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 .
Election/Restrictions
Applicant’s election without traverse of Species I (the species in which the drill bit (200) is embodied as in at least Figures 1-4) in the reply filed on 11/24/2024 is acknowledged.
Claim 8-11 were previously withdrawn (and still are) from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/2024.
Drawings
The drawings were received on 4/20/2026. These drawings are acceptable.
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 15 and 16 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.
Lines 3-4 of claim 15 state, “wherein the epoxy retains the plurality of brush filaments in a slot that forms a channel that extends through the body portion.” This limitation is viewed to be vague and indefinite, because it is unclear if the slot that forms a channel of claim 15 is the same slot that forms a channel or is a different slot that forms a channel than the “slot forming a channel” of independent claim 1 on which claim 15 directly depends.
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 24 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (Korea Publication No. KR 101534441 B1).
Please be advised that Kim was previously cited on the PTO-892 mailed on 1/16/2025.
Please note that a Machine Translation of Kim is relied upon below. This Machine Translation of Kim was furnished with the office action that mailed on 1/16/2025.
Claim 24: Please note that Examiner will present two different interpretations of Kim. While the first interpretation is directed toward Figures 5-6 of Kim, the second interpretation is directed toward Figures 1-4b of Kim. Moreover, please note that such are not the only interpretations of the Kim reference that are applicable to present claim 24.
First Interpretation re: Figures 5-6
Figures 5 and 6 of Kim show a cutting tool. While not shown therein, it is noted that the cutting tool comprises a shank (12) [Machine Translation, page 11, lines 39-44]. Please be advised that the shank (12) has a (proximal) drive end for interfacing with a powered driver, e.g. a drill tool [Machine Translation, page 8, lines 18-20]. Figures 5 and 6 of Kim further show the cutting tool as comprising a body portion (11). Be advised that the body portion (11) is operably coupled to a distal end of the shank (12) and extending away from the shank (12). Again, while not shown therein, it is noted that the cutting tool comprises a cutting portion (10) [Machine Translation, page 11, lines 39-44]. As to the cutting portion (10), it (10) has a plurality of cutting edges and extends from the body portion (11). Please note that the cutting portion (10) shares an axis with the shank (12) and the body portion (11).
The cutting tool further comprises a deburring assembly (14, 14, 15a). Please be advised that the deburring assembly (14, 14, 15a) comprises a brush body (14d), a sliding body (15a), and a second brush body (14d). Please further be advised that the brush body (14d) in turn comprises a plurality of brush filaments (14a), while the second brush body (14d) in turn comprises a second plurality of brush filaments (14a). Noting this, Figure 6 of Kim shows the deburring assembly (14, 14, 15a) as being operably coupled to the body portion (11).
For Applicant’s reference, each of the brush body (14d), the sliding body (15a), and the second brush body (14d) have been pointed to below in annotated Figure 5 of Kim.
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Also, rotation of the cutting tool as it is moved longitudinally through a hole just cut by said cutting tool will cause the deburring assembly (14) to engage and deburr the hole. As long as the cutting tool is moved longitudinally far enough into the hole, Kim’s deburring assembly (14, 14, 15a) will be fully inserted into the hole cut by the cutting tool.
Next, as can be seen below in annotated Figure 6, the plurality of brush filaments (14a) extend out of the body portion (11) on opposite sides of the axis. More specifically, the plurality of brush filaments (14a) extend out of the body portion (11) on opposing first and second sides of the axis.
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The body portion (11) comprises two opposed recesses (13, 13). Each of the two opposed recesses (13, 13) is in and of itself “a recessed portion.” Noting this, Figure 5 of Kim has been annotated and provided below. Please note that a vertical wall portion of the recessed portion (13) shown below in Figure 5 is “a base surface.”
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As can be seen above, the base surface extends tangential to a (virtual) circle (which corresponds to an inner diameter of the hollow body portion (11)) having a radius defined by a distance extending from the axis to the base surface.
Next, as can be seen in the right-hand side of Figure 6, at least when the brush body (14d) of Kim interfaces with recessed portion (13), the plurality of filaments (14a) are operably coupled to said recessed portion (13) via the brush body (14d) and extend out of the base surface thereof.
Second Interpretation re: Figures 1-4b
Figures 1 and 2 of Kim show a cutting tool comprising a shank (12), which has a (proximal) drive end for interfacing with a powered driver, e.g. a drill tool [Machine Translation, page 8, lines 18-20]. Figures 1 and 2 of Kim further show the cutting tool as comprising a body portion (11) which is operably coupled to a distal end of the shank (12) and extending away from the shank (12), and a cutting portion (10) which has a plurality of cutting edges and which extends from the body portion (11). For Applicant’s reference, Figure 2 of Kim has been annotated and provided below. As can be seen in annotated Figure 2, the cutting portion (10) shares an axis with the shank (12) and the body portion (11).
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The cutting tool further comprises a deburring assembly (14), which comprises a plurality of brush filaments (14a) [Machine Translation, page 8, lines 51-55]. Noting this, Figure 2 of Kim shows the deburring assembly (14) as being operably coupled to the body portion (11).
Next, rotation of the cutting tool as it is moved longitudinally through a hole just cut by said cutting tool will cause the deburring assembly (14) to engage and deburr the hole. As long as the cutting tool is moved longitudinally far enough into the hole, the deburring assembly (14) will be fully inserted into the hole cut by the cutting tool.
Figures 1, 2, and 4a of Kim show a recessed portion (13) formed in the body portion (11). It is through the recessed portion (13) that the plurality of filaments (14a) extend out of the body portion (11). Noting this, as broadly claimed, the axis comprises opposite sides, which have been pointed to below in annotated Figure 4a of Kim. As can be seen below, the axis comprises a first side and an opposing second side.
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Noting this, as can be seen above in annotated Figure 4a, the plurality of filaments (14a) extend out of the body portion (11) (through the recessed portion (13) thereof) on opposite sides of the axis. (Please note that claim 24 doesn’t limit as to how or in what way that the claimed opposite sides of the axis are disposed).
Next, as can be seen below in annotated Figure 4a of Kim, the body portion (11) comprises the aforesaid recessed portion (13). As to the recessed portion (13), it comprises a base surface in the form of the vertical wall thereof. This base surface has been pointed to in annotated Figure 4a. As can be seen below, the base surface extends tangential to a (virtual) circle (which corresponds to an inner diameter of the hollow body portion (11)) having a radius defined by a distance extending from the axis to the base surface.
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Lastly, as can be seen above in Figure 4b of Kim, at least when a cover lid (14c) of the deburring assembly (14) interfaces with the recessed portion (13), the plurality of filaments (14a) are operably coupled to said recessed portion (13) via the cover lid (14c) and extend out of the base surface thereof.
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, 5, 6, 12, 13, 15-18, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korea Publication No. KR 101534441 B1) in view of Asai (Japan Pub. No. JP 2005254398 A).
Please be advised that Asai was previously cited on the PTO-892 mailed on 1/16/2025.
Please note that a Machine Translation of Asai is relied upon below. This Machine Translation of Asai was furnished with the office action that mailed on 1/16/2025.
Claim 1: Figures 5 and 6 of Kim show a cutting tool. While not shown therein, it is noted that the cutting tool comprises a shank (12) [Machine Translation, page 11, lines 39-44]. Please be advised that the shank (12) has a (proximal) drive end for interfacing with a powered driver, e.g. a drill tool [Machine Translation, page 8, lines 18-20]. Figures 5 and 6 of Kim further show the cutting tool as comprising a body portion (11). Be advised that the body portion (11) is operably coupled to a distal end of the shank (12) and extending away from the shank (12). Again, while not shown therein, it is noted that the cutting tool comprises a cutting portion (10) [Machine Translation, page 11, lines 39-44]. As to the cutting portion (10), it (10) has a plurality of cutting edges and extends from the body portion (11). Please note that the cutting portion (10) shares an axis with the shank (12) and the body portion (11).
The cutting tool further comprises a deburring assembly (14, 14, 15a). Please be advised that the deburring assembly (14, 14, 15a) comprises a brush body (14d), a sliding body (15a), and a second brush body (14d). Please further be advised that the brush body (14d) in turn comprises a plurality of brush filaments (14a), while the second brush body (14d) in turn comprises a second plurality of brush filaments (14a). Noting this, Figure 6 of Kim shows the deburring assembly (14, 14, 15a) as being operably coupled to the body portion (11).
For Applicant’s reference, each of the brush body (14d), the sliding body (15a), and the second brush body (14d) have been pointed to below in annotated Figure 5 of Kim.
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Next, rotation of the cutting tool as it is moved longitudinally through a hole just cut by said cutting tool will cause the deburring assembly (14) to engage and deburr the hole. As long as the cutting tool is moved longitudinally far enough into the hole, Kim’s deburring assembly (14, 14, 15a) will be fully inserted into the hole cut by the cutting tool.
Regarding the body portion (11) of Kim, it (11) comprises a slot forming a channel that extends through the body portion (11) substantially perpendicular to the axis. Please be advised that in extending “through” the body portion (11), two opposed recesses (13, 13) of the slot are formed in the body portion (11). It is noted that plurality of brush filaments (14a) extends through one (13) of the two opposed recesses (13, 13), while the second plurality of brush filaments (14a) extends through another one (13) of the two opposed recesses (13, 13). For Applicant’s reference, the slot (at least an approximation thereof) has been pointed to below in annotated Figure 6. Please be advised that the extent of the slot is approximated in annotated Figure 6, since only a portion of the body portion (11) is shown by Kim in Figure 6.
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Next, as can be seen below in version 2 of annotated Figure 6 of Kim, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of opposing first and second sides of the slot and the body portion on opposing first and second sides of the axis.
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Kim though, does not disclose either the brush body (14d) or the second brush body (14d) utilizing epoxy. Thus, Kim does not provide disclosure upon the plurality of brush filaments (14a) being “bundled together and retained by an epoxy holding member.” Examiner reiterates that the brush body (14d) comprises the plurality of brush filaments (14a). Please note that the plurality of brush filaments (14a) are bundled together and retained in/at the brush body (14d).
Figure 1 of Asai though, shows a cup brush (10) for deburring, wherein the cup brush (10) comprises a brush body (15) within which a plurality of brush filaments (11) are retained. As can be seen in Figure 1, disposed within the brush body (15) is an epoxy holding member (13, 14) which comprises a fixing portion (13) and an adhesive (14) such as epoxy [Machine Translation of Asai, page 3, lines 32-35]. Please note that the epoxy holding member (13, 14) serves to retain the plurality of brush filaments (11) in a bundle (12). Also, per Asai, in the cup brush (10), the tips on the ground surface of the bundle (12) of the plurality of brush filaments (11) are uniformly planted with a height different of 1mm or less, which makes grinding work such as removing metal burrs and chamfering corners even more efficient [Machine Translation of Asai, page 3, lines 36-39].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have uniformly planted the plurality of brush filaments (14a) in the brush body (14d) of Kim with an epoxy holding member (13, 14) of Asai and to have likewise uniformly planted the second plurality of brush filaments (14a) in the second brush body (14d) of Kim with a second epoxy holding member (13, 14) of Asai, so as to ensure that the plurality of brush filaments (14a) of Kim has a height different of 1mm or less and to ensure that the second plurality of brush filaments (14a) of Kim also has a height different of 1mm or less, which according to Asai, provides the advantage of making grinding work such as removing metal burrs and chamfering corners even more efficient.
In making this modification, the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Thus, “the deburring assembly comprises a plurality of brush filaments [14a] bundled together and retained by an epoxy holding element [13, 14]” limitation is read on by Kim/Asai.
Furthermore, in making the above modification, the second plurality of brush filaments (14a) are bundled together and retained in the modified second brush body (14d) of Kim with the second epoxy holding member (13, 14) of Asai.
For Applicant’s reference, Figure 6 of Kim is again being provided. In doing so, Examiner has done his best to show how the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Noting this, as can be seen below, the plurality of brush filaments (14a) extend out of opposite sides of the epoxy holding member (13, 14), i.e. out of out of opposing first and second sides of the epoxy holding member (13, 14).
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Lastly, as can be seen below, in the modified brush body (14d) of Kim, the epoxy holding member (13, 14) is retained in the slot to position the plurality of brush filaments (14a) to extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of the opposing first and second sides of the slot and the body portion on the opposing first and second sides of the axis.
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Claim 2: According to Kim, the shank (12) is detachable from the body portion (11) [Machine Translation, page 8, lines 5-8]. Thus, when the shank (12) is detached from the body portion (11), the deburring assembly (14, 14, 15a) is able to be removed through the body portion (11) and replaced. Based on the foregoing, in accordance with claim 2, the deburring assembly (14, 14, 15a) is “removable and replaceable.”
Claim 5: As was stated above in the rejection of claim 1, the cutting tool comprises two opposed recesses (13, 13). Each of the two opposed recesses (13, 13) is in and of itself “a recessed portion.” Noting this, Figure 5 of Kim has been annotated and provided below. Please note that a vertical wall portion of the recessed portion (13) shown below in Figure 5 is “a base surface.”
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As can be seen above, the base surface extends tangential to a (virtual) circle (which corresponds to an inner diameter of the hollow body portion (11)) having a radius defined by a distance extending from the axis to the base surface.
Next, as can be seen in the right-hand side of Figure 6, at least when the brush body (14d) of Kim interfaces with recessed portion (13), the plurality of filaments (14a) are operably coupled to said recessed portion (13) via the brush body (14d) and extend out of the base surface thereof.
Claim 6: Examiner reiterates that the vertical wall portion of the recessed portion (13) that is shown above in annotated Figure 5 is the “base surface.” Noting this, the horizontally oriented plurality of filaments (14a) extend perpendicular to the base surface.
Claim 12: Figures 5 and 6 of Kim show the cutting tool. While not shown therein, it is noted that the cutting tool comprises a cutting portion (10) which is identical to that of Figures 1-4b [Machine Translation, page 11, lines 39-44]. Since the cutting portion (10) of the cutting tool of Figures 5-6 is identical to the cutting portion (10) of the cutting tool of Figures 1-4b, it is inherent that a diameter of the body portion (11) of Figures 5-6 to which the cutting portion (10) is attached is identical to the diameter of the body portion (11) of Figures 1-4b to which the cutting portion (10) is attached. Please be advised that this diameter can be seen below.
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Next, a length of the plurality of brush filaments (14a) is shown below.
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Kim though, does not provide disclosure upon the length of the plurality of brush filaments (14a) is “between 3% and 50% larger than a diameter of the body portion.”
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have caused a length of the plurality of brush filaments (14a) of the deburring assembly (14, 14, 15a) of Kim to be between 3% and 50% larger than the aforedescribed diameter of the body portion (11), since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the plurality of brush filaments (14a) of the deburring assembly (14, 14, 15a) of Kim would not operate different with the claimed range, noting that a radial position/projection length of the plurality of brush filaments (14a) would remain adjustable by means of the sliding body (15a) (see Figure 5 of Kim) of the cutting tool. Furthermore, Applicant places no criticality on the range claimed in indicating that “a length of the brush filaments may be greater than a diameter of the body portion” and further indicating that “the length of the brush filaments may be 3% to 50% larger than the diameter of the body portion” [Applicant’s specification, page 5, lines 8-10]. Noting that the brush filaments “may be” greater than a diameter of the body portion and “may be” 3% to 50% larger than the diameter of the body portion, the claimed range is not critical. Based on the foregoing, claim 12 is satisfied.
Claim 13: According to Kim, the plurality of brush filaments (14a) comprise a plastic material (synthetic resin, specifically nylon) which is impregnated with abrasive material [Machine Translation, page 8, lines 59-60].
Claim 15: As was stated above in the rejection of claim 1, the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai.
Noting the above, the epoxy (14) of the epoxy holding member (13, 14) retains the plurality of brush filaments (14a) in the slot that forms the channel that extends through the body portion (11) substantially perpendicular to the axis.
Claim 16: As can be seen below in annotated Figure 6 of Kim, a length of the slot is longer than a width of the slot. Kim though, does not provide disclosure upon the “length of the slot is about five times longer than a width of the slot.”
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Please be advised that sufficient length and width of the slot must be present such that there is clearance within the slot for the deburring assembly (14, 14, 15a) to fit and such that the plurality of brush filaments (14a) are able to project through the two, opposing recesses (13) of the slot for deburring. As such, the length and width of the slot are result effective variables in that changing the dimensions of the slot affect guidance of the plurality of brush filaments (14a) for deburring of a workpiece. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the slot of the body portion (11) of Kim by making the length of the slot about five times greater than the width of the slot as a matter of routine optimization, since it has been held that “where 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 17: Figures 5 and 6 of Kim show a drill bit [Machine Translation, abstract]. While not shown therein, the drill bit comprises a shank (12) [Machine Translation, page 11, lines 39-44]. Please be advised that the shank (12) has a (proximal) drive end for interfacing with a powered driver, e.g. a drill tool [Machine Translation, page 8, lines 18-20]. Figures 5 and 6 of Kim further show the drill bit as comprising a drill portion (11) [Machine Translation, page 7, line 37] which will hereinafter be referred to as a body portion (11). Be advised the body portion (11) is operably coupled to a distal end of the shank (12) and extending away from the shank (12). Again, while not shown therein, note that the drill bit comprises a cutting portion (10) [Machine Translation, page 11, lines 39-44]. As to the cutting portion (10), it (10) has a plurality of cutting edges and extends from the body portion (11). Please note that the cutting portion (10) shares an axis with the shank (12) and the body portion (11).
The drill bit further comprises a deburring assembly (14, 14, 15a). Please be advised that the deburring assembly (14, 14, 15a) comprises a brush body (14d), a sliding body (15a), and a second brush body (14d). Please further be advised that the brush body (14d) in turn comprises a plurality of brush filaments (14a), while the second brush body (14d) in turn comprises a second plurality of brush filaments (14a).
For Applicant’s reference, each of the brush body (14d), the sliding body (15a), and the second brush body (14d) have been pointed to below in annotated Figure 5 of Kim.
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Regarding the body portion (11) of Kim, it (11) comprises a slot forming a channel that extends through the body portion (11) substantially perpendicular to the axis. Please be advised that in extending “through” the body portion (11), two opposing recesses (13, 13) of the slot are formed in the body portion (11). It is noted that plurality of brush filaments (14a) extends through one (13) of the two opposing recesses (13, 13), while the second plurality of brush filaments (14a) extends through another one (13) of the two opposing recesses (13, 13). For Applicant’s reference, the slot (at least an approximation thereof) has been pointed to below in annotated Figure 6. Please be advised that the extent of the slot is approximated in annotated Figure 6, since only a portion of the body portion (11) is shown by Kim in Figure 6.
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Also, as can be seen above, the deburring assembly (14, 14, 15a) is disposed in the slot in the body portion (11).
Next, as can be seen below in version 2 of annotated Figure 6 of Kim, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of opposing first and second sides of the slot and the body portion on opposing first and second sides of the axis.
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Kim though, does not disclose either the brush body (14d) or the second brush body (14d) utilizing epoxy. Thus, Kim does not provide disclosure upon the plurality of brush filaments (14a) being “bundled together and retained by an epoxy holding member.” Examiner reiterates that the brush body (14d) comprises the plurality of brush filaments (14a). Please note that the plurality of brush filaments (14a) are bundled together and retained in/at the brush body (14d).
Figure 1 of Asai though, shows a cup brush (10) for deburring, wherein the cup brush (10) comprises a brush body (15) within which a plurality of brush filaments (11) are retained. As can be seen in Figure 1, disposed within the brush body (15) is an epoxy holding member (13, 14) which comprises a fixing portion (13) and an adhesive (14) such as epoxy [Machine Translation of Asai, page 3, lines 32-35]. Please note that the epoxy holding member (13, 14) serves to retain the plurality of brush filaments (11) in a bundle (12). Also, per Asai, in the cup brush (10), the tips on the ground surface of the bundle (12) of the plurality of brush filaments (11) are uniformly planted with a height different of 1mm or less, which makes grinding work such as removing metal burrs and chamfering corners even more efficient [Machine Translation of Asai, page 3, lines 36-39].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have uniformly planted the plurality of brush filaments (14a) in the brush body (14d) of Kim with an epoxy holding member (13, 14) of Asai and to have likewise uniformly planted the second plurality of brush filaments (14a) in the second brush body (14d) of Kim with a second epoxy holding member (13, 14) of Asai, so as to ensure that the plurality of brush filaments (14a) of Kim has a height different of 1mm or less and to ensure that the second plurality of brush filaments (14a) of Kim also has a height different of 1mm or less, which according to Asai, provides the advantage of making grinding work such as removing metal burrs and chamfering corners even more efficient.
In making this modification, the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Thus, “the deburring assembly comprises a plurality of brush filaments [14a] bundled together and retained by an epoxy holding element [13, 14]” limitation is read on by Kim/Asai.
Furthermore, in making the above modification, the second plurality of brush filaments (14a) are bundled together and retained in the modified second brush body (14d) of Kim with the second epoxy holding member (13, 14) of Asai.
For Applicant’s reference, Figure 6 of Kim is again being provided. In doing so, Examiner has done his best to show how the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Noting this, as can be seen below, the plurality of brush filaments (14a) extend out of opposite sides of the epoxy holding member (13, 14), i.e. out of out of opposing first and second sides of the epoxy holding member (13, 14).
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Moreover, as can be seen below, in the modified brush body (14d) of Kim, the epoxy holding member (13, 14) is retained in the slot to position the plurality of brush filaments (14a) to extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis, such that the deburring assembly (14, 14, 15a) is removably and replaceable. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of the opposing first and second sides of the slot and the body portion on the opposing first and second sides of the axis.
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Lastly, as it pertains to, “the deburring assembly [14, 14, 15a] is removable and replaceable,” please be advised of the following. The shank (12) of the drill bit is detachable from the body portion (11) [Machine Translation, page 8, lines 5-8]. Thus, when the shank (12) is detached from the body portion (11), the deburring assembly (14, 14, 15a) is able to be removed through the body portion (11) and replaced. Thus, the aforesaid deburring assembly (14, 14, 15a) is “removable and replaceable.”
Claim 18: Figures 5 and 6 of Kim show the drill bit. While not shown therein, it is noted that the drill bit comprises a cutting portion (10) which is identical to that shown in Figures 1-4b [Machine Translation, page 11, lines 39-44]. Since the cutting portion (10) of the drill bit of Figures 5-6 is identical to the cutting portion (10) of the drill bit/cutting tool of Figures 1-4b, it is inherent that a diameter of the body portion (11) of Figures 5-6 to which the cutting portion (10) is attached is identical to the diameter of the body portion (11) of Figures 1-4b to which the cutting portion (10) is attached. Please be advised that this diameter can be seen below.
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Next, a length of the plurality of brush filaments (14a) is shown below.
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Kim though, does not provide disclosure upon the length of the plurality of brush filaments (14a) is “between 3% and 50% larger than a diameter of the body portion.”
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have caused a length of the plurality of brush filaments (14a) of the deburring assembly (14, 14, 15a) of Kim to be between 3% and 50% larger than the aforedescribed diameter of the body portion (11), since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the plurality of brush filaments (14a) of the deburring assembly (14, 14, 15a) of Kim would not operate different with the claimed range, noting that a radial position/projection length of the plurality of brush filaments (14a) would remain adjustable by means of the sliding body (15a) (see Figure 5 of Kim) of the drill bit. Furthermore, Applicant places no criticality on the range claimed in indicating that “a length of the brush filaments may be greater than a diameter of the body portion” and further indicating that “the length of the brush filaments may be 3% to 50% larger than the diameter of the body portion” [Applicant’s specification, page 5, lines 8-10]. Noting that the brush filaments “may be” greater than a diameter of the body portion and “may be” 3% to 50% larger than the diameter of the body portion, the claimed range is not critical. Based on the foregoing, claim 18 is satisfied.
Claim 22: As was stated above in the rejection of claim 17, the cutting tool comprises two opposed recesses (13, 13). Each of the two opposed recesses (13, 13) is in and of itself “a recessed portion.” Noting this, Figure 5 of Kim has been annotated and provided below. Please note that a vertical wall portion of the recessed portion (13) shown below in Figure 5 is “a base surface.”
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As can be seen above, the base surface extends tangential to a (virtual) circle (which corresponds to an inner diameter of the hollow body portion (11)) having a radius defined by a distance extending from the axis to the base surface.
Next, as can be seen in the right-hand side of Figure 6, at least when the brush body (14d) of Kim interfaces with recessed portion (13), the plurality of filaments (14a) are operably coupled to said recessed portion (13) via the brush body (14d) and extend out of the base surface thereof.
Claim 23: Examiner reiterates that the vertical wall portion of the recessed portion (13) that is shown on the previous page in annotated Figure 5 is the “base surface.” Noting this, the horizontally oriented plurality of filaments (14a) extend perpendicular to the base surface.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korea Publication No. KR 101534441 B1) in view of Asai (Japan Pub. No. JP 2005254398 A), and further in view of Kobori (Japan Publication No. JP 2004237383 A).
Please be advised that Kobori was previously cited on the PTO-892 mailed on 1/16/2025.
Please note that a Machine Translation of Kobori relied upon below. This Machine Translation of Kobori was furnished with the office action mailed on 1/16/2025.
Claim 14: According to Kim, the plurality of brush filaments (14a) comprise a plastic material (synthetic resin, specifically nylon) which is impregnated with abrasive material [Machine Translation, page 8, lines 59-60]. Kim though, does not provide disclosure on the abrasive material “comprising aluminum oxide.”
Figures 3 and 4 of Kobori though, show a deburring brush (70) having a plurality of filaments (72) comprising a plastic material (nylon fibers) impregnated with abrasive material comprising alumina oxide [Machine Translation of Kobori, paragraph 0032].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the specific alumina oxide abrasive material of Kobori for the generic abrasive material of Kim, as this is substitution of one known abrasive material used in nylon brush filaments for deburring for another, in order to obtain the predictable result of the plurality of brush filaments (14a) of Kim providing for deburring of a workpiece with which the plurality of brush filaments (14a) impregnated with the abrasive material comprising alumina oxide of Kobori are in operative contact.
Response to Arguments
Applicant’s arguments, see page 8, line 15 – page 12, line 5, filed 4/20/2026, with respect to the rejection(s) of independent claims 1 and 17 under 35 U.S.C. 102(a)(1) as being anticipated by Lemelson (U.S. Patent No. 3,227,012 A) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection independent claims 1 and 17 is made under 35 U.S.C. 103 as being unpatentable over Kim (Korea Publication No. KR 101534441 B1) in view of Asai (Japan Pub. No. JP 2005254398 A). Please be advised that Kim was prior art that Examiner previously applied in the Final Rejection mailed on 5/28/2025. Having said that, in the claim set filed on 8/25/2025 (in response to said Final Rejection mailed on 5/28/2025), Applicant added a new limitation to each of independent claims 1 and 17 corresponding to, “wherein the shank, body portion and cutting portion are all monolithic with each other.” Kim did not read on this limitation, and as such, Kim was not applied as prior art in the Non-Final Rejection mailed on 9/19/2025. This Non-Final Rejection mailed on 9/19/2025 was in response to the claim set filed on 8/25/2025.
Noting the above, in the Non-Final Rejection mailed on 9/19/2025, it was advised on pages 5-7 thereof that disclosure was not provided for, “wherein the shank, body portion and cutting portion are all monolithic with each other.” As such, independent claims 1 and 17 were each rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. In response, in the current claim set filed on 4/20/2026, Applicant deleted/lined through, “wherein the shank, body portion and cutting portion are all monolithic with each other.” As a result, Kim was once again able to be utilized by Examiner as prior art. This time, Kim was applied as the base reference in the new ground(s) of rejection independent claims 1 and 17 under 35 U.S.C. 103 as being unpatentable over Kim (Korea Publication No. KR 101534441 B1) in view of Asai (Japan Pub. No. JP 2005254398 A).
With regards to Asai (Japan Pub. No. JP 2005254398 A), please be advised that it was applied in the last office action (the Non-Final Rejection mailed on 9/19/2025) as a modifying reference in a rejection under 35 U.S.C. 103 of dependent claims 15-16. In the current rejection, Asai is applied by Examiner as a modifying reference in rejecting claims 1, 2, 5, 6, 12, 13, 15-18, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korea Publication No. KR 101534441 B1) in view of Asai (Japan Pub. No. JP 2005254398 A).
Noting the above, Applicant’s arguments concerning claim 1, see pages 8-9, filed 4/20/2026, are directed toward the following:
Independent claim 1 has been amended to recite, inter alia, a cutting tool comprising a body portion and a cutting portion having a deburring assembly disposed therein wherein the body portion comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis, wherein the deburring assembly comprises a plurality of brush filaments bundled together and retained by an epoxy holding member, wherein the plurality of brush filaments extend from both opposite sides of the epoxy holding member, and wherein the epoxy holding member is retained in the slot to position the plurality of brush filaments to extend substantially perpendicular to the axis, out opposite sides of the slot and the body portion on opposite sides of the axis. In this regard, the Applicants submit that there is a glaring lack of structural similarity between the claimed invention and the combination of prior art, namely Lemelson in any combination thereof with Kobori or Asai.
Again, Examiner agrees that neither Lemelson alone nor Lemelson in combination with Kobori or Asai read on these limitations.
Next, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “a cutting portion having a deburring assembly disposed therein”) 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, 26 USPQ2d 1057 (Fed. Cir. 1993). Please be advised that Applicant actually claimed in claim 1, “a deburring assembly operably coupled to the cutting portion or the body portion” and NOT “a cutting portion having a deburring assembly disposed therein.”
Next, with regards to the body portion (11) of Kim, said body portion (11) comprises a slot forming a channel that extends through the body portion (11) substantially perpendicular to the axis. Please be advised that in extending “through” the body portion (11), two opposed recesses (13, 13) of the slot are formed in the body portion (11). It is noted that plurality of brush filaments (14a) extends through one (13) of the two opposed recesses (13, 13), while the second plurality of brush filaments (14a) extends through another one (13) of the two opposed recesses (13, 13). For Applicant’s reference, the slot (at least an approximation thereof) has been pointed to below in annotated Figure 6. Please be advised that the extent of the slot is approximated in annotated Figure 6, since only a portion of the body portion (11) is shown by Kim in Figure 6. Thus, Kim reads on, “wherein the body portion comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis.” Please note that this slot can be seen in the annotated figure provided on the next page.
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As it pertains to, “wherein the deburring assembly comprises a plurality of brush filaments bundled together and retained by an epoxy holding member, wherein the plurality of brush filaments extend from both opposite sides of the epoxy holding member, and wherein the epoxy holding member is retained in the slot to position the plurality of brush filaments to extend substantially perpendicular to the axis, out opposite sides of the slot and the body portion on opposite sides of the axis,” Examiner will now proceed to explain as to how this is read on by Kim in view of Asai.
As was advised above in the rejection of claim 1, Kim does not provide disclosure upon the plurality of brush filaments (14a) being “bundled together and retained by an epoxy holding member.” As was also advised above in the rejection of claim 1, the brush body (14d) comprises the plurality of brush filaments (14a), and said plurality of brush filaments (14a) are bundled together and retained in/at the brush body (14d).
Figure 1 of Asai though, shows a cup brush (10) for deburring, wherein the cup brush (10) comprises a brush body (15) within which a plurality of brush filaments (11) are retained. As can be seen in Figure 1, disposed within the brush body (15) is an epoxy holding member (13, 14) which comprises a fixing portion (13) and an adhesive (14) such as epoxy [Machine Translation of Asai, page 3, lines 32-35]. Please note that the epoxy holding member (13, 14) serves to retain the plurality of brush filaments (11) in a bundle (12). Also, per Asai, in the cup brush (10), the tips on the ground surface of the bundle (12) of the plurality of brush filaments (11) are uniformly planted with a height different of 1mm or less, which makes grinding work such as removing metal burrs and chamfering corners even more efficient [Machine Translation of Asai, page 3, lines 36-39].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have uniformly planted the plurality of brush filaments (14a) in the brush body (14d) of Kim with an epoxy holding member (13, 14) of Asai and to have likewise uniformly planted the second plurality of brush filaments (14a) in the second brush body (14d) of Kim with a second epoxy holding member (13, 14) of Asai, so as to ensure that the plurality of brush filaments (14a) of Kim has a height different of 1mm or less and to ensure that the second plurality of brush filaments (14a) of Kim also has a height different of 1mm or less, which according to Asai, provides the advantage of making grinding work such as removing metal burrs and chamfering corners even more efficient.
In making this modification, the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Thus, “the deburring assembly comprises a plurality of brush filaments [14a] bundled together and retained by an epoxy holding element [13, 14]” limitation is read on by Kim/Asai.
Furthermore, in making the above modification, the second plurality of brush filaments (14a) are bundled together and retained in the modified second brush body (14d) of Kim with the second epoxy holding member (13, 14) of Asai.
For Applicant’s reference, Figure 6 of Kim is provided below. In doing so, Examiner has done his best to show how the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Noting this, as can be seen below, the plurality of brush filaments (14a) extend out of opposite sides of the epoxy holding member (13, 14), i.e. out of out of opposing first and second sides of the epoxy holding member (13, 14).
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Lastly, as can be seen below, in the modified brush body (14d) of Kim, the epoxy holding member (13, 14) is retained in the slot to position the plurality of brush filaments (14a) to extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of the opposing first and second sides of the slot and the body portion on the opposing first and second sides of the axis.
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Based on the foregoing, Applicant’s arguments are not persuasive, and the limitations of independent claim 1 are read on by Kim in view of Asai.
Next, Applicant’s arguments concerning claim 17, see pages 10-11, filed 4/20/2026, are directed toward the following:
Independent claim 17 has been amended to recite, inter alia, a cutting tool comprising a body portion having a deburring assembly disposed therein wherein the body portion comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis, a deburring assembly disposed in the slot formed in the body portion, wherein the deburring assembly comprises a plurality of brush filaments bundled together and retained by an epoxy holding member, wherein the plurality of brush filaments extend out of opposite sides of the epoxy holding member, and wherein the epoxy holding member is retained in the slot to position the plurality of brush filaments to extend substantially perpendicular to the axis, out opposite sides of the slot and the body portion on opposite sides of the axis, such that the deburring assembly is removable and replaceable. As argued above, Applicants submit that Lemelson does not disclose the limitations as written in the newly amended claim.
Again, Examiner agrees that Lemelson does not disclose this combination of limitations. Moreover, Lemelson in combination with Kobori or Asai also does not read on these limitations.
Next, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “a cutting tool comprising a body portion having a deburring assembly…”) 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, 26 USPQ2d 1057 (Fed. Cir. 1993). Please be advised that claim 17 is NOT directed toward “a cutting tool.” Rather, claim 17 is directed toward “a drill bit.”
Next, with regards to the body portion (11) of Kim, said body portion (11) comprises a slot forming a channel that extends through the body portion (11) substantially perpendicular to the axis. Please be advised that in extending “through” the body portion (11), two opposing recesses (13, 13) of the slot are formed in the body portion (11). It is noted that plurality of brush filaments (14a) extends through one (13) of the two opposing recesses (13, 13), while the second plurality of brush filaments (14a) extends through another one (13) of the two opposing recesses (13, 13). For Applicant’s reference, the slot (at least an approximation thereof) has been pointed to below in annotated Figure 6. Please be advised that the extent of the slot is approximated in annotated Figure 6, since only a portion of the body portion (11) is shown by Kim in Figure 6.
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Also, as can be seen above, the deburring assembly (14, 14, 15a) is disposed in the slot in the body portion (11). Thus, Kim reads on, “a slot forming a channel that extends through the body portion substantially perpendicular to the axis, a deburring assembly disposed in the slot formed in the body portion.”
As it pertains to, “wherein the deburring assembly comprises a plurality of brush filaments bundled together and retained by an epoxy holding member, wherein the plurality of brush filaments extend out of opposite sides of the epoxy holding member, and wherein the epoxy holding member is retained in the slot to position the plurality of brush filaments to extend substantially perpendicular to the axis, out opposite sides of the slot and the body portion on opposite sides of the axis, such that the deburring assembly is removable and replaceable,” Examiner will now explain as to how this is read on by Kim in view of Asai.
As was advised above in the rejection of claim 17, Kim does not provide disclosure upon the plurality of brush filaments (14a) being “bundled together and retained by an epoxy holding member.” As was also advised above in the rejection of claim 17, the brush body (14d) comprises the plurality of brush filaments (14a), and said plurality of brush filaments (14a) are bundled together and retained in/at the brush body (14d).
Figure 1 of Asai though, shows a cup brush (10) for deburring, wherein the cup brush (10) comprises a brush body (15) within which a plurality of brush filaments (11) are retained. As can be seen in Figure 1, disposed within the brush body (15) is an epoxy holding member (13, 14) which comprises a fixing portion (13) and an adhesive (14) such as epoxy [Machine Translation of Asai, page 3, lines 32-35]. Please note that the epoxy holding member (13, 14) serves to retain the plurality of brush filaments (11) in a bundle (12). Also, per Asai, in the cup brush (10), the tips on the ground surface of the bundle (12) of the plurality of brush filaments (11) are uniformly planted with a height different of 1mm or less, which makes grinding work such as removing metal burrs and chamfering corners even more efficient [Machine Translation of Asai, page 3, lines 36-39].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have uniformly planted the plurality of brush filaments (14a) in the brush body (14d) of Kim with an epoxy holding member (13, 14) of Asai and to have likewise uniformly planted the second plurality of brush filaments (14a) in the second brush body (14d) of Kim with a second epoxy holding member (13, 14) of Asai, so as to ensure that the plurality of brush filaments (14a) of Kim has a height different of 1mm or less and to ensure that the second plurality of brush filaments (14a) of Kim also has a height different of 1mm or less, which according to Asai, provides the advantage of making grinding work such as removing metal burrs and chamfering corners even more efficient.
In making this modification, the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Thus, “the deburring assembly comprises a plurality of brush filaments [14a] bundled together and retained by an epoxy holding element [13, 14]” limitation is read on by Kim/Asai.
Furthermore, in making the above modification, the second plurality of brush filaments (14a) are bundled together and retained in the modified second brush body (14d) of Kim with the second epoxy holding member (13, 14) of Asai.
For Applicant’s reference, Figure 6 of Kim is provided below. In doing so, Examiner has done his best to show how the plurality of brush filaments (14a) are bundled together and retained in the modified brush body (14d) of Kim with the epoxy holding member (13, 14) of Asai. Noting this, as can be seen below, the plurality of brush filaments (14a) extend out of opposite sides of the epoxy holding member (13, 14), i.e. out of out of opposing first and second sides of the epoxy holding member (13, 14).
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Moreover, as can be seen below, in the modified brush body (14d) of Kim, the epoxy holding member (13, 14) is retained in the slot to position the plurality of brush filaments (14a) to extend substantially perpendicular to the axis, out of opposite sides of the slot and the body portion on opposite sides of the axis, such that the deburring assembly (14, 14, 15a) is removably and replaceable. More specifically, the plurality of brush filaments (14a) extend substantially perpendicular to the axis, out of the opposing first and second sides of the slot and the body portion on the opposing first and second sides of the axis.
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Lastly, as it pertains to, “the deburring assembly [14, 14, 15a] is removable and replaceable,” please be advised of the following. The shank (12) of the drill bit is detachable from the body portion (11) [Machine Translation, page 8, lines 5-8]. Thus, when the shank (12) is detached from the body portion (11), the deburring assembly (14, 14, 15a) is able to be removed through the body portion (11) and replaced. Thus, the aforesaid deburring assembly (14, 14, 15a) is “removable and replaceable.”
Based on the foregoing, Applicant’s arguments are not persuasive, and the limitations of independent claim 17 are read on by Kim in view of Asai.
Lastly, Applicant’s arguments with respect to claim 24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please be advised that claim 24 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (Korea Publication No. KR 101534441 B1), and Applicant’s arguments are directed to Lemelson, Kobori, and Asai.
Allowable Subject Matter
Claim 7 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
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 Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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