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 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.
Claim 3,5,23,24,26 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 3 line 2 is confusing because it calls for “a second angle of the countersink”; however, there was never a “first angle of the countersink” previously recited.
Claim 5 line 2, “of the tapered portion” should be deleted since the transition radius extends from the shoulder to the forward end of the shank.
Claim 23 line 2 is confusing because it calls for “a second angle of a countersink”; however, there was never a “first angle of a countersink” previously recited.
Claim 26 line 2, “of the tapered portion” should be deleted since the transition radius extends from the shoulder to the forward end of the shank.
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 (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 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.
Claim(s) 1,3,7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sollami (US 20020092210).
Sollami discloses a bit comprising: a unitary body portion comprising a washer portion adjacent a distal end of the unitary body portion, the washer portion (see marked up drawing below) integrally formed with the unitary body portion; and a generally cylindrical shank (22”) depending from a bottom of the body portion (see Fig. 15), a rear annular flange (see marked up drawing below) of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (see Figs. 1,4,15); and a tapered portion (see marked up Fig. below) adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder (see Figs. 1,4,15).
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (see Figs. 1,4,15).
Re claim 7, comprising: a generally cylindrical hollow retainer (38”) disposed circumferentially about the shank.
It should be noted that the above claims are directed to a bit not a bit in combination with a holder.
It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
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Claim(s) 1,3,4,5,7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Canadian document ‘838.
Canadian document ‘838 discloses a bit comprising:
a unitary body portion comprising a washer portion (32) adjacent a distal end of the unitary body portion, the washer portion integrally formed with the unitary body portion;
a generally cylindrical shank (20) depending from a bottom of the body portion;
a rear annular flange of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (see Figs. 16A,16B); and a tapered portion adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink (see Figs. 16A,16B) at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder (50,16).
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (see Figs. 16A,16B).
Re claim 4, further comprising: a first transition radius of the washer portion extending from the rear annular flange to the tapered portion (34, see Figs. 10, 12,14).
Re claim 5, further comprising: a second transition radius of the tapered portion extending from a shoulder at a distal end of the tapered portion to a forward end of the shank (see Figs. 10,12,14).
Re claim 7, further comprising: a generally cylindrical hollow retainer (46) disposed circumferentially about the shank.
Claim(s) 1,3,7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Frear ‘379 (Fig. 2).
Frear ‘379 discloses a bit comprising:
a unitary body portion comprising a washer portion (105) adjacent a distal end of the unitary body portion, the washer portion integrally formed with the unitary body portion;
a generally cylindrical shank (106) depending from a bottom of the body portion;
a rear annular flange of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder; and a tapered portion adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit
with the bore of the bit holder (see marked up Figure below).
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(Canceled).
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (see marked up Figure above).
Re claim 7, further comprising: a generally cylindrical hollow retainer (130) disposed circumferentially about the shank.
Claim(s) 1,3,4,7,21,23-25,28,42,43 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kenno et al. (US 20220290562).
Kenno et al. discloses a bit comprising:
a unitary body portion (28) comprising a washer portion (38, Fig.1) adjacent a distal end of the unitary body portion, the washer portion integrally formed with as part of the unitary body portion;
a generally cylindrical shank (30) depending from a bottom of the body portion;
a rear annular flange of the washer portion adapted to form a close coupling with an annular
surface at a forward end of a bit holder; and
a tapered portion (see marked up Figure below) adjacent the rear annular flange (where 39 is pointing in Figure 2) of the washer portion, the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit
with the bore of the bit holder.
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (see marked up Figure below).
Re claim 4, further comprising: a first transition radius of the washer portion extending from the rear annular flange to the tapered portion (see marked up Figure below).
Re claim 7, further comprising: a generally cylindrical hollow retainer (79,80) disposed circumferentially about the shank.
Re claim 42, a diameter of the washer portion (38, Fig. 1) being at least a diameter of a front face of a bit holder at a forward end of the bit holder.
Re claim 21, Kenno discloses bit (14, Figs. 1,2) and bit holder (12, Figs. 1,2) combination comprising: a bit holder comprising: a bit holder body portion comprising a front face at a forward end of the bit holder; a generally cylindrical hollow bit holder shank axially depending from a bottom of the bit holder body portion; and a bore axially extending from the front face of the bit holder body portion to a distal end of the bit holder shank (see Figs. 1,2); and a bit comprising: a unitary bit body portion comprising a washer portion (38) adjacent a distal end of the unitary bit body portion, the washer portion integrally formed with as part of the unitary bit body portion; a rear annular flange of the washer portion adapted to form a close coupling with the front face of the bit holder body portion at the forward end of the bit holder; a tapered portion (see marked up Figure below) adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink at the forward end of the bit holder; and a generally cylindrical bit shank (30) depending from a bottom of the unitary bit body portion, the bit shank disposed within the bore of the bit holder adjacent the front face of the bit holder.
Re claim 23, the tapered portion comprising a first angle that is complementary to a second angle of a countersink of the bore of the bit holder (see marked up Figure below).
Re claim 24, the tapered portion of the washer portion contacting the countersink of the bore of the bit holder to radially align the bit with the bore of the bit holder (see marked up Figure below).
Re claim 25, further comprising: a first transition radius of the washer portion extending from the rear annular flange to the tapered portion (see marked up Figure below).
Re claim 28, further comprising: a generally cylindrical hollow retainer (79,80) disposed circumferentially about the bit shank.
Re claim 43, a diameter of the washer portion (38, Fig. 1) being at least a diameter of a front face of a bit holder at a forward end of the bit holder.
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Claim(s) 1,3,4,5,7,21,23-26,28,42,43 is/are rejected under 35 U.S.C. 102a1 as being anticipated by WO document (WO 00/34626)
WO document ‘626 discloses a bit comprising:
a unitary body portion comprising a washer portion (see marked up Figure below) adjacent a distal end of the unitary body portion, the washer portion integrally formed with as part of the unitary body portion;
a generally cylindrical shank (18) depending from a bottom of the body portion;
a rear annular flange (29) of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (16, Fig. 1); and
a tapered portion (where 28.1 is pointing in Fig. 3) adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink (26.1) at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder.
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (Fig. 3, where member 28.1 is positioned within member 26.1).
Re claim 4, further comprising: a first transition radius (R21) of the washer portion extending from the rear annular flange (29) to the tapered portion (28.1).
Re claim 5, further comprising: a second transition radius (R21) extending from a shoulder (see marked up Figure below) at a distal end of the tapered portion to a forward end of the shank (18).
Re claim 7, further comprising: a generally cylindrical hollow retainer (48) disposed circumferentially about the shank.
Re claim 42, a diameter of the washer portion (see Figs. 1,10,14,16) being at least a diameter of a front face of a bit holder at a forward end of the bit holder.
Re claim 21, WO document ‘626 discloses bit (20, Figs. 1,3) and bit holder (16, Figs. 1,3) combination comprising: a bit holder comprising: a bit holder body portion comprising a front face at a forward end of the bit holder; a generally cylindrical hollow bit holder shank axially depending from a bottom of the bit holder body portion; and a bore axially extending from the front face of the bit holder body portion to a distal end of the bit holder shank (see Figs. 1,3); and a bit comprising: a unitary bit body portion comprising a washer portion (see marked up Figure below) adjacent a distal end of the unitary bit body portion, the washer portion integrally formed with as part of the unitary bit body portion; a rear annular flange (29) of the washer portion adapted to form a close coupling with the front face of the bit holder body portion at the forward end of the bit holder; a tapered portion (28.1) adjacent the rear annular flange (29) of the washer portion, the tapered portion adapted to contact a countersink (26.1) at the forward end of the bit holder; and a generally cylindrical bit shank (18) depending from a bottom of the unitary bit body portion, the bit shank disposed within the bore of the bit holder (16) adjacent the front face of the bit holder.
Re claim 23, the tapered portion comprising a first angle that is complementary to a second angle of a countersink of the bore of the bit holder (where 28.1 is positioned in 26.1).
Re claim 24, the tapered portion of the washer portion contacting the countersink of the bore of the bit holder to radially align the bit with the bore of the bit holder (where 28.1 is pointing in Fig. 1).
Re claim 25, further comprising: a first transition radius (R21) of the washer portion extending from the rear annular flange (29) to the tapered portion (see marked up Figure below).
Re claim 26, further comprising: a second transition radius (R21) extending from a shoulder at a distal end of the tapered portion to a forward end of the bit shank (see marked up Figure below).
Re claim 28, further comprising: a generally cylindrical hollow retainer (48) disposed circumferentially about the bit shank.
Re claim 43, a diameter of the washer portion (see Figs. 1,10,14,16) being at least a diameter of a front face of a bit holder at a forward end of the bit holder.
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Claim(s) 1,3,7,42 is/are rejected under 35 U.S.C. 102a1 as being anticipated by EP document (EP 0295232)
EP document ‘232 discloses a bit (see Figs. 5A,5B, 6) comprising:
a unitary body portion comprising a washer portion (where 18 is pointing in Fig. 6) adjacent a distal end of the unitary body portion, the washer portion integrally formed with the unitary body portion;
a generally cylindrical shank (14) depending from a bottom of the body portion;
a rear annular flange (see Figs. 4,6,8,10) of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder; and
a tapered portion (see marked up Figure below) adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder.
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder
(see Figs. 4,6,8,10).
Re claim 7, further comprising: a generally cylindrical hollow retainer (10b, Fig. 6) disposed circumferentially about the shank.
Re claim 42, a diameter of the washer portion (see Figs. 1,6,8,10) being at least a diameter of a front face of a bit holder at a forward end of the bit holder.
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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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky (US 20050082899).
Canadian ‘838 discloses the invention substantially as claimed (see discussion above). However, Canadian document ‘838 is silent about the retainer including a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot. Further, Canadian document ‘838 is silent that the retainer includes at least one tab disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on the shank of the bit to prevent the retainer from being removed from the shank.
Levankovsky teaches retainer including a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 6). Further, Levankovsky teaches that the retainer includes at least one tab disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on the shank of the bit to prevent the retainer from being removed from the shank (see Fig. 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 Canadian document ‘838 to have the retainer include a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the installation of the bit with a retainer into the holder.
Further, 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 Canadian document ‘838 to have the retainer include at least one tab disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on the shank of the bit to prevent the retainer from being removed from the shank as taught by Levankovsky since such a modification prevents the bit from being dislodged.
Claim(s) 8-10, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frear ‘379 (Fig. 2) in view of Levankovsky (US 20050082899).
Frear ‘379 (Fig. 2) discloses the invention substantially as claimed. However, Frear ‘379 is silent about the retainer including a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot.
Levankovsky teaches retainer including a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 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 Frear ‘379 to have the retainer
include a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the installation of the bit with a retainer into the holder.
Re claim 9, 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 10, further comprising: a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (see Fig. 6 of Levankovsky).
Re claim 18, a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot (see Fig. 6 of Levankovsky).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 6 of Levankovsky).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 6 of Levankovsky).
Claim(s) 8,9,18-20,29,30,39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenno ‘562 in view of Bower, Jr. (US 4327947).
Kenno ‘562 discloses the invention substantially as claimed. However, Kenno ‘562 is
silent about the retainer having a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot.
Bower, Jr. teaches a retainer having a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 2).
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 Kenno ‘562 to have the retainer include a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Bower, Jr. since such a modification facilitates the installation of the retainer around the shank of the bit.
Re claim 9, 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. 2 of Bower).
Re claim 18, further comprising: a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot (see Fig. 2 of Bower, Jr.).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
Re claims 29,30, see discussion above with regards to claims 8,9.
Re claims 39-41, see discussion above with regards to claims 18-20.
Claim(s) 8,9,10,18-20,29,30,31, 39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO document ‘626 in view of Bower, Jr. (US 4327947).
WO document ‘626 discloses the invention substantially as claimed. However, WO document ‘626 is silent about the retainer having a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot.
Bower, Jr. teaches a retainer having a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 2).
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 WO document ‘626 to have the retainer include a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Bower, Jr. since such a modification facilitates the installation of the retainer around the shank of the bit.
Re claim 9, 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. 2 of Bower).
Re claim 10, further comprising: a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (48 of WO ‘626).
Re claim 18, further comprising: a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot (see Fig. 2 of Bower, Jr.).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
Re claims 29,30,31 see discussion above with regards to claims 8,9,10.
Re claims 39-41, see discussion above with regards to claims 18-20.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP document ‘232 in view of Kenno ‘562
EP document ‘232 discloses an annular groove (22) extending radially inwardly from a rear annular flange of the washer body portion adjacent the generally cylindrical shank. EP ‘232 discloses the invention substantially as claimed. However, EP ‘232 is silent about the “groove” being an annular first transition radius. Kenno teaches a “groove” near where member 39 is pointing in Figs 2,4 being an annular first transition radius. 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 EP document ‘232 to have the groove form as an annular first transition radius as taught by Kenno since such a modification distributes forces more evenly versus at a severe point.
Claim(s) 8,9,10,13,18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP document ‘232 in view of Russian document (RU 2198292).
EP document ‘232 discloses the invention substantially as claimed. However, EP document ‘232 is silent about including a first angled portion extending from the axial distal end to the first radial end surface of the first slot; and a second angled portion extending from the axial distal end to the second radial end surface of the first slot.
Russian document ‘292 teaches a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a gap profile defined by a first radial end surface of the first slot and a second radial end surface of the first slot opposite the first radial end surface of the first slot; a first angled portion extending from the axial distal end to the first radial end surface of the first slot; and a second angled portion extending from the axial distal end to the second radial end surface of the first slot (see Fig. 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 EP document ‘232 to have a first angled portion extending from the axial distal end to the first radial end surface of the first slot; and a second angled portion extending from the axial distal end to the second radial end surface of the first slot as taught by Russian document ‘292 since such a modification facilitates the insertion of the bit into the block/holder.
Re claim 9, the first angled portion and the second angled portion adapted to form a dual corner break of the retainer adjacent the axial distal end of the retainer (see Fig. 6 of Russian document ‘292).
Re claim 10, further comprising: a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (see Fig. 6 of Russian document ‘292).
Re claim 13, see discussion of EP document ‘232 and Russian document ‘292 above. Further, EP document ‘232 discloses at least one tab (12b, Figs. 5A, 5B, 6) disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least one tab adapted to engage a flange on the shank of the bit to prevent the retainer from being removed from the shank.
Re claim 18, further comprising: a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot ( see Fig. 5B of EP document ‘232, see Fig. 6 of Russian document ‘292).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 5B of EP document ‘232, see Fig. 6 of Russian document ‘292).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 5B of EP document ‘232, see Fig. 6 of Russian document ‘292).
Claim(s) 1,3,7,42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frear ‘379 (Figs. 6,7,20-24) in view of Frear ‘379 (Fig. 2).
Frear discloses a bit comprising: a unitary body portion comprising a washer portion adjacent a distal end of the unitary body portion, the washer portion (see marked up Figures below) integrally formed with the unitary body portion; and a generally cylindrical shank (208) depending from a bottom of the body portion (see Figs. 6, 7, 20-24), a rear annular flange (see marked up Figure below) of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (see Figs. 6,7,20-24), a tapered portion adjacent the rear annular flange of the washer portion. Frear ‘379 (Figs. 6,7,20-24) discloses the invention substantially as claimed. However, Frear ‘379 (Figs. 6,7,20-24) is silent that the tapered portion is adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder. Frear ‘379 teaches the tapered portion is adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder (see Fig. 2). 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 Frear ‘379 (Figs. 6,7, 20-24) to have the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder as taught by Frear ‘379 (Fig. 2) since such a modification prevents dirt and the like from entering the borehole and affecting rotation of the bit.
Re claim 3, the tapered portion comprising a first angle that is adapted to be complementary to a second angle of the countersink of the bore of the bit holder (see Figs. 2,7,20-24).
Re claim 7, comprising: a generally cylindrical hollow retainer (130, see Figs. 2,20-24) disposed circumferentially about the shank.
Re claim 42, a diameter of the washer portion being at least a diameter of a front face of a bit holder at a forward end of the bit holder (see Figs. 6,7).
It should be noted that the above claims are directed to a bit not a bit in combination with a holder.
It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
It should be noted that a washer is a separate, thin, circular disc used to distribute load and prevent damage; however once it is “integrally formed with a unitary body portion” it is structurally the same as a “built-in” flange since it performs the washer's function but is integrated into the unitary body portion itself.
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Claim(s) 8,9, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sollami ‘210 in view of Bower, Jr. (US 4327947).
Sollami ‘210 discloses the invention substantially as claimed. However, Sollami ‘210
is silent about the retainer further comprising: a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot. Bower, Jr. ‘947 teaches a retainer (32) further comprising: a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 2). 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 Sollami to have a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Bower, Jr. since such a modification facilitates the insertion into the holder.
Re claim 9, 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. 2 of Bower, Jr.).
Re claim 18, further comprising: a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot (see Fig. 2 of Bower, Jr.).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (see Fig. 2 of Bower, Jr.).
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Claim(s) 8,9,11,12,15,18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frear ‘379 (Figs. 6,7,20-24) in view of Frear ‘379 (Fig. 2) as applied to claim 7 above, and further in view of Bower, Jr. (US 4327947).
Frear ‘379 (as modified above) discloses the invention substantially as claimed (see marked up Figure below). However, Frear ‘379 (as modified above) is silent about the retainer further comprising: a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot. Bower, Jr. ‘947 teaches a retainer (32) further comprising: a first slot extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer; a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 2). It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Frear (as modified above) to have a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Bower, Jr. since such a modification facilitates the insertion into the holder.
Re claim 9, 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. 2 of Bower, Jr.).
Re claim 11, further comprising: a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer (see Figs. 23,24 of Frear, see marked up Figure below).
Re claim 12, further comprising: a second slot axially extending from the notch through the sidewall of the retainer to a second slot termination, the second slot disposed approximately 180 degrees from the first slot (see Figs. 23,24 of Frear, see marked up Figure below).
Re claim 15, wherein the notch is arcuate (see Figs. 23,24 of Frear, see marked up Figure below).
Re claim 18, further comprising: a gap profile of the retainer defined by the first radial end surface and the second radial end surface of the first slot (para 0082, 0110,
see Figs. 23,24 of Frear; Fig. 2 of Bower, Jr.).
Re claim 19, at least one of the first radial end surface and the second radial end surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (0082, 0110, see Figs. 23,24 of Frear; Fig. 2 of Bower, Jr.).
Re claim 20, the gap profile of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (0082, 0110, see Figs. 23,24 of Frear; Fig. 2 of Bower, Jr.).
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Claim(s) 4,5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sollami ‘210 in view of Sollami (CA 2959838) or WO document (WO 2011016765).
Sollami ‘210 discloses the invention substantially as claimed. However, Sollami ‘210 is silent about further comprising: a transition radius of the washer portion extending from the rear annular flange to the tapered portion. Sollami ‘838 and WO document ‘765 both teach a transition radius of the washer portion extending from the rear annular flange to the tapered portion (see Figs. 5-13; Fig. 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 Sollami ‘210 to include a transition radius of the washer portion extending from the rear annular flange to the tapered portion as taught by either Sollami ‘838 or WO document ‘765 since such a modification reduces stress at the joint.
Re claim 5, Sollami ‘210 discloses the invention substantially as claimed. However, Sollami ‘210 is silent about further comprising a transition radius extending from a shoulder at a distal end of the tapered portion to a forward end of the shank.
Sollami ‘838 and WO document ‘765 both teach a transition radius extending from a shoulder at a distal end of the tapered portion to a forward end of the shank (see Figs. 5-13; Fig. 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 Sollami ‘210 to include a transition radius extending from a shoulder at a distal end of the tapered portion to a forward end of the shank as taught by either Sollami ‘838 or WO document ‘765 since such a modification reduces stress at the joint.
Response to Arguments
Applicant's arguments filed 9/14/2026 have been fully considered but they are not persuasive. Applicant argues that Sollami ‘210 teaches a washer “27” and flange “16’” depicted in Figure 3. The washer is separate and not integrally formed with the unitary body portion. Applicant is misrepresenting the examiner’s position of the Sollami reference. The examiner explicitly marked up Figure 15 depicting what was construed as the “washer portion” (“16””). Applicant argues that Sollami fails to teach that the tapered portion … adapted to contact a countersink at a forward end of a bit holder. The examiner disagrees. See Figs. 1,4 and 15.
Applicant argues that Frear ‘379 fails to teach, suggest, or describe at least the features of claim 1 of "a rear annular flange of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder" and "a tapered portion adjacent the rear annular flange of the washer portion, the tapered portion adapted to contact a countersink at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder". The examiner disagrees. See Figure 2 of Frear (see marked up annotation below of Frear Fig. 2).
Applicant’s arguments with respect to claim(s) 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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Allowable Subject Matter
Claims 14, 32-36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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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
10/7/2026
