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
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant’s election of Invention I, claims 1-11 in the reply filed on 19 November 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-16, 18-19, and 22-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to because in figure 3, reference label “22” has been used to identify the through passage on part 14, when it should be on part 20, and reference label “24” has been used to identify the through pass of part 20 when it should be used to identify the threaded section. 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 Objections
Claims 4 and 9 are objected to because of the following informalities: in claims 4 and 9, line 2, the word “though” should be changed to “through”. Appropriate correction is required.
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 1 and 4-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duncan (US 2008/0179105 A1).
Regarding claim 1, Duncan discloses a tool (embodiment of figures 17-19) comprising a first part 42/280/240 adapted to be received by a part of a power tool (drill motor, not shown), in use, and a second part 54/254 adapted to cooperate, in use, with a core drill bit 20, the first and second parts being releasably couplable to one another by a releasable coupling 282/284 including a coupling pin 282 that, in use, extends within aligned passages (not labeled, see figure 17) formed in the first and second parts, the coupling pin including a resilient retainer clip section 284 that resiliently extends around at least part of, and engages, the first or second part to retain the coupling pin in position (see figures 17 and 18).
Regarding claim 4, Duncan discloses wherein the second part 54/254 contains an axial through passage (inner diameter of bearing 54) extending over the complete length thereof (as seen in figure 17).
Regarding claim 5, Duncan discloses further comprising a core material removal tool 212 introducible, in use, into the through passage (inner diameter of bearing 54) to dislodge a core 324 located within a core drill bit 20 fitted to the second part 54/254, in use.
Regarding claim 6, Duncan discloses wherein the core material removal tool 212 comprises a rigid rod 17 of a diameter slightly smaller than the minimum diameter of the through passage (necessary so that rod 17 can slide in bearing 54).
Regarding claim 7, Duncan discloses wherein an end part (bottom in figure 17) of the through passage (inner diameter of bearing 54) is shaped to permit a centre pin 212 to be fitted thereto.
Regarding claim 8, Duncan discloses wherein the second part 54/254 includes a radially extending passage (for receiving catch pin 282), adapted to allow a tapered drift key 282 to be used in releasing such a centre pin 212 from the passage (when the catch pin 282 is removed, see paragraph [0096]).
Regarding claim 9, Duncan discloses a tool 280/240/254/54 (embodiment of figures 17-19) adapted to be received by a part of a power drill (drill motor, not shown), in use, and to cooperate, in use, with a core drill bit 20 to be provided, the tool containing an axial through passage (through passage with drill bit coupling 42 removed by removing shear pins 66, see figure 17) extending over the complete length thereof (as seen in figures 17 and 19).
Regarding claim 10, Duncan discloses further comprising a core material removal tool 212 introducible, in use, into the through passage to dislodge a core 324 located within a core drill bit 20 fitted to the tool, in use.
Regarding claim 11, Duncan discloses wherein the core material removal tool 212 comprises a rigid rod 17 of a diameter slightly smaller than the minimum diameter of the through passage (necessary so that rod 17 can slide in bearing 54).
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 of this title, 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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Duncan.
Regarding claim 2, Duncan discloses wherein the first part 42/280/240 includes an axial projection 240 and the second part 254 includes an axial recess. Duncan does not disclose that the axial projection is received within an axial recess or passage formed in the second part. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to modified the axial projection to be located inside the axial recess of the second part for the purpose of design choice, since it has been held that a mere reversal of essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
It is noted bearing 254 and drive shaft 280 would need to be resized for the new fit, and that the inner diameter lip portion at the top of bearing 254 that receives bearing 54 would need to be formed on drive shaft 280. However, these changes would also have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention, since such a modification would have involved a mere change in the proportions of components and a reversal of essential working parts of a device (In re Gazda). A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
Regarding claim 3, Duncan discloses wherein the projection and recess are both of circular cross-sectional shape (see figure 17).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 30 January 2026