DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/21/26 has been entered.
Election/Restrictions
This application contains claims directed to the following patentably distinct species:
Species A: Figs 1-4
Species B: Figs 5-6
The species are independent or distinct because the species each comprise different elements/different mounting means and different configurations of a power tool attachment device. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 15 and 19 are considered to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: The species each require a different field of search and/or different text inquires.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Newly submitted claims 17, 18, 22, and 25 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Regarding claims 17, 18, 22, and 25, Species B (Figs 5-6) is the only embodiment that comprises a detent or protrusion (Fig 5, #520) that engages a void in the device. These features were never previously claimed.
Since applicant has received an action on the merits for the originally presented invention (Claims 1, 3-15, 19-21, 23 and 24) this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17, 18, 22, 24 and 25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Drawings
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 “the deformable region includes a spring” (claim 24) 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 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.
Claims 1, 3-6, 12-14, and 24 are 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.
Regarding claim 1, the following limitation “the magnetized region configured to magnetically hold installable components within the magnetized region” is unclear and confusing because claim 1 defines the magnetized region as being only a part of a first side. So, if the magnetized region is a part of the first side, how does the magnetized region magnetically hold installable components within the first side? Does the first side have a recess or hole?
For this action only the examiner interprets claim 1 as follows:
Claim 1, lines 6-7: -- the magnetized region configured to magnetically hold installable components to the magnetized region—Appropriate correction is required.
Regarding claim 12, the following limitation “a non-magnetized region that catches…one or more of the installable components” appears to be a method step “catches” claimed within an apparatus claim. Appropriate correction is required.
The examiner suggests the following amendment for claim 12:
Claim 12: -- wherein the bin further includes a non-magnetized region that is configured to catch[[es]] and retain[[s]] one or more of the installable components.-- Appropriate correction is required.
Regarding claim 24, the following limitation “wherein the deformable region is a spring” is unclear and confusing as to what the applicant’s spring is or looks like. The applicant’s drawings and specification do not explain or illustrate what the spring is and/or how it works. Appropriate correction is required.
Claims 3-6 and 13-14 are rejected as being dependent upon a rejected base claim.
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.
Claims 1, 3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sharp 2007/0175785 in view of Stephenson 9,573,197; Liu 5,535,882; and Carlson 8,596,454.
Regarding claim 1, as best understood, Sharp discloses a power tool attachment (annotated Fig 8 below), the attachment (annotated Fig 8 below) comprising: an attachment mechanism (annotated Fig 8 below) adapted to or capable of securing the attachment (annotated Fig 8 below) to a belt clip attachment point of a power tool; a bin (annotated Fig 8 below) attached directly to the attachment mechanism (annotated Fig 8 below), the bin (annotated Fig 8 below) having a bottom (annotated Fig 8 below) and at least three sides (annotated Fig 9 below), including a first side (annotated Fig 9 below).
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Sharp has been discussed above but does not explicitly teach wherein the first side includes a magnetized region, the magnetized region configured to magnetically hold installable components to the magnetized region; and an adapter bit holding region adjacent to the bin, the adapter bit holding region adapted to secure adapter bits to the attachment.
Stephenson discloses a power tool attachment (Fig 8, #400), the attachment (Fig 8, #400) comprising: an attachment mechanism (Fig 9, #426) adapted to or capable securing the attachment (Fig 8, #400) to a belt clip attachment point of a power tool;
a bin (Fig 8, #400) (Fig 8, #418 & #417) (bin is defined as broad as being a receptacle) attached to the attachment mechanism (Fig 9, #426), the bin (Fig 8, #400) (Fig 8, #418 & #417) having a bottom (annotated Fig 9 below) and a first side (annotated Fig 8 below), wherein the first side (annotated Fig 8 below) includes a magnetized region (Fig 9, #411), the magnetized region (Fig 9, #411) configured to magnetically hold installable components to the magnetized region (Fig 9, #411) (col 9, lines 23-32).
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Liu discloses an attachment (Figs 2 & 3) comprising a bin (Figs 2 & 3, #20) an adapter bit holding region (Figs 2 & 3, #10 & #15) adjacent to the bin (Figs 2 & 3, #20) (as shown in Fig 3), the adapter bit holding region (Figs 2 & 3, #10 & #15) adapted to secure adapter bits to an attachment (Fig 2, #12).
Carlson teaches that it is old and well known in the art for a bin (Fig 8, #133, #126, #128, #123, & #131) to have an adapter bit region (Figs 8 & 13, #139 & #144) attached to the bin (Fig 8, #133, #126, #128, #123, & #131).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a magnetic surface (Stephenson, Fig 9, #411) to the interior of the first side (Sharp, annotated Fig 9 above) of the bin (Sharp, annotated Fig 8 above) of Sharp in order to attach items to the first side (Sharp, annotated Fig 9 above) of the bin (Sharp, annotated Fig 8 above) of Sharp and prevent the items form inadvertently falling out of the bin (Sharp, annotated Fig 8 above) of Sharp.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach an adapter bit region (Liu, Figs 2 & 3, #10 & #15) to the bin (Sharp, annotated Fig 8 above) of modified Sharp using the teachings and motivation of Carlson in order to store more items on the attachment (Sharp, annotated Fig 8 above) of modified Sharp.
Regarding claim 3, modified Sharp discloses the power tool attachment wherein the adapter bit holding region (Liu, Fig 2, #10 & #15) includes a friction rubbing region (Liu, Fig 2, interior surfaces of holes #15) adapted to retain one or more adapter bits.
Regarding claim 5, modified Sharp discloses the power tool attachment wherein the attachment mechanism (Sharp, annotated Fig 8 above) is adapted to or capable of securing the attachment (Sharp, annotated Fig 8 above) to a threaded bolt hole of the belt clip attachment point, wherein the attachment (Sharp, annotated Fig 8 above) has a weight, and
wherein the attachment mechanism (Sharp, annotated Fig 8 above) includes a conforming geometry, the conforming geometry adapted to or capable of transferring some portion of the weight of the attachment (Sharp, annotated Fig 8 above) to the power tool.
Regarding claim 6, modified Sharp discloses the power tool wherein the attachment mechanism (Sharp, annotated Fig 8 above) is adapted to secure the attachment (Sharp, annotated Fig 8 above) to a threaded bolt hole of the belt clip attachment point, and wherein the attachment mechanism (Sharp, annotated Fig 8 above) includes a conforming geometry, the conforming geometry adapted to or capable of limiting rotation of the attachment (Sharp, annotated Fig 8 above) when the attachment (Sharp, annotated Fig 8 above) is attached to the power tool (especially when the attachment mechanism (Sharp, annotated Fig 8 above) is fastened tightly to the power tool with a screw).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Sharp 2007/0175785; Stephenson 9,573,197; Liu 5,535,882; and Carlson 8,596,454; and further in view of Balzano 5,056,661.
Regarding claim 4, Modified Sharp has been discussed above but does not explicitly teach wherein the adapter bit holding area region further includes an adapter bit magnetized region, the adapter bit magnetized region is configured to strengthen retention of the adapter bits by the friction rubbing region.
Balzano discloses an attachment or tool holder (Fig 8, #46) comprising an adapter bit holding region (Fig 8, #46) that includes a friction rubbing region (Fig 8, #47) and an adapter magnetized region (Fig 8, #48) or (annotated Fig 8 below), the adapter bit magnetized region (Fig 8, #48) or (annotated Fig 8 below) is configured to or capable of strengthening retention of the adapter bits by the friction rubbing region (Fig 8, #47).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to magnetize the adapter bit holding region (Liu, Fig 2, #15) of modified Sharp as taught by Balzano in order to further secure the adapter bits within the recesses (Liu, Fig 2, #15) of modified Sharp (Balzano, col 4, lines 9-12).
Claims 7, 9-10, 12-14 and 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Moss 12,011,820 in view of Liu 5,535,882.
Regarding claim 7, Moss discloses an attachment (Fig 4A, #420), the attachment (Fig 4A, #420) comprising:
an adapter bit region (annotated Fig 4A below), the adapter bit region (annotated Fig 4A below) adapted to separate and retain adapter bits; and
an adapter region (Figs 4A & 4B, #424, #426, & #428), the adapter region (Figs 4A & 4B, #424, #426, & #428) adapted to mount the attachment (Fig 4A, #420), when in use, to a threaded bolt hole of a power tool at a power tool attachment point.
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Moss has been discussed above but does not explicitly teach the attachment comprising a bin, the bin configured to receive installable components, the bin including an attachment magnetized region, the attachment magnetized region including a magnet that magnetically retains one or more of the installable components; the adapter bit region attached to the bin; and the adapter region attached to the bin.
Liu discloses an attachment (Figs 2 & 3, #10) comprising a bin (Figs 2 & 3, #20),
the bin (Figs 2 & 3, #20) configured to receive installable components, the bin (Figs 2 & 3, #20) including an attachment magnetized region (Figs 2 & 3, #30), the attachment magnetized region (Figs 2 & 3, #30) including a magnet (Figs 2 & 3, #30) that magnetically retains one or more of the installable components (Fig 3, #30); an adapter bit region (annotated Fig 2 below) attached to the bin (Figs 2 & 3, #20) (as shown in Fig 3); and an adapter region (Figs 2 & 5, #12) attached to the bin (Figs 2 & 3, #20).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a bin (Lin, Figs 2 & 3, #20) to the attachment (Moss, Fig 4A-4D, #420) in order to enable the attachment (Moss, Fig 4A-4D, #420) of Moss to store more items.
Regarding claim 9, modified Moss discloses the attachment wherein the adapter bit region (Moss, annotated Fig 4A above) includes a friction rubbing region (Moss, Fig 4A above, interior surface of #430) adapted to retain or capable of retaining one or more adapter bits.
Regarding claim 10, modified Moss discloses the attachment wherein the adapter bit region (Moss, annotated Fig 4A above) includes detents (Moss, Fig 4A, #430) to hold in place one or more adapter bits.
Regarding claim 12, as best understood, modified Moss discloses the attachment wherein the bin (Liu, Figs 2 & 3, #20) further includes a non-magnetized region (Liu, annotated Fig 3 below) that is configured to catch and retain one or more of the installable components.
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Regarding claim 19, modified Moss discloses an attachment (Moss, Fig 4A, #420) mountable to a power tool, the attachment (Moss, Fig 4A, #420) comprising:
a bin region (Lin, Figs 2-3, #20) that magnetically holds a plurality of installable components (Lin, as shown in Fig 4, via magnets #30);
an adapter bit region (Moss, annotated 4A above) (Moss, Fig 4A, #430) adjacent to the bin region (Lin, Figs 2-3, #20), the adapter bit region (Moss, annotated 4A above) (Moss, Fig 4A, #430) adapted to configured to hold retain adapter bits; and
an attachment region (Moss, Fig 4A, #426 & #424) connected to the bin region (Lin, Figs 2-3, #20) and to the adapter bit region (Moss, annotated 4A above) (Moss, Fig 4A, #430), the attachment region (Moss, Fig 4A, #426 & #424) adapted to secure the attachment (Moss, Fig 4A, #420) to the power tool via an existing attachment point on the power tool, wherein the attachment (Moss, Fig 4A, #420) has a weight, and wherein, when in use, the attachment region (Moss, Fig 4A, #426 & #424) is capable of making use of an existing geometry of the power tool and of the existing attachment point to limit twisting of the attachment (Moss, Fig 4A, #420) around from twisting relative to the existing attachment point of the power tool (especially when the attachment region (Moss, Fig 4A, #426 & #424) is fastened tightly to the power tool with a screw).
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Regarding claim 21, modified Moss discloses the attachment wherein the adapter bit region (Moss, annotated 4A above) (Moss, Fig 4A, #430) is a friction rubbing region (inner surfaces of the recesses (Moss, Fig 4A, #430)) adapted to retain one or more adapter bits.
Regarding claim 7, in a second interpretation, Moss discloses a first embodiment of an attachment (Fig 4A, #420), the attachment (Fig 4A, #420) comprising:
an adapter bit region (annotated Fig 4A below), the adapter bit region (annotated Fig 4A below) adapted to separate and retain adapter bits; and
an adapter region (Figs 4A & 4B, #424, #426, & #428), the adapter region (Figs 4A & 4B, #424, #426, & #428) adapted to mount the attachment (Fig 4A, #420), when in use, to a threaded bolt hole of a power tool at a power tool attachment point.
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The first embodiment of Moss has been discussed above but does not explicitly teach the attachment comprising a bin, the bin configured to receive installable components, the bin including an attachment magnetized region, the attachment magnetized region including a magnet that magnetically retains one or more of the installable components; the adapter bit region attached to the bin; and the adapter region attached to the bin.
Moss discloses a second embodiment of an attachment (Figs 3A-3D, #320) comprising a bin (Figs 3A-3D, #330), the bin (Figs 3A-3D, #330) configured to receive installable components, the bin (Figs 3A-3D, #330) including an attachment magnetized region (Figs 3A-3D, #330) (col 5, lines 8-10), the attachment magnetized region (Figs 3A-3D, #330) (col 5, lines 8-10) including a magnet (col 5, lines 8-10) configured to magnetically retain one or more of the installable components.
Liu teaches that it is well known in the art for an attachment (Figs 2 & 3, #10, #12, & #20) to comprises an adapter bit region (annotated Fig 2 above) or (Fig 2, #10 & #15) attached to a bin (Figs 2 & 3, #20) attached to the adapter bit region (Fig 2, #10 & #15); wherein the bin (Fig 2, #20) comprises an attachment magnetized region (Figs 2 & 3, #30), the attachment magnetized region (Figs 2 & 3, #30) including a magnet (Figs 2 & 3, #30) that magnetically retains one or more installable components (screws or nuts, as shown in Fig 4), and an adapter region (Figs 2 & 5, #12) attached to the bin (Figs 2 & 3, #20).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a bin (Moss, 3A-3D, #330) having an attached magnetized region (Moss, col 5, lines 8-10) to the front wall (Moss, Fig 4A, #422) of the attachment (Moss, Fig 4A, #420) of the first embodiment of Moss using the teachings and motivation of Lin in order to store more items on the attachment (Moss, Fig 4A, #420) of the first embodiment of Moss.
It also would have been obvious to one having ordinary skill in the art before the
effective filing date of the claimed invention to magnetically retain one or more installable components (such as screws, nuts, or adapter bits) on the magnet of (Moss, col 5, lines 8-10) within the bin (Moss, Fig 3A-3D, #330) of the first embodiment of Moss as taught by Lin in order to further secure the installable components within the bin (Moss, Fig 3A-3D, #330) of the first embodiment of Moss and prevent the installable components from inadvertently falling out of the bin (Moss, Fig 3A-3D, #330) of the first embodiment of Moss.
Regarding claim 13, in the second interpretation, modified Moss discloses the attachment wherein the bin (Moss, Fig 3A-3D, #330) has an attached movable lid or cover (Moss, Fig 3A-3D, #334).
Regarding claim 14, in the second interpretation, modified Moss discloses the attachment wherein the bin (Moss, Fig 3A-3D, #330) has a removable lid or cover (Moss, Fig 3A-3D, #334).
Claims 8-11, 20-21, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Moss 12,011,820 and Liu 5,535,882; and further in view of Balzano 5,056,661.
Regarding claim 8, Modified Moss has been discussed above but does not explicitly teach wherein the adapter bit region includes an adapter magnetized region, the adapter magnetized region adapted to retain one or more adapter bits in the adapter bit region.
Balzano discloses an attachment or tool holder (Fig 8, #46) comprising an adapter bit region (Fig 8, #46 or #47) that includes an adapter magnetized region (Fig 8, #48) or (annotated Fig 8 below), the adapter bit magnetized region (Fig 8, #48) or (annotated Fig 8 below) is adapted to or capable of retaining one or more adapter bits in the adapter bit region (Fig 8, #46 or #47).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to magnetize the adapter bit holding region (Moss, Fig 4A, annotated Fig 4A above) or (Moss, Fig 4A, #430) of modified Moss as taught by Balzano in order to further secure the adapter bits within the recesses (Moss, Fig 4A, #430) of modified Moss (Balzano, col 4, lines 9-12).
Regarding claim 9, in an alternative interpretation, modified Moss has been discussed above but does not explicitly teach wherein the adapter bit region includes a friction rubbing region adapted to retain or capable of retaining one or more adapter bits.
Balzano discloses an attachment or tool holder (Fig 8, #46) comprising adapter bit region (Fig 8, #46) that includes a friction rubbing region (Fig 8, #47) adapted to retain or capable of retaining one or more adapter bits.
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 adapter bit region (Moss, annotated Fig 4A above) or (Moss, Fig 4A, #430) to include a friction rubbing region (Balzano, Fig 8, #47) because the substitution of one known hole interior surface for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 10, in another interpretation, modified Moss has been discussed above but does not explicitly teach wherein the adapter bit region includes detents to hold in place one or more adapter bits.
Balzano discloses an attachment (Fig 1, #12) comprising an adapter bit region (Fig 1, #13) that includes a detents (Figs 1 & 5, #13) to hold in place one or more adapter bits (col 1, lines 10-13).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a plurality of detents (i.e. clips) (Balzano, Figs 1 & 5, #13) to the top surface of the adapter bit region (Moss, annotated Fig 4A above), the side walls (Moss, annotated Fig 4A below), or the front wall (Moss, annotated Fig 4A below) of the attachment (Moss, Fig 4A, #420) of modified Moss in order to attach more adapter bits and/or accessories to the attachment (Moss, Fig 4A, #420) of modified Moss.
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Regarding claim 11, modified Moss has been discussed above but does not explicitly teach wherein the adapter bit region includes a deformable region, the deformable region holding in place one or more adapter bits.
Balzano discloses an attachment (Fig 1, #12) comprising an adapter bit region (Fig 1, #13) includes a deformable region (Figs 1 & 5, #13), the deformable region (Figs 1 & 5, #13) holding in place one or more adapter bits (col 1, lines 10-13).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a plurality of deformable regions (i.e. clips) (Balzano, Figs 1 & 5, #13) to the top surface of the adapter bit region (Moss, annotated Fig 4A above), the side walls (Moss, annotated Fig 4A above), or the front wall (Moss, annotated Fig 4A above) of the attachment (Moss, Fig 4A, #420) of modified Moss in order to attach more adapter bits and/or accessories to the attachment (Moss, Fig 4A, #420) of modified Moss.
Regarding claim 9, in another interpretation, modified Moss discloses the attachment wherein the adapter bit region (Balzano, Figs 1 & 5, #13) includes a friction rubbing region (Balzano, Figs 1 & 5, #13) capable of holding in place adapted to retain one or more adapter bits.
Regarding claim 20, modified Moss discloses the attachment wherein the adapter bit region (Moss, annotated Fig 4A above, adapter bit holding region) or (Moss, Fig 4A, #430) is a magnetized region (Balzano, Fig 8, #48) or (Balzano, annotated Fig 8 above) adapted to retain one or more adapter bits.
Regarding claim 23, in another interpretation, modified Moss has been discussed above but does not explicitly teach the attachment wherein the adapter bit region uses a deformable region to hold in place retain one or more adapter bits.
Balzano discloses an attachment (Fig 1, #12) comprising an adapter bit region (Figs 1 & 5, #13) uses a deformable region (Figs 1 & 5, #13) to hold in place retain one or more adapter bits.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a plurality of deformable regions (i.e. clips) (Balzano, Figs 1 & 5, #13) to the side wall (Moss, annotated Fig 4A below) of the adapter bit region (Moss, annotated Fig 4A below) & (Moss, Fig 4A, #430) of modified Moss to attach more adapter bits and/or accessories to the attachment (Moss, Fig 4A, #420).
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Regarding claim 24, as best understood, modified Moss discloses the attachment wherein the deformable region (Balzano, Figs 1 & 5, #13) (i.e. clips) includes a spring (Balzano, Figs 1 & 5, #13) (i.e. clips).
Regarding claim 21, modified Moss discloses the attachment wherein the adapter bit region (Balzano, Figs 1 & 5, #13) is a friction rubbing region (Balzano, Figs 1 & 5, #13) capable of holding in place adapted to retain one or more adapter bits.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Moss 12,011,820 in view of Balzano 5,056,661; Liu 5,535,882; and Stephenson 9,573,197.
Regarding claim 15, in a first interpretation, Moss discloses an attachment (Fig 4A, #420) mountable to a device that installs or removes screws, bolts, nuts, or other installable components, the attachment (Fig 4A, #420) comprising:
an adapter region (Figs 4A & 4B, #426, #424, & #428) adapted to, when in use, secure the attachment to a threaded bolt hole of the device, the adapter region (Figs 4A & 4B, #426, #424, & #428) further adapted to or capable of limiting rotation of the attachment (Fig 4A, #420) around the threaded bolt hole; an adapter bit region (annotated Fig 4A above) adapted to retain adapter bits separately.
Moss has been discussed above but does not explicitly teach wherein the adapter bit region is an adapter bit magnetized region adapted to retain adapter bits magnetically; and a bin region configured to hold one or more of the installable components separate from the adapter bit magnetized region, the bin region including a bottom and a magnetized side wall.
Balzano discloses an attachment (Fig 1, #12) or tool holder (Fig 8, #46) comprising an adapter bit magnetized region (Fig 8, #48) or (annotated Fig 8 above) adapted to retain adapter bits magnetically (col 4, lines 9-12).
Liu discloses an attachment (Figs 2 & 3, #10, #12, & #20) comprising an adapter bit region (Fig 2, #10 & #15) and a bin region (Figs 2 & 3, #20) configured to hold one or more of the installable components separate from the adapter bit region (Fig 2, #10 & #15), the bin region (Figs 2 & 3, #20) including a bottom (Fig 2, #20) and a side wall (Fig 2, #22).
Stephenson discloses an attachment (Fig 8, #400) comprising a bin (Fig 8, #400) (Fig 8, #418 & #417) (bin is defined as broad as being a receptacle) the bin (Fig 8, #400) having a bottom (annotated Fig 9 above) and a magnetized side wall (Fig 9, #418 & #411).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to magnetize the adapter bit region (Moss, Fig 4A, #430) of Moss as taught by Balzano in order to further secure the adapter bits within the recesses (Moss, Fig 4A, #430) of modified Moss (Balzano, col 4, lines 9-12).
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a bin (Liu, Figs 2 & 3, #20) to the front wall (Moss, Fig 4A, #422) of the attachment (Moss, Fig 4A, #420) of Moss in order to store more items on the attachment (Moss, Fig 4A, #420) of Moss.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a magnetic surface (Stephenson, Fig 9, #411) to the interior of the side wall (Liu, Fig 2, #22) of the bin (Liu, Figs 2 & 3, #20) of modified Moss in order to attach items to the side wall (Liu, Fig 2, #22) of the bin (Liu, Figs 2 & 3, #20) of modified Moss and prevent the items form inadvertently falling out of the bin (Liu, Figs 2 & 3, #20) of modified Moss.
Regarding claim 15, in a second interpretation, Moss discloses a first embodiment of an attachment (Fig 4A, #420) mountable to a device that installs or removes screws, bolts, nuts, or other installable components, the attachment (Fig 4A, #420) comprising: an adapter region (Fig 4A, #426 & #424) adapted to, when in use, secure the attachment (Fig 4A, #420) to a threaded bolt hole of the device, the adapter region (Fig 4A, #426 & #424) further adapted to or capable of limiting rotation of the attachment (Fig 4A, #420) around the threaded bolt hole; and an adapter bit region (Fig 4A, #430) adapted to retain adapter bits separately.
Moss has been discussed above but does not explicitly teach wherein the adapter bit region is an adapter bit magnetized region adapted to retain adapter bits magnetically; and a bin region configured to hold one or more of the installable components separate from the adapter bit magnetized region, the bin region including a bottom and a magnetized side wall.
Balzano discloses an attachment (Fig 1, #12) or tool holder (Fig 8, #46) comprising an adapter bit magnetized region (Fig 8, #48) or (annotated Fig 8 above) adapted to retain adapter bits magnetically (claim 15).
Moss discloses a second embodiment of an attachment (Figs 3A-3D, #320) comprising a bin region (Figs 3A-3D, #330) configured to hold one or more of the installable components separate from an adapter bit magnetized region, the bin region (Figs 3A-3D, #330) including a bottom and a magnetized surface (col 5, lines 8-10).
Liu teaches that it is well known in the art for an attachment (Figs 2 & 3, #10, #12, & #20) to comprises an adapter bit region (Fig 2, #10 & #15) and a bin (Figs 2 & 3, #20) attached to the adapter bit region (Fig 2, #10 & #15); wherein the bin (Fig 2, #20) comprises an attachment magnetized region (Figs 2 & 3, #30), the attachment magnetized region (Figs 2 & 3, #30) including a magnet (Figs 2 & 3, #30) that magnetically retains one or more installable components (screws or nuts, as shown in Fig 4).
Stephenson discloses an attachment (Fig 8, #400) comprising a bin (Fig 8, #400) (Fig 8, #418 & #417) (bin is defined as broad as being a receptacle) the bin (Fig 8, #400) having a bottom (annotated Fig 9 above) and a magnetized side wall (Fig 9, #418 & #411).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to magnetize the adapter bit region (Moss, Fig 4A, #430) of Moss as taught by Balzano in order to further secure the adapter bits within the recesses (Moss, Fig 4A, #430) of modified Moss (Balzano, col 4, lines 9-12).
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a bin (Moss, 3A-3D, #330) having an attached magnetized region (Moss, col 5, lines 8-10) to the front wall (Moss, Fig 4A, #422) of the attachment (Moss, Fig 4A, #420) of the first embodiment of Moss using the teachings and motivation of Lin in order to store more items on the attachment (Moss, Fig 4A, #420) of the first embodiment of Moss.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a magnetic surface (Stephenson, Fig 9, #411) to the interior of a side wall (Moss, Fig 3A, #332) of the bin (Moss, Figs 3A-3D, #330) of modified Moss in order to attach items to the side wall (Moss, Fig 3A, #332) of the bin (Moss, Figs 3A-3D, #330) of modified Moss and prevent the items form inadvertently falling out of the bin (Moss, Figs 3A-3D, #330) of modified Moss.
Response to Arguments
Applicant’s arguments that “Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Moss 12,011,820 in view of Liu 5,535,882 and Stephenson 9,573,197. Moss describes a number of tool bit holding systems, including the tool holding system shown in Figs. 4A-4D. The Office Action states that Moss describes an attachment mechanism and an adapter bit holder region, but that Moss does not disclose "a bin attached to the attachment mechanism." The Office Action states that Liu describes an attachment having an attachment mechanism and a bin attached indirectly to the attachment mechanism, the bin having a bottom and at least one side (Figs 2&3, #22). The Office Action further states that Liu describes an adapter bit holding region adjacent to a bin. As noted above, to determine obviousness, one must 1) understand the scope and content of the prior art and 2) the differences between the prior art and the claims at issue. The Office Action fails to detail the differences between Liu and Stephenson. For instance, the Office Action states that Moss describes an attachment mechanism and an adapter bit holder region, but that Moss does not disclose "a bin attached to the attachment mechanism." The Office Action then states that Liu describes a bin attached "indirectly" to the attachment mechanism and that
the bin is adjacent a bit holding region. There is no analysis of the differences between the claims at issue and the combination of Moss and Liu.
At the same time, the Office Action states that Moss describes an attachment mechanism and an adapter bit holder region, but that Moss does not disclose "a bin attached to the attachment mechanism." The Office Action then states that Stephenson discloses a "bin" attached to the attachment mechanism, where the bin has a bottom and at least one side, including a first side and that the one side includes a magnetized region configured to magnetically hold installable components to the magnetized region. There is no discussion of the differences between the claimed invention and the claims as recited.
In an effort to move prosecution along, Applicant has amended claim 1 to make it clear that Applicant's power tool attachment as recited in claim 1 includes:
a bin attached directly to the attachment mechanism, the bin having a bottom and at least three sides, including a first side, wherein the first side includes a magnetized region, the magnetized region configured to magnetically hold installable components within the magnetized region. Neither Liu nor Stephenson describe "a bin attached directly to the attachment mechanism" or that the bin has a bottom and at least three sides, including a first side, wherein the first side includes a magnetized region, the magnetized region configured to magnetically hold installable components within the magnetized region. Stephenson does not describe a "bin" as that term is used by Applicant and as that term is defined in Webster's Third New International Dictionary (which states that a bin is "a box, frame crib or enclosed space used for storage." Reconsideration of the rejection of claims 1 and 3-7 is respectfully requested” are moot in view of the new ground(s) of rejection.
Applicant’s arguments that “Regarding claim 4, modified Moss has been discussed above but does not explicitly teach wherein the adapter bit holding area further includes an adapter bit magnetized region, the adapter bit magnetized region is configured to strengthen retention of the adapter bits by the friction rubbing region.
An attempt to find that missing teaching in Balzano fails for the reasons given in the discussion of the rejection of claims 8-11 above. Balzano describes a tool bit and a tool holder adapted to hold the tool bit. The tool holder (46) includes a hex shank adapter. In the embodiment shown in Balzano, "FIG. 8 illustrates the bit with grooves [43 and 43'] and shows a tool holder 46 having a receptacle 47 partially occupied with a magnetic material so that the magnetic field releasably holds the bit within the receptacle."
The Office Action states that Balzano teaches or suggests a friction rubbing region, but
Applicant is unable to see any such teaching. Instead, Balzano states that "the magnetic field releasably holds the bit within the receptacle (receptacle 47) or that spring clips can be used to clip to grooves in the tool bit. Balzano does not teach or suggest "an adapter bit magnetized region adapted to retain adapter bits separately and magnetically," as recited in claims 15, 17” are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding claim 4, the examine maintains that the adapter bit region (Liu, Figs 2 & 3, #10 & #15) of modified Sharp is configured to hold adapter bits separately and the interior surfaces of each receptacle or hole (Liu, Figs 2 & 3, #15) is a friction rubbing region. The examiner maintains that Balzano the interior surface of the receptacle (Balzano, Fig 8, #47) is a friction rubbing region (Balzano, Fig 8, #47) and that the friction rubbing region (Balzano, Fig 8, #47) comprises a magnetized region (Balzano, Fig 8, #48). Therefore the examiner maintains that the combination in the rejection of claim 4 teaches all the claim limitations of claim 4 by modifying the adapter bit regions (Liu, Fig 2, #15) to each have a magnetized region (Balzano, Fig 8, #48).
Applicant’s arguments that “Claims 7-10, 12-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Moss 12,011,820 in view of Liu 5,535,882. The Office Action provides an argument based on two different interpretations of Moss. In neither interpretation does Moss or Liu, alone or in combination, teach or suggest:
a bin, the bin configured to receive installable components, the bin
including an attachment magnetized region, the attachment magnetized region
including a magnet that magnetically retains one or more of the installable
components, as recited in claim 7 as amended. Since a limitation of claim 7 is not taught or suggested in the references as combined in the Office Action, claim 7 cannot be obvious in view of the combination of Moss and Liu. Claims 8-14 depend on claim 7 and cannot be obvious in view of the combination of Moss and Liu for the reasons provided in the discussion on claim 7 above” are not persuasive.
As explained in the rejection of claim 7 above modified Moss discloses a bin (Liu, Figs 2 & 3, #20) that includes an attachment magnetized region (Liu, Figs 2 & 3, #30) including a magnet (Liu, Figs 2 & 3, #30) that magnetically retains one or more installable components (Liu, as shown in Fig 4).
Applicant’s arguments that “Regarding claim 19, the Office Action states that Moss and Liu may be combined to describe an attachment that includes the limitations recited in claim 19. Applicant respectfully submits that Moss fails to teach or suggest, for instance, that the attachment includes: an attachment region connected to the bin region and to the adapter bit region, the attachment region adapted to secure the attachment to the power tool via an existing attachment point on the power tool,
wherein the attachment has a weight, and
wherein, when in use, the attachment region makes use of an existing
geometry of the power tool and of the existing attachment point to limit twisting
of the attachment around the existing attachment point of the power tool.
as recited in claim 19. Liu does nothing to address this deficiency. The rejection is, therefore, conclusory, providing no insight into the prior art cited and the differences between the combination of prior art and the claimed invention. This is a form of Official Notice; Applicant respectfully requests evidence supporting these conclusions” are not persuasive” are not persuasive.
The examiner maintains that 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 the instant case, as explained in the rejection of claim 19 above, the examiner maintains that the attachment region (Moss, Fig 4A, #426 & #424) of modified Moss is capable of securing the attachment (Moss, Fig 4A, #420) to a power tool via an existing attachment point on the power tool, wherein the attachment (Moss, Fig 4A, #420) has a weight, and wherein, when in use, the attachment region (Moss, Fig 4A, #426 & #424) is capable of making use of an existing geometry of the power tool and of the existing attachment point to limit twisting of the attachment (Moss, Fig 4A, #426 & #424) around the existing attachment point of the power tool especially when the attachment region (Moss, Fig 4A, #426 & #424) is fastened tightly to the power tool with a screw.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 10am-6pm.
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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.
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/DEVIN K BARNETT/Primary Examiner, Art Unit 3631
