DETAILED ACTION
Response to Arguments
1. Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
2. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
3. Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 20, the claim fails to further narrow claim 17 from which it depends because the scope of the claim is substantially that of the final paragraph of claim 17.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-4, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,966,084 (Box).
Regarding claim 1, Box teaches an apparatus comprising:
a base (10) defining a cavity (interior of the container);
a lid (38) coupled to the base and pivotable between a first state in which the cavity is enclosed by the lid and a second state in which the cavity is exposed (about hinges 40);
a latch (42) comprising a first portion, a second portion, and a third portion (Examiner notes the terms “first portion”, “second portion”, and “third portion” are not read to comprise any other structure beyond that which is explicitly claimed, and comprise three adjacent portions of beveled lip 76 as seen in annotated Figure 6; Examiner further notes the portions are not otherwise claimed in distinction to each other either or any fixed point of reference, thus permitting the broad interpretation), wherein each of the second and third portions interact with the base when the lid is in the first state to prevent the lid from transitioning to the second state (under the Examiner’s interpretation all portions of beveled lip 76 prevent the lid from transitioning to the open, or second, state from interference by transverse beam 92); and
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a resilient member (94) disposed between the latch and the lid such that moving the first portion of the latch so as to compress the resilient member moves each of the second and third portions of the latch away from the base (e.g. in a direction away from transverse beam 92 in Figure 6),
wherein the latch is mounted to the lid and is linearly movable (movement is guided by the sliding of lips 78 in slots 86) in a direction parallel with a length of the lid (see annotated Figure 1 showing the direction of movement is in the length direction), and movement of the first portion in the direction parallel with the length of the lid causes the second and third portions to translate in the same direction such that the second and third portions disengage from the base (see annotated Figure 1 showing the direction of movement, and compare to Figures 4 and 6 showing the direction of movement along the length of the slots).
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Regarding claim 2, the latch is movable between a first position and a second position, wherein the second and third portions of the latch are further from the base in the second position than the first position (see Figure 6 noting that the first, locked position comprises engagement between lip 76 and transverse beam 92).
Regarding claim 3, the resilient member biases the latch towards the first position (see col. 4, lines 7-15).
Regarding claim 4, the first portion is coupled to each of the second and third portions such that movement of the first portion of the latch moves in a same direction as causes the second and third portions of the latch to move in tandem (see annotated Figure 6 above showing how the sliding latch is interpreted as comprising three portions of an integral whole, and thus move in tandem).
Regarding claim 6, the first portion of the latch is coupled to each of the second portion and the third portion (see annotated Figure 6 above showing how the sliding latch is interpreted as comprising three portions of an integral whole).
Regarding claim 10, the apparatus is a tool box (Examiner notes no structure or function is read into the term “tool box” beyond that which is explicitly claimed; the container of Box is capable of use in the intended manner of holding tools).
Claim Rejections - 35 USC § 103
6. 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.
7. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 3,966,084 (Box) as applied above under 35 U.S.C. 102(a)(1) to claim 1, in view of US Des. 362,180 (Haines).
Regarding claim 8, Box fails to teach the apparatus of claim 1 further comprising;
a handle pivotable relative to the lid between a carrying position and a stowed position.
Haines, analogous to containers, teaches it is known to provide a handle pivoable relative to a lid between a carrying position (e.g. Figure 7, described on the cover as showing “the handle in the raised position”) and a stowed position (e.g. Figure 1).
Examiner notes that the drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP 2125(I). Moreover, “drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents.” Moreover, Examiner asserts it is extremely well-known to provide handles in order to assist a user in carrying the container.
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 container of Box, providing a handle as taught by Haines, motivated by the benefit of providing a user with means to carry the container, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Furthermore, regarding the physical combination, the question is not whether the prior art devices can be physically combined, but whether a person of ordinary skill in the art would have found it obvious to combine different features or elements of known devices in a predictable way. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983): "There is a distinction between trying to physically combine the two separate apparatus disclosed in two prior art references on the one hand, and on the other hand trying to learn enough from the disclosures of the two references to render obvious the claims in suit. ...Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference." See MPEP 2145(III).
8. Claims 11, 13, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 3,966,084 (Box) as applied above under 35 U.S.C. 102(a)(1) to claim 1, in view of US 2012/0168444 (Shitrit).
Regarding claim 11, Box teaches an apparatus comprising:
a base (10) defining a cavity (interior of the container);
a lid (38) coupled to the base and pivotable between a first state and a second state (about hinges 40); and
a latch (42) coupled to the lid and movable between a first position and a second position such that the latch is configured to, with the lid in the first state, lock or unlock the lid relative to the base, wherein the latch is biased towards the first position and movable in a direction parallel with a length of the lid, wherein the latch includes a first portion, a second portion extending from the first portion, and a third portion extending from the first portion (Examiner notes the terms “first portion”, “second portion”, and “third portion” are not read to comprise any other structure beyond that which is explicitly claimed, and comprise three adjacent portions of beveled lip 76 as seen in annotated Figure 6; Examiner further notes the portions are not otherwise claimed in distinction to each other either or any fixed point of reference, thus permitting the broad interpretation), and wherein the second and third portions are configured to be able to contact the base when the latch is in the first position (all portions contact the base under the Examiner’s interpretation of the latch of Box)
Box fails to teach that the lid is in the second state, releasing the lid from the second state results in the lid pivoting to the first state and the latch automatically returning to the first position without user input.
Shitrit, analogous to containers with hinged closures, teaches it is known to configure the ratio of the weight of the lid (14) to the spring constant of the spring (24) which biases the latches (20a, 20b), in order to permit relatching when the lid is allowed to close under the force of gravity (see para. [0041]).
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 ratio of the lid weight to the spring constant of the container of Box as taught by Shitrit, motivated by the benefit of allowing the lid to relatch when the lid is allowed to close simply under the weight of gravity, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 13, the latch is biased towards the first position by a spring (94) disposed between the latch and a portion of the lid (see col. 4, lines 7-15).
Regarding claim 14, Box in view of Shitrit as applied above fails to teach that the second portion of the latch includes a first protrusion extending towards the base, and the third portion of the latch includes a second protrusion extending towards the base.
Instead, Examiner notes the latch, which is interpreted as being divided into first, second, and third portions, contains a single protrusion.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the beveled lip of Box of two separate pieces because such is a mere formation of a formerly integral prior art element in separate elements, having a predictable outcome absent a teaching of an unexpected result. It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. See also MPEP 2144.04(V)(C): In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”).
Regarding claim 16, Box in view of Shitrit fails to teach that the base includes a first protruding edge and a second protruding edge, and wherein, when the latch is in the first position, the first protrusion of the second portion of the latch is able to contact the first protruding edge and the second protrusion of the second portion of the latch is able to contact the second protruding edge.
However, the transverse beam (92) could be equally formed in separate elements, within ordinary skill, to match those of claim 14.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the transverse beam of Box of two separate pieces because such is a mere formation of a formerly integral prior art element in separate elements, having a predictable outcome absent a teaching of an unexpected result. It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. See also MPEP 2144.04(V)(C): In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”).
Regarding claim 17, Box teaches a method comprising:
transitioning a first portion of a latch (42) of a container from a first position (locked position) to a second position (unlocked position) of the latch such that second and third portions of the latch are moved away from a base of the container (see interpretation above in annotated Figure 6 with regard to the rejection of claim 1), wherein the second and third portions extend from the first portion (see annotated Figure 6 above), wherein the latch is coupled to a lid (38) of the container and is biased towards the first position, wherein the lid is coupled to the base of the container;
pivoting, with the latch in the second position, the lid from a first state to a second state, wherein the lid in the first state encloses a cavity of the base and the lid in the second state exposes the cavity (col. 4, lines 15-18; col. 2, lines 58-62).
Box fails to teach releasing the lid in the second state such that the lid to pivots to the first state with and the latch automatically returns to the first position without user input.
Shitrit, analogous to containers with hinged closures, teaches it is known to configure the ratio of the weight of the lid (14) to the spring constant of the spring (24) which biases the latches (20a, 20b), in order to permit relatching when the lid is allowed to close under the force of gravity (see para. [0041]).
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 ratio of the lid weight to the spring constant of the container of Box as taught by Shitrit, motivated by the benefit of allowing the lid to relatch when the lid is allowed to close simply under the weight of gravity, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 18, with the latch in the first position, the second and third portions of the latch are each able to contact the base to prevent the lid from transitioninq to the second state (Examiner notes the annotated Figure 6 above with regard to claim 1 showing how the portions are read; each comprises a portion of the beveled lip 76 which engages the transverse beam 92 in order to prevent the lid from opening).
Regarding claim 20, releasing the lid from the second state causes the lid to pivot to the first state, during which the latch transitions, without user input, from the first position to the second position and back to the first position (Examiner notes that after modification in view of Shitrit above with regard to claim 17, the latch is configured to move back to the first position simply due to the falling weight of the lid relative to the spring constant of the spring; movement from the first position to the second position occurs due to the camming of the latch caused by the interference between the latch beveled lip 76 and the transverse beam 92, which will provide a force on the latch in the second direction, and then result in the latch moving back to the first, locked position after the beveled lip 76 has moved below the transverse beam, engaging the beam in the first, locked position).
9. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 3,966,084 (Box) in view of US 2012/0168444 (Shitrit) as applied above to claim 17, and further in view of US Des. 362,180 (Haines).
Regarding claim 19, Box in view of Shitrit as applied above fails to teach transitioning the first portion of the latch from the first position to the second position includes forcing the first portion towards a handle of the container, wherein the handle is pivotable relative to the lid.
Haines, analogous to containers, teaches it is known to provide a handle pivoable relative to a lid between a carrying position (e.g. Figure 7, described on the cover as showing “the handle in the raised position”) and a stowed position (e.g. Figure 1).
Examiner notes that the drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP 2125(I). Moreover, “drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents.” Moreover, Examiner asserts it is extremely well-known to provide handles in order to assist a user in carrying the container.
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 container of Box, providing a handle as taught by Haines, motivated by the benefit of providing a user with means to carry the container, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Furthermore, regarding the physical combination, the question is not whether the prior art devices can be physically combined, but whether a person of ordinary skill in the art would have found it obvious to combine different features or elements of known devices in a predictable way. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983): "There is a distinction between trying to physically combine the two separate apparatus disclosed in two prior art references on the one hand, and on the other hand trying to learn enough from the disclosures of the two references to render obvious the claims in suit. ...Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference." See MPEP 2145(III).
Allowable Subject Matter
10. Claims 7, 9, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
11. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 7, the second portion of the latch includes a first member extending from the first portion of the latch and a second member extending at an angle from the first member, and wherein the third portion of the latch includes a third member extending from the first portion of the latch and a fourth member extending at an angle from the third member. No such extensions are taught by the prior art, in view of the Examiner’s interpretation of the portions as seen above in the annotated Figure 6 found in the rejection of claim 1.
Regarding claim 9, the lid includes an edge configured to receive the handle in the stowed position. While it was determined to be obvious to generally add a handle to the container, it was not obvious to further provide that handle of the lid of Box, received by a recess in an edge of the lid. Moreover, the latch (42) contains an opening (72) which is taught to be a “finger hold” (col. 3, lines 56-57) and thus already suggests a gripping means to lift the lid away from the container base.
Regarding claim 15, Box in view of Shitrit fails to teach that the second portion includes a first member extending from the first portion of the latch and a second member extending at an angle from the first member, and wherein the second member includes the first protrusion. No such extensions are taught by the prior art, in view of the Examiner’s interpretation of the portions as seen above in the annotated Figure 6 found in the rejection of claim 1.
No motivation could be found to modify the references in order to arrive at the claimed invention.
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 JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES N SMALLEY/Examiner, Art Unit 3733
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