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 .
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) 21, 23, 27-29, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 20140166516) in view of Craftsman (CRAFTSMAN V-SERIES Socket Set, Shallow MM, 1/4 Inch Drive, 38 Piece (CMMT45751V); NPL).
Regarding claim 21, Martinez A component box (3020) comprising: a multi-function lid tray (Fig. 28; 3028) having an undersurface (Fig. 28) and a compartmentalized tub tray (3024); and an inner tray (3140).
However, Martinez does not disclose, a plurality of storage clips; a crank control arm wrench secured between the storage clips.
Craftsman discloses, a box comprising a multi-function lid tray (See annotated fig. below) having an undersurface and a plurality of storage clips (See annotated fig. below); a crank control arm wrench (See annotated fig. below)secured between the storage clips.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate a plurality of storage clips; a crank control arm wrench secured between the storage clips on the lid as taught by Craftsman for the purpose of having additional tools that can easily be accessed.
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Regarding claim 23, Martinez discloses, the inner tray comprises a plurality of storage compartments (Fig. 28; 3140 has plurality of compartment separated by the handle; See annotated fig below ), at least one of the plurality of storage compartments forming a louver-end-caps storage compartment.
The limitation “for louver end-caps, crank-handle couplers, compression-locking plates, and drill bits” is considered to be intended use. Examiner asserts that the recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim. Herein, the plurality of trays is capable of being used for louver end-caps, crank-handle couplers, compression-locking plates, and drill bits.
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Regarding claim 27, Martinez discloses, the lid. The limitation “the multi- function lid tray can be inverted to serve as a storage tray during assembly” is considered to be intended use. Examiner asserts that the recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim. Herein, the cap can be inverted to be used as a storage tray.
Regarding claim 28, Martinez discloses the compartmentalized tub tray and the inner tray are made of plastic (para 134).
Regarding claim 29, Martinez as modified discloses the crank control arm wrench. While Martinez does not explicitly disclose the screw to be made of metal, the examiner takes official notice that it is known to use metal screws in toolbox as they are stronger, as such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified screw to be made of metal for improved strength.
Regarding claim 31, Martinez as modified does not disclose, crank-handle couplers snap-locked onto crank-handle-coupler storage stems.
Craftman discloses a container comprising crank-handle couplers snap-locked onto crank-handle-coupler storage stems (See annotated fig. below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified lid of Martinez to incorporate crank-handle couplers snap-locked onto crank-handle-coupler storage stems as taught by Craftman as these are well known to be part of toolkits.
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Claim(s) 22, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 21 above, and further in view of Gang (NPL; Costco Mirador Louvered Pergola 10x20 Installation).
Regarding claim 22, Martinez discloses a plurality of storage cavities (3148, 3088) as modified does not explicitly disclose a first base-plate cover stacked upside down inside the compartmentalized tub tray; a plurality of base plates respectively stacked inside the first base-plate cover; a second base-plate cover stacked upside down on the first base-plate cover inside the compartmentalized tub tray; a plurality of screws respectively stacked inside the second base-plate cover; a third base-plate cover stacked upside down on the second base-plate cover inside the compartmentalized tub tray; and a fourth base-plate cover stacked right side up on the third base-plate cover inside the compartmentalized tub tray.
Gang discloses (See annotated fig. below, screen-grab at 0:16) a container comprising a first base-plate cover, a plurality of base plates, a second base-plate cover, a plurality of screws, a third base-plate cover, a fourth base-plate cover.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate a container comprising a first base-plate cover, a plurality of base plates, a second base-plate cover, a plurality of screws, a third base-plate cover, a fourth base-plate cover as taught by Gang as it is known to be put into container box and is used for various types of construction/project.
While Martinez as modified does not disclose the order of a first base-plate cover stacked upside down inside the compartmentalized tub tray; a plurality of base plates respectively stacked inside the first base-plate cover; a second base-plate cover stacked upside down on the first base-plate cover inside the compartmentalized tub tray; a plurality of screws respectively stacked inside the second base-plate cover; a third base-plate cover stacked upside down on the second base-plate cover inside the compartmentalized tub tray; and a fourth base-plate cover stacked right side up on the third base-plate cover inside the compartmentalized tub tray, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to have the stacking in such order as they are simple rearrangement of parts and is placed for maximum efficiency of toolbox space. It has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04(VI)(C)
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Regarding claim 26, While Martinez does not explicitly disclose, corner caps stored in a dedicated corner-caps storage cavity in the compartmentalized tub tray.
Gang discloses a container comprising corner caps (See annotated fig. below)stored in a dedicated corner-caps storage cavity in the compartmentalized tub tray.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate corner caps stored in a dedicated corner-caps storage cavity in the compartmentalized tub tray as taught by Gang as it is well known to incorporate tools such as caps and screws in toolbox for installation of various articles.
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Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 21 above, and further in view of OMRY (US 20190210213).
Regarding claim 24, Martinez as modified does not explicitly disclose, leveling screws inserted into corresponding storage cavities in the compartmentalized tub tray.
Omry discloses a box comprising leveling screws (para 15, “circular holders 46 that are configured to receive and secure drill bits. Those skilled in the art will recognize that accessory cup may be configured to hold other accessories such as screws, nails, or any accessory.” screws can be used for leveling) inserted into corresponding storage cavities (46) in the compartmentalized tub tray (Fig. 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate leveling screws inserted into corresponding storage cavities in the compartmentalized tub tray as taught by Omry for the purpose of efficiently utilizing space within the tub while also allowing easy access to the screw.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 21 above, and further in view of Gwynn (US 8833557).
Regarding claim 25, Martinez discloses screw drivers (3192 is placed in cavity) are placed in designated storage cavities within the compartmentalized tub tray (Fig. 28).
Gwynn discloses the use of Allen wrench, and a screw driver (para 11)in a cavity and placing them both or either of them is simply a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate a Allen wrench instead of screw driver as taught by Gwynn and this is simply a matter choice and is dictated by desire. They both are used for handling screws/nuts and placed within toolbox as needed.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 23 above, and further in view of Gang (NPL; Costco Mirador Louvered Pergola 10x20 Installation).
Regarding claim 30, While Martinez does not explicitly disclose, louver-end-caps storage compartments but does not disclose louver end-caps secured in the louver-end-caps storage compartments.
Gang discloses a container comprising louver end-caps secured in the louver-end-caps storage compartments. (See annotated fig. below; also can be seen at video 2:18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate louver end-caps secured in the louver-end-caps storage compartments as taught by Gang as it is well known to incorporate tools such as caps and screws in toolbox for installation of various articles.
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When louver end-caps are placed in the louver end-caps compartment as annotated in Martinez, they would be secured in the tray as the lid in closed.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 23 above, and further in view of Allan (US 20040020809).
Regarding claim 32 Martinez does not explicitly disclose, compression-locking plates secured in compression-locking-plates storage compartments.
Allan discloses a toolbox/kit comprising compression-locking plate (28; para 34) secured in compression-locking-plates storage compartment.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to have compression-locking plate secured in compression-locking-plates storage compartment as taught by Allan since such tools allow for easy connection two bodies and are well known to be part of toolkit.
With regards to having plurality of compression-locking plates , It would have been obvious to one having ordinary skill in the art to have plurality of compression-locking plate in order to usage in multiple area, since such a modification would amount to a mere duplication of parts. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Craftman as applied to claim 23 above, and further in view of Hallee (US 20040144671).
Regarding claim 33, Martinez does not disclose, drill bits snap-locked between drill-bit clips.
Hallee disclose a toolbox/kit comprising drill bits (134) snap-locked between drill-bit clips (clips in between each drill bits).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Martinez to incorporate drill bits snap-locked between drill-bit clips as taught by Hallee as it is well known to carry drill bits in tool case/kit for easy usage with drills.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references of Martinez and Craftman, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the prior art of Craftman clearly discloses the incorporation of crank arm in toolbox and one of ordinary skill in the art can easily incorporate this tool to Martinez for “having additional tools that can easily be accessed.” Tools such as crank arm among many other tools are known to be incorporated into such toolbox. They both discloses housing for tools and it is reasonable to conclude that one of ordinary skill in the art can look at the prior art of Craftman to modify Martinez for incorporation of crank arm in toolbox.
The applicant additionally argues that incorporation of the tool of Craftman along with the holding clips would teach away from the design of Martinez since the lid of Martinez is designed for structural support and altering it would weaken the lid. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Herein, the prior art of Craftman discloses this limitation as claimed.
The prior art of Craftman explicitly discloses the use of clips for holding a crank wrench and when incorporating this teaching to Martinez, the prior art as modified discloses all the limitations as claimed.
The Applicant further argues that the office action improperly utilize intended use, to that the examiner respectfully disagrees. Claim 23 recites “the inner tray comprises a plurality of storage compartments for louver end-caps, crank-handle couplers, compression- locking plates, and drill bits, at least one of the plurality of storage compartments forming a louver-end-caps storage compartment.” In response to applicant's argument the examiner replies that, recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art as modified discloses all the limitation as claimed and therefore is considered to be capable of performing the limitation as claimed. There is no “structural distinction” as argued by the applicant.
In response to applicant's argument that the prior art of Gang is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Gang discloses toolbox with varies types of tools just as the applicant and therefore, pertain to the problem of combining multiple tools within a box.
Lastly, the order in which the tools are arranged are considered rearrangement of parts which is considered to be within the skill of one of ordinary skill in the art. The prior art as modified discloses all the limitations as claimed and fitted as desired within the toolbox including the order claimed by the applicant.
Argument related to claim 24, the prior art of Omry discloses holders for screws which are component and not used for leveling the toolbox as applicant alleges.
Argument related to claim 32, prior art of Allan discloses a toolbox comprising compression locking plate and these are used for attaching two bodies together and is an appropriate place for a toolbox where it can be used as needed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., dill bit clips molded onto the inner tray) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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 SANJIDUL ISLAM whose telephone number is (571)272-7670. The examiner can normally be reached Monday-Friday 8:30 -5:00.
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, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANJIDUL ISLAM/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
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