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 .
Election/Restrictions
Applicant’s election without traverse of species I Fig. (1-8) in the reply filed on 01/16/202 is acknowledged.
Claim 18-20 disclosing slots directed to Fig. 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11, and 16 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.
The term “approximately” in claim 11, and 16 is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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)(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, 5-9, 12, 13, 15, and 17is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Heath (WO 2020055726).
Regarding claim 1, Heath discloses, A tool case (Fig. 16) comprising: a base (See annotated fig. below) having a lower surface (See annotated fig. below); and a tool holder insert (See annotated fig. below; 698 ) supported by the base, the tool holder insert including a base portion (See annotated fig. below) adjacent the lower surface of the base , a top portion (See annotated fig. below) opposite the base portion and spaced apart from the lower surface, and a main body portion (See annotated fig. below) extending between the base portion and the top portion, the main body portion including a plurality of ridges (See annotated fig. below) extending along the main body portion between the base portion and the top portion.
The limitation “the plurality of ridges configured to be received by an oscillating multi tool blade” is considered to be functional language. The prior art of Heath has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See MPEP 2173.05(g). See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art.
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Regarding claim 2, Heath discloses , the plurality of ridges includes four ridges equally spaced about the main body portion (Fig. 19; See annotated fig of claim 1).
Regarding claim 3, Heath discloses, the top portion is circular, and wherein the top portion blends into the plurality of ridges.
Regarding claim 5, Heath discloses, the lower surface includes a plurality of double bayonet channels (740) , and wherein the tool holder insert has a double bayonet projection (744) that is received in one of the plurality of double bayonet channels.
Regarding claim 6, Heath discloses, the plurality of double bayonet channels is arranged in the lower surface of the tool case in rows offset relative one another (See row 1 and 2 are offset at the left side as annotated below) .
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Regarding claim 7, Heath discloses a lid (618) coupled to the base to selectively enclose a cavity defined by the base, wherein the tool holder insert is positioned within the cavity, and wherein an overall length of the main body portion is generally the same as a distance between the lower surface of the base and an inner surface of the lid.
Regarding claim 8, Heath discloses, the top portion engages the lid when the lid is in a closed position (para 49; “The second end 706 of the peg 698 is received within the recess 650 of the lid 618 that is aligned with the recess 638 of the base 614.”).
Regarding claim 9, Heath discloses the main body portion further includes a projection (See annotated fig. below) extending radially outwardly and between two ridges of the plurality of ridges, and wherein the projection forms a resting surface
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The limitation “configured to support an offset anchor of the oscillating multi tool blade.” is considered to be functional language. The prior art of Heath has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation i.e., “support an offset anchor of the oscillating multi tool blade”. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See MPEP 2173.05(g). See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art.
Regarding claim 12, Heath discloses, A tool case (Fig. 16) comprising :a base (See annotated fig. below) having a lower surface (See annotated fig. below) ; and a tool holder insert (See annotated fig. below) supported by the base, the tool holder insert including a base portion adjacent the lower surface of the base, and a main body portion (See annotated fig. below) extending from the base portion in a direction away from the lower surface, the main body portion including a projection (See annotated fig. below) forming a resting surface.
The limitation “resting surface that is configured to support an offset anchor of an oscillating multi tool blade.” is considered to be functional language. The prior art of Heath has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation i.e., “support an offset anchor of the oscillating multi tool blade”. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See MPEP 2173.05(g). See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art.
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Regarding claim 13, Heath discloses the projection is one of a pair of projections (the projection on the right side of annotated fig. of claim 12) , and wherein the pair of projections together form the resting surface.
Regarding claim 15, Heath discloses the main body portion includes a plurality of ridges (See annotated fig of claim 12) that extend along the main body portion between the base portion and a top of the tool holder insert, and wherein the projection is positioned between two ridges of the plurality of ridges.
Regarding claim 17, Heath discloses, the lower surface includes a plurality of double bayonet channels (740) , and wherein the tool holder insert has a double bayonet projection (744) that is received in one of the plurality of double bayonet channels.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heath as applied to claim 1 in view of Lamb (US 20190351540).
Regarding claim 4, Heath discloses the insert to be removably coupled to the lower surface of the base (para 3) but does not appear to disclose, the tool holder insert is selectively rotatable relative to the lower surface of the base to selectively couple the tool holder insert to the base.
Lamb discloses an attachment mechanism for attaching insert to lower surface wherein the insert is selectively rotatable relative to the lower surface of the base to selectively couple the tool holder insert to the base (para 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Heath to have an attachment mechanism for attaching insert to lower surface wherein the insert is selectively rotatable relative to the lower surface of the base to selectively couple the tool holder insert to the base as taught by lamb as it is an easy way of attaching insert to base while improving securement of the two structures.
Claim(s) 10, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heath as applied to claim 1 and 12 respectively.
Regarding claim 10 and 14, Heath discloses, the projection is a first projection (See annotated fig. below) that extends radially outwardly by a first amount, wherein the main body portion further includes a second projection (See annotated fig. below) between two ridges of the plurality of ridges that extends radially outwardly by a second amount
However, Heath does not disclose, the second amount is less than the first amount.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Heath to have second amount is less than the first amount, motivated by an obvious change in size, having a predictable outcome absent a teaching of an unexpected result. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04(IV)(A).
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Claim(s) 11, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heath as applied to claim 1, and 12 respectively in view of Dalhamer (US 20110290697).
Regarding claim 11 and 16, Heath does not disclose, the projection is positioned approximately midway between the base portion and a top of the tool holder insert.
Dalhamer discloses the projection is positioned approximately midway between the base portion and a top of the tool holder insert (See annotated fig. below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Heath to have projection to be positioned approximately midway between the base portion and a top of the tool holder insert as taught by Dalhamer for the purpose of accommodating tools at any desired point of the tool insert including the midpoint.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANJIDUL ISLAM whose telephone number is (571)272-7670. The examiner can normally be reached Monday-Friday 8:30 -5:00.
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, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANJIDUL ISLAM/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736