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 initial application filed 6 April 2023.
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.
Drawings
The drawings are objected to because in figure 4, reference label “19” is pointing to the incorrect element in the figure. 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 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 1-15 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.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-15 depend from claim 1.
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 1-4, 6-7, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Frisendahl (US 7,241,085).
Regarding claim 1, Frisendahl discloses a drill point 2, comprising: a body 1, the body including a front end with an apex area (top in figure 1), a central axis of rotation C extending rearward from a centre of the apex area, and at least one cutting structure 5/5’, wherein each cutting structure comprises a primary rake surface 9, a primary clearance surface 8, a cutting edge 7 at an intersection between the primary rake surface and the primary clearance surface, and a peripheral cutting corner (outer corner of cutting edge, not labeled, see figures 2 and 4), wherein the cutting edge extends radially outward from the apex area to the cutting corner, and the primary clearance surface, as seen in a front end view, has a breadth that is a distance extending perpendicular to and from the cutting edge to a primary clearance surface edge (as seen in figure 5), which is rotationally trailing the cutting edge, and a nominal cutting radius (one half of the disclosed cutting diameter, which is between 3mm and 20mm), which is a radial distance outward from the central axis of rotation to the cutting corner, and which is at least 1 mm (as disclosed, at least 1.5 mm), wherein the cutting edge has a central portion 12’/12’’, which extends radially outward from the apex area to a radially outer end, wherein the radially outer end of the cutting edge central portion has a radial distance (1/2 of a, see figure 6) to the central axis of rotation of at least 10% of the nominal cutting radius (is in the range of 17-21% of the drill diameter, 34-42% of the radius).
Frisendahl does not distinctly disclose wherein the primary clearance surface breadth along the cutting edge central portion is at least 0.05 mm and at most 5% of the nominal cutting radius. However, Frisendahl does disclose that the chisel edge 15 has a length of 0.010 to 0.020 times the diameter of the drill, or is between 0.03 mm to 0.06 mm for a 3 mm drill and between 0.20 to 0.4 mm for a 20 mm drill. This chisel length is approximately equal to two times the primary clearance surface breadth at the position closest to the chisel edge. Therefore, a drill diameter of 3 mm would allow for a breadth of between 0.05 mm to 0.06 mm to be within the require range, and a drill diameter of 20 mm would allow for a breadth of between 0.20 mm to 1 mm to be within the required range, as defined by Frisendahl.
However, this breadth is a result-effective variable because Frisendahl teaches that the length chosen within this range will achieve the best cutting results. Therefore, it would have been an obvious matter of design choice to make the primary clearance surface breadth to have to at least 0.05 mm and at most 5% of the nominal cutting radius for the purpose of optimizing cutting results, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding the intended use limitation “for machining of light alloys, such as aluminum alloys” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding claim 2, Frisendahl discloses wherein, when the nominal cutting radius is larger than 2 mm, the primary clearance surface breadth (as defined in claim 1 above) along the cutting edge central portion 12’/12’’ is at most 3% of the nominal cutting radius (within the range of 0.20 to 0.30 mm at the chisel edge for a 20 mm diameter drill).
Regarding claim 3, Frisendahl discloses wherein, when the nominal cutting radius is larger than 5 mm, the primary clearance surface breadth along the cutting edge central portion is at least 1% of the nominal cutting radius (as defined by Frisendahl, the breadth is at least 1% of the nominal cutting diameter, or 2% of the nominal cutting radius at the chisel edge).
Regarding claim 4, Frisendahl discloses the invention substantially as claimed, except Frisendahl does not distinctly disclose wherein the primary clearance surface breadth is 10-30% of the nominal cutting radius along an outer portion of the cutting edge, which extends form the cutting corner and radially inward to at most the outer end of the cutting edge central portion, being silent as to this specific dimension. However, this dimension would also be a result-effective variable, because it is proportionate to the defined primary clearance surface breadth, and would therefore also impact the cutting results. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a primary clearance surface breadth within this range for the purpose of optimizing the cutting results, because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 6, Frisendahl discloses wherein the cutting edge comprises a main cutting edge 11/12 extending radially inward from the cutting corner, and a secondary cutting edge 12’/12’’ extending radially outward from the apex area to an inner end of the main cutting edge, wherein, as seen in a front end view, the main cutting edge extends with an angle to the secondary cutting edge, and the cutting edge central portion forms the secondary cutting edge (see figures 5 and 6).
Regarding claim 7, Frisendahl discloses wherein the main cutting edge 11/12 extends with an angle to the secondary cutting edge 12’/12’’ such that, as seen in a front end view, an angle between a line through the central axis of rotation and the radially outer end of the secondary cutting edge, and a line through the central axis of rotation and the cutting corner is 20-40° (may be 40 degrees for portion 12’ (90 degrees minus 50 degrees, see column 3, lines 37-40), and less than that for portion 12’’, see figure 6).
Regarding claim 13, Frisendahl discloses wherein the body includes two cutting structures 5/5’, which are arranged with 180° rotational symmetry around the central axis of rotation (see figure 2), and wherein the body includes a chisel edge 15 connecting the cutting edges of the two cutting structures across the apex area (see figure 6).
Regarding claim 15, Frisendahl discloses a solid drill tool comprising the drill point according to claim 1.
Allowable Subject Matter
Claims 5, 8-12, and 14 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.
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 23 March 2026