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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 9, 2026 has been entered.
Claim Objections
Claim 2 is objected to because of the following informalities: the term “at” should be between the term “inclined” and “an” in Line 2. Appropriate correction is required.
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 1-2 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 1 recites “the thinning edge, the tip flank, and the thinning bottom surface converge to a tip point on the axis” in Lines 11-12. This limitation contains new matter. The limitation lacks support in the specification at the time of filing for each of these features converging to a tip point on the axis. Not only is explicit support absent, but the drawings show a chisel edge intersecting the axis. As such, the thinning edge and bottom surface do not converge at the tip point on the rotation axis. Appropriate correction required.
Claim 1 recites “a thinning direction is defined along a line through connecting points that are located on the thinning bottom surface at a point most recessed toward the axis, the line extending from a first connecting point on the thinning bottom surface towards a second connecting point proximate the tip point” in Lines 23-26. The claim limitation lacks support at the time of filing for the thinning direction being defined as claimed. The specification only provides support for “when the thinning portion is viewed from a thinning direction connecting points most recessed toward the axis side of a thinning bottom surface.” (¶¶ 0008, 0023). That is, the thinning direction connects points most recessed, but not that the most recessed points define the direction. In addition, there isn’t any support for a line in which the thinning direction is defined along, the connecting points being at a point most recessed, or the line extending from first and second connecting points as claimed. Appropriate correction required.
Claim 1 recites “a radius of curvature of the convex curved portion does not exceed a radius of the chip discharge flute” in Lines 43-44. This recitation contains new matter. The limitation lacks support in the specification at the time of filing for the radius of curvature of the convex curved portion not exceeding a radius of the chip discharge flute. Appropriate correction required.
Claim 1 recites “wherein a cross-sectional area of the chip discharge flute is such that chips generated by the thinning edge and the at least one cutting edge are curled into a cone shape having a generating line from the thinning direction to the twist direction of the chip discharge flute” in Lines 44-46. This recitation contains new matter. The specification at the time of filing provides support for “a ratio of a curl radius to the thinning bottom surface of the chips generated by the thinning edge having a small radius centered on the axis and a ratio of a curl radius to the chip discharge flute bottom surface of the chips generated by the main cutting edge having a large radius centered on the axis can be made substantially equal to each other.” (¶¶ 0011-0012, 0031-0032). The limitation lacks support for the cross-sectional are of the flute causing the chips to curl into a cone shape as claimed. Appropriate correction required.
Claim 2 recites “the line defining the thinning direction” in Line 2. The claim limitation lacks support at the time of filing for the thinning direction being defined by connecting points on the bottom surface closest to the axis. The specification only provides support for “when the thinning portion is viewed from a thinning direction connecting points most recessed toward the axis side of a thinning bottom surface.” (¶¶ 0008, 0023). That is, the thinning direction connects points most recessed, but not that the most recessed points define the direction. 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 1-2 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 1 recites “a thinning direction is defined along a line through connecting points that are located on the thinning bottom surface at a point most recessed toward the axis, the line extending from a first connecting point on the thinning bottom surface towards a second connecting point proximate the tip point” in Lines 23-26. The metes and bounds of a thinning direction are not clearly delineated such that one of ordinary skill in the art would understand the boundaries of the limitation. It is unclear how the line through connecting points (plural) are located a point (singular) most recessed toward the axis. The direction, being along such a line, appears arbitrary and lacks definite orientation. This leads to the relationships of circles C4, C5 and C6 without definitive structural relationships because these relationships depend on the claimed thinning direction view. Furthermore, the term “proximate” in claim 1 is a relative term which renders the claim indefinite. The term “proximate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction required.
Claim 1 recites the limitation “the at least one cutting edge” in Line 41. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 2 recites “the line defining the thinning direction” in Line 1. The thinning direction is previously defined long a line in claim 1, not by the line as recited in claim 2. As such, it is unclear whether the whether the thinning direction is defined by the line or along the line. 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yanagida et al. (US Pub. No. 2003/0039522 A1).
(Claim 1) Yanagida et al. (“Yanagida”) discloses a drill (Figs. 1-10) that includes a drill body (1) having an axis, a tip flank, and a chip discharge flute (3) formed on an outer periphery (Fig. 3), the chip discharge flute extends from the tip flank toward a rear end of the drill body and twisting in a twist direction about the axis opposite to the drill rotation direction (Fig. 3); a main cutting edge (16, 17) formed between the tip flank and a chip discharge flute bottom surface of the chip discharge flute (Figs. 1, 3, 13, 15); a thinning portion (18) formed on a tip inner peripheral portion of the drill body (Fig. 3), and having a flat thinning rake surface (22) and a thinning bottom surface of a concave groove shape (21, 20; 121, 120; Fig. 3); and a thinning edge (19) between the tip flank and the thinning rake surface (22), the thinning edge extending from the axis to an inner end of the main cutting edge (Fig. 3). As best understood, the thinning edge, the tip flank, and the thinning bottom surface converge to a tip point on the axis (Fig. 1).
A first circle C1 (d) is defined having a center on the axis (O) and is tangent1 with one point of the chip discharge flute bottom surface with a diameter equal to a core diameter d of the drill body (Fig. 2; annotated Fig. 2); a second circle C2 is concentric with the first circle and has a diameter D2, the diameter D2 is defined as 1/2 of a sum d+ D of a core diameter d and a cutting diameter D of the drill (i.e., a total cutting diameter of the drill); a chip discharge flute circle C3 is defined to pass through a contact point P1 between the first circle and the chip discharge flute bottom surface (this is an imaginary circle), and two intersections P2 and P3 between the second circle and the chip discharge flute bottom surface; but a radius R1 of the chip discharge flute inscribed circle is not explicitly disclosed as being in a range of 0.3 x D2 to 0.7 x D2 with respect to the diameter D2 of a second circle. Yet, this circle is imaginary without boundaries other than to intersect the points claimed. As such, Yanagida discloses a drill capable of having the circle as claimed (annotated Fig. 2). In the alternative, Yanagida discloses the flute surface being defined, at least partially, by radii (R2, R4), which impact chip curling/evacuation and flute shape/size (¶¶ 0069-0070). The relationship between drill diameter D2 and the flute circle radius are result-effective variables because, as disclosed by Yanagida, the radius of a chip flute relative to the drill body impacts chip curling/evacuation as well as the flute shape/size and drill integrity/strength (¶¶ 0069-0070). Thus, at a time prior to filing prior to filing it would have been obvious to one having ordinary skill in the art to provide the flutes with a radius within the claimed range in order to optimize the relationship between the flute, the core and the drill diameter for chip evacuation and integrity/strength. 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.”).
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As best understood, a thinning direction is defined along a line through connecting points that are located on the thinning bottom surface at a point most recessed toward the axis, the line extending from a first connecting point on the thinning bottom surface towards a second connecting point proximate the tip point, a third circle C4 is defined, as best understood, having an intersection of the axis and the tip flank (annotated Fig. 1). The third circle C4 has a diameter equal to the core diameter d (annotated Fig. 1 – core diameter transferred over from Fig. 2). The third circle C4 intersects with the thinning bottom surface at a first intersection P4 (again, this is an imaginary circle and it is unclear how it is determined, but see annotated Fig. 1). A fourth circle C5 is defined being concentric with the third circle and has a diameter of 1/2 of the core diameter d (again imaginary, but see annotated Fig. 1). The fourth circle C5 intersects with the thinning bottom surface and the thinning edge at a second intersection P5 and a third intersection P6, respectively (annotated Fig. 1). The thinning bottom surface has a round concave shape at the second intersection P5 (annotated Fig. 1; Fig. 14). A thinning circle C6 is defined passing through the first intersection P4, the second intersection P5, and the third intersection P6 (annotated Fig. 1). A radius R2 of the thinning circle is in a range of 0.3 x d to 0.7 x d with respect to the core diameter d (Figs. 1-10). In the alternative, Yanagida discloses the thinning surface being defined, at least partially, by a radius of curvature that impacts chip curling (¶ 0074). The relationship between core diameter d and the thinning circle radius are result-effective variables because, as disclosed by Yanagida, the radius of a thinning surface relative to the drill body impacts chip curling as well as drill integrity/strength (¶¶ 0069-0070, 0074). Thus, at a time prior to filing prior to filing it would have been obvious to one having ordinary skill in the art to provide the flutes with a radius within the claimed range in order to optimize the relationship between the thinning portion and the core for chip curling/evacuation and integrity/strength. 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.”).
The thinning edge and the at least one cutting edge are connected to each other via a convex curved portion that is convex in the drill rotation direction (Fig. 1). As best understood, a radius of curvature of the convex curved portion does not exceed a radius of the chip discharge flute and a cross-sectional area of the chip discharge flute is such that chips generated by the thinning edge and the at least one cutting edge are curled into a cone shape having a generating line from the thinning direction to the twist direction of the chip discharge flute (Figs 1-4A).
Yanagida does not explicitly disclose a ratio A/B between a ratio A= R1/D2 of the radius R1 of the chip discharge flute inscribed circle to the diameter D2 of the second circle and a ratio B = R2/d of the radius R2 of the thinning inscribed circle to the core diameter d is in a range of 0.8 to 1.25. Yet, the ratio as claimed is a result-effective variable because each ratio involves at least one of chip evacuation, drill entry and/or drill integrity/strength. Thus, at a time prior to filing prior to filing it would have been obvious to one having ordinary skill in the art to provide the flutes with a radius within the claimed range in order to optimize chip evacuation, drill entry and integrity/strength. 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 (“[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.”).
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(Claim 2) As best understood, the thinning direction is inclined at an inclination angle in a range of 10 degrees to 55 degrees with respect to the axis (Yanagida Figs. 1-3).
Response to Arguments
Applicant's arguments filed February 9, 2026 have been fully considered but they are not persuasive. Applicant argues that support for, and the scope of, the thinning direction is present and clear such that one of ordinary skill would understand support to be present in the original disclosure and scope to be clearly understood. Specifically, relative the scope of the thinning direction limitation, it is simply a direction in which the bottom surface gets thinner (i.e. toward the tip). Applicant further alleges that the Yanagida reference fails to disclose the claimed circles. Furthermore, Applicant contends that the Yanagida fails to disclose convex arc surface being larger than a radius of the flute bottom surface, the drill is incapable of forming chips as claimed. Examiner disagrees.
The new matter rejection for the thinning direction limitation has been maintained. Figure 10 suggests a direction running in the opposite direction as claimed. Furthermore, there isn’t support for the direction as claimed. That is, the disclosure lacks support for the thinning direction being defined along a line as claimed. Thus, the rejection is proper.
The thinning direction limitation remains vague. Merely stating that points closest to the axis define the direction do not even provide an origin for which way the direction runs relative the drill. The argument that the thinning direction is toward the tip contradicts the alleged directional viewpoint of Figure 10 and the original claims. Thus, the indefiniteness rejection has been maintained.
Yanagida discloses the claimed features absent explicit disclosures of the imaginary circles. Yet, the disclosed drill is capable of having the imaginary circles as claimed (see annotated Figures above), and the reference provides a basis for the features being result-effective variables. In addition, the Supreme Court has cautioned on allowing patents on known elements. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art”). Criticality has not been established in the present case. The optimization rationale has established a prima facie case of obviousness.
It is unclear how Applicant has determined the radius of curvature relationships to be outside of the claimed relationship. If anything, the figures show that the radius of the convex curved portion is smaller than that of the flute. Furthermore, Figure 4A shows a conical chip. Moreover, one of ordinary skill would understand that there are more factors that impact chip shape than the mere curvatures of a convex transition edge and the flute curvature. Specifically, cutting speed, feed rate and the type of work material all play a role in chip formation. Thus, at the very least, the prior art drill bit is capable of forming conical chips as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Olsson (US Pub. No. 2012/0201619 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.
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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 See https://www.merriam-webster.com/dictionary/tangent (last visited November 25, 2024).
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