages 1 and 2).
Oceanbox does not explicitly disclose the base layer hole shape being a base layer channel, where the base layer channel length is at least two times the base layer channel width; the retention layer hole shape being a retention layer channel, where the retention layer channel width is less than the base layer channel width; the top layer hole shape being a top layer channel, where the top layer channel length is at least two times the top layer channel width, the fastening means being a first adhesive layer and a second adhesive layer.
CPR teaches a layer hole shape being a layer channel, where the layer channel length is at least two times the layer channel width. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the frag retention system of Oceanbox to provide a channel as the hole shape as taught by CPR in order to allow a user to place all sizes and shapes of frag plugs to reduce crowding, or time spent finding a correct hole (CPR: left side description under Figures).
Dell’Elmo teaches the benefits of both mechanical fasteners and adhesives noting that a solution is to use both in certain situations (last two paragraphs of the blog note benefits of using both). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the fastening means of Oceanbox as modified by CPR to include a first adhesive layer and a second adhesive layer as taught by Dell’Elmo with a reasonable expectation of success in order to receive the benefits of both mechanical fasteners and adhesives (Dell’Elmo: last two paragraphs of the blog, along with the first two sections that highlight the benefits of each).
Regarding claim 18, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to Oceanbox) where the frag rack can be turned upside down (screenshot page 2 shows the frag rack upside down) and placed in the container (the frag rack is capable of being placed upside down in the container).
Regarding claim 19, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to CPR) the system further comprising a frag plug (frag plugs shown in Figs. 1 and 2), the frag plug comprising a stem and a disk, the stem sized to fit in the top layer and base layer slots (see Figs. 1 and 2). Please note in the combination, the top layer and base layer are taught by Oceanbox.
Regarding claim 21, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to Oceanbox) wherein the base layer further comprises a circular base layer hole (see screenshot page 2); the retention layer further comprises a circular retention layer hole (see screenshot page 1); and a top layer further comprises a circular top layer hole (see screenshot page 1); and the circular retention layer hole has a diameter less than the circular base layer hole (see screenshot page 1).
Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Oceanbox I (Screen captures from YouTube video clip entitled “Locking Magnetic Frag Rack Demo”, 4 pages, uploaded February 15, 2018 by user “OceanboxDesigns”. Retrieved from Internet <https://www.youtube.com/watch?v=la6hL_STkUw>) and Oceanbox II (https://oceanboxdesigns.com/product/locking-magnetic-frag-racks-oceanbox-designs/), with Oceanbox I and Oceanbox II combined referred to as Oceanbox (both references show the same product, with Oceanbox II link provided in the YouTube video upload information), in view of CPR (https://web.archive.org/web/20200207074953/http://www.cpraquaticinc.com/citr-frag-rack, February 2020) and Dell’Elmo, Rob. ‘A Case for Using Adhesives and Mechanical Fasteners Simultaneously’. Austin Hardware & Supply, Inc., February 4, 2020 [retrieved on 2024-12-26]. Retrieved from the Internet: <URL: https://blog.austinhardware.com/a-case-for-using-adhesives-and-mechanical-fasteners-simultaneously>) as applied to claims 5 and 1 respectively above, and further in view of RB (Screen captures from YouTube video clip entitled “Building an Obsession Frag Transport System”, 2 pages, uploaded July 16, 2016 by user “Reef Builders”. Retrieved from Internet < https://www.youtube.com/watch?v=qwRolOWZzJM).
Regarding claim 6, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 5. However, Oceanbox as modified by CPR and Dell’Elmo does not explicitly teach the system further comprising a pillar, the pillar adapted to hold the frag rack in a stable vertical position with respect to the container.
RB teaches pillars adapted to hold the frag rack in a stable vertical position with respect to the container (see screenshot page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Oceanbox modified by CPR and Dell’Elmo to include a pillar as taught by RB in order to help stabilize the frag rack in a container while being transported.
Regarding claim 17, Oceanbox as modified by CPR and Dell’Elmo teaches the system of claim 1, and teaches (references to CPR) the system further comprising a container (Figs. 1 and 2 show a container) and a container lid (Figs. 1 and 2 show a lid on top of the container), the container and the lid being large enough to hold the frag rack inside the container (Figs. 1 and 2 show the container holds the frag rack).
Oceanbox as modified by CPR and Dell’Elmo does not explicitly teach the system further comprising a pillar, the pillar adapted to hold the frag rack in a stable vertical position with respect to the container, and one of the base layer, the retention layer, or the top layer being sized with respect to the container to hold the frag rack in a stable horizontal position with respect to the container.
RB teaches pillars adapted to hold the frag rack in a stable vertical position with respect to the container (see screenshot page 2), one of the base layer, the retention layer, or the top layer being sized with respect to the container to hold the frag rack in a stable horizontal position with respect to the container (it is demonstrated throughout the video how everything is sized for the container for maximum horizontal position stability, screenshot page 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Oceanbox modified by CPR and Dell’Elmo to include a pillar and size the layers with respect to the container to hold the frag rack in a stable horizontal position with respect to the container as taught by RB in order to help stabilize the frag rack in a container while being transported (RB: it is demonstrated throughout the video how everything is sized for the container for maximum horizontal position stability, screenshot page 3).
Response to Arguments
Applicant's arguments filed 7/`0/2025 have been fully considered but they are not persuasive.
With respect to claims 1 and 16, applicant argued that adhesive is critical in the instant case to avoid retention from sliding. Additionally, applicant argued that providing slots in Oceanbox goes against the purpose of Oceanbox. Further, applicant argued that CPR teaches a single layer of large slots so any plug can fit. Additionally, applicant argued that Dell’Elmo is a non-analogous art. Therefore, applicant asserts that one skilled in the art would not have found it obvious to combine Oceanbox with CPR and Dell’Elmo as proposed.
The examiner respectfully disagrees. The original disclosure of the instant application does not provide criticality of the adhesive limitation. Further, the claims themselves do not provide enough details that are related to the applicant’s argument. The prior art used in the rejection provides teachings as to why there would be adhesive used when there is also a mechanical fastener. Therefore, the prior art reads on the claim limitation.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Oceanbox provides a retention layer, but not the shape of the openings and the specific fastening means recited. It is noted that it would be obvious to expand the sizes of frags to be held in order to gain a share of a larger part of the frag segment of business. The specific shape recited is shown in CPR and noted that combined with Oceanbox would provide the shape and retention layer that is required in the claim. Further, Dell’Elmo teaches that in many industries which can affect the manufacturing of frag racks, both a mechanical fastener and adhesive are used for fastening purposes which can solve a problem that can occur. Therefore, the prior art reads on the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.W.L./Examiner, Art Unit 3643
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643