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 .
DETAILED ACTION
This office action is in response to Applicant’s amendment filed 12 January 2026.
Claim Objections
Claim 30 is objected to because of the following informalities: in claim 30, line 2, the phrase “at the least one” should be changed to “the at least one”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claim 37 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 37 recites “wherein one or more process steps for producing the threaded hole are carried out by a receptacle in which the tool can be mechanically controlled”. However, the specification does not disclose a receptacle or any element that could be considered to be a receptacle.
Claims 22, 24, 34-35, and 39 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 22 recites the limitation "a radial offset" in line 3. However, there is already antecedent basis for this limitation in the claim, making it unclear whether this limitation refers to the same radial offset or a different radial offset. For the purposes of examination, it has been assumed that this limitation refers to a different radial offset.
Claim 24 recites the limitation “and so having an axial distance corresponding to the radial offset”. It is unclear how the axial distance corresponds to the radial offset. For the purposes of examination, it has been assumed that the axial distance and the radial offset are identical.
Claim 34 recites the limitation "at cutting edge corners" in line 4. However, there is already antecedent basis for this limitation in the claim, making it unclear whether this limitation refers to the same cutting edge corners or different cutting edge corners. For the purposes of examination, it has been assumed that this limitation refers to the same cutting edge corners.
Claim 35 depends from claim 34, claim 39 depends from claim 22.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 20, 24, and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Turchan (US 5,413,438).
Regarding claim 20, Turchan discloses a method for producing a workpiece threaded hole by a tapping tool 10, with a drilling stroke (see figure 3), comprising: driving a rotating tapping tool into the workpiece 18 in a drilling direction to a nominal drilling depth, and so forming a thread-free pilot hole (see column 3, lines 32-38), and with a tapping stroke in which the tapping tool produces an internal thread in the pilot hole with a tapping feed rate and a tapping speed synchronized therewith (see column 3, lines 39-50), wherein for preparing the tapping stroke, a reversing stroke takes place after the drilling stroke (see column 3, lines 39-40), in which the tapping tool is guided out of the pilot hole in a reversing direction opposite to the drilling direction to such an extent (see column 3, lines 39-43), wherein the tapping tool is radially displaced in an offset stroke by a radial offset (orbital motion), wherein in the tapping stroke, the radially controlled, rotating tapping tool is guided in a circular rotary motion along a circular path 36 about the hole axis 32 (see figure 4), and wherein, in the tapping stroke, the tool rotation and the tool circular motion take place in the same direction of rotary motion and at the same rotational speed, wherein the tapping tool has a thread generating section, wherein the thread generating section 24 has at least one, or several, thread teeth (see figure 1).
Regarding claim 24, Turchan discloses wherein in the drilling stroke a tool axis (W) and the hole axis are coaxial to each other (see figure 3).
Regarding claim 36, Turchan discloses wherein the process steps for producing the threaded hole are carried out by a CNC control (see column 3, lines 10-30).
Allowable Subject Matter
Claims 21, 23, 25-27, and 29-33 are 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.
Claims 22, 34-35, 37, and 39 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 12 January 2026 have been fully considered but they are not persuasive.
Applicant argues that the phrase “wherein one or more process steps for producing the threaded hole are carried out by a receptacle in which the tool can be mechanically controlled” would be understood by a person skilled in the art. This is not persuasive because it is not clear how a receptacle can carry out one or more process steps for producing the threaded hole, as a receptacle is defined as an object or space used to contain something. The term “receptacle” does not imply any kind of control system that could be used to carry out the process steps, such that one of ordinary skill in the art would not understand how a receptacle could provide this function.
The rejections under 35 U.S.C. 112(b) that remain in the office action have not been amended or addressed by the Applicant.
Applicant argues that Turchan does not disclose the additional limitations of claim 28 (now incorporated into claim 20). This does not overcome the rejection of claim 20 because these additional limitations are incorporated into the claim using “and/or” statements, such that these additional limitations have been treated using the “or” alternative, and as such are considered optional limitations in the claim.
For the reasons set forth above, the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 5 March 2026