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 .
Response to Arguments
Applicant's arguments filed January 31, 2026 have been fully considered.
Regarding the objections to claims 18 and 19 (note that the Office Action erroneously referred to claims 19 and 20) set forth in the previous Office Action, applicant has argued that the amendments overcome these objections. Regarding the objection to claim 22, applicant has argued that the amendments to claim 22 overcome the objection. Examiner agrees, and has withdrawn all claim objections.
Regarding the previous rejection under 35 U.S.C. 112(b) of claim 1, applicant has amended the claim language and pointed out where in the drawings and specification that the amended claim language is supported. Applicant’s argument is persuasive, and the 112 rejection has been withdrawn.
Regarding the rejection of claim 22 under 35 U.S.C. 112(b), applicant has argued that the amendment to claim 22 has overcome the rejection. Examiner agrees, and has withdrawn the rejection.
Discussion regarding the Prior Art rejections:
Applicant has argued that Wanner fails to teach the limitations of amended claim 1, because “it is not possible to ascertain the relative sizes of any opening into the alleged conveying channel [of Wanner] and the conveying channel itself. In contrast, the Applicant’s drawings show perspective views (see, e.g., FIGs. 2a, 2b, and 14a), cross-sectional views along the length of the device (FIG. 14b), and cross-sectional views of the main body within the sleeve element 34 (FIG. 2c)…None of this detail is available in Wanner.” Examiner respectfully disagrees. Wanner provides sufficient detail for one of ordinary skill in the art to ascertain that the cross-sectional area of the opening is smaller than that of the conveying channel. Fig. 6 (see annotated version below) indicates that Wanner’s duct 60 has about the same diameter as the thickness of the annulus between the drill shaft and the sleeve. Thus, since the annulus extends completely around the shaft 52, the annulus necessarily has a larger cross-sectional area than the duct 60, by simple geometry. Therefore, the rejection is maintained.
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With regard to claim 2, applicant has argued that “the duct 60, however, is alleged to be the opening of claim 1 and it cannot be the conveying channel as well.” Examiner respectfully asserts that this is not what the rejection of claim 2 was intended to convey. The ducts 68 through each of the connecting members 56 correspond to the claimed “conveying channel,” rather than the duct 60 within the drill head 53. Examiner apologizes for the lack of clarity in the rejection. The rejection has been further clarified below.
With regard to the rejection of claims 21 and 22, applicant has argued that “the Examiner failed to identify any teaching of the use of a pin as a securing element as required by claim 24.” Examiner acknowledges the deficiency in the previous rejection, and has rectified the issue by providing a teaching reference for this limitation in the modified rejection presented below. Therefore, this Office Action has not been made Final.
Drawings
The drawings were received on January 21, 2026. These drawings are acceptable.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 5, 7, 8, 14, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wanner et al. (US 4,113,037, hereinafter Wanner).
With regard to claim 1, Wanner teaches (see especially Fig. 6) a drilling tool comprising:
a housing portion (see annotated Fig. provided below);
a drilling head (53) positioned forwardly of the housing portion;
an insertion end positioned rearwardly of the housing portion (see Fig. below) and operably connected to the drilling head through a main body (52, 56), the insertion end configured to couple the drilling tool with a power tool (“the shank 51 is connectable to a portable power unit by means, for example, a splined connection for transmitting torque”);
a sleeve element (81) defining a longitudinal axis and having a rearward first end portion coupled to the housing portion (see Fig. below), and a forward second end portion spaced apart from the first end portion (see Fig. below);
at least one conveying channel that extends along the main body and is defined by the main body and the sleeve element (i.e. the annulus between 52 and 81), the at least one conveying channel having a first cross-sectional area in a first plane orthogonal to the longitudinal axis (i.e. an annular cross-section); and
at least one opening (60, labeled in other Figures, see also annotated Fig. below) into the at least one conveying channel defined at least in part by the drilling head (the opening is within the drilling head), the at least one opening smaller than the first cross-sectional area (the opening is a small channel in the drill head and the conveying channel constitutes the entire annular cross-section inside the sleeve element, thus the opening has a smaller cross-section that the conveying channel).
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With regard to claim 2, Wanner discloses that the at least one conveying channel is defined by at least one groove (68—“This duct 68 is formed as a longitudinal groove extending substantially parallel to the axis of the connecting member 56.”) in the main body (note that “connecting members 56” are part of the main body) and/or in the sleeve element.
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With regard to claim 3, Wanner teaches that the sleeve element is connected in a rotationally fixed manner to the housing portion (given that the sleeve member 81 and the housing portion 80 are essentially a one-piece element); and
the housing portion is in the form of a suction extraction adapter (11), which is configured to connect the drilling tool to a suction extraction device.
With regard to claim 5, Wanner teaches that the sleeve element (81) is connected to the suction extraction adapter (11) in a materially bonded manner (given that they are one-piece).
With regard to claim 7, Wanner teaches a securing element realized as a securing ring (i.e. a “snap lock” 82, 83) arranged rearwardly on a side of the sleeve element; and
the securing element is configured to restrict relative movement of the main body with respect to the sleeve element in two axial directions along the longitudinal axis (by virtue of a ring 83 engaging the groove on the outer surface of the shank 51).
With regard to claim 8, a securing element (i.e. “snap lock” 82, 83) is connected to the main body in a force-fitting and/or form-fitting manner (the ring 83 is form-fit around the shank 51); and
the securing element is configured to restrict relative movement of the main body with respect to the sleeve element in two axial directions along the longitudinal axis (by virtue of the ring 83 engaging a groove in the outer surface of the shank 51).
With regard to claim 14, Wanner discloses a rock bit (see title, “Rock Drill”).
With regard to claim 20, Wanner teaches that the drilling tool is configured to couple with the power tool solely through the insertion end (no other drilling tool connection is disclosed other than element 51 of the insertion end).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wanner.
With regard to claim 4, Wanner fails to teach that the sleeve element is connected in a form-fitting and/or force-fitting manner to the suction extraction adapter. Instead, Wanner teaches the two elements being integrated in a one-piece manner.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by making the integral sleeve and suction extraction adapter into a two-piece, form-fitting arrangement, in order to enable modular replacement of one element without having to replace the entire assembly (see also MPEP 2144.04 V. C.).
With regard to claim 9, Wanner teaches that the housing portion is in the form of a suction extraction adapter (11), and that a securing element (82, 83) restricts movement of the main body with respect to the sleeve in two axial directions (by virtue of the interaction between the ring 83 and a groove in the main body 51).
However, Wanner fails to teach that the securing element (82, 83) is realized so as to form a single part with the suction extraction adapter. Instead, Wanner teaches that a separate ring element (83) is provided.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by making the ring 83 integral with the suction extraction adapter 11, in order to make a stronger connection between the two, and improve the sealing effect of the ring 83 around the main body, thus preventing leakage of drill cuttings out of the sleeve (see also MPEP 2144.04 V. B.).
With regard to claim 10, Wanner teaches that the suction extraction adapter is deformable for making and/or undoing a connection to the main body (“for easy dismounting of the shell 7 from the shaft and replacing it by a new one in case of a breakage or wear of the shell, the latter is constituted of plastic material, such as polyamide…”).
Claim(s) 11-13 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wanner in view of Gauggel (DE 102014106968 A1).
With regard to claim 11, Wanner fails to teach two conveying channels that have a respective cross-sectional area in the first plane, and a gap between the sleeve and the main body that allows cuttings to be exchanged between the two conveying channels.
Gauggel teaches a drilling tool having a main body (22) and a sleeve (36). The main body (22) has multiple conveying channels (30). Gauggel also teaches a gap between the main body and the sleeve that can exchange cuttings between the channels (“an annular gap…can be used for additional extraction around the tool. Thus, a throughput of transport fluid through the at least one suction channel can be increased…The gap may advantageously belong to or be connected to the at least one suction channel.”). Gauggel teaches that the gap is “slight” and thus is smaller in cross-section than the large channels (30) seen in the Figures.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner to have the channels and annular gap of Gauggel, because “the rotation of the drill shank 20 in combination with the helical course of the flutes 30 supports the transport of the removed material within the flutes 30,” and because “the annular gap and the flutes 30 form a coherent suction channel 58,” (see English translation of Gauggel provided in the File Wrapper).
With regard to claims 12, 16, and 17, Wanner, as modified by Gauggel, is silent regarding the actual size of the gap being 0.05, 0.1, or 0.25 mm.
However, Gauggel does state that the gap (which has been imported into Wanner), is a “slight gap…through which also chips can be sucked.” Thus, Gauggel teaches that the size of the gap is a result effective variable, where the gap must remain “slight” but also must retain the ability to convey chips.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner in view of Gauggel such that the gap between the main body and sleeve were sized in the range of 0.05 to 0.1 mm, since choosing the optimum range of a result effective variable would be a matter of routine optimization (see also MPEP 2144.05 II.).
With regard to claims 13, 18, and 19, Wanner, as modified by Gauggel, teaches that the gap extends at least along 50% of the length of the sleeve element, due to the fact that Gauggel teaches the gap being along the entire length of the sleeve.
Claim(s) 21 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wanner in view of Moyse (US 3,442,161).
With regard to claim 21, Wanner teaches a drilling tool (see Fig. 6) comprising:
a drilling head (53);
an insertion end (proximate numeral 51) configured to couple with a power tool;
a main body (52);
a suction extraction adapter (11) which is configured to connect the drilling tool to a suction extraction device;
a sleeve element (81) mounted to the suction extraction adapter;
a conveying region (the conveying “region” is generally the length of the main body) arranged between the drilling head and the insertion end; and
at least one conveying channel that extends along the conveying region (the conveying channel is the annulus between the main body and the sleeve),
wherein the drilling tool extends along a longitudinal axis (see Fig. 6),
wherein the at least one conveying channel is arranged radially between the sleeve element and the main body (see Fig. 6),
wherein the sleeve element is configured to be rotatably mounted on the main body independent of a coupling of the insertion end with the power tool (“FIG. 6 is a section of the multi-partite rock drill comprising a rotatable shell provided with a suction pipe”),
wherein the main body includes an annular groove (“a notch provided on the outer surface of the front part 54 of the shank 51,” see column 5, lines 56-59),
wherein the sleeve element is mounted axially on the main body such that axial movement in one axial direction is restricted via a securing element (“A shell 81 is rotatably mounted on the rock drill and is prevented against an axial displacement by means of a snap lock,” column 5, lines 50-52).
Wanner fails to teach that the securing element is realized as at least one cylindrical pin positioned at least partially within the annular groove.
Moyse teaches a drilling tool in which a sleeve element (10) is rotatably mounted on a main body (20). The sleeve element (10) is mounted to the main body via a cylindrical pin (28) that engages an annular groove (24) in the main body. Moyse also teaches that “a retaining pin 28 extends through the hole and into the groove to prevent longitudinal movement…while permitting rotation” (column 2, lines 12-18).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by replacing the ring connection with a cylindrical pin, as taught by Moyse, with a reasonable expectation of success given that Moyse shows that such a configuration has been employed in a drilling device to couple inner and outer relatively-rotating members in a manner preventing longitudinal movement while allowing rotation.
With regard to claim 24, Wanner teaches that the main body includes an annular groove (“a notch provided on the outer surface of the front part 54 of the shank 51,” see column 5, lines 56-59);
the securing element is configured to restrict relative movement of the main body with respect to the sleeve element in two axial directions along the longitudinal axis (“A shell 81 is rotatably mounted on the rock drill and is prevented against an axial displacement by means of a snap lock,” column 5, lines 50-52).
Wanner fails to teach that the securing element is a cylindrical pin. Instead, Wanner teaches a ring.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by providing a securing pin, rather than a ring, with a reasonable expectation of success as such a modification would have amounted to the simple substitution of one known type of retention mechanism for another to achieve a predictable result.
Moyse teaches a drilling tool in which a sleeve element (10) is rotatably mounted on a main body (20). The sleeve element (10) is mounted to the main body via a cylindrical pin (28) that engages an annular groove (24) in the main body. Moyse also teaches that “a retaining pin 28 extends through the hole and into the groove to prevent longitudinal movement…while permitting rotation” (column 2, lines 12-18).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by replacing the ring connection with a cylindrical pin, as taught by Moyse, with a reasonable expectation of success given that Moyse shows that such a configuration has been employed in a drilling device to couple inner and outer relatively-rotating members in a manner preventing longitudinal movement while allowing rotation.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wanner in view of Gauggel and Moyse.
With regard to claim 22, Wanner teaches a drilling tool (Fig. 6) comprising:
a drilling head;
an insertion end (proximate numeral 51) configured to couple with a power tool;
a main body (52);
a sleeve element (81);
a conveying region (generally the area along the length of the main body) arranged between the drilling head and the insertion end;
a securing element (82, 83); and
at least one conveying channel (i.e. the annular area between the main body 52 and the sleeve 81) that extends along the conveying region,
wherein the drilling tool extends along a longitudinal axis (Fig. 6),
wherein the securing element (82, 83) extends in a plane transverse to the longitudinal axis (see Fig. 6, which shows the securing element 83 being in the radial plane, transverse to the longitudinal axis) and includes a first portion in the plane proximate the longitudinal axis configured to engage the main body (i.e. the radially-inner portion of element 83) and a second portion in the plane distal to the longitudinal axis configured to engage the sleeve element (i.e. the radially-outer portion of element 83) or formed integrally with the sleeve element such that the sleeve element is rotatably mounted on the main body (81 is designated as a “rotatable shell”) and such that relative movement along the longitudinal axis between the main body and the sleeve element is restricted in two axial directions along the longitudinal axis (by virtue of the engagement of element 83 with a notch on the shank 51),
wherein the at least one conveying channel is arranged radially between the sleeve element and the main body (the annular channel is radially between the sleeve 81 and the main body 52),
wherein the main body includes an annular groove (“a notch provided on the outer surface of the front part 54 of the shank 51,” see column 5, lines 56-59),
wherein the sleeve element is mounted axially on the main body such that axial movement in one axial direction is restricted via a securing element (“A shell 81 is rotatably mounted on the rock drill and is prevented against an axial displacement by means of a snap lock,” column 5, lines 50-52).
Wanner fails to teach two conveying channels that are defined by at least one groove, and a gap between the sleeve and the main body which allows cuttings exchange between the two channels.
Gauggel teaches a drilling tool having a main body (22) and a sleeve (36). The main body (22) has multiple conveying channels (30). Gauggel also teaches a gap between the main body and the sleeve that can exchange cuttings between the channels (“an annular gap…can be used for additional extraction around the tool. Thus, a throughput of transport fluid through the at least one suction channel can be increased…The gap may advantageously belong to or be connected to the at least one suction channel.”).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner to have the channels and annular gap of Gauggel, because “the rotation of the drill shank 20 in combination with the helical course of the flutes 30 supports the transport of the removed material within the flutes 30,” and because “the annular gap and the flutes 30 form a coherent suction channel 58,” (see English translation of Gauggel provided in the File Wrapper).
Wanner fails to teach that the securing element is realized as at least one cylindrical pin positioned at least partially within the annular groove.
Moyse teaches a drilling tool in which a sleeve element (10) is rotatably mounted on a main body (20). The sleeve element (10) is mounted to the main body via a cylindrical pin (28) that engages an annular groove (24) in the main body. Moyse also teaches that “a retaining pin 28 extends through the hole and into the groove to prevent longitudinal movement…while permitting rotation” (column 2, lines 12-18).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Wanner by replacing the ring connection with a cylindrical pin, as taught by Moyse, with a reasonable expectation of success given that Moyse shows that such a configuration has been employed in a drilling device to couple inner and outer relatively-rotating members in a manner preventing longitudinal movement while allowing rotation.
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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 ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676