Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements (IDS) submitted on 1/15/25 and 2/4/25 are noted. The submissions are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement. Citation number 3 on the IDS filed 1/15/25 has been corrected to “3516585”.
Claim Objections
3. Claims 16 and 17 are objected to because “positon” at the end of both should be “position”.
Claim Rejections - 35 USC § 102
4. 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.
5. 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.
6. Claims 1-4, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho (US 2004/0217029 A1).
Regarding claim 1, Ho discloses a pliers sheath for holding a pliers, the pliers having a head and at least two handles connected to the head at a joint (pliers not currently claimed in combination due to functional “for holding” language, and as evidenced by claim 19), the pliers sheath comprising: a mounting portion (see belt loop in Figure 2) for mounting the sheath onto a support structure; a pliers holder (2/11) comprising flexible material (see “elastic” and “rubber” in 0023] and “fabric” in 0022]), the pliers holder including a holder body (11) defining a receiving space for receiving the head of the pliers, the pliers holder including a keeper (2) arranged to engage the pliers to retain the pliers in the sheath, the flexible material being configured to permit the keeper to resiliently deflect away from an at rest position in response to the insertion of the head of the pliers into the receiving space, and the flexible material being configured to resiliently return the keeper toward the at rest position (see Figures 5A-5C, [0023], and [0025]).
Regarding claim 2, Ho discloses the pliers sheath of claim 1, wherein the keeper is configured to be located between the handles of the pliers when the pliers is in the pliers holder (see Figure 6).
Regarding claim 3, Ho discloses the pliers sheath of claim 1, wherein the keeper is arranged to be above the joint of the pliers when the pliers is in the pliers holder (see Figure 6).
Regarding claim 4, Ho discloses the pliers sheath of claim 1, wherein the keeper includes a detent (2) that protrudes into the receiving space (see Figure 4).
Regarding claim 18, Ho discloses the pliers sheath of claim 1, wherein said flexible material includes a polymeric material (see “rubber” in [0023] where rubber is an elastomer polymer).
Regarding claim 19, Ho discloses the pliers sheath of claim 1, in combination with the pliers (3).
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1-4, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Diener et al. (US D417,073 S) in view of Ho (US 2004/0217029 A1).
Regarding claim 1, Diener discloses a pliers sheath for holding a pliers, the pliers having a head and at least two handles connected to the head at a joint (pliers not currently claimed in combination due to functional “for holding” language, and as evidenced by claim 19), the pliers sheath comprising: a mounting portion (see belt mount in Figures) for mounting the sheath onto a support structure; a pliers holder including a holder body defining a receiving space (see Figures) for receiving the head of the pliers.
Diener fails to disclose the holder comprising flexible material and also fails to disclose a keeper arranged to engage the pliers to retain the pliers in the sheath, the flexible material being configured to permit the keeper to resiliently deflect away from an at rest position in response to the insertion of the head of the pliers into the receiving space, and the flexible material being configured to resiliently return the keeper toward the at rest position. Diener shows an open holder with no keeper whatsoever to help retain a tool within the holder.
Ho teaches that it was already known in the art for a tool holder like that of Diener to be made of flexible material (see “fabric” in [0005] and [0022]) and include a resilient (see “rubber” in [0023]) keeper (2) that engages over the joint and between the handles of a pair of pliers (3) in order to help retain the pliers within the holder (see Figures and [0025]).
It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided a resilient keeper like that of Ho within the Diener holder, the motivation being to help retain a pair of pliers in the holder in the manner taught by Ho.
Regarding claim 2, Diener as modified above would include the pliers sheath of claim 1, wherein the keeper is configured to be located between the handles of the pliers when the pliers is in the pliers holder, as taught by Ho (see Figure 6 of Ho).
Regarding claim 3, Diener as modified above would include the pliers sheath of claim 1, wherein the keeper is arranged to be above the joint of the pliers when the pliers is in the pliers holder, as taught by Ho (see Figure 6 of Ho).
Regarding claim 4, Diener as modified above would include the pliers sheath of claim 1, wherein the keeper includes a detent that protrudes into the receiving space, as taught by Ho (see Figure 4 of Ho).
Regarding claim 18, Diener as modified above would include the pliers sheath of claim 1, wherein said flexible material includes a polymeric material, as taught by Ho (see “rubber” in [0023] where rubber is an elastomer polymer).
Regarding claim 19, Diener as modified above would include the pliers sheath of claim 1, in combination with the pliers, as taught by Ho (see pliers 3 in Ho).
9. Claims 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Diener et al. (US D417,073 S) in view of Ho (US 2004/0217029 A1) as applied above, further in view of Lin Wu (US 2004/0173486 A1).
Regarding claim 5, Diener as modified above would include the pliers sheath of claim 2, wherein the keeper is a first keeper, but fails to include the pliers holder further comprising a second keeper arranged to engage at least one of the at least two handles to retain the pliers in the sheath, the flexible material being configured to permit the second keeper to deflect away from an at rest position in response to the insertion of the pliers into the receiving space, the flexible material being configured to resiliently return the second keeper toward the at rest position when the pliers is in the pliers holder.
Lin Wu teaches that it was already known in the art for a tool holder like those of Diener and Ho to be made of elastic (see “elastic” in [0013]) and include a second and third keeper (14 on either side of the pliers, see Figures), in addition to a first keeper (20), to help position pliers within the holder (see Figures and the end of [0016]).
It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the modified Diener pliers holder with second and third keepers like those of Lin Wu, the motivation being to help position the pliers within the holder in the manner taught by Lin Wu.
Regarding claim 6, Diener as modified above would include the pliers sheath of claim 5, wherein the second keeper protrudes into the receiving space above the first keeper (maintaining the position of the Ho first keeper, i.e. right at the pliers joint, see Figures of Ho, and maintaining the positions of the second and third keepers of Lin Wu, which are further up the pliers handle above the joint, see Figures of Lin Wu).
Regarding claim 7, Diener as modified above would include the pliers sheath of claim 6, wherein the receiving space is configured to receive the pliers in a receiving direction, and the second keeper protrudes into the receiving space transversely with respect to the receiving direction, as taught by Lin Wu.
Regarding claim 8, Diener as modified above would include the pliers sheath of claim 7, wherein the first and second keepers are configured to conjointly retain the pliers in the pliers holder (this would inherently be the case).
Regarding claim 9, Diener as modified above would include the pliers sheath of claim 5, wherein the pliers holder further comprises a third keeper, as taught by Lin Wu, arranged to engage the other of the at least two handles to retain the pliers in the sheath, the flexible material being configured to permit the third keeper to deflect away from an at rest position in response to the insertion of the head of the pliers into the receiving space, the flexible material being configured to resiliently return the third keeper toward the at rest position, as taught by Lin Wu.
Regarding claim 10, Diener as modified above would include the pliers sheath of claim 9, wherein the third keeper protrudes into the receiving space toward the second keeper, as taught by Lin Wu.
Regarding claim 11, Diener as modified above would include the pliers sheath of claim 10, wherein the receiving space is configured to receive the pliers in a receiving direction, and the third keeper protrudes into the receiving space transversely with respect to the receiving direction, as taught by Lin Wu.
Regarding claim 12, Diener as modified above would include the pliers sheath of claim 11, wherein the first, second, and third keepers are configured to conjointly retain the pliers is in the pliers holder (this would inherently be the case).
Regarding claim 13, Diener as modified above would include the pliers sheath of claim 5, wherein the second keeper includes a thumb having a camming surface configured to engage one of the at least two handles, as taught by Lin Wu (see shape of 14 in Figures of Lin Wu).
Regarding claim 14, Diener as modified above would include the pliers sheath of claim 13, further comprising a third keeper including a thumb having a camming surface facing the camming surface of the second keeper, the thumb of third keeper being configured to engage the other of the at least two handles, as taught by Lin Wu (see shape of 14 in Figures of Lin Wu).
Regarding claim 15, Diener as modified above would include the pliers sheath of claim 14, wherein the first, second, and third keepers are configured to conjointly retain the pliers in the pliers holder (this would inherently be the case).
Regarding claim 16, Diener as modified above would include the pliers sheath of claim 5, wherein the second keeper includes a ramp having a tapered surface facing away from the pliers receiving space, the ramp being configured to engage the at least one of the at least two handles to permit the second keeper to deflect away from the at rest position, as taught by Lin Wu (see shape of 14 in Figures of Lin Wu).
Regarding claim 17, Diener as modified above would include the pliers sheath of claim 16, wherein the third keeper includes a ramp having a tapered surface facing away from the pliers receiving space, the ramp is configured to engage the segment of the other of the at least two handles to permit the third keeper to deflect away from the at rest position, as taught by Lin Wu (see shape of 14 in Figures of Lin Wu).
Double Patenting
10. 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).
11. 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).
12. 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.
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.
14. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,226,006. Although the claims at issue are not identical, they are not patentably distinct from each other because every single limitation of the currently pending claims is also recited in the patented claims.
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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, Nathan Newhouse can be reached on (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 4/28/26
Prosecution Insights