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 .
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 30,31,37,38 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. The originally filed disclosure fails to provide basis for “the notch comprising a variable axial length” and “the second slot comprising a variable axial length” as called for in claims 30,31,37,38; therefore such limitations constitute new matter.
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 1-6, 10-15, 23,26,29, 30-32,37-39,44-47 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 1 is confusing because the “retainer” does not comprise “at least two surfaces adapted to form a seal with a spacer (130, 150) adjacent the axial forward end of the retainer”. Claim 1 appears to be directed to at least Figs. 91,96,113 wherein the “at least two surfaces” that form a seal are spacers 130/150 which are not part of the retainer 60,90.
Claim 10 is confusing because the retainer does not comprise “at least two surfaces adapted to form a seal with a spacer (130, 150) adjacent the axial forward end of the retainer”. Claim 10 appears to be directed to at least Figs. 91,96,113 wherein the “at least two surfaces” that form a seal are spacers 130/150 which are not part of the retainer 60,90.
Claim 46, “the at least one tab” lacks clear antecedent basis.
Claim 47, “the at least one tab” lacks clear antecedent basis.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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(s) 1-6,23,30,31,32,44,46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beebe (US 4844550) in view of Levankovsky ‘899 and Beach et al. ‘649
Beebe ‘550 discloses a retainer comprising:
a generally cylindrical hollow body portion (40) including an axial forward end and an axial distal end, the generally cylindrical hollow body portion including at least two surfaces (see col. 3 where 44 press against socket (20) wall; wherein 56,58 interlock Fig. 6) adapted to form a seal (see marked up Figures below) with a spacer (42) adjacent the axial forward end of the retainer (40), a first slot (48, Fig. 6) extending through a sidewall of the body portion from the axial forward end to the axial distal end. Beebe discloses the invention substantially as claimed. However, Beebe is silent about including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot; and a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch.
Levankovsky teaches retainer having a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot (see Fig. 6).
Beach et al. teaches a retainer having a notch (72,92,112) opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch (see Figs. 3,5,6,).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer include a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the insertion of the retainer into the bore of the holder/block.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer have a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch as taught by Beach et al. since such a modification facilitates the insertion of the retainer into the bore of the block/holder.
Re claim 2, the first angled portion and the second angled portion
forming a dual corner break of the retainer adjacent the axial distal end of the retainer (see Fig. 6 of Levankovsky).
Re claim 3, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have a chamfer at the axial distal end of the retainer extending to an outer surface of the retainer as taught by Levankovsky (see Fig. 6) since such a modification faciliatates the insertion of the retainer into the bore of the block/holder.
Re claim 4, the notch comprising at least one of an arcuate configuration and an angular configuration(72,92,112, see Figs. 3,5,6).
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Re claim 5, further comprising: a second slot axially extending from the notch through the sidewall of the retainer, the second slot disposed approximately 180 degrees from the first slot (see marked up Figure 6 below of Beach et al.).
Re claim 6, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have
the sidewall of the retainer comprise at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of the bit as taught by either Levankovsky or Beach et al. (10, Figs 1,2,4,5,6,8,11 or Figs. 2,3, 6,7 respectively) to prevent the retainer from being removed from the shank.
Re claim 46, further comprising: at least one tab aperture (116, Fig. 6 of Beach et al above) defined by the at least one tab, the second slot axially extending to a distal end of the at least one tab aperture.
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Re claim 23, further comprising: a gap profile (see Fig. 6 above of Beebe) defined by the first radial end surface and the second radial end surface of the first slot, at least one of the first radial end surface, the second radial end surface, and the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig- zagged.
Re claim 30, the notch comprising a variable axial length (see Fig. 6 above of Beach et al.).
Re claim 31, the second slot comprising a variable axial length (see Fig. 6 of Beach et al. above)
Re claim 32, further comprising: a second slot termination disposed a predetermined distance from the distal end of the retainer along an axial length of the retainer (see Fig. 6 of Beach et al. above).
Re claim 44, the generally cylindrical hollow body portion of the retainer comprising a linear outer surface (44) adapted to contact a bore of a bit holder (see col. 3 line 20+ of Beebe).
Claim(s) 10-15,26,29,3738,39,45,47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beebe (US 4844550) in view of Levankovsky ‘899 and Beach et al. ‘649
Beebe discloses a bit (see Fig. 3) comprising: a body portion; a generally cylindrical shank (28) axially depending from a bottom of the body portion, the shank comprising a retainer (40) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow retainer body portion including an axial forward end and an axial distal end, the generally cylindrical hollow retainer body portion including at least two surfaces (see col. 3 where 44 press against socket (20) wall; wherein 56,58 interlock Fig. 6) adapted to form a seal (see marked up Figures below) with a spacer (42) adjacent the axial forward end of the retainer; a first slot (48, Fig. 6) extending through a sidewall of the retainer body portion from the axial forward end to the axial distal end.
Beebe discloses the invention substantially as claimed. However, Beebe is silent about including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot; and a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch.
Levankovsky teaches retainer having a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot (see Fig. 6).
Beach et al. teaches a retainer having a notch (72,92,112) opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch (see Figs. 3,5,6,).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer include a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second
radial end surface of the first slot opposite the first radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the insertion of the retainer into the bore of the holder/block.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer have a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch as taught by Beach et al. since such a modification facilitates the insertion of the retainer into the bore of the block/holder.
Re claim 11, the first angled portion and the second angled portion forming a dual corner break of the retainer adjacent the axial distal end of the retainer (see Fig. 6 of Levankovsky).
Re claim 12, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have a chamfer at the axial distal end of the retainer extending to an outer surface of the retainer as taught by Levankovsky (see Fig. 6) since such a modification faciliatates the insertion of the retainer into the bore of the block/holder.
Re claim 13, the notch comprising at least one of an arcuate configuration and an angular configuration(72,92,112, see Figs. 3,5,6).
Re claim 14, further comprising: a second slot axially extending from the notch through the sidewall of the retainer, the second slot disposed approximately 180 degrees from the first slot (see marked up Figure 6 above, Beach et al.).
Re claim 15, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have
the sidewall of the retainer comprise at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of the bit as taught by either Levankovsky or Beach et al. (10, Figs 1,2,4,5,6,8,11 or Figs. 2,3, 6,7 respectively) to prevent the retainer from being removed from the shank.
Re claim 47, further comprising: at least one tab aperture defined by the at least one tab (116, Fig. 6 of Beach et al. above), the second slot axially extending to a distal end of the at least one tab aperture.
Re claim 38, the second slot comprising a variable axial length (see Fig. 6 of Beach et al. above).
Re claim 39, further comprising: a second slot termination disposed a predetermined distance from the distal end of the retainer along an axial length of the retainer
(see Fig. 6 of Beach et al. above).
Re claim 26, the retainer further comprising: a gap profile defined by the first radial end surface and the second radial end surface of the first slot, at least one of the first radial end surface, the second radial end surface, and the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig- zagged (see Fig. 6 of Beebe).
Re claim 29, further comprising: a washer (42, of Beebe) disposed circumferentially about the shank (28,32) adjacent the bottom of the body portion.
Re claim 37, the notch comprising a variable axial length (see Fig. 6 above of Beach et al.).
Re claim 45, the generally cylindrical hollow body portion of the retainer comprising a linear outer surface (44) adapted to contact a bore of a bit holder (see col. 3 line 20+ of Beebe).
Claim(s) 21,22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beebe (US 4844550) in view of Levankovsky ‘899 and Beach et al. ‘649
Beebe discloses a bit comprising a body portion (see Fig. 3); a generally cylindrical shank (28) axially depending from a bottom of the body portion; and a retainer (40) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow retainer body portion including an axial forward end and an axial distal end; a first slot (48, see Fig. 6) extending through a sidewall of the retainer body portion from the axial forward end to the axial distal end; at least one spacer (42) disposed circumferentially about the shank (32,28) between the bottom of the body portion and the axial forward end of the retainer, the at least one spacer comprising one of a nearly butted annular hollow spacer and a solid annular hollow spacer; a first spacer radial end surface of the nearly butted annular hollow spacer; a second spacer radial end surface of the nearly butted annular hollow spacer opposite the first spacer radial end surface, the first spacer radial end surface spaced from the second spacer radial end surface.
Beebe discloses the invention substantially as claimed. However, Beebe is silent about including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot; and a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch.
Levankovsky teaches retainer having a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second radial end surface of the first slot opposite the first radial end surface of the first slot (see Fig. 6).
Beach et al. teaches a retainer having a notch (72,92,112) opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch (see Figs. 3,5,6,).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer include a first angled portion extending from the axial distal end to a first radial end surface of the first slot; a second angled portion extending from the axial distal end to a second
radial end surface of the first slot opposite the first radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the insertion of the retainer into the bore of the holder/block.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beebe to have the retainer have a notch opposite the axial forward end of the retainer and approximately 180 degrees from the first slot, the notch extending inwardly from the axial distal end of the retainer, a distal width of the notch comprising a greater width than a proximal width of the notch as taught by Beach et al. since such a modification facilitates the insertion of the retainer into the bore of the block/holder.
Re claim 21, a distal end of the at least one spacer (see Fig. 6, col. 6 of Beebe ) contacting the axial forward end of the retainer.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive. Applicant argued that the amendments overcame the 112 rejections. The examiner disagrees. See rejections above.
Applicant argues that Levankovsky and Beach et al. fail to teach a retainer having at least two surfaces adapted to form a seal with a spacer adjacent the axial forward end of the retainer. It should be noted that the examiner has relied on Beebe to teach
a retainer having at least two surfaces adapted to form a seal with a spacer adjacent the axial forward end of the retainer (see marked up drawings above and rejections above).
Applicant argues that the examiner indicated claim 22 is allowable. It should be noted that the examiner indicated that claim 22 would be allowable if the spacer comprising “a solid annular hollow spacer” is omitted.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIL SINGH whose telephone number is (571)272-7051. The examiner can normally be reached M-Th 8-3, F 9-8 and 2nd Sat 11-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571 270 5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIL SINGH/Primary Examiner, Art Unit 3678
SS
5/15/2026
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