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 .
Drawings
The drawings are objected to because of the use of heavy shading. Note that solid black shading areas are not permitted, except when used to represent bar graphs or color. 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.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Rejections - 35 USC § 112
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 34-35, 37 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. Regarding claims 34-35, there is no support in the original disclosure for the front surface being uncovered and thus it constitutes new matter. Note that any negative limitation or exclusionary proviso must have basis in the original disclosure. Regarding claim 37, there is no support in the original disclosure for panels being parallel to one another and thus it constitutes new matter. Regarding claims 38-39, there is no support for the opening depth being smaller than opening height and thus it constitutes new matter. In particular, the original disclosure is silent regarding the relationship between the opening depth and opening height.
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 10, 24-25, 28-29, 35, 39 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.
Regarding claim 10, 24, 29, it is unclear whether applicant is claiming the combination of the case and collectibles or the sub combination of the case intended to function with collectibles. The preamble suggests the latter; however, the claims recite structure of the case in combination with the collectible such as the width of each opening is equal to or less than the predetermined width of the collectible and inner surface makes contact with sides of the collectable directly in contact with top, bottom, left side, and right side of the opening. It is unclear how the inner surface makes contact with an unclaimed collectible. It is unclear how the width of each opening is equal to or less than predetermined width of an unclaimed collectible. Regarding claim 10, “the plurality of elongated openings” lacks antecedent basis. Regarding claim 24, “the opening width or opening heigh of each elongated opening” lacks antecedent basis because an elongated opening as not been recited. Furthermore, “the single collectable” lacks antecedent basis and it is unclear what it is referring to. Regarding claims 10, 25, “the objects to be received” lacks antecedent basis and it is unclear how the height and depth of the openings can be equal or less than height and depth of collectibles that are unclaimed.
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) 9-10, 21, 24-25, 29, 34-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,230,426 to Keefe et al. (Keefe) in view of US Patent No. 6,467,619 to Leen et al. (Leen) or US Patent No. 6,036,019 to Silverman.
Regarding claim 9, Keefe discloses a case (20) capable of storing objects (32) having a same predetermined height, width, depth (intended use), the case comprising side panels (23, 24), a vertically-arranged layer having a front surface (surface where openings 30 are located) and comprising linear left and right side panels (23, 24), linear top (21) and bottom (22) sides, a plurality of internal horizontal panels (27) parallel to top (21) and bottom panel (22), each horizontal panel extending from left panel (23) to right panel (24), a plurality of internal vertical columns (26) parallel to left (23) and right (24) side panels, each internal vertical column (26) extending from top (21) to bottom (22) side, the plurality of horizontal panels (27) and vertical columns (26) form a plurality of openings (30) aligned vertically in linear columns and aligned horizontally in linear rows (Fig 2), each opening (30) having a height and width and depth (col. 2, ll. 20-25), the layer forming an inner surface (col. 2, ll. 20-25) at each of the plurality of openings, each of the plurality of openings capable of receiving a single object (32), the width of the openings capable of being equal to or less than the width of a object such that each opening can hold a object by a friction fit wherein the inner surface makes contact with sides of the object when placed within the opening depending on the size and shape of the object to be held, wherein the opening depth of each opening in configured to be less than the predetermined object depth whereby the object extends outward of the opening from the front surface of the layer depending on the dimension of the object to be inserted into the opening on the front surface of the layer. In particular, since Keefe discloses the case having the structure as recited, then it can function with objects having a size equal or less than to form a friction fit when fitted within the opening of the case or with object having a depth greater than depth of the opening such that the object extends outwards of the opening when inserted into the opening. Keefe does not teach the case comprising a pliable foam layer that comprises the openings to allow the object to be placed within the opening. In particular, Keefe does not teach the case made of pliable foam. However, Leen discloses a storage device (40) made of pliable foam (elastic, col. 2, ll. 25-30) having openings (44) to store items, the foam layer having an inner surface at each of the openings and configured to allow the item to be placed within the opening (col. 2, ll. 30-35). Silverman also discloses use of a pliable foam storage block (deformable block 23, Fig 1) with recesses (18, 20) to frictionally secure and retain items (col. 4, ll. 1-5). One of ordinary skill in the art would have found it obvious to manufacture the Keefe case out of foam material as suggested by Leen or Silverman in order to facilitate storing of the tubes since it has been held that that selection of a known material to make a container of a type made of material prior to the invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Furthermore, the object would be capable of being in direct contact with the inner surface of the foam layer depending on the size and dimensions of the object and furthermore, each opening is capable of receiving a single object depending on the size and dimensions of the object. In particular, since prior art has the structure as recited, then it would be capable of functioning with objects of the size and dimensions as recited.
Regarding claim 10, Keefe further discloses height of the each of the openings (30) capable of being equal to or less than the height of the object since it has the structure as recited.
Regarding claim 21, Keefe further discloses each of said plurality of openings (130) receives no more than a single one of the objects (32, Fig 2).
Regarding claim 24, Keefe discloses a case (20) configured to storing objects (tube 32) each having same predetermined height and width and depth (intended use), the case comprising side panels (23, 24), a vertically-arranged layer having a front surface (surface where openings 30 are located), plurality of openings (30) each having a height and a width and a depth (Fig 2) defining a top, bottom, left and right side, each of the plurality of openings configured to receive a single one of the objects (32), the width or height of each opening can be equal to or less than respective predetermined width or height of a object such that each of the opening is configured to hold the object in the opening by a friction fit wherein left and right side can make contact with sides of a single collectible or the top and bottom make contact with top and bottom of collectible when placed within the opening, the opening depth of each opening is configured to be less than the prederemined object depth whereby the object extends outward of said opening from the front surface of the layer depending on the dimension of the object to be inserted into the opening on the front surface of the layer. Keefe does not teach the case comprising a pliable foam layer that comprises the openings to allow the collectible to be placed within the opening. In particular, Keefe does not teach the case made of pliable foam. However, Leen discloses a display device (40) made of pliable foam (elastic, col. 2, ll. 25-30) having openings (44) to store items, the foam layer having an inner surface at each of the openings and configured to allow the item to be placed within the opening (col. 2, ll. 30-35). Silverman also discloses use of a pliable foam display block (deformable block 23, Fig 1) with recesses (18, 20) to frictionally secure and retain items (col. 4, ll. 1-5). One of ordinary skill in the art would have found it obvious to manufacture the Keefe case out of foam material as suggested by Leen or Silverman in order to facilitate holding of the objects since it has been held that that selection of a known material to make a container of a type made of material prior to the invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Furthermore, the object would be capable of being in direct contact with the inner surface of the foam layer depending on the size and dimensions of the object and furthermore, each opening is capable of receiving a single object depending on the size and dimensions of the object. In particular, since prior art has the structure as recited, then it would be capable of functioning with objects of the size and dimensions as recited.
Regarding claim 25, Keefe further discloses height of the each of the openings (30) capable of being equal to or less than the predetermined height of the object (32) since it has the structure as recited.
Regarding claim 29, Keefe further discloses each of said plurality of openings receives no more than a single one of the objects (32, Fig 9).
Regarding claims 34-35, Keefe further teaches front surface uncovered since the openings are on the front surface.
Regarding claim 36, Keefe further teaches plurality of openings (30) square or rectangular (col. 2, ll. 20-25).
Regarding claim 37, Keefe further discloses plurality of internal horizontal panels (27) are linear and parallel to top panel (21) and linear bottom panels (22), plurality of internal vertical columns (26) are linear and parallel to linear left-side panel and right side panel (23, 24) (Fig 2).
Claim(s) 13, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keefe in view of Leen/Silverman and US 2011/0180452 to Brandinelli.
Regarding claim 13, the modified Keefe teaches the case of claim 9 and Keefe further suggest the case adapted for mounting on a wall or other vertical support (col. 2, ll. 27-28) but does not explicitly teach an attachment mechanism. However, Brandinelli discloses a shelf case (Fig 6) and in particular discloses attachment mechanism (342, Fig 8) that allow the case to be hung on a wall (¶0059). One of ordinary skill in the art would have found it obvious to incorporate attachment mechanism to the modified Keefe as suggested by Brandinelli in order to facilitate mounting of the case to a wall.
Regarding claim 28, the modified Keefe teaches the case of claim 24 and further teaches the case to be mounted on a wall (col. 2, ll. 25-30) but does not teach attachment mechanisms. Brandinelli discloses a case (Fig 6) and in particular discloses one or more attachment mechanisms (342, Fig 8) that allow the case to be hung on a wall (¶0059). One of ordinary skill in the art would have found it obvious to incorporate attachment mechanism to the modified Keefe in order to facilitate mount on a wall (Brandinelli, ¶0059).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keefe in view of Leen/Silverman and US Patent No. 4,964,514 to Wycech.
Regarding claim 32, the modified Keefe teaches the case of claim 9 but does not teach separate front facing layer coupled to front face of foam layer. However, Wycech discloses a storage device (Fig 5) and in particular discloses incorporating a separate front facing layer (24) coupled to front face of a foam layer (23) for storing items. One of ordinary skill in the art would have found it obvious to incorporate a front facing layer on the front face of the modified Keefe case as suggested by Wycech in order to strengthen the case (Wycech, abstract).
Claim(s) 38-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keefe in view of Leen/Silverman and US Patent No. 3,869,829 to Chiosso.
Regarding claims 38-39, the modified Keefe teaches the case of claims 9 and 24 but does not teach opening depth smaller than opening height. However, Chiosso discloses a case (Fig 2) comprising openings (14) where the depth is smaller than the height (Fig 2). One of ordinary skill in the art would have found it obvious to change the dimensions of the Keefe openings such that the depth was smaller than the height in order to adapt to hold different items of different dimensions.
Response to Arguments
Applicant's arguments filed 1/15/2026 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that support for the parallel nature is shown in the drawings and the description which discloses openings that are square or rectangular. However, the disclosure is silent regarding the shape of the case and thus the panels being linear and parallel cannot be assumed simply based on the opening shape. Furthermore, the drawings are not shown to be of scale and there is no suggestion that the disclosure of Fig 2a shows linear and parallel panels because the sides of the case are not described in any way to be linear and parallel. Applicant further argues that support for front surface being uncovered is shown in the Figs 2a-2c and the description that friction fit holds the collectible in the opening. This is not persuasive because the drawings are only a representation of the invention and cannot provide support for what the invention does not have. Furthermore, the cited description is silent regarding the front surface being uncovered. Applicant further states that the claims are directed to only the case; however, the amendments fail to cure the indefiniteness because the claims still cite structure of the case in relation to objects that are not being claimed.
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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/ROBERT POON/Examiner, Art Unit 3735