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 .
Status of the Application
Claims 1, 3-6, and 8-23 are pending and have been examined in this application. As of the date of this application, the Information Disclosure Statement(s) (IDS) filed on 12/07/2023 has/have been taken into account.
Response to Amendment
In the amendment dated 01/07/2026, the following has occurred: Claims 1, 8, 10-12, 16, 19, and 20-22 have been amended; Claims 2 and 7 have been canceled; No claims have been added. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Arguments
Applicant’s arguments, see the argument on pages 12-13 in regards to the modification preventing the removable feature of Daniels, filed 01/07/2026, with respect to the 103 rejection of claim 10 have been fully considered and are persuasive. The 103 rejection of claim 10 has been withdrawn.
Applicant’s arguments with respect to claims 20-23 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
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khan (US 2020/0238481).
In regards to Claim 20, Khan discloses a bit holder configured to engage a power tool, the bit holder comprising: a mounting element (Khan: Fig. 23; 122, 124) configured to removably engage a mounting structure of the power tool; and a bit holding portion having a first side (Khan: Annotated Fig. 18; S1), a second side (Khan: Annotated Fig. 18; S2) opposite the first side, and a span (Khan: Annotated Fig. 18; S3) extending between the first side and the second side to form an arch, the bit holding portion defining an arch-shaped cavity bounded by the first side, the second side, and the span, the arch-shaped cavity being open to the surroundings of the bit holder opposite the span, the bit holding portion also defining a bit retaining aperture (Khan: Annotated Fig. 18; A1) in communication with the arch-shaped cavity and configured to at least partially receive a bit to secure the bit to the power tool.
In regards to Claim 21, Khan discloses the bit holder of claim 20, wherein the bit retaining aperture (Khan: Annotated Fig. 18; A1) extends through the first side (Khan: Annotated Fig. 18; S1), and wherein the bit retaining aperture is in communication with the arch-shaped cavity and a first end (Khan: Annotated Fig. 18; E1) of the bit holder.
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 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lehovetzki et al. (US 2522203) in view of Brocket et al. (US 2019/0168376).
In regards to Claim 20, Lehovetzki discloses a bit holder configured to engage a power tool, the bit holder comprising: and a bit holding portion having a first side (Lehovetzki: Annotated Fig. 7; S1), a second side (Lehovetzki: Annotated Fig. 7; S2) opposite the first side, and a span (Lehovetzki: Annotated Fig. 7; S3) extending between the first side and the second side to form an arch, the bit holding portion defining an arch-shaped cavity (Lehovetzki: Fig. 7; 18) bounded by the first side, the second side, and the span, the arch-shaped cavity being open to the surroundings of the bit holder opposite the span, the bit holding portion also defining a bit retaining aperture (Lehovetzki: Fig. 1; 242, 243, 247, 248) in communication with the arch-shaped cavity and configured to at least partially receive a bit to secure the bit to the power tool.
Lehovetzki fails to disclose a mounting element configured to removably engage a mounting structure of the power tool. However, Brocket teaches a bit holder comprising a mounting element (Brocket: Fig. 17; 170) configured to removably engage a mounting structure of the power tool.
Lehovetzki and Brocket are analogous because they are from the same field of endeavor or a similar problem solving area e.g. tool holders. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the holder in Lehovetzki with the mounting element from Brocket, with a reasonable expectation of success, in order to provide the holder with a means of receiving and retaining a clip of a power tool (Brocket: [0071]), enabling a user to attach the holder to a separate tool in order to free up their hands and thereby expanding the utility of the holder.
In regards to Claim 21, Lehovetzki, as modified, teaches the bit holder of claim 20, wherein the bit retaining aperture (Lehovetzki: Fig. 1; 242, 243, 247, 248) extends through the first side (Lehovetzki: Annotated Fig. 7; S1), and wherein the bit retaining aperture is in communication with the arch-shaped cavity and a first end of the bit holder (Lehovetzki: Annotated Fig. 7; E1). [Note: As the holder is hollow, the aperture is in communication with the ends.]
In regards to Claim 22, Lehovetzki, as modified, teaches the bit holder of claim 21, wherein the bit retaining aperture (Lehovetzki: Fig. 1; 242, 243, 247, 248) also extends through the second side (Lehovetzki: Annotated Fig. 7; S2), and wherein the bit retaining aperture is in communication with the arch-shaped cavity and a second end (Lehovetzki: Annotated Fig. 7; E2) of the bit holder opposite the first end of the bit holder.
In regards to Claim 23, Lehovetzki, as modified, teaches the bit holder of claim 22, further comprising a second bit retaining aperture (Lehovetzki: Fig. 1; 232b) positioned in the span, wherein the second bit retaining aperture is in communication with the first side and the second side.
Allowable Subject Matter
Claims 1, 3-6, and 8-19 are allowed.
Annotated Figures
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I: Khan; Fig. 18
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II: Lehovetzki; Fig. 7
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references.
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 Taylor Morris whose telephone number is (571)272-6367. The examiner can normally be reached M-F: 10AM-6PM PST / 1PM-9PM EST.
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/Taylor Morris/Primary Examiner, Art Unit 3631