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 .
Election/Restrictions
Applicant’s election without traverse of Species (i) (a first embodiment of a tool (1) as shown in Figures 1-3) in the reply filed on 3/12/2026 is acknowledged.
Please be advised that Applicant advised that the “claims readable on the elected species include Claims 1-6, 8, 9, and 12-13.” Examiner agrees that claims 1-6, 9, 12, and 13 each read on the elected species. Claim 8; however, does not correspond to elected Species (i). Rather, claim 8 corresponds to each of non-elected Species (iii) and non-elected Species (iv). This will now be explained. First, be advised that line 2 of claim 8 sets forth, “at least one lubricating groove is formed in the support collar.” Noting this, exactly one lubricating groove (29) is described in the specification filed on 5/3/2023 on page 14, lines 5-9 thereof with respect to the third embodiment/third species of the tool (1) as being formed in the support collar (17). The exactly one lubricating groove (29) is also shown in Figure 5 of the drawings filed on 5/3/2023, wherein Figure 5 corresponds to the third embodiment/third species of the tool (1). Furthermore, a plurality of lubricating grooves (29) are described in the specification filed on 5/3/2023 on page 14, lines 10-15 thereof with respect to the fourth embodiment/fourth species of the tool (1) as being formed in the support collar (17). The plurality of lubricating grooves (29) are also shown in Figure 6, which corresponds to the fourth embodiment/fourth species of the tool (1). Noting this, at no point within the specification filed on 5/3/2023 is at least one lubricating groove (29) described with respect to respect to elected Species (i). Likewise, Figures 1-3, which correspond to elected Species (i), do not shown at least one lubricating groove (29). Based on the foregoing, claim 8 does not correspond to elected Species (i).
Claims 7-8 and 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/12/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: On line 1 of the claim, “Tool” should be changed to “A tool”. Appropriate correction is required.
Claims 2-6, 9, 12, and 13 are objected to because of the following informalities: On line 1 of each of these claims, “Tool” should be changed to “The tool”. Appropriate correction is required.
Claims 2-6, 9, 12, and 13 are objected to because of the following informalities: On line 1 of each of these claims, a space should be inserted between “claim” and “1” in “claim1”. Currently, “claim1” is written together without a space in each of these claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 9 of the claim, “at least two” should be inserted before “secondary cutting edge”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 2 of the claim, “at least two” should be inserted before “secondary cutting edge”. Appropriate correction is required.
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 1-6, 9, 12, and 13 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.
Lines 12-13 of claim 1 state, “which support collar extends in the circumferential direction at least up to 170° to the corresponding cutting corner.” This limitation is viewed to be vague and indefinite, because due to the contradictory nature of “at least” and “up to” in “at least up to”, it is unclear if 170° is an upper limit or a lower limit.
Claim 3 recites the limitation "the supporting collar" in line 2. There is insufficient antecedent basis for this limitation in the claim. (In claim 1, Applicant set forth “a support collar”).
Lines 1-2 of claim 4 state, “wherein each of the secondary cutting edges is corresponding with a guide chamfer.” This limitation is viewed to be vague and indefinite, because it is unclear if each of the at least two secondary cutting edges corresponds with a separate guide chamfer, or if each of the at least two secondary cutting edges corresponds with the same one guide chamfer.
Regarding claim 5, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations (“up to at most”) following the phrase (“preferably”) are part of the claimed invention.
Lines 1-3 of claim 6 state, “wherein each of the secondary cutting edges of the at least two secondary cutting edges is corresponding with a chip flute.” This limitation is viewed to be vague and indefinite, because it is unclear if each of the at least two secondary cutting edges corresponds with a separate chip flute, or if each of the at least two secondary cutting edges corresponds with the same one chip flute.
Claim 9 recites the limitation "the guide chamfers" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 9, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations (“at most 3%”) following the phrase (“preferably”) are part of the claimed invention.
Claim 9 recites the limitation "the flight circle" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 12, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations (“as a twist drill”) following the phrase (“in particular”) are part of the claimed invention.
Lines 1-3 of claim 13 state, “wherein a main cutting edge is corresponding with each secondary cutting edge of the at least two secondary cutting edges.” This limitation is viewed to be vague and indefinite, because it is unclear if there is a singular main cutting edge that corresponds with each secondary cutting edge of the at least two secondary cutting edges, or if instead there are, for example, a plurality of main cutting edges, and there is one respective main cutting edge of said plurality that corresponds with each secondary cutting edge of the at least two secondary cutting edges.
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 1-6, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Misumi (WIPO Publication No. WO 2020/031259 A1) in view of Schneider (WIPO Publication No. WO 2008/028828 A1).
Please be advised that Misumi was previously cited by Examiner on the PTO-892 that mailed on 12/23/2025. An EPO Machine Translation of Misumi was provided on 12/23/2025.
Please be advised that an EPO Machine Translation of Schneider, which has been furnished with this office action, is relied upon below.
Claim 1: Figures 1-5 of Misumi show a tool (1) for the machining of bores, the tool comprising a tool body with a center axis (A) and a tool end face. The tool (1) further comprises two margins (6), each of which extends in a helical manner and each of which provides for guidance and stability of the tool (1). Please be advised that each of the two margins (6) starts from a cutting corner (12a) on the tool end face at a first portion (2p) of the tool (1). Please further be advised that with respect to a direction extending parallel to the center axis (A) and extending toward a shaft end (3) of the tool (1) from the tool face, each of the two margins (6) stops at a support collar (20) and resumes at a second portion (2q) of the tool (1) (see again Figure 4). In other words, each of the two margins (6) of Misumi has a corresponding first segment formed in the first portion (2p) of the tool (1) and further has a corresponding second segment formed in the second portion (2q) of the tool (1). Misumi though, does not disclose as to whether each of the two margins (6) is further provided with a corresponding secondary cutting edge.
Figures 1 and 4 of Schneider though, show a tool (100) for the machining of bores, the tool comprising a tool body with a center axis (12) and a tool end face (3). The tool (1) further comprises two guide chamfers (6), each of which extends in a helical manner and each of which provides for guidance and stability of the tool (1) [EPO Machine Translation, page 5, lines 20-40]. Please be advised that each of the two guide chamfers (6) has a secondary cutting edge (8) that corresponds thereto. Note that each secondary cutting edge (8) starts from a cutting corner on the tool end face, noting that each cutting corner (see Figure 4 an exemplary cutting corner) is defined by the transition from the main cutting edge to the secondary cutting edge (8) [EPO Machine Translation, page 2, lines 21-29; page 6, lines 14-15]. Figure 4 also shows at the exemplary cutting corner the corresponding one of the two guide chamfers (6) starting from the cutting corner on the tool end face (3) of the tool (100) and moving back toward a shaft end (10) of the tool (100). Also, it is noted that due to each secondary cutting edge (8) extending helically about the tool (100) [EPO Machine Translation, page 5, lines 20-25] toward the shaft end (10) of said tool (100), each secondary cutting edge (8) extends with a specific twist pitch.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified each segment of the two margins (6) of Misumi to have the form of a guide chamfer (6) and adjoining secondary cutting edge (8) of Schneider, so as provide the tool (1) of Misumi with not only means for guiding and stabilizing said tool (1) in the form of the guides chamfers (6), but also with the advantage of secondary cutting edges (8) that provide for the finishing of a hole surface of the bore.
In making this modification, please be advised that each secondary cutting edge (8), due to the support collar (20) of Misumi, has a corresponding first segment formed in the first portion (2p) of the tool (1) and further has a corresponding second segment formed in the second portion (2q) of the tool (1). In other words, each of the two secondary cutting edges (8) of the modified tool (1) of Misumi, extends toward the shaft end (3) of the tool (1) from a cutting corner (12a) on the tool face of Misumi, stops at the support collar (20), and resumes at the second portion (2q) of the tool (1). In doing so, each of the two secondary cutting edges (8) of the modified tool (1) of Misumi starts from the cutting corner (12a) corresponding thereto, and extends in the direction extending parallel to the center axis (A) towards the shaft end in a helical manner with a specific twist pitch.
Next, please be advised because each of the two secondary cutting edges (8) of the modified tool (1) extends toward the shaft end (3) of the tool (1) from the cutting corner (12a) on the tool face, stops at a first side of the support collar (20), and resumes on a second side of the support collar (20) at the second portion (2q) of the tool (1), said support collar (20) “adjoins” each of the two secondary cutting edges (8). Also, please be advised that the support collar (20) (as broadly claimed) constitutes such, because said support collar (20) supports, example, a plurality of cutting edges (24). (It is noted that the claim 1 as presently constituted does not preclude the claimed “support collar” from supporting, for example, a plurality of cutting edges).
Next, please be advised that due to the contradictory nature of “at least up to 170°”, it is unclear to Examiner if “170°” is, for example, an upper limit or is a lower limit. (Please note that it wouldn’t appear to make sense for “at least” and “up to” to be used to describe the same angle). Noting this, Figure 3 has been annotated and provided on the following page.
PNG
media_image1.png
698
665
media_image1.png
Greyscale
As can be seen above in annotated Figure 3, with respect to a circumferential direction (C), the support collar (20) starts at “1” and pauses at “2”. The support collar (20) resumes at “3” and ends at “4”. In total from “1” to “4”, “at least” 170° are covered. For this reason, the support collar (20) extends in the circumferential direction (C) “at least up to 170°” to the corresponding cutting corner (12a) is understood to be satisfied by Misumi.
Next, Figure 4 has been annotated to show a distance (Ab) measured in the direction of the center axis (A) from one of the corresponding cutting corners (12a) to the support collar (20). Please be advised that the support collar (20) adjoins each of the two secondary cutting edges (8) at the distance (Ab).
PNG
media_image2.png
864
904
media_image2.png
Greyscale
Misumi though, does not provide disclosure on the distance (Ab) being “at least 0.18 times up to at most 0.28 times the specific twist pitch.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the distance (Ab) of the tool (1) of Misumi to be “at least 0.18 times up to at most 0.28 times the specific twist pitch” since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the tool (1) would not operate differently with the claimed distance (Ab) being “at least 0.18 times up to at most 0.28 times the specific twist pitch,” because there is already no support collar (20) in areas toward the tool end face. Furthermore, Applicant places no criticality on the range claimed, indicating simply in the specification that the first location “corresponds to 0.18 times, preferably 0.22 times, the specific twist pitch preferably 0.22 times the specific twist pitch” and the second location is at least 0.25 times, preferably at least 0.28 times, preferably at least 0.3 times, preferably at least 0.35 times the specific twist pitch” (Applicant’s specification, page 5, lines 9-15).
Claim 2: As was stated above within the rejection of claim 1, the support collar (20) adjoins each of the two secondary cutting edges (8) at the distance (Ab). Examiners reiterates the distance (Ab) is measured in the direction of the center axis (A) from one of the corresponding cutting corners (12a) to the support collar (20).
Misumi though, does not provide disclosure on the distance (Ab) being “at least 0.22 times up to at most 0.25 times the specific twist pitch.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the distance (Ab) of the tool (1) of Misumi to be “at least 0.22 times up to at most 0.25 times the specific twist pitch” since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the tool (1) would not operate differently with the claimed distance (Ab) being “at least 0.22 times up to at most 0.25 times the specific twist pitch,” because there is already no support collar (20) in areas toward the tool end face. Furthermore, Applicant places no criticality on the range claimed, indicating simply in the specification that the first location “corresponds to 0.18 times, preferably 0.22 times, the specific twist pitch preferably 0.22 times the specific twist pitch” and the second location is at least 0.25 times, preferably at least 0.28 times, preferably at least 0.3 times, preferably at least 0.35 times the specific twist pitch” (Applicant’s specification, page 5, lines 9-15).
Claim 3: As can be seen in annotated Figure 3 of Misumi, with respect to a circumferential direction (C), the support collar (20) starts at “1” and pauses at “2”. The support collar (20) resumes at “3” and ends at “4”.
PNG
media_image3.png
559
740
media_image3.png
Greyscale
Noting the above, angle A corresponds to an angle at which the support collar (20) starts in the circumferential direction (C) from the corresponding cutting corner (12a). Misumi though, does not provide disclosure if angle (A) is “at least 65° to at most 120° measured in the circumferential direction from the corresponding cutting corner.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the support collar (20) to start “at an angle of at least 65° to at most 120° measured in the circumferential direction from the corresponding cutting corner” since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the tool (1) of Misumi would not operate differently with the support collar (20) starting at the claimed angular range of at least 65° to at most 120° measured in the circumferential direction (C) from the corresponding cutting corner (12a), because neither of the plurality of cutting edges (24) that is supported by the support collar is located at the start of said support collar (20). Furthermore, Applicant places no criticality on the range claimed, indicating simply in the specification that “the supporting collar starts at a starting angle of at least 65°, preferably of at least 80°, up to at most 120°, preferably up to at most 100°, from the corresponding cutting corner measured in plan view of the tool end face and against an intended direction of rotation of the tool relative to a machined workpiece” (Applicant’s specification, page 6, lines 3-6).
Claim 4: In the modified tool (1) of Misumi, each of the secondary cutting edges (8) corresponds with a respective guide chamfer (6).
Next, as can be seen in Figure 4 of Misumi, the drill margin (6) shown therein extends from the corresponding cutting corner (12a) to the support collar (20). Noting this, it is reiterated in claim 1 that it was advised that it would have been obvious to have modified each segment of the two margins (6) of Misumi to have the form of a guide chamfer (6) and adjoining secondary cutting edge (8) of Schneider. As a result of this modification, the guide chamfer (6) extends from the corresponding cutting corner (12a) to the support collar (20).
Claim 5: As can be seen below in annotated Figure 4 of Misumi, the support collar (20) comprises a length (L), and the tool (1) has a diameter (D) of a flight circle that is defined by the cutting corners (12a).
PNG
media_image4.png
745
583
media_image4.png
Greyscale
As can be seen above, the length of the support collar (20) measured in the direction of the center axis (A) is less than the diameter (D) of the flight circle that is defined by the cutting corners (12a). Misumi though, does not provide disclosure if the length (L) is “at least 0.2 times, preferably up to at most 1 times, the diameter [D] of a flight circle of the tool [1] defined by the cutting corners [12a].” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the length (L) of the support collar (20) to be at least 0.2 times, preferably up to at most 1 times, the diameter (D) of the flight circle of the tool (1) defined by the cutting corners (12a), since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the tool (1) of Misumi would not operate differently with the length (L) of the support collar (20) being at least 0.2 times, preferably up to at most 1 times, the diameter (D) of a flight circle of the tool (1), because the length of the support collar (20) measured in the direction of the center axis (A) is already a fraction of the diameter (D) of the flight circle (see annotated Figure 4 provided above), and the length (L) of the support collar (20) being in the claimed range won’t act to prohibit the support collar (20) from either supporting the plurality of cutting edges (24) or discharging chips. Also, Applicant places no criticality on the range claimed, indicating simply in the specification that “it is provided that the support collar - in particular each support collar of the tool - has a length measured in the direction of the centre axis which is at least 0.2 times, preferably up to at most 1 times, the diameter of the flight circle” (Applicant’s specification, page 7, lines 7-9).
Claim 6: In the modified tool (1) of Misumi, each of the two secondary cutting edge (8) thereof corresponds with a chip flute (8) that extends helically from the tool end face in the direction of the center axis (A) toward the shaft end (3).
Claim 9: First, as can be seen in Figure 4 of Misumi, the drill margin (6) shown therein comprises a width. Noting this, it is reiterated in claim 1 that it was advised that it would have been obvious to have modified each segment of the two margins (6) of Misumi to have the form of a guide chamfer (6) and adjoining secondary cutting edge (8) of Schneider. As a result of this modification, the modified tool (1) of Misumi comprises two guide chamfers (6), each of which having a width. Furthermore, the tool (1) has a diameter (D) of a flight circle that is defined by the cutting corners (12a).
PNG
media_image5.png
745
501
media_image5.png
Greyscale
As can be seen determined from the above annotated figure, a width of each of the two guide chamfers (6) is a fraction of the diameter (D) of the flight circle that is defined by the cutting corners (12a). Misumi/Schneider though, does not provide disclosure on if the width is “at most 5%, preferably at most 3%, of the diameter [D] of the flight circle defined by the cutting corners [12a].” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause each of the two guide chamfers (6) to comprise a width that is at most 5%, preferably at most 3%, of the diameter (D) of the flight circle defined by the cutting corners (12a), since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the tool (1) of Misumi would not operate differently with the width of each guide chamfer (6) being at most 5%, preferably at most 3%, of the diameter (D) of the flight circle of the tool (1), because with a width in this range, each guide chamfer (6) would still provide guidance and stability to the tool (1). Also, Applicant places no criticality on the range claimed, indicating simply in the specification “it is provided that the guide chamfers have a width - in particular measured orthogonally to the centre axis - which is at most 5 %, preferably at most 3 % of the flight circle diameter” (Applicant’s specification, page 8, lines 29-31).
Claim 12: As can be seen Figures 1 and 2 of Misumi, the tool (1) is a drilling tool, in particular a twist drill.
Claim 13: As can be seen in Figure 4 of Misumi, a main cutting edge (12) is corresponding with the drill margin (6) shown therein. Noting this, it is reiterated in claim 1 that it was advised that it would have been obvious to have modified each segment of the two margins (6) of Misumi to have the form of a guide chamfer (6) and adjoining secondary cutting edge (8) of Schneider. As a result of this modification, rather than corresponding with the drill margin (6) (like is shown in Figure 4 of Misumi), in the modified tool (1) of Misumi, the main cutting edge (12) corresponds with the guide chamfer (6) and adjoining secondary cutting edge (8). Based on the foregoing, a main cutting edge (12) corresponds with each secondary cutting edge (8) on the tool end face, and in doing so, the main cutting edge (12) merges into the associated secondary cutting edge at the respective cutting corner (12a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
Examiner interviews are available via telephone 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, Sunil K Singh can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
Prosecution Insights