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 .
Response to Amendment
Claims 31-43, 45-50 are pending.
Claims 42, 43, 45-50 are withdrawn.
Claims 31-33, 40, 42, and 46 are currently amended.
Claims 1-30, and 44 are canceled.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Claim 31, and 39: “connection feature” reads as “a feature (generic placeholder) for connecting (function)…”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA
35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The connection feature is defined as an upper portion of the sidewall as per paragraph 66 or recess in view of paragraph 62, the drawings and claims.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or
pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 34 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 34 recites “the first connection feature includes at least one recess, wherein the mating feature is a hook configured to engage the recess.” However, it is unclear how a hook is configured to engage with the recess. The specification discloses that the hook engages with sidewall (para 65) and foot engages with recess (para 62). For examination purpose, it will be assumed that the mating feature is a foot that engages with recess. 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) 31, 32 35, 36, and 38-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvigneau (US 20070194543) in view of Hoppe (US 20160023349).
Regarding claim 31, Duvigneau discloses, A rolling toolbox (Fig. 1-5) comprising:
a container including a base (See annotated fig. below), a plurality of sidewalls (See annotated fig. below) at least partially defining an outer wall of an interior compartment (See annotated fig. below), a lid (180) coupled to one of the sidewalls (Fig. 4A, B), and a latch (See annotated fig. below),
the lid movable between a closed portion (Fig. 4B) and an open position (Fig. 5), the interior compartment being accessible while the lid is in the open position (Fig. 5), the interior compartment being covered while the lid is in the closed position (Fig. 4B),
the lid includes periphery projecting (See annotated fig. below) from a surface of the lid, wherein the latch selectively engages the periphery to secure the lid in the closed position (latch as annotated engages with periphery to lock and unlock the lid) , wherein the lid is and releasably secured to the other container in a stacked relationship,
the container including at least a first connection feature (See annotated fig. below), a wheel (166) rotatably coupled to the container and supporting the container for movement on a support surface; and a handle (Fig. 5; 198) coupled to the container to guide movement of the container, the handle being movable between a retracted position and an extended position (Para 66).
However, Duvigneau does not disclose, a lid coupled to one of the sidewalls by a hinge, and a latch, wherein the lid is movable about the hinge between a closed portion and an open position.
Hoppe discloses, a container comprising a lid coupled to one of the sidewalls by a hinge (Fig. 2; 260), wherein the lid is movable about the hinge between a closed portion and an open position
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 Duvigneau to have a lid coupled to one of the sidewalls by a hinge, and a latch, wherein the lid is movable about the hinge between a closed portion and an open position as taught by Hoppe for the purpose of preventing loss of the lid during usage.
The limitation “the periphery is configured to engage a complementary feature positioned on the base of another container , […] a first connection feature configured to engage a mating feature of a bin, divider, small parts organizer received within the interior compartment” 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 periphery is capable of engaging with a complementary on base of another container and a first connection feature an upper end of the sidewall is capable of being used as an area that allows for bins with hook to be attached to the container.
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Regarding claim 32, Duvigneau discloses, the handle is a telescopic handle (para 17) configured to be telescoped between retracted position and the extended position (para29).
Regarding claim 35, and 36 Duvigneau discloses, wherein the first connection feature is positioned on a peripheral edge of at least one of the sidewalls (See annotated fig. above for claim 31), the mating feature is a hook (174 is hook shape).
The limitation “wherein the mating feature is a hook configured to selectively engage the first connection feature, and the hook can selectively engage the first connection feature in one of a first orientation and a second orientation.” 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, a bin with a hook can be attached to the perimeter of the toolbox and thereby is capable of performing the limitation as claimed.
Regarding claim 38, Duvigneau discloses, the first connection feature comprises an upper portion of at least one of the plurality of sidewalls (See annotated fig. of claim 31.
Regarding claim 39, and 40, Duvigneau discloses a second connection feature (See annotated fig. below).
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The limitation “configured to engage a mating feature of an accessory with at least a portion of the accessory positioned outside of the interior compartment, and configured to receive a hook” 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 upper sidewall perimeter as annotated is capable of engaging with an accessory with a hook wherein the accessory positioned outside of the interior compartment.
Regarding claim 41, Duvigneau as modified discloses, the feature comprising a tab (142).
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvigneau-Hoppe as applied to claim 31 in view of Moore (US 6073944).
Regarding claim 33, Duvigneau as modified does not disclose, handle is removable from the container.
Moore discloses a container comprising a removable telescopic handle (claim 4).
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 Duvigneau to have the handle removable as taught by Duvigneau as it would allow for a single handle to be used with plurality of container interchangeably and thus reducing manufacturing cost.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvigneau-Hoppe as applied to claim 31 in view of CLARKE (GB 2482126; Provided by applicant).
Regarding claim 34, Duvigneau does not explicitly disclose, the first connection feature includes at least one recess, wherein the mating feature is a foot or a hook configured to engage the recess.
CLARKE disclose a container comprising at least a first connection feature (30) to be a foot (Clarke, 30; Fig. 2) and mating surface to be a recess (Clarke, 32).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the first connection feature includes at least one recess, wherein the mating feature is a foot since it is a simple reversal of parts. It has been held that a mere reversal of the essential working parts of a device . The device would work equally well in both arrangements. The incorporation of these features is done for the purpose of “securely, but releasably, held [small bins] in position within the outer container and cannot move in the container during transport” (Clark; page 13, first paragraph).
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvigneau-Hoppe as applied to claim 31 in view Larson (US 20120318792).
Regarding claim 37, Duvigneau as modified does not disclose, an interior surface of the lid includes protrusions.
Larson discloses, a container (Fig. 1A, B) comprising a lid 6 wherein an interior surface of the lid includes protrusions (17; Fig. 1B; Para 26).
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 Duvigneau to incorporate an interior surface of the lid includes protrusions as taught by Larson for the purpose of providing stability to the bins/articles placed within the containers.
The limitation “configured to substantially engage an upper edge of the bin, divider, or small parts organizer positioned within the interior compartment while the lid is in the closed position.” 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 projections are capable of performing the limitation as claimed.
Response to Arguments
Applicants argument with regards to the limitation “connection feature” being interpreted under 112(f) is not persuasive. Claims 31 and 39 fails to disclose enough structural limitation as claimed and would not be understood by a person of ordinary skill in the art. Once 112(f) invoked, the claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art.
Applicants argument with regards to newly amended limitation disclosing a hinge is not persuasive as this is disclosed by prior art of Hoppe in the currently office action.
Applicants argument with regards to Squires is considered but moot as new ground of rejection does not rely on prior art of Squires.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 SANJIDUL ISLAM whose telephone number is (571)272-7670. The examiner can normally be reached Monday-Friday 8:30 -5:00.
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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