`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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 24, 2025 has been entered.
Election/Restrictions
Withdrawn claims 20 and 24 are identified with a status identifier as “withdrawn,” but the claims lack any text. As such, claims 20 and 24 have been treated as CANCELLED. If Applicant desires reintroduction of the withdrawn claims, the claims must be presented as new claims.
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 18, 19, 21-23 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites “touches the conductive material of the hole when the board drilling apparatus is drilling the board” in Lines 9-10. The term “when” creates a lack of clarity as each recitation refers to an indeterminate time in the future. In addition, the term “when” creates a lack of clarity as to whether the limitations preceding the term are even required if the “when” condition does not take place. Appropriate correction required.
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 18, 19, 21, 22 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berkmann et al. (US Pub. No. 2014/0301797 A1).
(Claim 18) Berkmann et al. (“Berkmann”) discloses a board drilling apparatus capable of drilling a board comprising a target conductive layer, an insulation layer, and a hole formed through the board extending through two or more conductive layers comprised in the board, the hole being covered with a conductive material, to remove at least part of the conductive material covering the hole (¶ 0033; Figs. 1, 3). The board drilling apparatus includes a drill bit (1) and a controller (¶¶ 0015-0017; clms. 16-18). The drill bit has an insulation part (9) at least in a center1 of an end of the drill bit (Fig. 2) and a conductive part (¶ 0038) at least on an edge of the end of the drill bit (Fig. 2; ¶ 0038), the drill bit being arranged such that only the insulation part of the drill bit touches with the conductive material of the hole when the board drilling apparatus is drilling the board (insulation layer radially outside of conductive layer Fig. 2; ¶ 0038), and the drill bit being arranged such that the conductive part touches the target conductive layer after a part of the conductive material covering the hole has been removed (¶¶ 0038-0042 – this depends on the shape of the hole, which is not part of the claim; and the claim does not state how the conductive material corresponding has been removed such that it could have been removed in a different process). A controller is configured to stop drilling in response to an electrical signal that received in response to the conductive part of the drill bit touching the target conductive layer of the board (¶¶ 0015-0017; Fig. 3).
(Claim 19) The conductive part covers a part of a cutting edge of the end of the drill bit (Fig. 2; ¶ 0038).
(Claim 21) The board include multiple conductive layers in parallel, each of which touches with the conductive part of the drill bit and generates a respective electrical signal as the drill bit drills that conductive layer, wherein the target conductive layer is selected from the multiple conductive layers (Fig. 3). It is worth noting that this limitation is intended use and the drill bit only need to be capable of working such a workpiece in the claimed manner.
(Claim 22) A tip in the center of the end of the drill bit, the tip being configured to fit in the hole without touching the conductive material of the hole upon aligning the drill bit to the hole (Fig. 3). Again, this limitation is intended use and the drill bit only need to be capable of working such a workpiece in the claimed manner.
(Claim 25) The board is a circuit board (¶ 0033; Figs. 1, 3). Again, this limitation is intended use and the board only need to be capable being a circuit board.
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Berkmann et al. (US Pub. No. 2014/0301797 A1), or alternatively, over Berkmann et al. (US Pub. No. 2014/0301797 A1) in view of JP 6116955 B2.
Berkmann does not explicitly disclose the insulation part is made of material including at least one of diamond material or zirconium dioxide. Yet, at a time prior to effective filing, one having ordinary skill in the art would have found it obvious to provide the insulation part with diamond material or zirconium oxide to insulate from electrical conductivity as well as take advantage of the strength/wear resistance of the respective materials. See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Examiner takes official notice that it is well-known that diamond material and zirconium oxide provide insulation from electrical conductivity as well as are relatively strong, wear resistant materials.
Alternatively, JP 6116955 discloses a film of diamond material or ceramic used as an insulator (Translation Page 3). At a time prior to effective filing, one having ordinary skill in the art would have found it obvious to provide the insulation part disclosed in Berkmann with diamond material or zirconium oxide (ceramic) to insulate from electrical conductivity.
Claims 18, 19, 21, 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ubbens et al. (WO 97/09630 A1) in view of Berkmann et al. (US Pub. No. 2014/0301797 A1), or alternatively, over Ubbens et al. (WO 97/09630 A1) in view of Berkmann et al. (US Pub. No. 2014/0301797 A1) and Weerasinghe (US Patent No. 7,922, 428 B2).
(Claim 18) Ubbens et al. (“Ubbens”) discloses a board drilling apparatus capable of drilling a board comprising a target conductive layer, an insulation layer, and a hole formed through the board extending through two or more conductive layers comprised in the board, the hole being covered with a conductive material, to remove at least part of the conductive material covering the hole (25; Fig. 8). The board drilling apparatus includes a drill bit (1) and a controller (computer – Pages 7-10). The drill bit has an insulation part (2) at least in a center of an end of the drill bit and a conductive part (5) at least on an edge of the end of the drill bit (Fig. 3), the drill bit being arranged such that only the insulation part touches the conductive material of the hole when the board drilling apparatus is drilling the board (point of drill axially forward of conductive part 5), and the drill bit being arranged such that the conductive part (5) touches the target conductive layer after at least a part of the conductive material covering the hole has been removed (Page 5 – conductive part contacts workpiece; this limitation also depends on the shape of the hole, which is not part of the claim, and the claim does not state how the conductive material corresponding has been removed such that it could have been removed in a different process). Yet, the controller is not explicitly disclosed as being configured to stop drilling when receiving an electrical signal that occurred in response to the drill bit touching the target conductive layer of the board.
Berkmann discloses a controller is configured to stop drilling in response to an electrical signal that received in response to the conductive part of the drill bit touching the target conductive layer of the board (¶ 0015; Fig. 3). At a time prior to effective filing, one having ordinary skill in the art to provide the controller in Ubbens with the configuration to stop drilling in response to an electrical signal that received in response to the conductive part of the drill bit touching the target conductive layer of the board as taught by Berkmann in order to terminate the operation at a certain layer.
In the alternative, if the drill body is not considered an insulation portion, Weerasinghe discloses a coated drill with a body that is made of solid carbide and a coated rake face that intersects with the flank to form the cutting edge (Col. 3, Lines 62-66; Figs. 2, 5). Carbide is a relatively poor conductor of electricity (as compared to copper, a fact of which examiner takes official notice. Because Applicant failed to traverse the well-known assertion by examiner, the fact that carbide is a poor conductor of electricity is taken as Applicant admitted prior art (AAPA). See MPEP 2144.03 C. At a time prior to effective filing, one having ordinary skill in the art to provide the board drilling apparatus disclosed in Ubbens with a drill disclosed in Weerasinghe to increase wear resistance while minimizing the transfer of coating particles to the workpiece (Col. 4, Lines 18-42).
(Claim 19) In the modified alternative of Weerasinghe, the conductive part covers a part of a cutting edge of the end of the drill bit (Weerasinghe Figs. 2, 3, 5). The coatings (e.g., TiN, TiCN) disclosed in Weerasinghe are relatively good conductors, the fact of which examiner takes official notice. Because Applicant failed to traverse the well-known assertion by examiner, the fact that the coatings disclosed in Weerasinghe are relatively good conductors of electricity is taken as Applicant admitted prior art (AAPA). See MPEP 2144.03 C.
(Claim 21) The board include multiple conductive layers in parallel, each of touches the conductive part of the drill bit and generates a respective electrical signal as the drill bit drills that conductive layer, wherein the target conductive layer is selected from the multiple conductive layers (Ubbens Fig. 8; Berkmann Fig. 3). It is worth noting that this limitation is intended use and the drill bit of Ubbens only need to be capable of working such a workpiece in the claimed manner.
(Claim 22) A tip in the center of the end of the drill bit, being configured to fit in the hole without touching the conductive material of the hole upon aligning the drill bit to the hole (Ubbens Figs. 1, 2; Berkmann Fig. 3; Weerasinghe Figs. 2, 5). Again, this limitation is intended use and the drill bit of Ubbens only need to be capable of working such a workpiece in the claimed manner.
(Claim 25) The board is a circuit board (Ubbens Fig. 8; Berkmann Fig. 3). Again, this limitation is intended use and the board only need to be capable being a circuit board.
Response to Arguments
Applicant's arguments filed October 24, 2025 have been fully considered but they are not persuasive. Applicant argues that the prior art of record fails to disclose particulars of the intended workpiece. As a result of the lack of disclosure of intended use, Applicant alleges that the Berkmann reference fails to disclose a drill bit being arranged such that only the insulation part touches the conductive material of the hole when the board drilling apparatus is drilling the board, and the drill bit being arranged such that the conductive part touches the target conductive layer after at least a part of the conductive material covering the hole has been removed. Relative to the Ubbens line-of-rejection, Applicant merely argues that Berkmann fails to disclose the workpiece as recited. Examiner disagrees.
In response to applicant's argument that the Berkmann reference fails to disclose the claimed workpiece, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Because the prior art drill bit(s) are capable of performing the function (arranged such that only the insulation part touches the conductive material of the hole when the board drilling apparatus is drilling the board, and the drill bit being arranged such that the conductive part touches the target conductive layer after at least a part of the conductive material covering the hole has been remove), the prior art reads upon the claimed invention. In particular, the drill bit is capable of removing a part of the conductive material from a hole as claimed such that only the insulation part of the drill bit touches the conductive layer.
It is worth noting that the claimed invention depends heavily on the configuration of the hole, which is not a positively claimed limitation. As such, the drill bit need only be capable of performing the function on some imagined hole having the features claimed. It may be worthwhile for Applicant to focus on structure of the apparatus (drill bit).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 The center is not claimed with any specificity. As such, the center may be the middle part of the drill or even the center of a side view of the drill.