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 1-4, 6-8 are pending.
Claim 1 is currently amended.
Claims 6-8 are newly added
Claim 5 is canceled.
Claim Rejections - 35 USC § 103
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 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) 1-3, and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker (US 6820854) in view of Tupper (US 2892540).
Regarding claim 1, Oetiker discloses, A storage system (1), comprising: a first compartment (3) longitudinally extending along a first axis (See annotated fig. below), first compartment comprising: a first opening (Fig.4; see annotated fig. below) providing fluid communication between an interior of the first compartment (interior of 3) and an exterior of the first compartment (exterior of 3); a first end (See annotated fig. below) located opposite first opening along the first axis (Fig.4); wherein one or more walls of the first compartment extend continuously and uninterrupted from the first opening to the first end (Fig. 4) and a first material having a first melting temperature; a second compartment (5) longitudinally extending along a second axis (See annotated fig. below) parallel to first compartment axis , second compartment comprising: a second opening (Fig.1, See annotated fig. below) providing fluid communication between an interior of the second compartment (interior of 5) and an exterior of the second compartment (exterior of 5) ; a second end (See annotated fig. below) opposite second opening on second axis, wherein one or more walls of the second compartment extend continuously and uninterrupted from the second opening to the second end (Fig. 4); and a second material having a second melting temperature (Col 3, Line 59); a connector (See annotated fig. below)) that couples the first compartment to the second compartment and an end cap (Fig.4,element 7) coupled to both first and second ends (Fig.4), the end cap comprising a third material ( Col 3, Line 59) having a third melting temperature that is higher than first and second compartment melting temperatures.
Here, the first and the second material is considered to be the same material (“[…]the plug-in tubes from a plastic substance” Oetiker,Col 3, Line 59) and since the base plate (7) is made out of iron (Third material) the melting temperature is higher than first and second compartment melting temperatures.
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Oetiker does not disclose, the end cap comprising an outer portion that extends around the first end of the first compartment and around the second end of the second compartment.
Tupper discloses, an end cap (16) comprising an outer portion (See annotated fig. below) that extends around all the ends of all compartments (11a-11d).
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 Oetiker to have end cap comprising an outer portion that extends around all the ends of all the compartment as taught by Lepson as this would prevent any gap between the cover/end cap and thus preventing dust from going in the compartment.
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As a result, Oetiker as modified would have an outer portion that extends around first end of the first compartment and around the second end of the second compartment.
Additionally, the preamble recites “cooling bit holder” is considered to be intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP § 2112.02(II).
Regarding claim 2, Oetiker discloses, the first melting temperature is the same as the second melting temperature (since they are the same material they have the same melting temperature) .
Regarding claim 3, Oetiker discloses, first material is the same as second material (“[…]the plug-in tubes from a plastic substance” Oetiker,Col 3, Line 59).
Regarding claim 6, Oetiker discloses, the first compartment extending a first length from the first opening to the first end, and the second compartment extending a second length from the second opening to the second end (Fig. 4) but does not disclose, wherein the first length is greater than the second length. 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 Oetiker to have different length of compartments wherein the first length is greater than the second length 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).
Regarding claim 7, Oetiker discloses, wherein the first compartment comprises a hollow cylinder defining a first radius extending perpendicularly from the first axis to an internal wall of the first compartment (Fig. 4; see annotated fig. of claim 1) , and wherein the second compartment comprises a hollow cylinder defining a second radius extending perpendicularly from the second axis to an internal wall of the second compartment (Fig. 4; see annotated fig. of claim 1) but does not disclose, wherein the first radius is greater than the second radius. 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 Oetiker to have different diameters of compartments wherein the first radius is greater than the second radius 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).
Regarding claim 8, Oetiker discloses, the first compartment and the second compartment are formed from a single integral component (Fig. 4; compartments 3, and 5 are shown to be integral) .
Furthermore, this limitation is a product-by-process claim . The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (Same cite as above).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker-Tupper as applied to claim 1 above, and further in view of Sherman (US 6283316).
Regarding claim 4, Oetiker does not disclose, an insert coupled to the end cap, the insert extending into the first compartment and the second compartment.
Sherman discloses an insert (See annotated fig. below) coupled to the end cap, the insert extending into a compartment.
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 Oetiker to have an insert coupled to the end cap, the insert extending into each compartment as taught by Sherman for the purpose of preventing dust from going in the compartment while also allowing for improved fit between the end cap and the compartment.
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Response to Arguments
Applicants argument regarding the newly added limitation of wall of first and second compartment extending continuously and uninterrupted from the opening to the end is considered, however, current office action rely on fig. 4 of Oetiker wherein the walls are continuous and uninterrupted from the opening to the end.
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 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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/SANJIDUL ISLAM/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
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