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 .
Status of the Application
Claims 1-20 are have been examined in this application. This communication is the first action on the merits. As of the date of this application, the Information Disclosure Statement(s) (IDS) filed on 12/04/2024 has/have been taken into account.
Election/Restrictions
Applicant’s election without traverse of Species 15 in the reply filed on 03/19/2026 is acknowledged.
Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 recites “wherein the second channel formed in the second portion”. This should read “wherein the second channel is formed in the second portion” (emphasis added). Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-7 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,194,613. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the pending claims is encompassed by the claims of the patent.
In regards to the independent claims, the main difference is that the pending claims recite a support extending inwardly from an inner sidewall surface that corresponds to a channel, however the patent claims recite a support extending from an inner sidewall and go on to detail additional structure of the support (support walls, bridge) and as such the scope is encompassed. Additionally the difference between the term “ledge” used in the pending claims and “bridge” of the patent is minor and patentably indistinct. The dependent claims of the patent also encompass the recited square and circular shaped openings and independent claims 1 and 17 recite a support spacing that encompasses that which is recited.
Claims 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,194,613 in view of Bergman (US D416,738).
The claims of the patent fail to recite a set of circular support openings having a cap facing away from a sidewall exterior surface. However, Fig. 1 of Bergman shows a smaller set of circular support openings and a larger set having gaps facing away from an exterior wall. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to have openings as taught by Bergman, with a reasonable expectation of success, in order to provide a set of openings that can more easily receive tools.
Claims 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,194,613 in view of Fabregas (US 6,823,998).
The claims of the patent fail to recite openings having the specific claimed dimensions. However, Fabregas teaches openings having openings with the recited dimensions (Fabregas: Col. 3, Ln. 18-33). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to have openings with dimensions as taught by Fabregas, with a reasonable expectation of success, in order to provide a set of openings that are designed to hold a plurality of tools and other items (Fabregas: Col. 1, Ln. 39-43).
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,194,613 in view of Mefferd (US 10,357,875).
The claims of the patent fail to recite an L-shaped channel. However, Mefferd teaches L-shaped channels (Mefferd: Fig. 1; 110) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to have L-shaped channels as taught by Mefferd, with a reasonable expectation of success, in order to provide a specific channel shaped that is adapted to receive and support hooks (Mefferd: Col. 4, Ln. 33-37).
Claims 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16 of U.S. Patent No. 12,194,613 in view of Larson (US 4,094,415).
The claims of the patent fail to recite a support being spaced from a lower edge. However, Larson teaches supports (Larson: Fig. 1; 30) spaced from a lower edge. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to have spaced supports as taught by ***, with a reasonable expectation of success, in order to provide a positioning for the support that can secure a lower end of the hook after it has been put in position, thereby securely holding the hook (Larson: Col. 2, Ln. 59-67; Col. 3, Ln. 1-9).
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-19 of U.S. Patent No. 12,194,613 in view of Clausen et al. (US 4,708,311).
The claims of the patent fail to recite an opening defining a concave surface. However, Clausen teaches an opening defining a concave surface (Clausen: Fig. 10; 96). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to have a concave surface as taught by Clausen, with a reasonable expectation of success, in order to provide a support with a cross sectional configuration that matches that of the hook (Clausen: Col. 9, Ln. 13-19), thereby improving stability.
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 1-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pleiman et al. (US 7,063,218) in view of Black et al. (US 6,481,583).
In regards to Claim 1, Pleiman discloses a tool support device configured to couple to an interior corner of a mounting wall, the tool support device comprising: an upper wall (Pleiman: Fig. 3; 50) defining an upper surface and an opposing lower surface; a plurality of support openings (Pleiman: Fig. 3; 66, 68a-68f, 78) formed in the upper wall, the plurality of support openings configured to support a plurality of tools; a sidewall (Pleiman: Fig. 3; 60) extending from the lower surface, the sidewall comprising a first portion (Pleiman: Annotated Fig. 3; P1) and a second portion (Pleiman: Annotated Fig. 3; P2) generally perpendicular to the first portion, the sidewall defining an outer surface and an opposing inner surface.
Pleiman fails to disclose a first channel formed in the first portion of the sidewall, the first channel configured to receive a hook that detachably couples the sidewall and the upper wall to the mounting wall; a support extending inwardly from the inner surface of the sidewall at a location corresponding to the first channel. However, Black teaches a first channel (Black: Annotated Fig. 3; C1) formed in the first portion of the sidewall, the first channel configured to receive a hook that detachably couples the sidewall and the upper wall to the mounting wall; a support (Black: Annotated Fig. 6, Fig. 10; W1, W2, 26) extending inwardly from the inner surface of the sidewall at a location corresponding to the first channel.
Pleiman and Black are analogous because they are from the same field of endeavor or a similar problem solving area e.g. support holders / racks. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to each of the sidewalls in Pleiman with the channels and supports from Black, with a reasonable expectation of success, in order to a means of mounting the support device to a pegboard or wall, allowing a user to secure the device to a vertical wall while still allowing it to operate as a free- standing unit when desired, thereby increasing the functionality and adaptability of the support device without negatively affecting its use (Black: Col. 1, Ln. 29-40; Pleiman: Col. 1, Ln. 20- 23).
In regards to Claim 2, Pleiman, as modified, teaches the tool support device of claim 1, the support (Black: Annotated Fig. 6, Fig. 10; W1, W2, 26) defining an upper surface that is coplanar with the upper surface of the upper wall (Pleiman: Fig. 3; 50).
In regards to Claim 3, Pleiman, as modified, teaches the tool support device of claim 1, further comprising a second channel (Black: Annotated Fig. 3; C1 / C2 – in second portion) formed in the upper wall (Pleiman: Fig. 3; 50) and the sidewall. [Note: When modified by Black, the second portion of Pleiman will have a channel as taught by Black.]
In regards to Claim 4, Pleiman, as modified, teaches the tool support device of claim 3, wherein the second channel formed in the second portion (Pleiman: Fig. 3; 60 - right) of the sidewall.
In regards to Claim 5, Pleiman, as modified, teaches the tool support device of claim 4, wherein the second channel (Black: Annotated Fig. 3; C1 / C2) is configured to receive a second hook that detachably couples the sidewall and the upper wall to the mounting wall.
In regards to Claim 6, Pleiman, as modified, teaches the tool support device of claim 1, the plurality of support openings (Pleiman: Fig. 3; 66, 68a-68f, 78) comprising a first subset of support openings (Pleiman: Fig. 3; 78) that each define a rectangular-shaped opening.
Pleiman discloses the claimed invention except for a square-shaped opening. However, it would have been an obvious matter of design choice, at the time the invention was filed, to use square-shaped openings with the motivation of providing an alternate number and size of opening shapes that correspond to different tool handles (Pleiman: Col. 5, Ln. 1-13), and as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
In regards to Claim 7, Pleiman, as modified, teaches the tool support device of claim 6, the plurality of support openings comprising a second subset of support openings (Pleiman: Fig. 3; 68c) that defines a circular-shaped opening having a first size.
In regards to Claim 8, Pleiman, as modified, teaches the tool support device of claim 7, but fails to disclose a gap that is defined along at least a portion of an interior edge of the upper wall adjacent to the second support opening such that at least a portion of the second support opening is open in a direction facing away from an exterior surface of the sidewall.
However, Black teaches a gap (Black: Fig. 2; 30) that is defined along at least a portion of an interior edge of the upper wall adjacent to the second support opening such that at least a portion of the second support opening is open in a direction facing away from an exterior surface of a sidewall.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the support device in Pleiman with the openings having a gap as taught by Black, with a reasonable expectation of success, in order to provide an opening that is exposed through a front portion of the support to allow easy insertion and removal of conventional tools (Black: Col. 4, Ln. 1-12).
In regards to Claim 9, Pleiman, as modified, teaches the tool support device of claim 7, the plurality of support openings comprising a third subset of support openings (Pleiman: Fig. 3; 68a) that each define a circular-shaped opening having a second size, wherein the second size is less than the first size
In regards to Claim 12, Pleiman, as modified, teaches the tool support device of claim 1, wherein the first channel (Black: Annotated Fig. 3; C1) is L-shaped. [Note: As the two walls are L-shaped, the space formed in the walls shares this shape.)
In regards to Claim 13, Pleiman discloses a tool support device configured to couple to an interior corner of a mounting wall, the tool support device comprising: an upper wall (Pleiman: Fig. 3; 50) defining an upper surface and an opposing lower surface; a plurality of support openings (Pleiman: Fig. 3; 66, 68a-68f, 78) formed in the upper wall, the plurality of support openings configured to support a plurality of tools; a sidewall (Pleiman: Fig. 3; 60) extending from the lower surface, the sidewall comprising a first portion (Pleiman: Fig. 3; 60 - left) and a second portion (Pleiman: Fig. 3; 60 - right) generally perpendicular to the first portion, the sidewall defining an outer surface and an opposing inner surface.
Pleiman fails to disclose a first channel defined by the first portion of the sidewall, the first channel configured to receive a hook that detachably couples the sidewall and the upper wall to the mounting wall; a first support extending inwardly from the inner surface of the sidewall at a location corresponding to the first channel; a second channel defined by the second portion of the sidewall, the second channel configured to receive a second hook that detachably couples the sidewall and the upper wall to the mounting wall; and a second support extending inwardly from the inner surface of the sidewall at a location corresponding to the second channel. However, Black teaches a first channel (Black: Annotated Fig. 3; C1) defined by the first portion of the sidewall, the first channel configured to receive a hook that detachably couples the sidewall and the upper wall to the mounting wall; a first support (Black: Annotated Fig. 6, Fig. 10; W1, W2, 26) extending inwardly from the inner surface of the sidewall at a location corresponding to the first channel; a second channel (Black: Annotated Fig. 3; C2) defined by the second portion of the sidewall, the second channel configured to receive a second hook that detachably couples the sidewall and the upper wall to the mounting wall; and a second support (Black: Annotated Fig. 6, Fig. 10; W1, W2, 26; see note) extending inwardly from the inner surface of the sidewall at a location corresponding to the second channel. [Note: See the rejection of claim 1 for motivation and/or rationale. Additionally, annotations for the second support are the same as the first as they have the same structure.]
In regards to Claim 14, Pleiman, as modified, teaches the tool support device of claim 13, wherein the first support further comprises a ledge (Black: Annotated Fig. 6, Fig. 10; 26 – upper surface) configured to engage the hook when the hook is positioned within the first channel.
In regards to Claim 15, Pleiman, as modified, teaches the tool support device of claim 14, wherein the ledge (Black: Annotated Fig. 6, Fig. 10; 26 – upper surface) is spaced from the upper wall and a lower edge of the sidewall.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pleiman et al. (US 7,063,218) in view of Black et al. (US 6,481,583) as applied to claim 7 above, and further in view of Fabregas (US 6,823,998).
In regards to Claim 10, Pleiman, as modified, teaches the t tool support device of claim 7, but fails to disclose the circular-shaped opening of the second subset of support openings has a diameter from 38.0 to 48.0 mm.
However, teaches circular-shaped openings of a second subset of support openings (Fabregas: Fig. 3; 61-66) having a diameter from 38.0 to 48.0 mm.
Pleiman and Fabregas are analogous because they are from the same field of endeavor or a similar problem solving area e.g. support holders / racks. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the openings in Pleiman with the sizes from Fabregas, with a reasonable expectation of success, in order to provide openings having a range of dimensions (Fabregas: Col. 3, Ln. 27-33), thereby enabling the support to accommodate a wide variety of tools (Pleiman: Col. 1, Ln. 20-21).
In regards to Claim 11, Pleiman, as modified, teaches the t tool support device of claim 7, but fails to disclose the circular-shaped opening of the second subset of support openings has a diameter of 3 inches.
However, Fabregas teaches circular-shaped openings of a second subset of support openings (Fabregas: Fig. 3; 60) having a diameter of 3 inches. [Note: See the rejection of claim 10 for motivation and/or rationale.]
Annotated Figures
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447
729
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I: Pleiman; Fig. 3
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820
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II: Black; Fig. 3 (Detail)
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404
550
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III: Black; Fig. 6 (Detail)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Taylor Morris whose telephone number is (571)272-6367. The examiner can normally be reached M-F: 10AM-6PM PST / 1PM-9PM EST.
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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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/Taylor Morris/Primary Examiner, Art Unit 3631
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