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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: reference numeral 512 is not disclosed in the drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The specification identifies element 600 as a nut however, this is a bolt. A nut is a type of fastener with a threaded hole.
Appropriate correction is required.
Claim Objections
Claim 9, and 14 objected to because of the following informalities:
Claim 9, and 14 recites “one or more one or more pin punches.” should read “one or more pin punches”.
Appropriate correction is required.
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 7-8, 12-13 and 19 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “Nut” in claim 7-8, and 12-13 is used by the claim to mean “ bolt (600),” while the accepted meaning is “A nut is a type of fastener with a threaded hole.” The term is indefinite because the specification does not clearly redefine the term. All the dependent claims inherit the same issue. Further correction and or clarification is required. For examination purpose, structure 600 will be interpreted as a bolt.
Claim 19 recites “a third cavity”. However, claim 11 upon which claim 19 depends on, does not disclose a second cavity. Claim 16 discloses a second cavity. For examination purpose, it will be assumed that claim 19 depends on claim 16. Further correction and or clarification is required.
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) 1, 3, 4, 6, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benzinger (US 10822158) in view of Evat (US 20230061938).
Regarding claim 1, Benzinger discloses, A tool storage box (See annotated fig. below) comprising: a base defining a first cavity disposed along an internal surface of the base ( inside of the left base as annotated below ) and; one or more metal tool parts (elongated element 6 positioned in the left base of the annotated figure) removably disposed within the first cavity.
However, Benzinger does not disclose, a second cavity disposed along an external surface of the base and a magnetized plate disposed within the second cavity.
Evat discloses a tool storage case wherein, a second cavity (34) disposed along an external surface of the base (Fig. 3) and a magnetized plate disposed within the second cavity (para 31).
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 Benzinger to incorporate a second cavity disposed along an external surface of the base and a magnetized plate disposed within the second cavity for the purpose of storing various types of tools.
The limitation “configured for releasably retaining the one or more metal tool parts along the external surface of the base when the one or more metal tool parts are placed thereon.” is considered to be functional language. The prior art of Benzinger as modified 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 3, Benzinger discloses container for an elongate object, in particular for a tool such as a drill bit, milling cutter, or a similar tool (Col. 1; line 8-9). While Benzinger does not explicitly discloses one or more metal tool parts comprises one or more pin punches, pin punches are elongated object that are similar to drill bit and such tools are encompassed in Benzinger, as set forth above (Col. 1; line 8-9). As such, 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 Benzinger to have pin punches since such tools are similar tools thus allowing the user to use the container as desired.
Regarding claim 4, Benzinger discloses, a lid (2; See annotated fig. below) removably coupled to the base and covering an open end of the base.
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Regarding claim 6, Benzinger discloses, a storage tube (10) coupled to the lid and defining an internal cavity (right base of the annotated fig. of claim 4); and one or more tool parts (elongated element 6 positioned in the right base of the annotated figure) disposed within the internal cavity of the storage tube.
Regarding claim 9, Benzinger discloses, container for an elongate object, in particular for a tool such as a drill bit, milling cutter, or a similar tool (Col. 1; line 8-9). While Benzinger does not explicitly discloses one or more tool parts comprises one or more pin punches, pin punches are elongated object that are similar to drill bit and such tools are encompassed in Benzinger, as set forth above (Col. 1; line 8-9). As such, 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 Benzinger to have pin punches since such tools are similar tools thus allowing the user to use the container as desired.
Regarding claim 10, Benzinger discloses, the base further defines a third cavity (See annotated fig. below) disposed along the internal surface of the base.
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The limitation “configured for removably receiving the storage tube therein when the lid is coupled to the base.” is considered to be functional language. The prior art of Benzinger as modified 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. Herein, the storage tube 10 of the right base is capable of being used with the third cavity base and thereby meting the scope of the limitation as claimed.
Claim(s) 1, 2, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 8038004) in view of Evatt (US 20230061938).
Regarding claim 1, Hu discloses, A tool storage box (Fig. 2) comprising: a base (40) defining a first cavity (43) disposed along an internal surface of the base and; one or more metal tool parts (83) removably disposed within the first cavity.
However, Hu does not disclose, a second cavity disposed along an external surface of the base and a magnetized plate disposed within the second cavity.
Evat discloses a tool storage case wherein, a second cavity (34) disposed along an external surface of the base (Fig. 3) and a magnetized plate disposed within the second cavity (para 31).
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 Hu to incorporate a second cavity disposed along an external surface of the base and a magnetized plate disposed within the second cavity for the purpose of storing various types of tools.
The limitation “configured for releasably retaining the one or more metal tool parts along the external surface of the base when the one or more metal tool parts are placed thereon.” is considered to be functional language. The prior art of Benzinger as modified 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 2, Hu discloses, the one or more metal tool parts comprises one or more driver bits (83).
Regarding claim 4, Hu discloses, a lid (20) removably coupled to the base (40) and covering an open end of the base (Fig. 1, 2).
Regarding claim 5, Hu discloses, the lid is removably coupled to the base by a plurality of tabs (46) and a plurality of cutouts (254) having an interference fit.
Allowable Subject Matter
Claim 11, 14-18, and 20 allowed.
Claim 7-8, 12-13, and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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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