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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 14-18 and 23-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites “the frustoconical base body comprises an outer wall” and “the outer wall has a frustoconical shell surface . . . .” The specification at the time of filing does not provide support for the presence of two outer walls (outer wall and the outer wall itself having a shell surface). Instead, there is an outer wall shaped as a frustoconical shell surface that includes a thread. As such, it is new matter. Due to the recitation that the wall is “outer” with no recitation of an inner wall, the interpretation is that outer wall must be the outside surface of the wall. If there was recitation to an inner wall, then the interpretation may change. Appropriate correction required.
Claim 11 recites “a self-tapping thread that includes a threaded rib . . . .” The specification at the time of filing lacks support for the claimed self-tapping thread including a threaded rib. As such, it is new matter. It appears that the self-tapping thread is the rib. Appropriate correction required.
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 frustoconical base body comprises an outer wall” and “a frustoconical shell surface . . . .” It is unclear whether the outer wall and the frustoconical shell surface are the same surface or different surfaces. Furthermore, it is unclear if there is an inner wall such that outer wall has a further meaning or if outer wall just means the outer part of the base body. Appropriate correction required.
Claim 11 recites “a self-tapping thread that includes a threaded rib . . . .” It is unclear whether the self-tapping thread is meant to include a threaded rib as the language suggests or if the rib is the self-tapping thread as disclosed in the written description. Appropriate correction required.
Claim 11 recites “a threaded rib essentially flat flanks . . . .” The metes and bounds of “essentially flat” are not clearly delineated such that one of ordinary skill would understand the boundaries of the claim. That is, the boundary between where the flanks are considered essentially flat and not essentially flat is unclear. Appropriate correction required.
Claim 11 recites “a threaded rib essentially flat flanks . . . .” The metes and bounds of “essentially flat” are not clearly delineated such that one of ordinary skill would understand the boundaries of the claim. That is, the boundary between where the flanks are considered essentially flat and not essentially flat is unclear. Appropriate correction required.
Claim 30 recites “the opening of the hollow frustoconical base body” in Lines 2-3. This limitation lacks proper antecedent basis - both for the opening limitation and the hollow limitation. Appropriate correction required.
Claim 30 recites “the cover plate has a central opening concentrically arranged to the insertion opening” in Lines 3-4. Yet, “the insertion opening” limitation lacks proper antecedent basis. As such, it is unclear how the cover plate central opening has a concentric relationship with the insertion opening. Appropriate correction required.
Claim 30 recites “a bearing bush” in Line 5. Yet, “a bearing bush” already has antecedent basis in claim 11. As such, it is unclear if this is the same bearing bush previously recited or a new bearing bush. 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).
(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). At least one reinforcing rib (26 or internal thread of frustoconical base body as seen in Fig. 1) connects the outer wall with the inner sleeve (Fig. 1). 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 base body has a frustoconical shell surface that includes a thread (Fig. 1; Page 1; Col. 2, Lines 44-49). The thread is a self-tapping thread2 that includes, as best understood, a threaded rib with essentially flat 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).
(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.
(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) Pardiek discloses a cover plate (26) covers the opening of the hollow base body. The cover plate has a central opening concentrically arranged to the insertion opening (Fig. 1). The cover plate is connected to a bearing bush and to the frustoconical base body (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. 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 11, 14-18, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Misch (US Patent No. 2,019,790).
(Claim 11) Misch discloses a device for enlarging a hole in a workpiece (Fig. 1). The device includes a frustoconical base body (6) 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 (24; Figs. 2, 3). The frustoconical base body includes an inner sleeve that includes the intake cavity (Figs. 2, 3). The frustoconical base body includes an outer wall (25, 26). At least one reinforcing rib (28) connects the outer wall with the inner sleeve (Fig. 3; Page 2, Col. 1, Line 20). The intake cavity is capable of receiving a bearing bush have an insertion opening for a pilot drill of a hole saw (Figs. 1-4).6 The base body has a frustoconical shell surface (Fig. 1 having threads 25) that includes a thread (25). The thread is a self-tapping thread7 that includes, as best understood, a threaded rib with essentially flat flanks that converge in a vertex line (Figs. 1, 3). Misch 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 Misch of plastic to provide a lightweight, cost-effective yet strong/durable material.8 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 14-16) Misch 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.9 Thus, at a time prior to effective filing, it would have been obvious to one having ordinary skill in the art to provide the Misch 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.
(Claim 28) In the modified Misch 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.10 Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Misch 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) Misch 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.
Claims 23, 24, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Misch (US Patent No. 2,019,790) further in view of Majoria (US Pub. No. 2019/0015906 A1).
(Claims 29) Misch does not explicitly disclose a base body having a diameter within the claimed range.
The Majoria disclosure suggests a base body surface having a diameter of 1.5 to 2 times an axial length of the base body (Figs. 1-3). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Misch device with a diameter as suggested by Majoria in order to optimize the weight of the device and the structural integrity of the device. Additionally, the length to diameter ratio is a result-effective variable because it impacts the weight of the device and the structural integrity of the device.11 Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Misch device with a diameter within the claimed range in order to optimize the weight of the device and the structural integrity of the device. See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Aller, 220 F.2d at 456.
(Claim 30, 23 and 24) Misch does not explicitly disclose a cover plate as claimed.
Majoria discloses a device for enlarging a hole in a workpiece (68; Fig. 16). The device includes a frustoconical base body (70) that is insertable into the hole (Figs. 16, 17); and an insertion opening (72) in the base body for insertion of a pilot drill (36) of a hole saw (Figs. 16-18).12 The base body has a frustoconical shell surface (Figs. 14, 16, 17). The frustoconical base body is a hollow body that has a first end face and a second end face with a diameter larger than a diameter of the first end face (Fig. 16). The hollow body is open on the second end face (Fig. 16). A cover plate (64 and/or 62) covers the opening of the hollow base body. The cover plate has a central opening concentrically arranged to the insertion opening (Figs. 16-18). Majoria discloses a bearing bush (80) connected to a base body of a drill guide and the cover plate (Figs. 16-18). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the frustoconical base body disclosed in Misch with a cover plate as suggested by Majoria in order to provide a replaceable guide with higher wear resistance as a drill guide.
The modified Misch device does not explicitly disclose that the cover plate is steel. Steel is a well-known type of metal. 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).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Misch (US Patent No. 2,019,790) further in view of Majoria (US Pub. No. 2019/0015906 A1) and further still in view of Garfield et al. (US Pub. No. 2011/0262235 A1).
The modified Misch 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 Misch 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 Misch (US Patent No. 2,019,790) further in view of Majoria (US Pub. No. 2019/0015906 A1) and further still 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 Misch 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 Misch 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 Misch 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.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Misch (US Patent No. 2,019,790) further in view of Majoria (US Pub. No. 2019/0015906 A1) further still in view of Garfield et al. (US Pub. No. 2011/0262235 A1).
The modified Misch device does not explicitly disclose a screwdriver with a blade section, wherein a further insertion opening is provided in the base body for insertion of the blade section.
Garfield discloses a screwdriver (20) with a blade section (Fig. 1A). An insertion opening (21) is provided in a base body 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 Misch 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.
Response to Arguments
Applicant's arguments filed February 26, 2026 have been fully considered but they are not persuasive. Applicant incorporates the arguments in the previously filed submission. Relative to the prior art, Applicant argues that the Misch reference fails to disclose a hollow body construction,13 double-walled construction,14 reinforcing ribs, a guide channel,15 a plastic body or a self-tapping thread. In the current submission, Applicant argues one of ordinary skill would not find it obvious to provide reinforcing ribs to the Misch device because it would remove the flexibility of the device. Examiner disagrees with the remarks made by Applicant.
The previous rejection outlines how each of a hollow body construction, reinforcing ribs, a guide channel, a plastic body or a self-tapping thread are known. It is also worth noting that the argument that references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., double-walled construction, guide channel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). That said, Applicant should focus on the manner in which the features are claimed. For example, a hollow body is met by having the opening/guide channel. However, if Applicant were to set forth how the body is considered hollow (e.g., material voids bounded by the outer wall inner surface (presupposing defining the outer wall as having an inner surface and an outer surface), the inner wall outer surface of the sleeve section, and the at least one rib) then the hollow limitation has more meaning. Examiner is open to an interview to discuss language versus intended scope.
Applicant errs in the belief that Misch needs to be modified to include further reinforcing ribs. Once more, it appears Applicant leans more on what the present application discloses as opposed to what is claimed. The type of structure disclosed is not exactly what is claimed. As such, the Misch reference discloses the reinforcing rib in what Applicant refers to as the web.
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).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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 This result-effective variable is well-known in the art, the fact of which examiner takes Official Notice.
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 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.
8 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.
9 Because Applicant failed to traverse the well-known assertion under official notice, these features are taken as AAPA. See MPEP § 2144.03 C.
10 This result-effective variable is well-known in the art, the fact of which examiner takes Official Notice.
11 This result-effective variable is well-known in the art, the fact of which examiner takes Official Notice.
12 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. If the prior art structure is capable of performing the intended use, then it meets the claim. Because the structure here is capable of receiving a pilot drill, the device meets the claimed limitation.
13 This limitation is no longer recited in claim 11.
14 This limitation is not claimed at all.
15 This limitation is not claimed at all.
Prosecution Insights