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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 4, 2025 has been entered.
Election/Restrictions
Claims 15, 35-41 and 43 are directed to an invention that is independent or distinct from the invention originally elected for the following reasons: the originally elected embodiment is directed to the drill bit (species illustrated in Figures 1, 2, 4, 5), but the amendments to claim 15 are directed to features of the unelected applicator illustrated in Figure 3. In particular, the claim now recites to a shank portion in an applicator portion and a circular rod with outlets around a perimeter of the circular rod. Accordingly, claims 15, 35-41 and 43 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19, 20, 26, 30, 31, 33, 34 and 42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 19 recites “atomizing the fluid onto the surface of the workpiece until the plurality of outlets are abeam a beginning of a last structure comprising the workpiece before exiting the aperture . . . .” This recitation contains new matter. The specification at the time of filing does not provide support for the recitation of the step of atomizing the fluid onto the surface of the workpiece until outlets are abeam a beginning of a last structure comprising the workpiece before exiting the aperture. Appropriate correction required.
Claim 19 recites “terminating applying the fluid abeam the beginning of the last structure comprising the workpiece . . . .” This recitation contains new matter. The specification lacks any support for termination of fluid abeam beginning of a last structure. Appropriate correction required.
Claim 19 recites “rotating and removing the applicator portion until a final location that is removed from the aperture completely.” It is new matter to recite that the final location is removed from the aperture completely. Appropriate correction required.
Claim 20 recites “cutting the workpiece from a starting surface until an ending surface that is within a structure of the number of structures” in Lines 2-3. The recitation contains new matter. The specification at the time of filing lacks support for an ending surface that is within a structure of the number of structures. Appropriate correction required.
Clam 26 recites “a controller delivering, while retracting the tool bit, a fluid” in Line 13. The specification does not provide support for the controller delivering fluid. The controller is only disclosed as controlling delivery but not actually delivering the fluid. Appropriate correction required.
Claim 31 each recite “limiting insertion of the tool bit into the workpiece by a step between the shank portion and the applicator portion.” This recitation contains new matter. The specification at the time of filing does not provide for a method step of limiting insertion of the tool bit into the workpiece by the step. The specification merely sets forth that the step may provide a limit in which the tool bit is inserted into the workpiece. Appropriate correction required.
Claim 34 each recite “limiting insertion of the tool bit into the workpiece by the diameter of the shank portion.” This recitation contains new matter. The specification at the time of filing does not provide for a method step of limiting insertion of the tool bit into the workpiece by the step (diameter of shank). The specification merely sets forth that the step may provide a limit in which the tool bit is inserted into the workpiece. Appropriate correction required.
Claim 42 recites “the gas atomizing the liquid.” This recitation contains new matter. The specification at the time of filing does not provide support for the recitation of the step of the gas atomizing the fluid. Appropriate correction required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19, 20, 30, 31, 33 and 42 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 19 recites “an internal cavity . . . that terminates prior to the cutting tip into a plurality of outlets . . . and oriented at 90 degrees away from the longitudinal axis” in Lines 9-11. It is unclear if there is a limitation missing between the phrase “terminates prior to the cutting tip” and the phrase “into a plurality of outlets.” The limitation does not make grammatical sense as written such that it is unclear what is required for terminating prior to the cutting tip into a plurality of outlets. It is also unclear what feature is oriented at 90 degrees away from the axis. Furthermore, it is unclear what is required for 90 degrees away from the axis. Appropriate correction required.
Claim 19 recites “atomizing the fluid onto the surface of the workpiece until the plurality of outlets are abeam a beginning of a last structure comprising the workpiece before exiting the aperture.” It is unclear whether the atomizing step requires something to perform the atomizing or if merely having atomized fluid is enough to meet the limitation. It is also unclear what is “a last structure comprising the workpiece.” Previously in the claim, the workpiece is set forth as comprising a number of abutting structures. As such, it is unclear if the last structure is one of the abutting structures or if, as the language suggests, the last structure somehow makes up the workpiece. Appropriate correction required.
Claim 19 recites “terminating applying the fluid abeam the beginning of the last structure comprising the workpiece . . . .” It is unclear where the beginning of the last structure is of the workpiece as claimed. Appropriate correction required.
Claim 19 recites “rotating and removing the applicator portion until a final location that is removed from the aperture completely.” It is unclear how the final location is considered removed from the aperture completely. Appropriate correction required.
Claim 20 recites “the start location is proximal to the ending surface and the final location is proximal to the starting surface.” The term “proximal” is a relative term which renders the claim indefinite. The term “proximal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction required.
Claim 30 recites “the fluid further comprises rotating the tool bit during delivery of the fluid during movement from the start location toward the final location.” It is unclear how the fluid includes the rotating step. Appropriate correction required.
Claim 33 recites “applying the fluid further comprises rotating the tool bit during delivery of the fluid during movement from the start toward the final location.” It is unclear what the applying step requires that would further limit the claim and if the application of the fluid differs from the delivery thereof. Appropriate correction required.
Claim 42 recites “the gas atomizing the liquid.” It is unclear how the gas atomizes the liquid. Appropriate correction required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 30 and 33 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 19 and 26 each require the recited respective method steps of claims 30 and 33. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 19, 20, 26, 30, 31, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kammermeier et al. (US Patent No. 6,045,301) in view of Hammond, Jr. et al. (US Pub. No. 2019/0151958 A1) and Russell (US Patent No. 7,722,298 B2) and Gu et al. (CN 108274048 A) and Haier et al. (CN 104057301 A).
(Claim 19) Kammermeier discloses a method of applying a fluid to a surface of a workpiece (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27). The surface defines a boundary of an aperture of the workpiece (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27). The method includes coupling a shank portion (2) of a tool bit (1) to an end effector (inherent) such that an applicator portion of the tool bit is spaced away from the end effector (Figs. 13, 14), the applicator portion including a cutter (Figs. 2, 4, 6, 8, 10, 11, 13, 20, 32, 34) having a cutting tip (14) and a plurality of lands (8, 11) adjacent a plurality of flutes (4), the plurality of lands spaced from the cutting tip (Figs. 1, 3, 5, 7, 9, 11, 13, 15, 32, 34); the applicator portion also includes a diameter narrower than a diameter of the shank (Fig. 8 showing the diameter of 19 and the diameter of 13 being less than that of the shank); and an internal cavity (19) extending along a longitudinal axis of the tool bit that, as best understood, terminates prior to the cutting tip into the plurality of outlets disposed through the plurality of lands and oriented at 90 degrees away from the longitudinal axis of the tool bit (Figs. 7, 8, 13); creating the aperture of the workpiece by rotating and driving the applicator portion into the workpiece (inherent use of a drill bit) in a first direction until a plurality of outlets of the applicator portion is positioned to face the surface of the workpiece at a start location (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27); and applying the fluid through an internal cavity (19) of the tool bit, through a plurality of channels (13) of the tool bit, and out of the plurality of outlets (9; Col. 8, Lines 29-57). While it is inherent to provide an end effector for Kammermeier to include an end effector attached at the shank of the tool for providing rotation to the tool and driving it into a workpiece to cut an aperture, the reference does not explicitly disclose the workpiece having more than one structure, driving the drill bit into that structure, the end effector, atomizing a fluid of liquid and gas onto the surface of the workpiece until the plurality of outlets are abeam a beginning of a last structure, terminating the application of fluid abeam the beginning of the last structure or rotating and removing the applicator portion until a final location.
Hammond discloses a drill bit (100) with fluid channels (141) leading to fluid outlets (142; Figs. 1-4). The drill bit is connected to an end effector via the shank (108) of the drill bit (¶ 0056). Hammond further discloses moving the tool bit from the start location within the aperture toward a final location outside of the aperture while delivering coolant fluid (Figs. 7, 8; ¶ 0044). The workpiece having more than one structure (Figs. 7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Kammermeier with an end effector, work material and coolant delivery during drilling as suggested in Hammond in order to provide rotational and axial movement to the drill as well as drilling a through hole in the workpiece of a stack of hard material and softer material, which makes it easier to cut through the hard material (¶ 0053).
The modified Kammermeier further includes cutting the workpiece via a cutting tip (Kammermeier 5, 16; Fig. 1) of the cutter of the applicator portion to create the aperture and the surface (Kammermeier Col. 10, Lines 21-27; Clm. 5); and removing flakes of the workpiece via a plurality of flutes (Kammermeier 4) of the cutter as the cutting tip cuts the workpiece (Kammermeier Col. 7, Lines 54-61). Each of the plurality of outlets (Kammermeier 9) is spaced from the cutting tip (Kammermeier Figs. 7, 11, 13, 32). The delivering the fluid further includes delivering the fluid after cutting the workpiece and removing the flakes (Kammermeier Col. 7, Lines 54-61).
Russell discloses a method of moving a tool bit in a second direction from a start location within an aperture toward a final location outside of the aperture, the second direction opposite a first direction, delivering a fluid after the tool bit reaches the start location and an aperture is formed completely through (i.e., a through-hole) the workpiece (Fig. 43; Col. 26, Lines 35-41). At a time prior to effective filing, a person having ordinary skill in the art would have found it obvious to one having ordinary skill in the art to provide the method disclosed in Kammermeier with a retraction of the drill and continuing with coolant flow until the tool is withdrawn as suggested by Russell as obvious to try – choosing from a finite number of solutions (ending coolant prior to retraction and continuing coolant delivery during retraction) – to provide the predictable result of increasing debris removal by flushing debris as tool bit is removed. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Gu et al. (“Gu”) discloses stopping the delivery of fluid prior to the tool bit exiting the aperture after the drilling operation ends (Translation at page 4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method discloses in Kammermeier with a step of stopping delivery of the fluid after the end of the drilling operation has completed as taught by Gu in order to save on lubricant cost and power consumption. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness, including obvious to try). While the fluid delivery and stopping of the modified method is not explicitly disclosed as being done until the plurality of outlets are abeam a beginning of a last structure and terminating the application of fluid abeam the beginning of the last structure or rotating and removing the applicator portion until a final location, it would have been obvious to one having ordinary skill in the art to modify the method of Kammermeier by stopping the coolant at the beginning of the last structure while rotating during withdrawal of the drill bit as obvious to try - choosing from a finite number of solutions (stopping at the beginning of the last structure, stopping before that position or stopping after) (rotating vs non-rotating) - leading to a predictable result of spraying the machined bore up until the point the outlets leave the hole and rotating to cover 360 degrees of the hole. . See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness, including obvious to try).
Haier discloses a method of atomizing and spraying a mix of liquid and gas in a drilling operation (Translation ¶ 0010). A controller controls the injection of the fluid mix (Translation ¶ 0010). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method discloses in Kammermeier with a fluid mix controlled automatically as taught by Haier in order to “uniformly lubricate the drill bit or work piece by minimal quantity lubrication system, good lubricating effect and effectively reduce the waste of lubricating oil, and there is no need to use emulsifier, reduces the generation of harmful gas; and by the controller controlling the injection time and the injection time of nozzle and saves the lubricant and compressed air and electrical energy.” (Translation ¶ 0010).
(Claim 20) As best understood, the modified method of Kammermeier further includes cutting the workpiece from a starting surface until an ending surface that is within a structure of the number of structures (Hammond Figs. 7, 8). The Kammermeier method includes feeding coolant during the cutting operation, and the start location is proximal to the ending surface and the final location proximal to the starting surface (Kammermeier Col. 7, 65-67, Col. 8, Lines 1-3).
(Claim 26) Kammermeier discloses a method of applying a fluid to a surface of a workpiece (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27). The surface defines a boundary of an aperture of the workpiece (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27). The method includes coupling a shank portion (2) of a tool bit (1) to an end effector (inherent) such that an applicator portion of the tool bit is spaced from the end effector (Figs. 13, 14); inserting the tool bit into the aperture of the workpiece in a first direction until a plurality of outlets of the applicator portion is positioned to face the surface of the workpiece at a start location within the aperture (Col. 7, Lines 65-67; Col. 8, Lines 1-3; Col. 10, Lines 23-27); and delivering the fluid through an internal cavity (19) of the tool bit, through a plurality of channels (13) of the tool bit, and out of the plurality of outlets (9) to apply the fluid to the surface of the workpiece at the start location (Col. 8, Lines 29-57). Each of the plurality of channels extends (Col. 4, Lines 29-34; Col. 8, Lines 58-61) from the internal cavity (Figs. 2, 4, 6-8, 10, 11, 13, 20, 32, 34). Each one of the plurality of outlets is in fluid communication with a corresponding one of the plurality of channels (9). While it is inherent to provide an end effector for Kammermeier to include an end effector attached at the shank of the tool for providing rotation to the tool, the reference does not explicitly disclose the end effector or moving the tool bit from the start location within the aperture to a final location outside of the aperture while delivering fluid comprised of liquid and gas, and the fluid being stopped prior to the plurality of outlets exiting the aperture.
Hammond discloses a drill bit (100) with fluid channels (141) leading to fluid outlets (142; Figs. 1-4). The drill bit is connected to an end effector via the shank (108) of the drill bit (¶ 0056). Hammond further discloses moving the tool bit from the start location within the aperture toward a final location outside of the aperture while delivering coolant fluid (Figs. 7, 8; ¶ 0044). The workpiece having more than one structure (Figs. 7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Kammermeier with an end effector, work material and coolant delivery during drilling as suggested in Hammond in order to provide rotational and axial movement to the drill as well as drilling a through hole in the workpiece of a stack of hard material and softer material, which makes it easier to cut through the hard material (¶ 0053).
The modified Kammermeier further includes cutting the workpiece via a cutting tip (Kammermeier 5, 16; Fig. 1) of the cutter of the applicator portion to create the aperture and the surface (Kammermeier Col. 10, Lines 21-27; Clm. 5); and removing flakes of the workpiece via a plurality of flutes (Kammermeier 4) of the cutter as the cutting tip cuts the workpiece (Kammermeier Col. 7, Lines 54-61). Each of the plurality of outlets (Kammermeier 9) is spaced from the cutting tip (Kammermeier Figs. 7, 11, 13, 32). The delivering the fluid further includes delivering the fluid after cutting the workpiece and removing the flakes (Kammermeier Col. 7, Lines 54-61).
Kammermeier does not explicitly disclose a step between the shank portion and the applicator portion for limiting insertion of the tool bit into the workpiece.
Hammond discloses the applicator portion having a smaller diameter than a diameter of the shank portion (Figs. 1-3, 5, 7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method of Kammermeier with a step as disclosed in Hammond in order to provide greater strength rigidity to the tool and/or as obvious to try from a finite number of solutions – greater than (leading to the step) the cutting portion, less than the cutting portion, or the same as the cutting portion (¶ 0039). The Hammond reference does not explicitly disclose the use of the stop shoulder for limiting insertion into the workpiece. Because Applicant failed to traverse examiner’s assertion that a depth stop via a stop shoulder is well-known in the art, the well-known in the art statement is taken as applicant admitted prior art. See MPEP § 2144.03 C. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the modified method of Kammermeier with a step of limiting movement into the workpiece via the stop shoulder in order to control depth of cut.
Russell discloses a method of moving a tool bit in a second direction from a start location within an aperture toward a final location outside of the aperture, the second direction opposite a first direction, delivering a fluid after the tool bit reaches the start location and an aperture is formed completely through (i.e., a through-hole) the workpiece (Fig. 43; Col. 26, Lines 35-41). At a time prior to effective filing, a person having ordinary skill in the art would have found it obvious to one having ordinary skill in the art to provide the method disclosed in Kammermeier with a retraction of the drill and continuing with coolant flow until the tool is withdrawn as suggested by Russell as obvious to try – choosing from a finite number of solutions (ending coolant prior to retraction and continuing coolant delivery during retraction) – to provide the predictable result of increasing debris removal by flushing debris as tool bit is removed. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Gu discloses stopping the delivery of fluid prior to the tool bit exiting the aperture after the drilling operation ends (Translation at page 4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method discloses in Kammermeier with a step of stopping delivery of the fluid after the end of the drilling operation has completed as taught by Gu in order to save on lubricant cost and power consumption. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness, including obvious to try). While the fluid delivery and stopping of the modified method is not explicitly disclosed as being done until the plurality of outlets are abeam a beginning of a last structure and terminating the application of fluid abeam the beginning of the last structure or rotating and removing the applicator portion until a final location, it would have been obvious to one having ordinary skill in the art to modify the method of Kammermeier by stopping the coolant at the beginning of the last structure while rotating during withdrawal of the drill bit as obvious to try - choosing from a finite number of solutions (stopping at the beginning of the last structure, stopping before that position or stopping after) (rotating vs non-rotating) - leading to a predictable result of spraying the machined bore up until the point the outlets leave the hole and rotating to cover 360 degrees of the hole. . See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness, including obvious to try).
Haier discloses a method of atomizing and spraying a mix of liquid and gas in a drilling operation (Translation ¶ 0010). A controller controls the injection of the fluid mix (Translation ¶ 0010). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method discloses in Kammermeier with a fluid mix controlled automatically as taught by Haier in order to “uniformly lubricate the drill bit or work piece by minimal quantity lubrication system, good lubricating effect and effectively reduce the waste of lubricating oil, and there is no need to use emulsifier, reduces the generation of harmful gas; and by the controller controlling the injection time and the injection time of nozzle and saves the lubricant and compressed air and electrical energy.” (Translation ¶ 0010).
(Claim 30) As best understood, the fluid further includes rotating the tool bit during delivery of the fluid during movement from the start location toward the final location (Kammermeier Col. 7, 65-67, Col. 8, Lines 1-3; Hammond Figs. 7, 8).
(Claim 33) As best understood, applying the fluid further includes rotating the tool bit during delivery of the fluid during movement from the start location toward the final location (Kammermeier Col. 7, 65-67, Col. 8, Lines 1-3; Hammond Figs. 7, 8).
(Claims 31 and 34) Kammermeier does not explicitly disclose a step between the shank portion and the applicator portion for limiting insertion of the tool bit into the workpiece.
Hammond discloses the shank having a step between the shank portion and the applicator portion for limiting insertion of the tool bit into the workpiece (Figs. 1-3, 5, 7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method of Kammermeier with a step as disclosed in Hammond in order to provide greater strength rigidity to the tool and/or as obvious to try from a finite number of solutions – greater than (leading to the step) the cutting portion, less than the cutting portion, or the same as the cutting portion (¶ 0039). The Hammond reference does not explicitly disclose the use of the stop shoulder for limiting insertion into the workpiece. Because Applicant failed to traverse examiner’s assertion that a depth stop via a stop shoulder is well-known in the art, the well-known in the art statement is taken as applicant admitted prior art. See MPEP § 2144.03 C. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the modified method of Kammermeier with a step of limiting movement into the workpiece via the stop shoulder in order to control depth of cut.
Claims 31 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kammermeier et al. (US Patent No. 6,045,301) in view of Hammond, Jr. et al. (US Pub. No. 2019/0151958 A1) and Russell (US Patent No. 7,722,298 B2) and Gu et al. (CN 108274048 A) and Haier et al. (CN 104057301 A) further in view of Weiss (US Patent No. 5,427,477).
Kammermeier does not explicitly disclose a step between the shank portion and the applicator portion for limiting insertion of the tool bit into the workpiece.
Hammond discloses the shank having a step between the shank portion and the applicator portion for limiting insertion of the tool bit into the workpiece. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method of Kammermeier with a step as disclosed in Hammond in order to provide greater strength rigidity to the tool and/or as obvious to try from a finite number of solutions – greater than (leading to the step) the cutting portion, less than the cutting portion, or the same as the cutting portion (¶ 0039). The Hammond reference does not explicitly disclose the use of the stop shoulder for limiting insertion into the workpiece.
Weiss discloses a method of using a stop shoulder (9), or step between the shank portion and cutting portion, to limit depth of a rotary cutter into a workpiece (Fig. 5; Clams. 1, 22; Col. 3, Lines 1-10). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the modified method of Kammermeier with a step of limiting movement into the workpiece via the stop shoulder as suggested by Weiss in order to control depth of cut.
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive. Applicant argues that the Hammond reference teaches fluid delivery during cutting but not after the entire aperture is created through the workpiece. Subsequently, Applciant alleges that the prior art does not read on the amended independent claims. Examiner disagrees.
In response to applicant's arguments against the Hammond reference alone, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The combination of references reads upon the claimed invention. Applicant's argument that the amended claims define over the prior art fails to comply with 37 CFR 1.111(b) because it amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Agapiou et al. (US Pub. No. 2018/0141136 A1) (Fig. 2c; ¶ 0039); Kammermeier et al. (US Patent No. 6,116,825) (14; Fig. 2) (disclosing channels extending to the land of the drill at an end of the internal cavity); and Larson (US Patent No. 3,413,875) (Col. 3, Lines 4-7) (suggesting that coolant may be delivered after the drilling operation).
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