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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/05/2025 has been entered.
Response to Amendment
Claims 1-8, 21-25 are pending.
Claims 24-25 are newly added.
Claims 9-20 are withdrawn.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claims 24 and 25 recites limitations “female coupling components”, “a first tongue” and “a second tongue”. However, the specification fails to provide proper antecedent basis for the claimed subject matter
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23, and 25 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 23 recites “moving the cover to the locked position results in the latch rotating at least partway from the locking position to the open position.”. However, the original specification or the drawing fails to disclose this limitation. As such, this limitation is considered new matter. Further correction and or clarification is required.
Claim 25 recites “wherein the first tongue and the second tongue are distinct from each other.”. However, the original specification or the drawing fails to disclose this limitation. As such, this limitation is considered new matter. Further correction and or clarification is required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 25 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 25 recites “wherein the first tongue and the second tongue are distinct from each other.”. It is unclear as to how or what makes the two tongue distinct. For examination purpose, it will be assumed that the two tongues are at different places thus making them distinct. Further correction and or clarification is required.
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) 1-3, 5-8, 21, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipper (US 20020117414).
Regarding claim 1, Regarding claim 1, Kipper discloses, A container (100) comprising: a housing (space where drawer 140 is located; Fig. 1); a first interface (120) located along an upper surface of the housing, a drawer (140) slidably coupled to the housing, the drawing enclosing a compartment; a cover (110) pivotally (115) coupled to the housing, the cover interfacing with an outer surface of the drawer to restrict the drawer from opening when the cover is in a locked position (Fig. 2) ; and a latch (130) , wherein the latch is engaged with the cover when the cover is in the locked position and retains the cover in the locked position (Fig. 1, 2; para 49, 52).
However, Kipper discloses the latch to be pivotally coupled to the cover, Kipper fails to disclose, a latch pivotally coupled to a front of the housing that detachably engages with the cover.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a latch pivotally coupled to a front of the housing that detachably engages with the cover as it is recognized as simple reversal of parts. It has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.See MPEP 2144.04(VI-A)
The limitation “the first interface configured to couple the housing to a modular tool storage device” 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 surface of 120 is capable of coupling a housing of a modular tool storage device.
Regarding claim 2, Kipper discloses, when the cover is in an open position (Fig. 1), the drawer (140) is slidable out of the housing.
Regarding claim 3, Kipper discloses, the drawer slides out of the housing in a direction generally perpendicular to a front surface of the housing (Fig. 1.
Regarding claim 5, Kipper discloses, when the latch is disengaged from the cover, the cover (110) is rotateable to the open position.
Regarding claim 6, Kipper discloses, a top panel coupled to the latch (once modified 130e would be coupled to a top panel) .
Regarding claim 7, Kipper discloses, latch (130) comprising a recess (once reversed; Fig. 5b; space between 130b and 130c would receive locking part of cover that is in the space) that receives the cover when the cover is in the locked position (Fig. 5d).
Regarding claim 8, Kipper discloses, to disengage the latch from the cover, the latch is rotated with respect to the housing to permit the cover to actuate from the locked position to the open position (latch 130 is connected via pivot 130f and rotates with respect to the housing; See Fig. 5b; para 65; annotated fig. below is created for demonstration purpose in reverse ).
PNG
media_image1.png
216
366
media_image1.png
Greyscale
Regarding claim 21, Kipper discloses, latch actuating between a locking position and an open position, wherein when the latch is in the locking position and the cover is in the locked position, then the latch retains the cover in the locked position (Fig. 5D.).
Regarding claim 23, Kipper discloses, the limitation “moving the cover to the locked position results in the latch rotating at least partway from the locking position to the open position.” is considered to be functional language. The prior art of Kipper has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See MPEP 2173.05(g). See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. See MPEP 2173.05(g).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipper as applied to claim 2 in view of Schluter (US 20060132006).
Regarding claim 4, Kipper discloses, cover actuates between an open position (Fig. 1), the locked position (Fig. 2) but does not explicitly disclose, a stowed position in which the cover is within a cavity defined by housing.
Schluter discloses a cabinet comprising a cover (70) that actuates between an open position (Fig. 2), the locked position (Fig. 1) , a stowed position (Fig. 3) in which the cover is within a cavity (cavity in which 70 is placed as shown in fig. 1-3) defined by housing.
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 Kipper to incorporate a cover that has a stowed position in which the cover is within a cavity defined by housing as taught by Schluter since this would prevent the cover from getting in the way of the user when the toolbox is in use.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipper as applied to claim 21, in view of Seiders (US 11976498).
Regarding claim 22, Kipper as modified does not disclose, the latch is spring biased to the locking position.
Seiders discloses a container comprising a latch (100) that is spring (150) biased to the locking position (Col. 18; lines 20-30; Fig. 8).
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 Kipper to incorporate a latch with spring biased to the locking position as taught by Seiders as it would improve the securement the lid and the body by a way of constant force applied by the spring.
Claim(s) 24, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipper as applied to claim 1 above, and further in view of Hoppe (US 20170166352).
Regarding claim 24, and 25 Kipper does not explicitly disclose, first interface comprising a plurality of female coupling components defined by the upper surface, , each of the female coupling components comprising a recessed surface and a first tongue extending above the recessed surface, and each of the female coupling components comprising a second tongue extending above the recessed surface, wherein the first tongue and the second tongue are distinct from each other.
Hoppe discloses a first interface (See annotated fig. below) comprising a plurality of female coupling (See annotated fig. below) components defined by the upper surface, , each of the female coupling components comprising a recessed surface (See annotated fig. below) and a first tongue (See annotated fig. below) extending above the recessed surface, and each of the female coupling components comprising a second tongue (See annotated fig. below) extending above the recessed surface, wherein the first tongue and the second tongue are distinct from each other (they are considered distinct since they are at different place just as the applicants) .
The limitation “the plurality of female coupling components configured to couple the upper surface of the housing to a bottom surface of the modular tool storage device” is considered to be functional language. The prior art of Kipper-Hoppe has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See Mpep 2173.05(g). See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art.
Response to Arguments
Applicants argument with regards to 112(a) new matter is considered but not persuasive. The applicant argues that fig. 8 along with para 56 sufficiently support limitation “ moving the cover to the locked position results in the latch rotating at least partway from the locking position to the open position.”. The examiner respectfully disagrees. Neither the drawing nor the specification discloses this limitation as claimed and therefore, the rejection is sustained in the current office action.
The applicant argues that reversal of parts would be different than claim 1 that recites " a latch pivotally coupled to a front of the housing that detachable engages with the cover" The prior art of Kipper discloses the latches to be pivotably connected to the cover instead of the front of the housing. This modification requires a simple reversal of parts and wherein the resultant structure performs the function of locking the entire body to prevent access.
The applicant further argues that such modification is unsatisfactory for its intended purpose and to that the examiner respectfully disagrees. The prior art of Kipper does not explicitly prohibit such modification i.e. reversing the location of latches. The front of the interior can be access when the front cover is open and accessing the top of the interior when the cover is opening. The tool organizer is still functional and does not appear to go against the teaching of Kipper wherein the modification would render the invention unsatisfactory. 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.”).
Conclusion
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.
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.
/SANJIDUL ISLAM/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736