DETAILED ACTION
This is the third office action for US Application 18/182,845 for a Holder for Accommodating Items of Varying Size.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 13 January 2025 has been entered.
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.
Claim(s) 1-5, 7-9, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,077,593 to Carratala et al. Regarding claim 1, Carratala et al. discloses a holder (10) for carrying one or more items of variable size. The holder comprises a single height controlling bar (16) for adjusting the distance between the height controlling bar and a top opening (46… the height is adjusted relative to the shelf) in the holder to accommodate the one or more items of variable size. The top opening (46) is not a top wall. There is an outer body (the bottom 12, sidewalls 18, 20, and top 22) having multiple holes (48) at one or more side walls for mounting the height controlling bar.
Carratala et al. discloses the outer body as having two side walls (18, 20) rather than three sidewalls. However, the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Adding an additional side wall to the holder taught by Carratala et al. does not produce a new and unexpected result and therefore has not patentable significance.
Regarding claim 2, the one or more items of variable size can be soap or a candle. Regarding claim 3, the multiple holes are formed at side walls at a different height from a base of the holder (holes 48 are formed vertically along the sidewall).
Regarding claim 4, Carratala et al. does not disclose the multiple holes formed at the sidewalls as having different shapes and dimensions. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
In the instant application, holes with different sizes/dimensions would not perform differently than the device of Carratala et al, and therefore the claimed device is not patentably distinct from Carratala et al. Also, there is no evidence that the shape/configuration of the holes is significant, and therefore the shape/configuration is a matter of choice which a person of ordinary skill in the art would have found obvious before the effective filing date of the present invention.
Regarding claim 5, each hole of the multiple holes of a left wall of the holder is aligned with its opposite hole of a right wall of the holder (see figure 1). Regarding claim 7, the height controlling bar has one or more holes (50) that can minimize contact between an item and the height controlling bar. Regarding claim 8, the height controlling bar has one hole (50… there is only one hole so the single hole can only have one shape and dimension).
Regarding claim 9, Carratala et al. does not disclose the height controlling bar having a side that is tilted at an angle for securing the height controlling bar within multiple holes present at the side walls of the outer body. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). There is no persuasive evidence that the configuration of the height controlling bar is significant, and therefore the configuration of the height controlling bar is a matter of choice which a person of ordinary skill in the art would have found obvious before the effective filing date of the present invention.
Regarding claim 11, the outer body and the height controlling bar is made of one or more of ceramic, concrete, plastic, wood, silicone, glass, metal, stone, synthetic materials (see col. 1, lines 49-51… the structure is made of plastic).
Regarding claim 12, Carratala et al. does not disclose a material for making the holder as mixed with a fluorescent color for enabling the holder to glow in the dark. However, the specific color of the material used for the holder is a design preference that would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention based on aesthetic preferences.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carratala et al. in view of US 4,113,329 to Thurman. Regarding claim 6, Carratala et al. does not disclose the base of the holder as having one or more holes for allowing quick drying of soap. Thurman provides a teaching for providing holes (43) in the base of a holder to permit air flow in a vertical direction into the holder (see col. 3, lines 17-20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have provided holes in the base of the holder taught by Carratala et al. to permit air flow into the holder as taught by Thurman. One of ordinary skill in the art would have been motivated to provide a means for controlling heat or humidity within the holder.
Response to Arguments
Applicant's arguments filed 13 January 2025 have been fully considered but they are not persuasive. Applicant argues that Carratala et al. does not disclose holes, but rather uses grooves. However, the grooves are holes formed at the sidewalls that receive the shelf. Applicant also argues that providing an additional wall encloses the device which allows the object to stay inside without falling out. However, as noted above, providing a duplicate wall to block another side of the holder does not produce a new or unexpected result and therefore has not patentable significance.
Conclusion
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STEVEN M. MARSH
Primary Examiner
Art Unit 3632
/STEVEN M MARSH/Primary Examiner, Art Unit 3632