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 .
This is response to Application 18/028,413 filed on 03/24/2023 with Preliminary Amendment, claims 1-2, 5-7, 9, 11, 13-20, 22, 24, and 28-29 are pending in the office action.
Claims 1-2, 7, 9, 11, 13-15, 17-19, 22, 24, and 28-29 have been amended.
Claims 3-4, 8, 10, 12, 21, 23, and 25-27 have been canceled.
Response to Arguments
Claim Objection is obviated in view of Claim amendment.
Applicant’s arguments with respect to claim(s) 04/23/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, 7, 9, 14-15, 17, 22, 28, and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madsen et al., (U.S. Pat. 2017/0095921).
As per claim 1: Madsen discloses a holding device (‘921, fig. 1-2, bit holder 10) for attachment to on a battery pack of a machine tool (‘921, fig. 1-2, bit holder 10 attached to battery pack 16 of a cordless drill), comprising at least one receptacle for holding a tool, an accessory, or a consumable for the machine tool (‘921, fig. 1-3, loop (receptacle) 15 holding drill/tool bits 19).
As per claim 28: Madsen discloses a battery pack of a machine tool (‘921, fig. 1-2, battery pack 16 of a cordless drill) comprising a holding device attached to the battery pack (‘921, fig. 1-2, bit holder 10 attached to battery pack 16), comprising at least one receptable for holding a tool, an accessory or a consumable for the machine tool (‘921, fig. 1-3, loop (receptacle) 15 holding drill/tool bits 19).
As per claim 29: Madsen discloses a machine tool (‘921, fig. 1-2, cordless drill), comprising a battery pack (‘921, fig. 1-2, battery pack 16) and a holding device attached to the battery pack (‘921, fig. 1-2, bit holder 10 attached to the battery pack 16), comprising at least one receptacle for holding a tool, an accessory or a consumable for the machine tool (‘921, fig. 1-3, loop (receptacle) 15 holding drill/tool bits 19).
As per claim 2: Madsen discloses the holding device according to claim 1, characterized in that the at least one receptacle is formed as a retaining groove or as a receiving channel wherein the groove cross section of the retaining groove is delimited by a groove base and by at least one lateral wall, wherein the at least one lateral wall is formed to be elastically deformable so that it is elastically deformed when the tool, accessory or consumable is introduced into the retaining groove and holds the tool, accessory part or consumable in the retaining groove (‘921, fig. 1-3, retaining groove or as a receiving channel (loop) 15, is the at least one lateral wall is formed to be elastically deformable so that it is elastically deformed when the tool, accessory or consumable is introduced into the retaining groove and holds the tool, accessory part or consumable (drill bit 19) in the retaining groove (loop) 15).
As per claim 5: Madsen discloses the holding device according claim 1, characterized in that the holding device at least partial covers the battery pack and is integrated into the battery pack (‘921, fig. 1-2, bit holder 10 trap around (partially cover and integrated into) the battery pack 16).
As per claim 7: Madsen discloses the holding device according of claim 1, characterized in that the holding device can be placed on the battery pack and can be reversibly removed from the battery pack, the holding device at least partially surrounding the battery pack in the mounted state (‘921, fig. 2 and 6, strap 11 with buckle 12 that can be reversibly removed from the battery pack, when a mounted state, fig. 1-2, bit holder 10 trap around (partially cover and integrated into) the battery pack 16).
As per claim 9: Madsen discloses the holding device according of claim 1, characterized in that walls of the holding device comprise end walls and longitudinal side walls which connect the end walls to one another, wherein a recess is formed on each of the longitudinal side walls (‘921, fig. 1-3, multiple retaining groove or as multiple receiving loop 15 that walls of the holding device comprise end walls and longitudinal side walls which connect the end walls to one another, wherein a recess is formed on each of the longitudinal side walls).
As per claim 14: Madsen discloses the holding device according to claim 1, characterized in that a plurality of receptacles for holding the tool (‘921, fig. 3, 15s), the accessory or the consumable is formed on a bottom side of the holding device on a bottom side of a base portion of the holding device (‘921, rotated the holding device facing downward).
As per claim 15: Madsen discloses the holding device according to claim 14, characterized in that the plurality of receptacles extend along a longitudinal direction on the bottom side of the base portion and are arranged parallel to one another, wherein receptacles adjacent to one another are separated from one another by a partition wall (‘921, fig. 3, loop includes partition wall and separated and adjacent each other).
As per claim 17: Madsen discloses the holding device according to claim 14, characterized in that the plurality of receptacles on the bottom side of the base portion have cross sections of different sizes, different shapes, or both (‘921, rotated the holding device facing downward and the loop can expandable as the size and shape of tool bits).
As per claim 22: Madsen discloses the holding device according to claim 1, characterized in that the holding device is formed from a hard component and a soft component, the soft component at least partially surrounding the hard component and in that the surface of the holding device is non-slip or that the holding device has a cover made of anti-slip material (‘921, par. [0029] [0030]).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Madsen et al., (U.S. Pat. 2017/0095921).
As per claim 6: Madsen does not teach the holding device is fixedly connected to the battery.
However, Madsen teaches the holding device is attached to battery using strap to tightly around the battery pack (‘921, the abstract and fig. 1-2).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention can configure/integrate into or fixed connect to the Madsen battery 16 as a single piece would be merely a matter of obvious engineering choice (see Schenckv.Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)).
Claim(s) 11, 13, 16, 18, 19, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Madsen et al., (U.S. Pat. 2017/0095921) in view of Dils et al., (U.S. Pat. 7,150,587).
As per claim 11: Madsen teaches the holding device have loop that can used for holding the tool bits or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device (‘921, fig. 1-3). As looping shape, its base portion may lateral extend from one end to another end (‘921, fig. 3).
Hence, Madsen does not teach a base portion of the holding device has a depth of the at least one receptacle decreases is formed at one end or at both ends of the at least one receptacle.
Dils teaches at least one receptacle for holding the tool, an accessory or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device on a base portion of the holding device, wherein an increasing portion in which a depth of the at least one receptacle decreases is formed at one end or at both ends of the at least one receptacle (‘580, fig. 2-3, recess 38, depth decreases at one end).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention to combine Dils and Madson to modify Madsen’s loop shape holding device to different shape as Dils’s holding device’s base portion has a depth of the at least one receptacle decreases is formed at one end or at both ends of the at least one receptacle to secure the tool bits that would be merely a matter of obvious engineering choice (see Schenckv.Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)).
As per claims 13 and 16: Madsen teaches the holding device have loop that can used for holding the tool bits or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device (‘921, fig. 1-3). As looping shape, its base portion may lateral extend from one end to another end (‘921, fig. 3).
Dils teaches at least one receptacle for holding the tool, an accessory or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device on a base portion of the holding device (‘580, fig. 2-3, recess 38).
Madson and Dils do not teach that one or more permanent magnets are arranged in each partition wall or in each second partition wall.
However, Dils teaches the holding device includes recesses 38 (opposite side of tray 30) and a detent formed by two opposing spring protrusion 42 to hold and retain the bit/tool (‘580 fig. 2-3, recess 38 and a detent formed by two opposing spring protrusion 42 to hold and retain the bit/tool).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention would modify Dils’s to replace spring protrusion 42 with magnetic portion that would hold the tools/bits as same function of the spring protrusion without undue experiment (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
As per claim 18 and 19: Madsen teaches the holding device have loop that can used for holding the tool bits or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device (‘921, fig. 1-3). As looping shape, its base portion may lateral extend from one end to another end (‘921, fig. 3).
Madsen does not teach that an aperture for ventilation of the battery pack is formed on the holding device on the base portion of the holding device.
Dils teaches at least one receptacle for holding the tool, an accessory or the consumable is formed on a longitudinal side or on both longitudinal sides of the holding device on a base portion of the holding device and the groove shape (i.e., an aperture).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention to combine Dils and Madson to modify Madsen’s loop shape holding device to different shape as Dils’s holding device’s base portion having the groove shape (i.e., an aperture) that would created space for ventilation of the battery pack that helps heat dissipated of the battery package without undue experiment.
As per claim 24: Madsen teaches the holding device have loop that can used for holding the tool bits or the consumable, but does not teach the holding device has a light source.
Dils teaches the holding device has a light source, in that the holding device has a wire tracer, in that the holding device has a charging device for electrical charging of mobile terminals in that the holding device has a coupling device for coupling holding means, or any combination thereof (‘580, fig. 3-4, light source 36 and 72).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention to combine Dils and Madson to modify Madson holding device by configured to include light source similar to Dils holding device helping the user easy visualized the tool bits that can be achieve without undue experiment.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Madsen et al., (U.S. Pat. 2017/0095921) in view of Dils et al., (U.S. Pat. 7150587) and further in view of Kerner (U.S. Pat. 7,591,616).
As per claim 20: Madsen teaches the holding device have loop that can used for holding the tool bits or the consumable (‘921, fig. 1-3), but does not teach thermoplastic elastomer and the holding device has a cover made of rubber.
Dils teaches the holding device according to claim 1, characterized in that the holding device includes recess 38 and a detent formed by two opposing spring protrusion 42 to hold and retain the bit/tool (‘580, fig. 2-5, recess 38 and a detent formed by two opposing spring protrusion 42 to hold and retain the bit/tool).
Dils does not teach the holding device is partially or completely formed from a thermoplastic elastomer.
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention known Dils’s recess’s spring protrusion 42 can be elastically (thermoplastic) deformable to hold and retain the bit without undue experiment.
Dils does not teach the holding device has a cover made of rubber.
Kerner teaches a detachably mountable hand drill tool bit holder and static tool presenting apparatus holds a plurality of bits for use with a hand drill tool. The apparatus is made of a resilient rubber or rubber-like material (‘616, the abstract, fig. 8-11a).
It would have been obvious to one of ordinary skill in the art at the time of the effective filling date of claimed invention combine Madsen, Dils, and Kerner by using Kerner rubber or rubber-like material tube to replace with Dils’s recess’s spring protrusion for fictionally holding the tools/bits without having to line-up the bit to a particular hole or aperture (‘616, col. 2, ll. 25-40).
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 NGHIA M DOAN whose telephone number is (571)272-5973. The examiner can normally be reached Mon - Fri 7:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Chiang can be reached at 571-272-7483. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NGHIA M. DOAN
Primary Examiner
Art Unit 2851
/NGHIA M DOAN/Primary Examiner, Art Unit 2851
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