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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 10, 2026 has been entered.
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.
Claims 11, 14-18 and 23-30 are 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.
Claim 11 recites “the outer surface of the outer wall is shaped as a frustoconical shell surface” in Lines 8-9. The metes and bounds of being shaped as a frustoconical shell surface are not clearly delineated. That is, it is unclear how being shaped differs from being a frustoconical shell surface due to the material voids. Appropriate correction required.
Claim 14 recites “two adjacent vertex lines of the threaded ribs” in Lines 2-3. “[T]he threaded ribs” lacks proper antecedent basis. Claim 11 recites to “a threaded rib” and “a vertex line” such that it is unclear how claim 14 refers to multiple vertex lines and ribs. Appropriate correction required.
Claim 15 recites “two adjacent vertex lines” in Lines 2-3. Antecedent basis for “two adjacent vertex lines” has already been established in claim 14. As such, it is unclear whether this recitation is the same two or a different two. Appropriate correction required.
Claim 30 recites “an opening of the frustoconical base body” in Lines 2-3. The claim then recites “the frustoconical base body is a hollow body that is open on an end face” in Lines 3-4. The relationship between the plurality of voids, the opening and the hollow body being open on an end face need to be clearer. Appropriate correction required.
Claim 30 recites “having a larger diameter” in Line 4. It is unclear in relation to what feature the end face having a diameter is larger than in the claimed ivnention. Appropriate correction 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.
Claims 11, 14-18, 23, 24 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Pardiek (US Patent No. 2,082,461) in view of Antrag (DE 102017010692 A1).
(Claim 11) Pardiek discloses a device for enlarging a hole in a workpiece (Fig. 1). The device includes a frustoconical base body (20) that is insertable into the hole (Fig. 1), the frustoconical base body extends along a longitudinal axis; and the frustoconical base body includes an intake cavity (Fig. 1 - cavity for accepting bearing 24). The frustoconical base body includes an inner sleeve (23) that includes the intake cavity (Fig. 1). The frustoconical base body includes an outer wall (20, 21) having an inner surface and an outer surface (Fig. 1). The outer surface of the outer wall is shaped as a frustoconical shell surface that includes a self-tapping thread (Fig. 1; Page 1, Col. 2, Lines 44-49). The intake cavity is capable of receiving a bearing bush (24) having an insertion opening for a pilot drill of a hole saw (Fig. 1).1 The self-tapping thread2 includes a threaded rib with straight flanks that converge in a vertex line (Figs. 1, 3). Pardieck does not explicitly disclose the frustoconical base body being plastic. Nevertheless, at a time prior to effective filing, one having ordinary skill in the art would have found it obvious to provide the frustoconical base body disclosed in Pardieck of plastic to provide a lightweight, cost-effective yet strong/durable material.3 See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Pardiek does not explicitly disclose a plurality of reinforcing ribs that connect the outer wall with the inner sleeve or a plurality of material voids each of which are bounded by the inner surface of the outer wall, an outer surface of the inner sleeve, and two adjacent reinforcing ribs of the plurality of reinforcing ribs.
Antrag discloses a plurality of reinforcing ribs (disclosed as struts – translation) that connect the outer wall with the inner sleeve or a plurality of material voids each of which are bounded by the inner surface of the outer wall, an outer surface of the inner sleeve, and two adjacent reinforcing ribs of the plurality of reinforcing ribs (Figs. 1-6). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the device disclosed in Pardiek with a plurality of struts and voids as taught by Antrag in order to resist radial compression, reinforcing the frustoconical base body. The result of the modification may maintain the existing inner sleeve but making it integral instead of a threaded rod or may be done to create a new inner sleeve as suggested by Antrag such that the threaded sleeve may then be inserted into the new sleeve.
(Claims 14-16) Pardiek discloses threads, which have a thread pitch. Yet, the reference does not explicitly disclose the thread pitch being within the claimed range. Nevertheless, the thread pitch is a result-effective variable because it impacts the connection capability of the frustoconical base body.4 Thus, at a time prior to effective filing, it would have been obvious to one having ordinary skill in the art to provide the Pardiek device with a thread pitch within the range claimed in order to optimize the fit of the base body within an opening of the work material. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claims 17 and 18) The insertion opening of the bearing bush runs in a geometric center of the frustoconical base body (Figs. 1-3). Because claim 18 only further limits the bearing bush functional limitation, claim 18 is also met. That is, claim 11 merely recites that the intake cavity is configured to receive a bearing bush. The claim does not positively recite the bearing bush in the intake cavity. In the alternative, examiner takes official notice that bearing bushes made of hardened metal are well-known in the art. As such, one having ordinary skill prior to the time of filing would have found it obvious to provide a bearing bush of hardened metal to the device in order to take advantage of the wear resistance of the hardened material.
(Claim 28) In the modified Pardiek device, the frustoconical shell surface of the base body defines an enveloping cone, but does not explicitly define a cone angle within the claimed range. The cone angle is a result-effective variable because it impacts the fit within an opening of a workpiece.5 Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Pardiek device with a base body cone angle within the range claimed in order to optimize the fit of the base body within the opening of the work material. See In re Aller, 220 F.2d at 456 (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claim 29) Pardiek does not explicitly disclose a base body having a diameter within the claimed range. Yet, it is worth noting that the claim does not limit at what point the axial length may be measured. As such, an axial length taken short of the maximum axial length of the base body may read upon the claimed ratio.
(Claim 30) In the modified Pardiek device, a cover plate (26) covers an opening of the frustoconical base body (Fig. 1). The frustoconical base body is a hollow body (Pardiek Fig. 1; Antrog Figs. 1-6) that is open on an end face having a larger diameter (Pardiek Fig. 1; Antrog Figs. 1-6). The cover plate has a central opening concentrically arranged to the insertion opening of the bearing bush (Pardiek Fig. 1). The cover plate is connected to the bearing bush and to the frustoconical base body, at least indirectly (Fig. 1).
(Claims 23 and 24) The modified Pardiek device does not explicitly disclose that the cover plate is steel. Steel is a well-known type of metal, the fact of which examiner takes official notice thereof. At a time prior to filing it would have been obvious to one having ordinary skill to provide the cover plate from steel in order to take advantage of the strength and wear characteristics of the material. See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Pardiek (US Patent No. 2,082,461) in view of Antrag (DE 102017010692 A1) further in view of Garfield et al. (US Pub. No. 2011/0262235 A1).
The modified Pardiek device does not explicitly disclose a screwdriver with a blade section, wherein the cover plate includes an engaging slot for insertion of the blade section.
Garfield et al. (“Garfield”) discloses a screwdriver (20) with a blade section (Fig. 1A). An insertion opening (21) is provided in a cover plate (12) for insertion of the blade section. The central opening in the cover plate has two engaging slots lying opposite each other (Fig. 1b, Section A-A). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Pardiek device with a screwdriver and a slotted opening in the base body as suggested by Garfield in order to drive the device into a hole in the workpiece.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Pardiek (US Patent No. 2,082,461) in view of Antrag (DE 102017010692 A1) further in view of Garfield et al. (US Pub. No. 2011/0262235 A1) and one of Boyajian (US Patent No. 3,804,546) or Rozmarynowski et al. (US Pub. No. 2016/0052120 A1).
The modified Pardiek device does not explicitly disclose a gripping area having drill diameter testing ports.
Boyajian discloses a gripping area having drill diameter testing ports (26; Figs. 1-4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Pardiek device with a screwdriver having a gripping area with drill diameter testing ports as suggested by Boyajian in order to determine drill bit diameter size.
Rozmarynowski et al. discloses testing or gauging means in the handle of a handle tool. (160, 164; Fig. 2). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Pardiek device with a screwdriver a gripping area with drill diameter testing ports as suggested by Rozmarynowski et al. in order to determine drill bit diameter size.
Claims 11, 14-18, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Antrag (DE 102017010692 A1) in view of Pardiek (US Patent No. 2,082,461).
(Claim 11) Antrag discloses a device for enlarging a hole in a workpiece (Figs. 1-6). The device includes a base body that is insertable into the hole (Fig. 3), the base body extends along a longitudinal axis; and the frustoconical base body includes an intake cavity (Fig. 1 – central cavity). The base body includes an inner sleeve (Figs. 1-6 – central annular wall) that includes the intake cavity (Fig. 1). The base body includes an outer wall having an inner surface and an outer surface (Figs. 1-6). The outer surface of the outer wall is shaped as a shell surface (Figs. 1-6). The intake cavity is capable of receiving a bearing bush having an insertion opening for a pilot drill of a hole saw (Fig. 1).6 Antrag discloses a plurality of reinforcing ribs (disclosed as struts – translation) that connect the outer wall with the inner sleeve or a plurality of material voids each of which are bounded by the inner surface of the outer wall, an outer surface of the inner sleeve, and two adjacent reinforcing ribs of the plurality of reinforcing ribs (Figs. 1-6). Antrag does not explicitly disclose the frustoconical base body being plastic. Nevertheless, at a time prior to effective filing, one having ordinary skill in the art would have found it obvious to provide the frustoconical base body disclosed in Pardieck of plastic to provide a lightweight, cost-effective yet strong/durable material.7 See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Pardiek discloses a device for enlarging a hole in a workpiece (Fig. 1). The device includes a frustoconical base body (20) that is insertable into the hole (Fig. 1), the frustoconical base body extends along a longitudinal axis; and the frustoconical base body includes an intake cavity (Fig. 1 - cavity for accepting bearing 24). The frustoconical base body includes an inner sleeve (23) that includes the intake cavity (Fig. 1). The frustoconical base body includes an outer wall (20, 21) having an inner surface and an outer surface (Fig. 1). The outer surface of the outer wall is shaped as a frustoconical shell surface that includes a self-tapping thread (Fig. 1; Page 1, Col. 2, Lines 44-49). The intake cavity is capable of receiving a bearing bush (24) having an insertion opening for a pilot drill of a hole saw (Fig. 1).8 The self-tapping thread9 includes a threaded rib with straight flanks that converge in a vertex line (Figs. 1, 3). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the device disclosed in Antrag with a frustoconical base body with self-tapping thread as taught by Pardiek in order to secure itself to a work material (Page 1, Col. 2, Lines 44-49).
(Claims 14-16) Antrag in view of Pardiek includes threads, which have a thread pitch. Yet, the reference does not explicitly disclose the thread pitch being within the claimed range. Nevertheless, the thread pitch is a result-effective variable because it impacts the connection capability of the frustoconical base body.10 Thus, at a time prior to effective filing, it would have been obvious to one having ordinary skill in the art to provide the Antrag device with a thread pitch within the range claimed in order to optimize the fit of the base body within an opening of the work material. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claims 17 and 18) The insertion opening of the bearing bush runs in a geometric center of the frustoconical base body (Antrag Figs. 1-6; Pardiek Figs. 1-3). Because claim 18 only further limits the bearing bush functional limitation, claim 18 is also met. That is, claim 11 merely recites that the intake cavity is configured to receive a bearing bush. The claim does not positively recite the bearing bush in the intake cavity. In the alternative, examiner takes official notice that bearing bushes made of hardened metal are well-known in the art. As such, one having ordinary skill prior to the time of filing would have found it obvious to provide a bearing bush of hardened metal to the device in order to take advantage of the wear resistance of the hardened material.
(Claim 28) In the modified Antrag device, the frustoconical shell surface of the base body defines an enveloping cone, but does not explicitly define a cone angle within the claimed range. The cone angle is a result-effective variable because it impacts the fit within an opening of a workpiece.11 Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Antrag device with a base body cone angle within the range claimed in order to optimize the fit of the base body within the opening of the work material. See In re Aller, 220 F.2d at 456 (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claim 29) Antrag does not explicitly disclose a base body having a diameter within the claimed range. Yet, it is worth noting that the claim does not limit at what point the axial length may be measured. As such, an axial length taken short of the maximum axial length of the base body may read upon the claimed ratio.
Response to Arguments
Applicant’s arguments with respect to claim 11 have been considered but are moot because of the new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Darling (GB 2327632 A); and Spera (US Pub. No. 2017/0252834 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Because the structure here is capable of tapping into a workpiece if, for example, the work material is soft enough and/or if the base body is driven with enough torque.
2 Again, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Because the structure here is capable of tapping into a workpiece if, for example, the work material is soft enough and/or if the base body is driven with enough torque.
3 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as Applicant admitted prior art (AAPA). See MPEP § 2144.03 C.
4 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as AAPA. See MPEP § 2144.03 C.
5 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as AAPA. See MPEP § 2144.03 C.
6 A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Because the structure here is capable of tapping into a workpiece if, for example, the work material is soft enough and/or if the base body is driven with enough torque.
7 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as Applicant admitted prior art (AAPA). See MPEP § 2144.03 C.
8 A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Because the structure here is capable of tapping into a workpiece if, for example, the work material is soft enough and/or if the base body is driven with enough torque.
9 Again, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Because the structure here is capable of tapping into a workpiece if, for example, the work material is soft enough and/or if the base body is driven with enough torque.
10 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as AAPA. See MPEP § 2144.03 C.
11 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as AAPA. See MPEP § 2144.03 C.
