DETAILED ACTIONS
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 .
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 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.
Status of Claims
Claims 1 – 21 are pending.
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, 10-11, 14, 17 and 19-21 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Huang (US Patent No: 7,051,629).
Regarding Independent Claim 1, Huang discloses a tool storage device (Figure 2) comprising: a base (see annotated Figure 3) comprising a shaft (19; Figure 2) extending from an interior surface (see annotated Figure 3); and a tool holder (40; Column 4 lines 20-25, Figure 2 and 3) coupled to the shaft (19), the tool holder (40) comprising a plurality of wings (see annotated Figure 2) extending radially outward relative to the shaft (19) and along a longitudinal direction (see annotated Figure 2), wherein a plurality of channels (41; Figure 2) is formed between respective pairs of wings of the plurality of wings and extending along the longitudinal direction (Figure 2),
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and wherein the plurality of channels (41) is positioned in adjacent circumferential arrangement (see annotated Figure 2), the tool holder (40) forming a center bore (center bore formed in tool holder, 40 which allows the shaft, 19 to protrude from – Annotated Fig. 2) into which the shaft (19) is positionable and fastened to the tool holder (Figure 2).
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Regarding claim 3, Huang discloses that the plurality of wings (see annotated Figure 2) extends along the longitudinal direction from a first portion (see annotated Figure 2) and a second portion (see annotated Figure 2) of a divider (43; Figure 2 ).
Regarding claim 10, Huang discloses that the plurality of wings (see annotated Figure 2) is positioned in circumferential arrangement relative to a centerline axis and around the center bore (see annotated Figure 2).
Regarding claim 11, Huang discloses that the plurality of wings (see annotated Figure 2) forms an outer diameter of the tool holder (see annotated Figure 2).
Regarding Independent claim 14, Huang discloses a tool storage device (Figure 2) comprising a base (see annotated Figure 3) and a tool holder (40; Column 4 lines 13-20 and Figure 2), the base comprising a shaft (19; Figure 3) extending from an interior surface (see annotated Figure 2), the tool holder (40) coupled to the shaft (19), the tool holder (40) comprising a plurality of wings (see annotated Figure 2) extending radially outward relative to the shaft and along a longitudinal direction (see annotated Figure 2), wherein a plurality of channels (41; Figure 2) is formed between respective pairs of wings (see annotated Figure 2) of the plurality of wings (see annotated Figure 2) and extending along the longitudinal direction(see annotated Figure 2), and wherein the plurality of channels is positioned in adjacent circumferential arrangement (see annotated Figure 2), the tool holder (Figure 3, 40) forming a center bore (Annotated Fig. 2) into which the shaft (19) is positionable and fastened to the tool holder (40); a cap (39; Figure 2) forming a cap interior volume (see annotated Figure 2) into which the tool storage device is positionable through a cap opening (see annotated Figure 2), wherein the cap is elongated along the longitudinal direction (see annotated Figure 2), the cap (39) comprising a cap internal end wall (see annotated Figure 3), wherein the cap interior volume extends between the base of the tool storage device and the cap internal end wall (see annotated Figure 3). Huang also discloses a hand tool comprising a body (10; Figure 3) forming a body interior volume (see annotated Figure 3) into which the tool storage device is positionable through a body opening (see annotated Figure 2), wherein the body (10) is elongated along the longitudinal direction (see annotated Figure 3), the body (10) comprising a body internal end wall (see annotated Figure 3; Column 3 lines 50-55), wherein the body interior volume extends between the base of the tool storage device and the body internal end wall (see annotated Figure 3), and wherein the body (10) comprises a tool head retainer (12; Figures 2 and 3) distal along the longitudinal direction from the body opening (see annotated Figure 2) through which the tool storage device is positionable into the body (see annotated Figure 2), wherein the tool head retainer is configured to receive a tool head at which a tool bit (13) is receivable (Figures 2 and 3).
Regarding Independent claim 17, Huang discloses a tool storage device comprising a base (see annotated Figure 3) and a tool holder (40; Column 4 lines 20-30 and Figures 2 and 3), the base comprising a shaft (19; Figure 3) extending from an interior surface (see annotated Figure 2), the tool holder (40) coupled to the shaft (19), the tool holder (40) comprising a plurality of wings (see annotated Figure 2) extending radially outward relative to the shaft and along a longitudinal direction, wherein a plurality of channels (41; Figure 2) is formed between respective pairs of wings (see annotated Figure 2) of the plurality of wings and extending along the longitudinal direction (see annotated Figure 2), and wherein the plurality of channels (41) is positioned in adjacent circumferential arrangement (see annotated Figure 2), the tool holder (40) forming a center bore (Annotated Fig. 2) into which the shaft (19) is positionable and fastened to the tool holder (40); and a body forming an interior volume (see annotated Figure 3) into which the tool storage device is positionable through an opening (see annotated Figure 2), wherein the body is elongated along the longitudinal direction (see annotated Figure 3), the body comprising an internal end wall (34), wherein the interior volume extends between the base of the tool storage device and the internal end wall (Column 3 lines 50-55 and see annotated Figure 3), and wherein the body comprises a tool head retainer (12; Figures 2 and 3) distal along the longitudinal direction from the opening through which the tool storage device is positionable into the body (Figures 2 and 3), wherein the tool head retainer is configured to receive a tool head at which a tool bit (13) is receivable (Figures 2 and 3).
Regarding claim 19, Huang discloses that the body forms a taper at an outer diameter of the body extending along the longitudinal direction (see annotated Figure 3), wherein the taper is formed along the longitudinal direction corresponding to the internal end wall at the interior volume of the body (see annotated Figure 3).
Regarding claim 20, Huang discloses that the tool head retainer (12; Figure 2 and 3) is positioned along the longitudinal direction from the taper at the body (see annotated Figure 3).
Regarding claim 21, Huang discloses the tool storage device (Figure 2) wherein the pairs of wings (Annotated Fig. 2) between which the plurality of channels (41) are formed are configured to flex away from each other across the channel (41) during insertion of the tool bit into the channel (41; Fig. 2), and wherein the pairs of wings (Annotated Fig. 2) are configured to flex toward each other across the channel (41) to secure the tool bit in the channel (41 the orifices, 41 includes a number of slits 42 formed therein and communicating with the orifices 41 thereof, for resiliently clamping or retaining the tool members 13 to the tool holder 40 (Col. 4, lines 23 – 26), thus Huang teaches the plurality of channels are formed are configured to flex away from each other across the channel during insertion of the tool bit into the channel and wherein the pairs of wings are configured to flex toward each other across the channel to secure the tool bit in the channel) .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 4-9, 12-13, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (US Patent No: 7,051,629).
Regarding claim 2, Huang discloses that the tool holder comprises of a number of channels (41) in circumferential arrangement (see annotated Figure 2) formed between pairs of wings (Column 4, lines 20-25).
However, Huang does not disclose that there are specifically eight channels in the circumferential arrangement.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to modify the number of channels on the tool holder of Huang in order to hold more tool bits since it has been 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 (MPEP 2144.04 Section IV, A).
Regarding claim 4, Huang discloses the tool holder comprising of a plurality of channels (41) in circumferential arrangement formed between pairs of wings (Column 4, lines 20-25), wherein a first set of channels is formed extended along the longitudinal region from the first portion (see annotated Figure 2) and wherein a second set of channels is formed extending along the longitudinal direction from the second portion (see annotated Figure 2).
However, Huang does not disclose that a set comprises of eight channels.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to modify the number of channels on the tool holder of Huang in order to hold more tool bits since it has been 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 (MPEP 2144.04 Section IV, A).
Regarding claim 5, Huang discloses a tool storage device wherein the outer diameter of the tool holder extends from a centerline axis to a length of wing along the longitudinal direction (Column 3, lines 16-20).
However, Huang does not disclose that the ratio of the outer diameter of the tool holder extending from a centerline axis to the length of wing along the longitudinal direction is approximately 27:37.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to modify the ratio of the outer diameter of the tool holder to the length of a wing of Huang’s tool in order to allow the tool holder to retain a plurality of tool bits since it has been 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 (MPEP 2144.04 Section IV, A).
Regarding claim 6, Huang discloses a tool storage device with an outer diameter of the tool holder extending from the centerline axis to a length of wing along the longitudinal direction (Column 3, lines 16-20).
However, Huang does not disclose that the ratio of the outer diameter of the tool holder to the length of wing along the longitudinal direction is approximately 1:1.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to modify the ratio of the outer diameter of the tool holder to the length of a wing of Huang’s tool in order to allow the tool holder to retain a plurality of tool bits since it has been 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 (MPEP 2144.04 Section IV, A).
Regarding claim 7, Huang discloses a tool storage device comprising of a center bore (see annotated Figure 3) at the shaft (see annotated Figure 3) configured to position a portion of the tool holder along the longitudinal direction.
However, Huang does not disclose of a fastener extending into a center bore at the shaft, wherein the center bore at the shaft is configured to receive threads at the fastener. The main function of the fastener is to secure the tool holder but Huang’s tool uses a chamber within the base to receive the tool holder and uses the cap with a threading engagement to stably retain the tool holder (Column 4, lines 13-17).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to modify the base of Huang’s tool and use an inner chamber to secure the tool holder instead of a fastener and shaft, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art (MPEP 2144.04, Section II, B).
Regarding claim 8, Huang discloses a tool storage device with a base (see annotated Figure 3) that has an interior surface (see annotated Figure 2), perimeter wall (see annotated Figure 2), and shaft (Figure 3, 19).
Huang does not disclose that the base forms a rib at the interior surface and that the rib extends between the shaft and a perimeter wall of the base. However, Huang states that the cap has a threading engagement that allows it to attach to the hand grip and stably retain the tool holder (Column 4 lines 13-17).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to use a threading engagement instead of a rib to stably retain the tool bits, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art (MPEP 2144.04, Section II, B).
Regarding claim 9, Huang discloses a tool storage device with wings in a circumferential arrangement (see annotated Figure 2) and has channels formed between the pairs of wings (see annotated Figure 2).
However, Huang does not disclose a rib that corresponds in circumferential location to the channel formed between the pair of wings.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the claimed invention to use a threading engagement instead of a rib to stably retain the tool bits, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art (MPEP 2144.04, Section II, B).
Regarding claim 12, Huang discloses a tool storage device with wings (see annotated Figure 2) that forms an outer diameter of the tool holder.
However, Huang does not disclose that the ratio of the outer diameter of the tool holder to a length of wing along the longitudinal direction is approximately 27:37.
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 tool of Huang to have the ratio of the outer diameter of the tool holder to a length of wing to be 27:37 since it has been 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 (MPEP 2144.04 Section IV, A). Further, it appears that applicant places no criticality on the ratio claimed, indicating simply that the ratio ranges between 1:1 and 27:37 (Specification paragraphs 55-57).
Regarding claim 13, Huang discloses a tool storage device with wings (see annotated Figure 2) that forms an outer diameter of the tool holder.
However, Huang does not disclose that the ratio of the outer diameter of the tool holder to a length of wing along the longitudinal direction is approximately 1:1.
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 tool of Huang to have the ratio of the outer diameter of the tool holder to a length of wing along the longitudinal direction is approximately 1:1 since it has been 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 (MPEP 2144.04 Section IV, A). Further, it appears that applicant places no criticality on the ratio claimed, indicating simply that the ratio ranges between 1:1 and 27:37 (Specification paragraphs 55-57).
Regarding claim 15, Huang discloses a tool storage device wherein a first length is formed from a bottom wall at the base of the tool storage device to the internal end wall at the interior volume of the cap (see annotated Figure 1), and wherein a second length is formed from the opening through which the tool storage device extends into the cap to a distal end of the cap along the longitudinal direction (see annotated Figure 1).
However, Huang does not disclose that the first length is between approximately 70% and approximately 80% of the second length.
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 tool of Huang to have the first length be between 70-80% of the second length since it has been 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 (MPEP 2144.04 Section IV, A). Further, it appears that applicant places no criticality on the ratio claimed, indicating simply that the first length “may” be between approximately 70% and approximately 80% of the second length (Specification paragraph 64).
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Regarding claim 16, Huang discloses a tool storage system with a cap (Figure 2, 39) with an inner diameter (see annotated Figure 2).
However, Huang does not expressly disclose that the cap forms an inner diameter of approximately thirty millimeters.
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 tool of Huang to have the cap’s inner diameter be approximately thirty millimeters length since it has been 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 (MPEP 2144.04 Section IV, A).
Response to Arguments
Applicant’s arguments, see Applicants Arguments/Remarks dated March 25, 2026 with respect to the rejection of claims 1 – 20 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been maintained.
Applicant argues “Huang discloses a tool holder having a number of orifices for receiving tool members, such as tool bits and tool extensions (e.g., element 19). Huang at Col. 4, In. 20-29. The Office alleges that Huang at element 19 discloses a shaft extending from an interior surface of a base, as required in the independent claims. Office Action at pg. 4. However, Huang clearly discloses that a tool extension (e.g., element 19) is merely a tool member that can be attached to the tool holder, rather than constituting an element of the tool holder itself. (A tool handle... for engaging with or for attaching a tool member 13 thereto, such as a screw driver bit 13, a tool extension (FIG. 3), or the like." Huang at Col. 2, In. 66-67 to Col. 3 In. 1-4. As such, Huang fails to disclose a tool storage device having a shaft, or furthermore, a tool storage device having a shaft extending from an interior surface of a base”.
Examiner respectfully disagrees. The shaft, 19 is mounted through the base and further extends from an interior surface of the base, thus Huang explicitly teaches a tool storage device having a shaft.
Applicant argues “Applicant respectfully asserts that the cited references fails to disclose "a plurality of wings extending radially outward relative to the shaft", as required in the independent claims”.
Examiner respectfully disagrees. As stated above, Huang teaches a shaft and thus teaches the wings extending radially from said shaft.
Applicant argues “Applicant respectfully asserts that it is improper to use a single structure/element in the cited reference to disclose two separate claimed elements. Ex parte Weideman ("[I]t is improper to rely on the same structure in the Lohr reference as being response to two different elements", citing Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)). The Office alleges that orifice 41 discloses the claimed plurality of channels. Office Action pg. 4. Additionally, the Office alleges that orifice 41 discloses a center bore into which the shaft is positionable and fastened to the tool holder. Id. at pgs. 4-5.”
Examiner agrees and has further provided the Non-Final office action and an Annotated Figure 2 to show the bore through which 1 extends.
Applicant argues “Additionally, the Office's attempt to repurpose the tool holding orifice at which a tool member (e.g., element 19) is receivable as instead being a portion of the tool storage device structure itself, requires impermissible hindsight to reconstruct the claimed invention based on isolated teachings in the art, and unsupported by the cited art. Such reconstruction is impermissible for sustaining a rejection under 35 U.S.C. 102/103”.
Examiner respectfully disagrees. Huang clearly teaches the base comprising a shaft, which is further a component of the tool storage device.
Applicant argues “as Huang only discloses the orifice as receiving a tool member, and Huang provides no teaching or suggestion as to forming the orifice other than as a hole in a body, the cited art fails to provide any teaching, suggestion, or motivation for a plurality of wings extending radially outward and along a longitudinal direction, and a plurality of channels formed between respective pairs of wings, as required in the independent claims.”
Examiner respectfully disagrees. Huang explicitly teaches “the tool holder 40 includes a number of orifices 41 formed therein for receiving the tool members 13, ……, and includes a number of slits 42 formed therein and communicating with the orifices 41 thereof, for resiliently clamping or retaining the tool members 13 to the tool holder 40.
Applicant argues “Applicant respectfully asserts that it is improper to use a single structure/element in the cited reference to disclose two separate claimed elements. Exparte Weideman ("[I]t is improper to rely on the same structure in the Lohr reference as being response to two different elements. Huang discloses element 10 as the overall tool handle including a chamber 38, which corresponds directly to the elements the Office alleges to be the base”.
Examiner respectfully disagrees. Huang clearly shows the tool, 10 has many different components. Examiner has identified what portion is designated as the base and is not using a single element to disclose separate claimed elements.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATINA N HENSON whose telephone number is (571)272-8024. The examiner can normally be reached Monday - Thursday; 5:30am to 3:30pm.
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/KATINA N. HENSON/Primary Examiner, Art Unit 3723
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