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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/28/2025 has been entered.
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Claim 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 are objected to because on page 6 of the drawings filed on 3/29/2022, Applicant uses both “FIG. 1A” and “FIG 6” to label the same figure. One of “FIG. 1A” and “FIG 6” should be removed. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 21-23 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 1-2 of claim 21 state, “wherein the body portion comprises a slot forming a channel that extends through the body portion.” This limitation is viewed to be vague and indefinite, because it is unclear if the slot forming a channel of claim 21 is the same slot or is a different slot than the “slot formed in the body portion” of independent claim 17 on which claim 21 directly depends.
Claims 22 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph based its dependency upon claim 21.
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, 4-7, 12-18, and 21-23 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.
Line 7 of each of claims 1 and 17 state, “wherein the shank, body portion and cutting portion are all monolithic with each other.” Disclosure for this limitation; however, is not provided in the drawings or in the specification.
With respect to the drawings filed on 3/29/2022, please first be advised that Figure 1 shows a first embodiment of a drill bit (100), in which the drill bit (100) includes a shank (110), a body portion (120), and a cutting portion (130). Likewise, Figure 5 shows a second embodiment of a drill bit (200), in which the drill bit (200) includes a shank (210), a body portion (220), and a cutting portion (230). Lastly, Figure 9 shows a portion of a third embodiment of a drill bit (300), in which the drill bit (300) includes a body portion (340) and a cutting portion (320). In none of Figures 1, 5, or 9, or in any of the remaining figures for that matter, can it be definitively determined that “the shank, body portion, and cutting portion are all monolithic with each other.”
Please be advised that it is not a matter of whether something is merely likely, but rather when something has to be a certain way. While it may be likely, for example, that “the shank, body portion, and cutting portion are all monolithic with each other,” there isn’t a cross-section or a view provided by Applicant in any of the figures filed on 3/29/2022 (or filed later on 4/15/2025) that definitively shows that “the shank, body portion, and cutting portion are all monolithic with each other” as is claimed.
Examiner cannot discount the possibility, however likely or unlikely that possibility may or may not be, that at least one of the shank, body portion, and cutting portion of the drill bit (cutting tool) is joined in some manner to one of the other elements such that “the shank, body portion, and cutting portion” aren’t in fact “all monolithic with each other” as is claimed in independent claims 1 and 17. Therefore, the drawings filed on 3/29/2022 do not provide support for “wherein the shank, body portion and cutting portion are all monolithic with each other.”
With respect to the specification filed on 3/29/2022, at no point therein is the term “monolithic” ever used by Applicant. Noting this, in the arguments filed on 8/28/2025 with respect to the previously set forth rejection under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 101534441 B1), Applicant points to the following excerpt from the specification in seemingly advising why Applicant believes there is disclosure provided for, “wherein the shank, body portion and cutting portion are all monolithic with each other.”
[specification, page 6, lines 18 – 29] In an example embodiment in which the drill bit 100 is made as a carbide bit, the material used to form the drill bit 100 may be pre-formed, and then the slot 122 may be machined or formed therein before sintering. After sintering, the carbine bit may be hardened with the slot 122 formed therein. The epoxy 144 may then be placed around the bundle of brush filaments 142 and the deburring assembly 140 may be placed in the slot 122. When the epoxy 144 cures, the deburring assembly 140 may be rigidly retained in the drill bit 100. To the extent the deburring assembly 140 becomes worn and needs to be replaced, the body portion 120 may be heated until the epoxy 144 fails. The old brush filaments may then be removed along with the heated epoxy from the slot 122. The slot 122 may be cleaned of any remnants or residue, and then a new deburring assembly 140 may be provided in the slot 122. The new deburring assembly 140 may be the same type as the one that was removed, or may be of a different type (i.e., having different characteristics with respect to filament material, length or diameter).
As can be seen above, Applicant discloses that the drill bit (100) “is made as a carbide bit,” and in doing so, discloses that “the material used to form the drill but 100 may be pre-formed.” Noting this, Applicant doesn’t expound upon what is meant by “is made as a carbide bit.” Is this to mean that the drill bit (100) is solid carbide, for example, or is this to mean that the drill bit (100) is a carbide-tipped bit, for example? Applicant doesn’t say. Moreover, disclosing “the material used to form the drill bit 100 may be pre-formed” isn’t a definitive indicator for, “wherein the shank, body portion and cutting portion are all monolithic with each other.” Again, it is not a matter of whether something is merely likely, but rather when something has to be a certain way.
While it may be likely, for example, that “the shank, body portion, and cutting portion are all monolithic with each other,” disclosing, “In an example embodiment in which the drill bit 100 is made as a carbide bit, the material used to form the drill bit 100 may be pre-formed,” doesn’t definitively indicate that “the shank, body portion, and cutting portion are all monolithic with each other.” Examiner cannot eliminate the possibility that, for example, the drill bit is pre-formed from a material other than carbide, and the reason why the drill bit is considered to be “made as a carbide bit” is because, for example, the drill bit is a carbide-tipped bit having a carbide tip that is brazed thereon, for example. With brazing or another form of joining, for example, when it comes to the cutting portion, then the drill bit wouldn’t be monolithic. Please note that the part of the specification that Applicant points to for disclosure doesn’t even specifically address “the shank, body portion and cutting portion.” Thus, there isn’t anything in page 6, lines 18 – 29 of the specification, or elsewhere in the specification for that matter, that definitive provides disclosure for, “wherein the shank, body portion and cutting portion are all monolithic with each other.”
Since neither the specification nor the drawings are in agreement with or provide support for the claimed subject matter, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 2, 4-7, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph based on their dependency upon claim 1.
Claims 18 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph based on their dependency upon claim 17.
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.
Claims 1, 2, 4, 17, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lemelson (U.S. Patent No. 3,227,012 A).
Note that Lemelson was cited by Examiner on the PTO-892 mailed on 1/16/2025.
Claim 1: Lemelson discloses a cutting tool (20) comprising each of a shank (23), a body portion, and a cutting portion (21, 22). Regarding the shank (23), it has a drive end for interfacing with a powered driver such as a drill [column 1, lines 17-18]. As to the body portion, it corresponds to the portion of the cutting tool (20) extending between the shank and a tapping portion (22) of the cutting tool (20). Noting this, it can be seen below in annotated Figure 1 of Lemelson that the body portion is operably coupled to and extending away from the shank (23). As to the cutting portion (21, 22), it comprises each of a drill portion (21) and the tapping portion (22) [column 1, lines 37-39], and it (21, 22) extends from the body portion and shares an axis with the shank and the body portion. Also, the cutting portion (21, 22) includes a plurality of cutting edges, wherein at least one respective cutting edge of the plurality of cutting edges is provided on each of the drill portion (21) and the tapping portion (22).
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Next, as can be seen above, the cutting tool (20) further comprises a deburring assembly (26, 27) that is operably coupled to the body portion.
Also, as can be determined by the hatch lines in Figure 1 of Lemelson, the shank, the body portion, and the cutting portion (21, 22) “are all monolithic with each other.”
Also, rotation of the cutting tool (20) as it is moved longitudinally through a hole just cut and tapped will cause a plurality of brush filaments (27) of the deburring assembly (26, 27) to engage and deburr or the threads just tapped [column 1, lines 48-51]. As such, as long as the cutting tool (20) is moved longitudinally far enough into the hole being cut, it follows that the deburring assembly (26, 27) will be fully inserted into the hole cut by the cutting tool (20). Thus, the deburring assembly (26, 27) of Lemelson is “configured to be fully insertable into a hole cut by the cutting tool [20].”
Lastly, as broadly claimed, the plurality of brush filaments (27) of the deburring assembly (26, 27) extend out of the body portion “on opposite sides of the axis.” This can be seen below in annotated Figure 1 of Lemelson in which approximately half of the plurality of brush filaments (27) extend out of the body portion on a upper side of the axis, whereas the remaining half of the plurality of brush filaments (27) extend out of the body portion on an opposing, lower side of the axis. (Please note that claim 1 doesn’t limit as to how or in what way that the claimed “opposite sides of the axis” are disposed).
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Claim 2: As can be seen in Figure 1 of Lemelson, a screw (29) passing through a first hole (23'') in the body potion is used to retain the deburring assembly (26, 27) within a second hole (23') [column 1, lines 51-54]. When the screw (29) is loosened and removed, the deburring assembly (26, 27) is able to be removed and replaced. As such, in accordance with claim 2, the deburring assembly (26, 27) of Lemelson is “removable and replaceable.”
Claim 4: The body portion of Lemelson comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis. Please note that the slot comprises a first hole (23''), a second hole (23'), and a third hole, wherein the third hole is a small diameter hole that connects the first (23'') and second holes (23') and in which a shank of a screw (29) is shown as extending through in Figure 1. Be advised that as a three-dimensional (3D) element, the slot extends in a plurality of directions, including in a direction substantially perpendicular to the axis of the cutting tool (20).
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Also, as can be seen above in annotated Figure 1 of Lemelson, the plurality of brush filaments (27) are bundled together so as to extend substantially perpendicular to the axis and extend out of the body portion and the slot, specifically through the second hole (23') of the slot, on the each of the opposite sides, e.g. the upper side and the opposing, lower side, of the axis. As can be seen above in annotated Figure 1 of Lemelson, approximately half of the plurality of brush filaments (27) extend out of the body portion on the upper side of the axis, whereas the remaining half of the plurality of brush filaments (27) extend out of the body portion on the opposing, lower side of the axis. (Please note that claim 4 doesn’t limit as to how or in what way that the claimed “opposite sides of the axis” are disposed).
Claim 17: Lemelson discloses a cutting tool (20) comprising each of a shank (23), a body portion, and a cutting portion (21, 22). Regarding the shank (23), it has a drive end for interfacing with a powered driver such as a drill [column 1, lines 17-18]. As to the body portion, it corresponds to the portion of the cutting tool (20) extending between the shank and a tapping portion (22) of the cutting tool (20). Noting this, it can be seen below in annotated Figure 1 of Lemelson that the body portion is operably coupled to and extending away from the shank (23). As to the cutting portion (21, 22), it comprises each of a drill portion (21) and the tapping portion (22) [column 1, lines 37-39], and it (21, 22) extends from the body portion and shares an axis with the shank and the body portion. Also, the cutting portion (21, 22) includes a plurality of cutting edges, wherein at least one respective cutting edge of the plurality of cutting edges is provided on each of the drill portion (21) and the tapping portion (22).
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Next, as can be seen above, the cutting tool (20) further comprises a deburring assembly (26, 27) that is disposed in a slot formed in the body portion. Please note that the slot comprises a first hole (23''), a second hole (23'), and a third hole, wherein the third hole is a small diameter hole that connects the first (23'') and second holes (23') and in which a shank of a screw (29) is shown as extending through in Figure 1. When this screw (29) of Lemelson is loosened and is removed, for example, the deburring assembly (26, 27) is able to be removed and replaced. Thus, the deburring assembly (26, 27) is “removable and replaceable.”
Also, as can be determined by the hatch lines in Figure 1 of Lemelson, the shank, the body portion, and the cutting portion (21, 22) “are all monolithic with each other.”
Lastly, as broadly claimed, a plurality of brush filaments (27) of the deburring assembly (26, 27) extend out of the body portion “on opposite sides of the axis.” This can be seen below in annotated Figure 1 of Lemelson in which approximately half of the plurality of brush filaments (27) extend out of the body portion on a upper side of the axis, whereas the remaining half of the plurality of brush filaments (27) extend out of the body portion on an opposing, lower side of the axis. (Please note that claim 17 doesn’t limit as to how or in what way that the claimed “opposite sides of the axis” are disposed).
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Claim 21: The body portion of Lemelson comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis. Note that the slot comprises the aforesaid first hole (23''), second hole (23'), and third hole, wherein the third hole is the small diameter hole that connects the first (23'') and second holes (23') and in which a shank of a screw (29) is shown as extending through in Figure 1. Be advised that as a three-dimensional (3D) element, the slot extends in a plurality of directions, including in a direction substantially perpendicular to the axis of the cutting tool (20).
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Also, as can be seen above in annotated Figure 1 of Lemelson, the plurality of brush filaments (27) are bundled together so as to extend substantially perpendicular to the axis and extend out of the body portion and the slot, specifically through the second hole (23') of the slot, on the each of the opposite sides, e.g. the upper side and the opposing, lower side, of the axis. As can be seen above in annotated Figure 1 of Lemelson, approximately half of the plurality of brush filaments (27) extend out of the body portion on the upper side of the axis, whereas the remaining half of the plurality of brush filaments (27) extend out of the body portion on the opposing, lower side of the axis. (Please note that claim 21 doesn’t limit as to how or in what way that the claimed “opposite sides of the axis” are disposed).
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 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lemelson (U.S. Patent No. 3,227,012 A).
Claims 12 & 18: As can be seen below within annotated Figure 1 of Lemelson, a length of the plurality of brush filaments (27) is shown in comparison to a diameter of the body portion.
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Lemelson though, does not provide disclosure upon the length of the plurality of brush filaments (27) 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 (27) of the deburring assembly (26, 27) of Lemelson to be between 3% and 50% larger than the diameter of the body portion, 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 (27) of the deburring assembly (26, 27) of Lemelson would not operate different with the claimed range, noting that as long as the cutting tool (20) is moved longitudinally far enough into the hole being cut, it follows that the deburring assembly (26, 27) will be fully inserted into the hole cut by the cutting tool (20).
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, claims 12 and 18 are satisfied.
Claims 13 and 14 rejected under 35 U.S.C. 103 as being unpatentable over Lemelson (U.S. Patent No. 3,227,012 A) 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.
Claims 13 & 14: Per Lemelson, the plurality of brush filaments (27) are made “of steel wire or the like” [column 1, lines 45-46]. When the plurality of brush filaments (27) are made steel wire, for example, said plurality of brush filaments (27) are themselves made of abrasive material. Lemelson though, does not teach the plurality of brush filaments (27) comprising, “a plastic material impregnated with abrasive material” (claim 13) and further does not teach, “wherein the abrasive material comprises aluminum oxide” (claim 14).
Figures 3 and 4 of Kobori though, show a deburring brush (70) having a plurality of filaments (72), each filament/bristle (72) thereof comprising a plastic material (nylon fiber) 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 each filament (27) of the plurality of filaments (27) of Lemelson with a respective filament (72) comprising a plastic material (nylon fiber) impregnated with abrasive material comprising alumina oxide of Kobori, as this is a substitution of one known abrasive filament for deburring for another, in order to obtain the predictable result of the modified deburring assembly (26, 72) of Lemelson comprising a plurality of filaments (72) of Kobori, and the plurality of filaments (72) providing for deburring of a workpiece with which said plurality of brush filaments (72) impregnated with alumina oxide are in operative contact. Based on the foregoing, claims 13 and 14 are satisfied, because the plurality of filaments (72) of the modified deburring assembly (26, 72) of Lemelson comprise a plastic material (nylon fiber) that is impregnated with abrasive material comprising alumina oxide.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Lemelson (U.S. Patent No. 3,227,012 A) 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 relied upon below. This Machine Translation of Asai was furnished with the office action mailed on 1/16/2025.
Claim 15: Figure 1 of Lemelson shows the plurality of brush filaments (27) being retained in a bundle in a plug or strip (26) [column 1, line 44]. Noting this, the body portion of Lemelson comprises a slot forming a channel that extends through the body portion substantially perpendicular to the axis. Note that the slot comprises a first hole (23''), a second hole (23'), and a third hole, wherein the third hole is the small diameter hole that connects the first (23'') and second holes (23') and in which a shank of the screw (29) is shown as extending through in Figure 1 of Lemelson. Please be advised that as a three-dimensional (3D) element, the slot extends in a plurality of directions, including in a direction substantially perpendicular to the axis of the cutting tool (20).
Lemelson though, does not disclose the plug or strip (26) using epoxy. As such, Lemelson does not provide disclosure upon, “wherein the brush filaments are retained in a bundle by epoxy.”
Figure 1 of Asai though, shows a cup brush (10) for deburring, wherein each respective cup brush (10) comprises a respective brush bundle (12) of filaments (11) which is attached to a plug or strip (15) by means of a fixing portion (13) and an adhesive (14) such as epoxy [Machine Translation of Asai, page 3, lines 32-35]. As such, the filaments (11) of the cup brush (10) are retained in the brush bundle (12) by the epoxy (14), fixing portion (13), and plug or strip (15). With this setup, the brush bundle (12) is, for example, uniformly planted with a height difference of 1mm or less, which per Asai, eliminates the process of dressing [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 modified the deburring assembly (26, 27) of Lemelson such that the plurality of brush filaments (27) thereof are attached to the corresponding plug or strip (26) by means of the fixing portion (13) and epoxy adhesive (14) of Asai, so as to provide the advantage of eliminating the process of dressing by uniformly planting the plurality of brush filaments (27) in the plug or strip (26) with a height difference of 1mm or less.
In making this modification, the modified deburring assembly (13, 14, 26, 27) of Lemelson features the plurality of brush filaments (27) being uniformly planted in the plug or strip (26), and said plurality of brush filaments (27) being attached to the plug or strip (26) of Lemelson by means of the fixing portion (13) and epoxy adhesive (14) of Asai, Noting this, when the modified deburring assembly (13, 14, 26, 27) is connected to the slot by means of the aforesaid screw (29), the plurality of brush filaments (27) is retained in the bundle in the slot and in the plug or strip (26) by the epoxy adhesive (14) of Asai.
Claim 16: As can be seen below in annotated Figure 1 of Lemelson, a length of the slot is greater than a width of the slot. Lemelson 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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Be advised that sufficient length and width of the slot must be present such that there is clearance for the modified deburring assembly (13, 14, 26, 27) to be removably received. Thus, the length and width of the slot are result effective variables in that changing the dimensions thereof affect the reception of the modified deburring assembly (13, 14, 26, 27) within the slot. 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 of Lemelson by making the length of the slot about five times greater than the width of the slot 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).
Response to Arguments
Applicant’s arguments with respect to claims 1, 5, 7, 17, and 22 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.
With respect to claims 13 and 14, please be advised that Examiner is applying Kobori (JP 2004237383 A) as a modifying reference to teach, “the plurality of brush filaments comprise a plastic material impregnated with abrasive material” and “the abrasive material comprises aluminum oxide.” Noting this, Examiner is not relying on Kobori to teach the new limitation of each of claims 1 and 17, “wherein the shank, body portion and cutting portion are all monolithic with each other.” It is this limitation that Applicant’s arguments are directed to in Applicant’s arguments with respect to claims 1 and 17.
With respect to claims 15 and 16, please be advised that Examiner is applying Asai (JP 2005254398 A) as a modifying reference to teach, “wherein the plurality of brush filaments are retained in a bundle by expoxy…” Noting this, Examiner is not relying on Asai to teach the new limitation of each of claims 1 and 17, “wherein the shank, body portion and cutting portion are all monolithic with each other.” It is this limitation that Applicant’s arguments are directed to in Applicant’s arguments with respect to claims 1 and 17.
Examiner’s Comment
A thorough search has been conducted re: the invention/claims. That being said, though no art rejections are considered to presently apply to claims 5-7 and 22-23, and Examiner notes that no indication regarding the allowability of the subject matter of claims 5-7 and 22-23 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 U.S.C. 112(a) or pre-ATA 35 U.S.C. 112, first paragraph, particularly given that it is unclear what changes to the claims might be necessary to overcome the above-described issue(s) with respect to 35 U.S.C. 112(a) or pre-AJA 35 U.S.C. 112, first paragraph.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Figures 1 and 2 of DE '581 (Germany Publication No. DE 202008004581 U1) show therein a base body (1) having a plurality of openings (7, 8) in each of which a respective deburring assembly (2) is received. Please be advised that each deburring assembly (2) has a plurality of brush filaments extending out of the base body (1) on opposite sides of an axis.
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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/MICHAEL VITALE/Examiner, Art Unit 3722
/ADAM J EISEMAN/Supervisory Patent Examiner, Art Unit 3724