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 Claims
This office action is in reply to the Amendment filed on November 12, 2025. Claims 1, 14, 15, 18 and 29 have been amended. Claims 21 and 22 have been added. Claims 12 and 13 have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 35 U.S.C. 102(a)(1) rejections have been overcome however new rejections are presented herewith and are discussed in greater detail below. Claims 1-11 and 14-22 are currently pending and have been fully examined.
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.
Claims 1-3 and 14 are Finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith, JR. (2005/0160639).
In reference to claim 1, Smith, JR. discloses a system (Figures 1 and 2) for organizing a set of tools (i.e. wires 12), the system comprising:
a plurality of sleeves (26, Figure 2), each sleeve formed of a heat-shrinkable material (i.e. polyvinyl chloride, paragraph 20), and each sleeve including a discriminator (27) unique to that sleeve (paragraph 21),
wherein the plurality of sleeves is disposed as a chain (24) such that a first sleeve (i.e. sleeve including numerals 1234) of the plurality of sleeves is disposed directly against (i.e. at 30) a second sleeve (i.e. sleeve including numerals 5678) of the plurality of sleeves (Figure 2).
In reference to claim 2, Smith, JR. discloses that the discriminator includes a member selected from a group consisting of an indicium, a color, a texture, and combinations thereof (paragraph 21).
In reference to claim 3, Smith, JR. discloses that the discriminator includes an indicium (paragraph 21).
In reference to claim 14, Smith, JR. discloses that the plurality of sleeves is formed as a continuous tube (24), the continuous tube including sleeve defining elements (at 28 and 30) bounding each of the sleeves (Figure 2), each sleeve defining element including a member selected from a group consisting of an indicium (27), a texture, a precut, perforations, and combinations thereof (paragraph 21).
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 1-11 and 14-22 are Finally rejected under 35 U.S.C. 103 as being unpatentable over Cirone (6257098) in view of Smith, JR. (2005/0160639).
In reference to claims 1, 15 and 18, Cirone discloses a system (Figure 1) for organizing a set of tools (i.e. 1a, 1b and 1c, Figure 1), each including a geometric parameter (i.e. size) unique to that tool (Figure 1), the system comprising:
a plurality of sleeves (i.e. 2a, 2b 2c and 2c’, Figure 1), each sleeve formed of a heat-shrinkable material (see Column 5, Lines 25-27 and 44-47), and each sleeve including a discriminator (“indicia”, see Column 5, Lines 34-36 and 55-Column 6, Line 15) unique to that sleeve (i.e. size).
The examiner notes the method claim 18 merely discloses the normal method of the device of claim 1 and therefore the same reasoning as previously discussed above for claim 1 applies mutatis mutandis to the subject matter of claim 18.
Cirone lacks,
the plurality of sleeves being disposed as a chain such that a first sleeve of the plurality of sleeves is disposed directly against a second sleeve of the plurality of sleeves.
However, Smith, JR. teaches that it is old and well known in the art at the time the invention was made to provide a plurality of heat-shrinkable sleeves (26, paragraph 20) that are disposed as a chain (24, Figure 2) such that a first sleeve (i.e. sleeve including numerals 1234) of the plurality of sleeves is disposed directly against (i.e. at 30, also see paragraph 7) a second sleeve (i.e. sleeve including numerals 5678) of the plurality of sleeves (Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the plurality of sleeves, of Cirone, with the known technique of providing the plurality of sleeves disposed as a chain such that the first sleeve of the plurality of sleeves is disposed directly against the second sleeve of the plurality of sleeves, as taught by Smith, JR., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having a plurality of sleeves that can be cut into a desired length as needed by the user (paragraph 10).
In reference to claims 2-4, Cirone discloses that the discriminator includes a member selected from a group consisting of an indicium (i.e. number, see Column 6, Lines 8-15 for disclosing; "a region in the shape of a number"), a color (see Column 6, Lines 57- 61,) a texture, and combinations thereof.
In reference to claim 5, Cirone discloses forming the discriminator as a texture (“Bands 2a, 2b and 2c [shown striped for clarity of illustration only] include at least one non-numerical identifying parameter, in the form of a color, combination of colors, and/or recognizable pattern” [Note, the definition of the term “texture” is defined according to www.merriam-webster.com as being; “the visual [or tactile] characteristics and appearance of something”. Since, the pattern is a visual characteristic and appearance of the band”, it meets the definition above and thus the limitation of the claim], see Column 4, Lines 46-53 and Column 5, Lines 1-24).
In reference to claim 6, Cirone discloses the claimed invention as previously mentioned above, but lacks explicitly disclosing that,
each sleeve has a diameter greater than a length thereof.
However, Smith, JR. further teaches that; “The tubing is then cut into desired lengths while secured to the substrate” (paragraph 10) thereby teaching of providing varying lengths.
In addition, there is no evidence of record that establishes that changing the diameter of each sleeve such that it is greater than a length thereof, would result in a difference in function of the Cirone device. Further, a person having ordinary skill in the art, being faced with modifying the sleeve, of Cirone, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed diameter. Lastly, applicant has not disclosed that the claimed diameter range solves any stated problem, indicating that the diameter “may have a diameter” with the claimed range, and offering other acceptable ranges (i.e. being “less than the length” see specification paragraphs 10-11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the diameter of each sleeve, of Cirone, to such that it is greater than a length thereof, as an obvious matter of design choice within the skill of the art.
In reference to claim 7, Cirone discloses the claimed invention as previously mentioned above, but lacks explicitly disclosing that,
each sleeve has a diameter less than a length thereof.
However, Smith, JR. further teaches that; “The tubing is then cut into desired lengths while secured to the substrate” (paragraph 10) thereby teaching of providing varying lengths.
In addition, there is no evidence of record that establishes that changing the diameter of each sleeve such that it is less than a length thereof, would result in a difference in function of the Cirone device. Further, a person having ordinary skill in the art, being faced with modifying the sleeve, of Cirone, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed diameter. Lastly, applicant has not disclosed that the claimed diameter range solves any stated problem, indicating that the diameter “may have a diameter” with the claimed range, and offering other acceptable ranges (i.e. being “greater than the length” see specification paragraphs 10-11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the diameter of each sleeve, of Cirone, to such that it is less than a length thereof, as an obvious matter of design choice within the skill of the art.
In reference to claim 8, Cirone discloses the claimed invention as previously mentioned above, but lacks explicitly disclosing that,
each sleeve has a diameter substantially equal to a length thereof.
However, Smith, JR. further teaches that; “The tubing is then cut into desired lengths while secured to the substrate” (paragraph 10) thereby teaching of providing varying lengths.
In addition, there is no evidence of record that establishes that changing the diameter of each sleeve such that it is substantially equal to a length thereof, would result in a difference in function of the Cirone device. Further, a person having ordinary skill in the art, being faced with modifying the sleeve, of Cirone, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed diameter. Lastly, applicant has not disclosed that the claimed diameter range solves any stated problem, indicating that the diameter “may have a diameter” with the claimed range, and offering other acceptable ranges (i.e. being “greater or less than the length” see specification paragraphs 10-11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the diameter of each sleeve of Cirone to such that it is substantially equal to a length thereof, as an obvious matter of design choice within the skill of the art.
In reference to claims 9 and 11, Cirone discloses the claimed invention as previously disclosed above, but lacks explicitly disclosing that;
the plurality of sleeves are different in size or different in length.
However, Smith, JR. does teach that the plurality of sleeves can be cut into variable lengths (see paragraph 25 disclosing that; “The completed marker assembly may be cut to variable lengths with a cutter 144.” and also see paragraph 10 disclosing that; “The tubing is then cut into desired lengths while secured to the substrate.”), Thus depending on the desired size/length of a required sleeve, multiple sleeves could be formed with different sizes or lengths.
In addition, there is no evidence of record that establishes that changing the size of each sleeve such that the plurality of sleeves are different in size or different in length, would result in a difference in function of the Cirone device. Further, a person having ordinary skill in the art, being faced with modifying the size/length of each sleeve, of Cirone, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed sizes/lengths. Lastly, applicant has not disclosed that the claimed sizes/lengths range solves any stated problem, indicating that the sleeves “may include differently sized sleeves” and offering other acceptable ranges (see specification paragraphs 10-11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size/length of each sleeve, of Cirone, such that the plurality of sleeves are different in size or different in length, as an obvious matter of design choice within the skill of the art.
In reference to claim 10, Cirone discloses the claimed invention as previously disclosed above, but lacks explicitly disclosing that;
each sleeve has different diameters.
However, Cirone further teaches that; “Another example includes heat shrinkable bands of various sizes suited for application to tools in a convenient position thereon.” (Column 6, Lines 25-27) thereby teaching of providing varying sized sleeves including various sized diameters.
In addition, there is no evidence of record that establishes that changing the diameter of each sleeve has different diameters, would result in a difference in function of the Cirone device. Further, a person having ordinary skill in the art, being faced with modifying the sleeve, of Cirone, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed diameters. Lastly, applicant has not disclosed that the claimed diameters range solves any stated problem, indicating that the diameters “may include…different diameters”, and offering other acceptable ranges (i.e. being “less or greater than the length” see specification paragraphs 10-11) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the diameter of each sleeve, of Cirone, to such that it is greater than a length thereof, as an obvious matter of design choice within the skill of the art.
In reference to claim 14, Smith, JR. discloses that the plurality of sleeves is formed as a continuous tube (24), the continuous tube including sleeve defining elements (at 28 and 30) bounding each of the sleeves (Figure 2), each sleeve defining element including a member selected from a group consisting of an indicium (27), a texture, a precut, perforations, and combinations thereof (paragraph 21).
In reference to claim 16, Cirone discloses that at least one of the tools (i.e. tool 1c) includes more than one heat-shrunk sleeve disposed thereon (Figure 1).
In reference to claim 17, Cirone discloses that the set of tools includes a member selected from a group consisting of: a set of sockets, a set of wrenches (1b and 1c), a set of hand tools (Figure 1).
In reference to claim 19, Cirone discloses that the disposing step includes disposing two of the sleeves on the one of the tools (i.e. tool 1c) and the heat-shrinking step includes heating-shrinking the two of the sleeves on the one of the tools (Column 6, Lines 25-27 and 44-47).
In reference to claim 20, modified Cirone discloses that further comprising removing a first sleeve (i.e. sleeve 26 including numerals 1234, as previously taught by Smith, JR, see Figure 2) from a chain (24) before disposing the first sleeve on one of the tools (i.e. 1c) and removing a second sleeve (i.e. sleeve including numerals 5678) from the chain before disposing the second sleeve onto a second one of the tools (i.e. tool 1a or tool 1b).
In reference to claim 21, Cirone discloses that each heat-shrunk sleeve is disposed on a different tool (i.e. tool 1a and tool 1c) of the set of tools (Figure 1).
In reference to claim 22, modified Cirone discloses each of the first heat-shrunk sleeve and the second heat-shrunk sleeve is formed as a continuous tube (24, as previously taught by Smith, JR, see Figure 2), the continuous tube including the discriminator (indicia) specific to each of the heat-shrunk sleeves, each discriminator including an indicia (i.e. number, see Column 6, Lines 8-15 for disclosing; "a region in the shape of a number"), a texture (“Bands 2a, 2b and 2c [shown striped for clarity of illustration only] include at least one non-numerical identifying parameter, in the form of a color, combination of colors, and/or recognizable pattern” [Note, the definition of the term “texture” is defined according to www.merriam-webster.com as being; “the visual [or tactile] characteristics and appearance of something”. Since, the pattern is a visual characteristic and appearance of the band”, it meets the definition above and thus the limitation of the claim], see Column 4, Lines 46-53 and Column 5, Lines 1-24) and a color (see Column 6, Lines 57- 61) and wherein the indicia on each sleeve represents a size the tool within the set of tools (Column 5, Lines 21-24).
Claims 18-22 are also Finally rejected under 35 U.S.C. 103 as being unpatentable over Cirone (6257098) in view of Smith, JR. (2005/0160639) and Debaker (2011/0197721).
In further reference to claim 18, Cirone discloses a system (Figure 1) for organizing a set of tools (i.e. 1a, 1b and 1c, Figure 1), each including a geometric parameter (i.e. size) unique to that tool (Figure 1), the system comprising:
a plurality of sleeves (i.e. 2a, 2b 2c and 2c’, Figure 1), each sleeve formed of a heat-shrinkable material (see Column 5, Lines 25-27 and 44-47), and each sleeve including a discriminator (“indicia”, see Column 5, Lines 34-36 and 55-Column 6, Line 15) unique to that sleeve (i.e. size);
disposing one of the sleeves on one of the tools (Figure 1).
Cirone lacks,
the plurality of sleeves being disposed as a chain such that a first sleeve of the plurality of sleeves is disposed directly against a second sleeve of the plurality of sleeves.
And, assuming arguendo that Cirone also lacks,
heat-shrinking the one of the sleeves on the one of the tools; and repeating the disposing step and the heat-shrinking step for an entirety of the plurality of tools and an entirety of the plurality of sleeves.
However, Smith, JR. teaches that it is old and well known in the art at the time the invention was made to provide a plurality of heat-shrinkable sleeves (26, paragraph 20) that are disposed as a chain (24, Figure 2) such that a first sleeve (i.e. sleeve including numerals 1234) of the plurality of sleeves is disposed directly against (i.e. at 30, also see paragraph 7) a second sleeve (i.e. sleeve including numerals 5678) of the plurality of sleeves (Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the plurality of sleeves, of Cirone, with the known technique of providing the plurality of sleeves disposed as a chain such that the first sleeve of the plurality of sleeves is disposed directly against the second sleeve of the plurality of sleeves, as taught by Smith, JR., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having a plurality of sleeves that can be cut into a desired length as needed by the user (paragraph 10).
Finally, Debaker teaches that it is old and well known in the art at the time the invention was made to provide a step of heat-shrinking a sleeve (50) on a tool (10); and since Cirone uses more than one sleeve for tool (1c), the step would obviously be repeating for an entirety of the plurality of tools and an entirety of the plurality of sleeves.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the plurality of sleeves, of Cirone, with the known technique of providing the step of heat-shrinking a sleeve on a tool, as taught by Debaker, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having a plurality of sleeves that can be shrunk with application of heat onto the tool (paragraph 65).
In reference to claim 19, modified Cirone discloses that the disposing step includes disposing two of the sleeves on the one of the tools (i.e. tool 1c) and the heat-shrinking step (as taught by Debaker) includes heating-shrinking the two of the sleeves on the one of the tools (paragraph 65).
In reference to claim 20, modified Cirone discloses that further comprising removing a first sleeve (i.e. sleeve 26 including numerals 1234, as previously taught by Smith, JR, see Figure 2) from a chain (24) before disposing the first sleeve on one of the tools (i.e. 1c) and removing a second sleeve (i.e. sleeve including numerals 5678) from the chain before disposing the second sleeve onto a second one of the tools (i.e. tool 1a or tool 1b).
In reference to claim 21, modified Cirone discloses that each heat-shrunk sleeve is disposed on a different tool (i.e. tool 1a and tool 1c) of the set of tools (Figure 1).
In reference to claim 22, modified Cirone discloses each of the first heat-shrunk sleeve and the second heat-shrunk sleeve is formed as a continuous tube (24, as previously taught by Smith, JR, see Figure 2), the continuous tube including the discriminator (indicia) specific to each of the heat-shrunk sleeves, each discriminator including an indicia (i.e. number, see Column 6, Lines 8-15 for disclosing; "a region in the shape of a number"), a texture (“Bands 2a, 2b and 2c [shown striped for clarity of illustration only] include at least one non-numerical identifying parameter, in the form of a color, combination of colors, and/or recognizable pattern” [Note, the definition of the term “texture” is defined according to www.merriam-webster.com as being; “the visual [or tactile] characteristics and appearance of something”. Since, the pattern is a visual characteristic and appearance of the band”, it meets the definition above and thus the limitation of the claim], see Column 4, Lines 46-53 and Column 5, Lines 1-24) and a color (see Column 6, Lines 57- 61) and wherein the indicia on each sleeve represents a size the tool within the set of tools (Column 5, Lines 21-24).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference as previously applied in the prior rejection of record for any teaching or matter as specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schiller et al. (11295636) also shows that it is known in the art to provide a heat shrinkable material (40) disposed as a chain (Figure 4b) such that a first sleeve (rightmost 40) of the plurality of sleeves is disposed directly against a second sleeve (adjacent 40) and which can be torn (at 44).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Specifically, applicant amended the independent claims to require that the sleeves re disposed on a chain and in direct contact with each other.
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 J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723