Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 1-20 are pending.
The previous action is withdrawn to further clarify the position of the office. As this clarification may be perceived as a new ground of rejection, this action has been made NON-FINAL.
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.
Claim(s) 1-3, 9, 11-13, and 15is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dalhamer (US 20110290697).
Regarding claim 1, Dalhamer discloses, A tool case (Fig. 1) comprising: a base having a lower surface (See annotated fig. below); and a tool holder insert (30) supported by the base, the tool holder insert including a base portion 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 (See annotated fig. below) portion 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 Dalhamer 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, Dalhamer discloses, the plurality of ridges includes four ridges equally spaced about the main body portion (Fig. 4; 3 ridges (left, right and middle ridges are shown) and there must be one ridge going behind when looking at tool holder 30).
Regarding claim 3, Dalhamer discloses, the top portion is circular, and wherein the top portion blends into the plurality of ridges (Fig. 1, 2).
Regarding claim 9, Dalhamer discloses, wherein 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 (top surface of annotated projection).
The limitation “configured to support an offset anchor of the oscillating multi tool blade.” is considered to be functional language. The prior art of Dalhamer 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 11, Dalhamer discloses, the projection is positioned approximately midway between the base portion and a top of the tool holder insert (See annotated fig. of claim 9).
Regarding claim 12, Dalhamer discloses, A tool case (Fig. 1) comprising: a base 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 (See annotated fig. below) 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 (top surface of projection as annotated).
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The limitation “configured to support an offset anchor of an oscillating multi tool blade” is considered to be functional language. The prior art of Dalhamer 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.
Regarding claim 13, Dalhamer discloses the projection is one of a pair of projections, and wherein the pair of projections together form the resting surface.
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Regarding claim 15 and 16, Dalhamer discloses, wherein the main body portion includes a plurality of ridges (See annotated fig. below) 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 and the projection (See annotated fig. below; fig. 2) is positioned approximately midway between the base portion and a top of the tool holder insert.
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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) 4-6, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dalhamer as applied to claim 1, and 12 respectively, in view of Lamb (US 20190351540).
Regarding claim 4-5, Dalhamer discloses the insert to be removably coupled to the lower surface of the base (para 31) 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 and the lower surface includes a plurality of double bayonet channels, and wherein the tool holder insert has a double bayonet projection that is received in one of the plurality of double bayonet channels.
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) and the lower surface includes a plurality of double bayonet channels (132; fig. 3), and wherein the tool holder insert has a double bayonet projection (130) that is received in one of the plurality of double bayonet channels.
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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 Dalhamer 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 and the lower surface includes a plurality of double bayonet channels, and wherein the tool holder insert has a double bayonet projection that is received in one of the plurality of double bayonet channels as taught by lamb as it is an easy way of attaching insert to base while improving securement of the two structures.
Regarding claim 6, Dalhamer discloses, the plurality of double bayonet channels is arranged in the lower surface of the tool case in rows offset relative one another (See annotated fig. below; since the rows are offset as shown below, once the plurality of double bayonet channels are incorporated they would also be offset ) .
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Regarding claim 17, Dalhamer does not disclose, the base includes a double bayonet channel, the tool holder insert has a double bayonet projection on a side of the base portion opposite the main body portion, and the double bayonet projection is received in the double bayonet channel.
Lamb discloses an attachment mechanism for attaching insert to lower surface wherein base includes a double bayonet channel (132; fig. 3) the tool holder insert has a double bayonet projection (130) on a side of the base portion opposite the main body portion and the double bayonet projection is received in the double bayonet channel (para 25, and 25).
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 Dalhamer to incorporate the base includes a double bayonet channel, the tool holder insert has a double bayonet projection on a side of the base portion opposite the main body portion, and the double bayonet projection is received in the double bayonet channel as taught by Lamb as it is an easy way of attaching insert to base while improving securement of the two structures.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dalhamer as applied to claim 1 in view of Ito (US 7121405 B2).
Regarding claim 7-8, Dalhamer does not disclose, a lid 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 and wherein the top portion engages the lid when the lid is in a closed position.
Ito discloses a case comprising a lid (fig. 43) coupled to the base to selectively enclose a cavity defined by the base, wherein the tool holder insert (202) 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 and wherein the top portion engages the lid when the lid is in a closed position (Fig. 43).
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 a lid 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 and wherein the top portion engages the lid when the lid is in a closed position as taught by Ito for the purpose of keeping the interior dust free while also providing additional stability to the tool holder insert when the cover is closed.
Claim(s) 10, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dalhamer as applied to claim 9 and 12 respectively.
Regarding claim 10, Dalhamer 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, Dalhamer 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 Dalhamer 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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Regarding claim 14, Dalhamer discloses, the projection is a first projection (See annotated fig of claim 10) that extends radially outwardly by a first amount, wherein the main body portion includes a second projection (See annotated fig. of claim 10) extends radially outwardly by a second amount.
However, Dalhamer 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 Dalhamer 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).
Allowable Subject Matter
Claim 18-20 allowed.
Response to Arguments
The previous action is withdrawn to further clarify the position of the office. As this clarification may be perceived as a new ground of rejection, this action has been made NON-FINAL.
Applicants argument with regards to claims 18-20 being within the elected species is considered and found persuasive.
Applicants argument with regards to 35 U.S.C 112 rejection is considered and found persuasive, as such the rejection is withdrawn.
Applicants argument with regards to 35 U.S.C 102 against reference Heath is considered but moot as this reference is no longer utilized in the current office action.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANJIDUL ISLAM/ Examiner, Art Unit 3736
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