UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/145,124
`
`09/27/2018
`
`Juan CUBILLO
`
`3509-1-001NCON
`
`1071
`
`759°
`”565
`Klauber & Jackson LLC
`
`10/24/2018
`
`25 East Spring Valley Avenue
`Suite 160
`
`MW MOMM
`
`ORTIZ' RAFAEL ALFREDO
`
`3736
`
`MAE DATE
`
`10/24/20 1 8
`
`MW
`
`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`16/145,124
`Examiner
`RAFAEL A ORTIZ
`
`Applicant(s)
`CUBILLO, Juan
`Art Unit
`AIA Status
`3736
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—14is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[j Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.usptogovlpatentslinit_events[pph[index.'§p or send an inquiry to PPeredhagk@usptg.ggv.
`
`Application Papers
`
`10). The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on See Continuation Sheet is/are: a)D accepted or b). objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:J Some”
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`c)C] None of the:
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`1.[:]
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1)
`
`Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20181022
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 16/145,124
`
`Continuation of Application Papers 11): 09/27/2018
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`

`

`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Drawings
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`2.
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`New corrected drawings in compliance with 37 CFR 1.121 (d) are required in this
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`application because the drawings appears to be photographs from the invention.
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`Applicant is advised to employ the services of a competent patent draftsperson outside
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`the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings.
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`The corrected drawings are required in reply to the Office action to avoid abandonment
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`of the application. The requirement for corrected drawings will not be held in abeyance.
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`3.
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`Color photographs and color drawings are not accepted in utility applications
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`unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be
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`accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color
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`drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets
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`of color drawings or color photographs, as appropriate, if not submitted via EFS-Web,
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`and, unless already present, an amendment to include the following language as the
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`first paragraph of the brief description of the drawings section of the specification:
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`The patent or application file contains at least one drawing executed in color.
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`Copies of this patent or patent application publication with color drawing(s) will be
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`provided by the Office upon request and payment of the necessary fee.
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`Color photographs will be accepted if the conditions for accepting color drawings
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`and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 3
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`Specification
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`4.
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`The abstract of the disclosure is objected to because it has more than 150 words
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`in length. Correction is required. See MPEP § 608.01 (b).
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`5.
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`Applicant is reminded of the proper language and format for an abstract of the
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`disclosure.
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`The abstract should be in narrative form and generally limited to a single
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`paragraph on a separate sheet within the range of 50 to 150 words in length. The
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`abstract should describe the disclosure sufficiently to assist readers in deciding whether
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`there is a need for consulting the full patent text for details.
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`The language should be clear and concise and should not repeat information
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`given in the title.
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`It should avoid using phrases which can be implied, such as, “The
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`disclosure concerns,” “The disclosure defined by this invention,” “The disclosure
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`describes,” etc.
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`In addition, the form and legal phraseology often used in patent claims,
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`such as “means” and “said,” should be avoided.
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`Claim Objections
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`6.
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`Claims 4-6, 9 and 10 are objected to because of the following
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`informalities: Regarding claims 4-6, recitations “the top of the first receiving space or
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`compartment”, “the top of the second receiving space or compartment”, or “the top of
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`both the first and the second receiving spaces or compartments” lack antecedent
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`basis. Regarding claim 9, “the handle of a paint brush or a paint roller” lacks
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`antecedent basis. Regarding claim 10, “the wall of the first or the second receiving
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`space or compartment” lacks antecedent basis. Appropriate correction is required.
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 4
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`Claim Interpretation
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`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
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`7.
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`The claims in this application are given their broadest reasonable interpretation
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`using the plain meaning of the claim language in light of the specification as it would be
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`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
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`a claim element (also commonly referred to as a claim limitation) is limited by the
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`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is invoked.
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`As explained in MPEP § 2181, subsection I, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph:
`
`(A)
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`the claim limitation uses the term “means” or “step” or a term used as a
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`substitute for “means” that is a generic placeholder (also called a nonce term or a
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`non-structural term having no specific structural meaning) for performing the
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`claimed function;
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 5
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`“means for”) or another linking word or phrase, such as “configured to” or “so
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`that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by
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`sufficient structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites function without reciting
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`sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action. Conversely, claim limitations in this
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
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`indicated in an Office action.
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
`
`Page 6
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`H
`II
`Claim limitations “means for carrying , means for receiving or holding” have
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`8.
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`been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`because it uses/they use a generic placeholder “means” coupled with functional
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`language “for carrying or transporting” or “for receiving or holding” without reciting
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`sufficient structure to achieve the function. Furthermore, the generic placeholder is not
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`preceded by a structural modifier.
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`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, claim(s) 1, 4-10 and 13 have been interpreted to cover the
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`corresponding structure described in the specification that achieves the claimed
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`function, and equivalents thereof.
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph limitation: Applicant’s specification, paragraph
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`[0011], discloses handle or means for carrying wherein the claim is interpreted as the
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`means for carrying or transporting being a handle. Paragraph [0012] disclsoes the
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`receiving or holding means is a rod, bar or support.
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`If applicant wishes to provide further explanation or dispute the examiner’s
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`interpretation of the corresponding structure, applicant must identify the corresponding
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
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`If applicant does not intend to have the claim limitation(s) treated under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
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`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 7
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`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
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`structure, material, or acts for performing the claimed function to preclude application of
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`For more information, see MPEP § 2173 et seq. and Supplementary Examination
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`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
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`Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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`Claim Rejections - 35 USC § 1 12
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`9.
`
`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.
`
`10.
`
`Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention. Regarding claim 1, “handle or means for carrying or
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`transporting” is indefinite because it is unclear if the claims provides alternative of two
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`different structures of a handle or means for carrying or transporting, or if the handle or
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`the means for carrying or transporting is the same structure.
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`In addition, it is unclear
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`what structure is the means for carrying or transporting. Applicant’s specification, i.e.
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`paragraph [0019], discloses means for carrying or transporting but does not discloses
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`what structure comprises. The examiner raises the question if is the same as the
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`structure of the handle or if it has a different structure. Also, “tool useful for a painter” is
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 8
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`indefinite because it is unclear the meet and bounds of “tool useful for a painter” and/or
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`what tool is or could be useful for a painter.
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`Claim Rejections - 35 USC § 103
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`11.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`12.
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`Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee
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`(US 7,921,994) in view of Anderson (US 2007/0045132).
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`Claims 1 and 7
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`Lee discloses a tool box (14) comprising a first receiving space or compartment (22), a
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`second receiving space or compartment (24) (see column 2 lines 20-28) and a handle
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`(36) or means for carrying or transporting the tool box (see figure 1). Lee further
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`discloses the dry compartment (22) used for storing tools, such as a brushes (60), while
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`compartment (24) is used for placing a liquid component (see column 3 lines 14-
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`20). Lee does not disclose means for receiving or holding in a substantially vertical
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`position a paint brush or paint roller or tool useful for a painter. However, Anderson
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`discloses a container (11) for storing brushes comprising a rods (13 and 15) for
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`receiving and holding paint brushes in vertical position maintaining the brushes at same
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`level to reduce the amount of solvent needed keeping the bristles of the brushes
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`suspended in solvent (see [0012] and figure 1).
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`It would have been obvious to one of
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`ordinary skill in the art before the effective filing date of the claimed invention to have
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
`
`Page 9
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`modified the tool box of Lee including a rods as taught by Anderson for reducing the
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`amount of liquid needed in the compartment while keeping the brushes in the liquid.
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`Claim 2
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`Lee further discloses the tool box is substantially rectangular in shape (see figure 1).
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`Claim 3
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`Lee further discloses a top surface of the first receiving space or compartment is
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`covered by a lid (12) that may be movable or may be removable with respect to the
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`remainder of the tool box (see figure 1 and column 3 lines 9-12).
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`Claim 4
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`Lee further discloses the handle or means for carrying or transporting the tool box
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`extends across the top of the first receiving space or compartment (see figure 1). When
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`the handle is pivoted over or above compartments of the tool box, the handle would be
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`extending across the top of the first receiving space.
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`Claims 5 and 6
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`Anderson discloses the rods are disposed horizontal along the tool box (see figure
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`1). After Lee is modified by Anderson, the rod/means for receiving or holding in
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`a substantially vertical position a paint brush or paint roller or tool useful for a painter
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`extends across the top of the second receiving space or compartment and is disposed
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`in a generally horizontal position with respect to said tool box.
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`Claim 8
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`Anderson further discloses the rods/means for receiving or holding in a substantially
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`vertical position, a paint brush or paint roller or tool useful for a painter, being removable
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`(see [0017]). After Lee is modified by Anderson, the rod/ means for receiving or holding
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
`
`Page 10
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`in a substantially vertical position, a paint brush or paint roller or tool useful for a painter
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`would be removable.
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`Claim 9
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`Anderson further discloses the rod/means for receiving or holding in a substantially
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`vertical position a paint brush or paint roller or tool useful for a painter, is suitable for
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`positioning through a hole or aperture in the handle of a paint brush (see figure 1, [0007]
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`and [0016]).
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`Claim 10
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`Anderson further discloses the rods/means for receiving or holding in a substantially
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`vertical position, a paint brush or paint roller or tool useful for a painter, is positioned
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`through a hole or aperture in the wall the container (see figure 1 and [0007]). After Lee
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`is modified by Anderson, the rods would be positioned through a hole or aperture in the
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`second receiving space or compartment.
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`Claims 11 and 12
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`Anderson further discloses grommets or washer/stopping means (17 and 19) provided
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`on one side of the means for receiving or holding a paint brush or paint roller or tool
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`useful for a painter in a substantially vertical position (see figure 1 and
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`[0012]). Anderson further discloses the grommets effectively seal/fix the rods to the wall
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`(see [0007]). The grommets disclosed by Anderson are from rubber or elastomeric
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`material (see [0017]), therefore create a resistance force for removing the rods acting as
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`stopping structure.
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`Claim 13
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
`
`Page 11
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`Anderson further discloses a hole or aperture (defined by aperture where rods 17 and
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`19 pass through the walls of the container) in a wall of the container suitable for passing
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`the means for receiving or holding a paint brush or paint roller or tool useful for a painter
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`in a substantially vertical position therethrough (see figure 1 and [0007]). After Lee is
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`modified by Anderson, the walls of the second receiving space or compartment would
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`have a hole or aperture suitable for passing the means for receiving or holding a paint
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`brush or paint roller or tool useful for a painter in a substantially vertical position
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`therethrough.
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`Claim 14
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`Anderson further discloses a grommet/guard means (17 and 19) proximate or around
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`the hole or aperture in a wall of the container. After Lee is modified by Anderson, the
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`walls of the second receiving space or compartment would include grommets/guard
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`means proximate to the apertures or holes in the walls.
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`Conclusion
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`13.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to RAFAEL A. ORTIZ whose telephone number is
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`(571)270-5240. The examiner can normally be reached on Monday - Friday 9am - 6pm.
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`Examiner interviews are available via telephone, in-person, and video
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`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.
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`

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`Application/Control Number: 16/145,124
`Art Unit: 3736
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`Page 12
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Gregory Pickett can be reached on 571-272—4560. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`RAFAEL A. ORTIZ
`
`Primary Examiner
`Art Unit 3736
`
`/RAFAEL A ORTIZ/
`
`Examiner, Art Unit 3736
`
`