This is a Final office action for serial number 18/540883.
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 .
Attachment to Office Action: Information to Pro Se Inventors Regarding responses to Office Actions
INTRODUCTION
An examination of this application reveals that applicant may be unfamiliar with patent prosecuting procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed.
Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application. The value of a patent is largely dependent upon skillful preparation and prosecution. Although the services of a registered patent attorney or agent is advised, the Office cannot aid in selecting an attorney or agent. 37 C.F.R. § 1.31; M.P.E.P. § 401. However, Applicant is encouraged to peruse the publication entitled "Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office." This publication is for sale by the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402.
DISCUSSION
The following discussion provides general information for Applicant's benefit regarding an applicant's response, new matter, the period for response, and the certificate of mailing.
I. Response by Applicant
The applicant MUST respond to every ground of rejection and objection made in an Office action. 37 C.F.R. § 1.111. The applicant will generally present arguments that the examiner's rejections or objections were made in error; or amend the specification, drawings, and/or claims to overcome the rejection or objection. Amendments to the application may not introduce new matter. 37 C.F.R. § 1.118.
Unless the Office explicitly requests the return of a paper, all papers mailed to the applicant are intended to be kept by the applicant for his own records. The response must be signed by ALL applicants. 37 C.F.R. § 1.33. The response must be identified by the Serial Number of the Application, the Art Unit, and the name of the examiner. An example follows:
Appl. No. : XX/YYY,YYY
Applicant : James Q. Inventor
Filed: April 19, 2003
Title : Bucket with Handle
Art Unit: 3632
Examiner:: John Doe
A. Arguments
Should the applicant disagree with the examiner's position, the applicant should distinctly and specifically point out the supposed errors in the examiner's action with arguments under the heading "Remarks" in the response. 37 C.F.R. § 1.111. In addition, the applicant must discuss the references cited by the examiner that explain how the claims avoid the references or patentably distinguish from them. Id.
B. Amendments to the Specification
An amendment to the specification may remove a rejection or objection. Any amendment to the specification must be presented as a list of additions and deletions, referring to the passages in question by page and line numbers. 37 C.F.R. § 1.121.
An amendment to the specification should appear as follows:
Please replace the paragraph beginning at page 5, line 15, with the following rewritten
paragraph:
I -In the construction of the bucket of this invention, various materials have been selected which offer a number of diverse properties and allow for varied functions of the article. For caustic solutions, the bucket can be made of a durable plastic material. Where an aesthetic appeal is desired, the bucket can be any
Please add the following new paragraph after the paragraph ending on line 20 of page 6:
-- An optional feature of the articles of the invention is the addition of a tetrafluoroethylene coating to the bucket to provide protection from any contents which might be caustic. The coating can be provided to the surface during the manufacturing process or can be added in a later step.--
C. Amendments to the Claims
An amendment to the claim may remove a rejection or objection. This listing of claims will replace all prior versions, and listings, of claims in the application:
Listing of Claims:
Claims 1-4 (canceled)
Claim 5 (original): A bucket with a black handle.
Claim 6 (original): A bucket of claim 5 wherein the handle is metal.
Claim 7 (withdrawn) A bucket with a yellow handle.
Claim 8 (currently amended): A bucket made of green plastic.
Claim 9 (previously presented): A bucket made of aluminum-coated galvanized metal.
Claim 10 (previously presented): A bucket having a circumferential upper lip.
Claim 11 (new): A plastic bucket having a blue handle.
D. Drawing Corrections
Finally, correction of the drawings may remove a rejection or objection. Changes to the drawings are submitted as proposed drawing corrections and can be made only with permission of the Office. 37 C.F.R. § 1.123. Proposed drawing corrections should be filed with the response, but should be a separate paper. M.P.E.P. § 608.02(r). The proposed corrections should appear in red ink in the drawings. M.P.E.P. § 608.02(v).
II. New Matter
As previously mentioned, no amendment to the specification, claims, or drawings may introduce new matter. 37 C.F.R. § 1.118. "New matter" constitutes any material which meets the following criteria:
(1) It is added to the disclosure (either the specification, the claims, or the drawings) after the filing date of the application, and
(2) It contains new information which is neither included nor implied in the original version of the disclosure. This includes the addition of physical
properties, new uses, etc.
See M.P.E.P. § 706.03(o). For example, in the amendment to the claim discussed above, the new limitation of "four legs" would not constitute new matter if the specification or drawings originally described the inclusion of four legs on the chair.
III. Period For Response
An Office action generally sets a time period in which the applicant has to respond to every rejection and objection (called a shortened statutory period). 37 C.F.R. § 1.134. This time period for response appears on the cover letter (form PTO-326) of the Office action. Usually, a 3 month shortened statutory period is set. M.P.E.P. § 710.02(b). The applicant's response must be received within the time period listed on the cover letter, or the application will be held abandoned. 37 C.F.R. § 1.135.
Currently, the Office allows the time period for response to be extended past the shortened statutory period up to a maximum of 6 months (called the maximum 6 month statutory period). In order to extend the period of response past the shortened statutory period, a request for an extension of time and payment of the appropriate fee is required. 37 C.F.R. § 1.136. The request must state that it is for "an extension of the period for response under 37 C.F.R. § 1.136(a)."
It is important to note that no extension of time is permitted that extends the period for response past the maximum 6 month statutory period. Responses received after the maximum 6 month statutory period will be held abandoned. 37 C.F.R. § 1.135.
Three examples are provided:
Example 1:
A complete response is filed four months and one day after the mailing date of an Office action. The Office action sets a 3 month shortened statutory period for response. The response must be accompanied by a fee in the amount of $205 (for a small entity); $410 for a large entity) for a 2 month extension of time. The response must also contain a statement requesting "an extension of the period for response under 37 C.F.R. § 1.136(a)."
Example 2:
A complete response is filed five months and one day after the mailing date of an Office action. The Office action sets a 2 month shortened statutory period for response. The response must be accompanied by a fee in the amount of $725 (for a small entity); $1,450 for a large entity) for a 4 month extension of time. The response must also contain a statement requesting "an extension of the period for response under 37 C.F.R. § 1.136(a)."
Example 3:
A complete response is filed six months and one day after the mailing date of an Office action. The Office action sets a 3 month shortened statutory period for response. The response is held abandoned even if accompanied by a fee and a request for an extension of time. Remember, extensions of time may not be used to extend the period for response past the maximum 6 month statutory period. 37 C.F.R. § 1.135.
IV. Certificate of Mailing
To ensure that the Applicant's response is considered timely filed, it is advisable to include a "Certificate of Mailing" on at least one page of the response. See 37 C.F.R. § 1.8. This "Certificate" should consist of the following statement:
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Applicant signature
Date
CONCLUSION AND CAVEAT
The above discussion is not intended to be an exhaustive list of all the topics that may be relevant to this particular Application. The information was provided to familiarize Applicant with the portions of a response that have historically caused problems for pro se inventors.
Furthermore, even if Applicant's response is in accordance with the information provided above, there is no guarantee that every requirement of the patent laws (35 U.S.C. §§ 1-376), patent rules (37 C.F.R. §§ 1.1-150.6), and Patent Office policy (M.P.E.P. §§ 101-2591) has been met. The adequacy of a response is determined on a case-by-case basis. See 37 C.F.R. § 1.111; M.P.E.P. § 714.02.
Specification
The amendment filed July 20, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure and therefore will not be entered into the application. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the magnet portion with adhesive is new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings were received on July 20, 2025. These drawings are not approved and are not entered into the application for including new matter (adhesive 26) .
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the he shell and spacer portion made as 2 pieces that are attached together with welded, brazed or riveted configuration must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 4 is objected to because of the following informalities: the status identifier for claim 4 is (withdrawn) since the claim limitations are not included it appears the applicant intended to cancel the claim. The status identifier should be changed to (cancel). Since no restriction has been previously made, the examiner is treating claim 4 as canceled. Appropriate correction is required if necessary.
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 1 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. The original specification did not disclose the magnet portion is configured to sit attached with adhesive to the mounting structure therefore failing to comply with the written description requirement and introducing new matter.
Claim 1 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. The original specification did not disclose the shell and spacer portion made as 2 pieces that are attached together with welded, brazed or riveted configuration therefore failing to comply with the written description requirement and introducing new matter.
Claims 1-3 are rejected (claims dependent on a rejected claim are rejected based on their dependence unless otherwise specified) 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 1 recites the limitation "the magnet" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the center" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "a hole in the center”" in line 8. There is insufficient antecedent basis for this limitation in the claim. The examiner can not determine if “a hole in the center” in line 8 is the same or includes “a hole in the center” in line 5 therefore the claim is indefinite and confusing.
The claims have been rejected under 35 U.S.C. 112 for the above reasons. Please note that the Examiner may not have pointed out each and every example of indefiniteness. The applicant is required to review all the claim language to make sure the claimed invention is clear and definite.
All words in a claim must be considered in determining the patentability of theclaim against the prior art. If no reasonably definite meaning can be ascribed to certainterms in the claim, the subject matter does not become obvious, the claim becomesindefinite. In re Wilson, 424F.2d 1382, 1385 (CCPA 1970). The examiner's analysis ofthe claims, in particular claim language within the claims as rejected under 35 USC 112 above, indicates that considerable speculation as to the meaning of the terms employed and assumptions as to the scope of the claims needs to be made, as the examiner does not understand what is exactly being claimed by the applicant. Any rejection under 35 U.S.C. 102 should not be based on such speculations and assumptions. In re Steele, 305 F.2d 859,862 (CCPA 1962); Ex parte Head, 214 USPQ 551 (Bd.App. 1981). Accordingly, the applicant should not assume that any claims not rejected using prior art is considered allowable since the examiner can not clearly determine the limitations of the claim due to indefiniteness. The applicant should be aware that once the claims have been corrected to remove the problems concerning indefiniteness, prior art may be used to reject the claims and the next action made final or if the application is in a final status the amendment after final may not be entered as requiring further search and/or consideration.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected, as best understood, under 35 U.S.C. 102(a) (1) as being anticipated by Robinson et al. (Robinson) 2002/0175251. The applicant is reminded that the power tool, similar tool, or screw are not positively claimed therefore the prior art only need to be capable of performing the functions related to the power tool, similar tool, or screw.
Robinson discloses:
For Claim 1 A tool holding device comprising: a mounting structure made of a metal, plastic, polymer or composite material, configured to hold a magnet portion (36); including a cylindrical spacer portion (32) extending from the mounting structure (30) opposite the magnet, the spacer portion (32) extending from the mounting structure (30) has a hole (see figure below) in the center, configured to allow a screw to hold the assembly to a power tool or similar tool; the magnet portion (36) is configured to sit attached with adhesive (40) to the mounting structure (30), with a hole in the center of the magnet portion (36) configured to allow the mounting screw (64) to pass through the mounting structure (30).
For Claim 2 The tool holding device of claim 1, wherein the mounting structure (30) comprises a shell ( and spacer portion (32) made as one piece.
For Claim 3 The tool holding device of claim 1, wherein the mounting structure (30) comprises a shell and spacer portion (20) made as 2 pieces that are attached together with a welded, brazed or riveted configuration (the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight, in addition Robinson discloses in paragraph 0032-033 that the shell and spacer portion can be 2 pieces attached together) to form the mounting structure (30).
[AltContent: textbox (Shell mounting structure(30)
Quick connect system 72/70
Cylindrical spacer portion (32))][AltContent: arrow][AltContent: textbox (Magnets (36)
Hole in center)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Bosch DE 202013004302U1.
Bosch discloses
For Claim 1 A tool holding device comprising: a mounting structure made of a metal, plastic, polymer or composite material, configured to hold a magnet portion; including a cylindrical spacer portion extending from the mounting structure opposite the magnet, the spacer portion extending from the mounting structure has a hole (see figure below) in the center, configured to allow a screw to hold the assembly to a power tool or similar tool; the magnet portion is configured to sit attached with adhesive to the mounting structure, with a hole in the center of the magnet portion configured to allow the mounting screw to pass through the mounting structure.
For Claim 2 The tool holding device of claim 1, wherein the mounting structure comprises a shell and spacer portion made as one piece.
[AltContent: arrow][AltContent: textbox (Tools or fastener 30/40 )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Hole 42)][AltContent: textbox (Cylindrical spacer portion )][AltContent: textbox (Magnet 38)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Shell )]
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Response to Arguments
Applicant's arguments filed October 1, 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the patent is for a device that has a solid magnet portion to hold fasteners or bits and is designed to attach to a power tool, a 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.
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., power tool, fasteners, or bits) 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).
In response to applicant's argument that the patent is for a magnet with a spacer that is intended to be attached to the unused belt hook attachment point, a 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.
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 KIMBERLY T WOOD whose telephone number is (571)272-6826. The examiner can normally be reached M-Thur 9:00am-5:30pm flexible schedule.
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, Jonathan Liu can be reached at (571) 272-8227. 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.
/KIMBERLY T WOOD/ Primary Examiner, Art Unit 3631