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.
Specification
The disclosure is objected to because of the following informalities:
In paragraph 37, element 14 is referred to as “first end opening” but in paragraphs 41-44, element 14 is referred to as just “opening”, revise for consistency.
In paragraph 49 “a plurality of ribs or wings 68” should be “a plurality of ribs 74 or wings 68”, revise for clarity.
In paragraph 54’s last sentence, “similar tooL” should be “similar tool”, revise for proper capitalization.
Appropriate correction is required.
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 18 is 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 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 18 recites the limitation “wherein a second length is formed from the opening through which the tool storage device extends into the body to a distal end of the body along the longitudinal direction, and wherein the second length is between approximately 85% and approximately 91%” in lines 3 – 6. The limitation fails to find support in the specification as it fails to state what the percentages refers to. Applicant is advised to show where support can be found or delete the limitation as it would constitute new matter.
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 18 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 18 recites the limitation “wherein a second length is formed from the opening through which the tool storage device extends into the body to a distal end of the body along the longitudinal direction, and wherein the second length is between approximately 85% and approximately 91% in lines 3 – 6. The only other reference of the 85% to 91% range is in regards to the ratio between the third length to the first length (Specification paragraph 64) not between the first and second length. The limitation is vague in that it is unclear what the percentage refers to.
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, 19-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Huang (US Patent No: 7,051,629).
In reference to 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), 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 (41; Figure 2; tool extension 19 communicates with orifice, 41; Col. 4, lines 20 - 26) into which the shaft (19) is positionable and fastened to the tool holder (Figure 2).
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In reference to 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 ).
In reference to 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).
In reference to 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).
In reference to 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 (41; Figure 2; tool extension 19 communicates with orifice, 41; Col. 4, lines 20 - 26) 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).
In reference to 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 (41) 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).
In reference to 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).
In reference to 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).
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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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).
In reference to 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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In reference to 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRISHA JOY U FRANCISCO whose telephone number is (571) 272-1224. The examiner can normally be reached Monday-Friday 8 am-5 pm.
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, Monica Carter can be reached at (571) 272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRISHA JOY U FRANCISCO/Patent Examiner, Art Unit 3723
/KATINA N. HENSON/Primary Examiner, Art Unit 3723