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 without traverse of Invention I, Species A, Subspecies i, claims 1-10 in the reply filed on 12 May 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 May 2026.
Specification
The abstract of the disclosure is objected to because in line 8, the phrase “at least hole” should be changed to “at least one hole”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the “at least one first air passage” in line 14 of claim 1 does not have antecedent basis for this terminology in the specification, such that one of ordinary skill in the art would not be able to determine what feature of the invention is being referred to by this limitation.
The disclosure is objected to because of the following informalities: reference label “16” is used to reference both the bridge and the skirt in various locations.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 9, the phrase “where is remote” should be changed to “where it is remote”.
In claim 1, line 10, the phrase “at least hole” should be changed to “at least one hole”.
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 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "a housing" in line 6. However, there is already antecedent basis for “a housing” in line 2 of the claim, making it unclear whether these refer to the same housing or two different housings. For the purposes of examination, it has been assumed that these limitations refer to the same housing.
Claim 1 recites the limitation "a suction chamber" in line 11 and then claims “a chamber” in line 12. It is unclear whether these refer to the same chamber or two different chambers. For the purposes of examination, it has been assumed that these limitations refer to the same chamber.
Claim 1 recites the limitation "at least one single aperture" in line 18. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the surface of the outer section" in line 18. There is insufficient antecedent basis for this limitation in the claim.
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, 3-4, 6-7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wong et al. (US 2016/0250731 A1).
Regarding claim 1, Wong et al. discloses a suction cup dust extractor 600 for a drill 612 comprising: a housing 626/628/632; a drill collar system 618 attached to the housing, the drill collar system including: a collar 618c/618d including a drill passage 618a extending through the collar and an extension (forming passage 618b) forming an internal passage 618b that connects at one end with the drill passage (see figure 31), the extension being attachable to the housing of the dust extractor to enable the internal passage to connect to a suction passage (on suction source, not shown) of the dust extractor; and a cover 630 mounted adjacent an entrance of the drill passage, the cover being moveable between a first position (figure 30) where it covers the entrance and a second position (not shown, “The dust box cap 630 and the dust box 618 are pivotally movable relative to each other about a spindle 635”) where it is remote from the entrance, wherein the cover comprises at least one hole (not labeled, see figure 31) that passes through the cover; a suction chamber (formed by element 632) formed by the walls of the housing having an opening 632a and which, in use, locates against a work piece to create a chamber (the suction chamber); at least one aperture (opening in lower rim 636 leading to box 618, see figure 31) located on the housing through which air can pass; at least one first air passage (passage formed by the walls 618c/618d of box 618, see figure 31) formed by the walls of the housing that connects between the internal passage of the collar and the at least one aperture to enable air to pass from the internal passage to the at least one aperture; and at least one second air passage 628b formed within the housing that connects between the suction chamber and the at least one single aperture to enable air to pass from the suction chamber to the at least one aperture.
Regarding claim 3, Wong et al. discloses wherein the cover 630 comprises: a rigid outer ring 616 sized to reset on the collar 618c/618d in the first position; and a resiliently deformable washer 632 (rubber seal) mounted inside of the outer ring.
Regarding claim 4, Wong et al. discloses wherein the resiliently deformable washer 632 has an inner section 632a through which the hole extends and an outer section 632 that surrounds the inner section and connects between the outer ring 616 and the inner section.
Regarding claim 6, Wong et al. discloses wherein a thickness of the outer section 632 is less than that of the inner section 632a (see figure 31).
Regarding claim 7, Wong et al. discloses wherein the washer 632 comprises plurality of radial ribs (the washer shaped portions forming seal 632, see figure 31) formed on the surface of the outer section 632 extending from the inner section 632a radially outwardly to the outer ring 616.
Regarding claim 9, Wong et al. discloses wherein the cover 630 pivots between its first position and its second position.
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, 5, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 2016/0250731 A1).
Regarding claims 2 and 8, Wong et al. discloses the invention substantially as claimed, except Wong et al. does not disclose wherein the hole in a lengthwise direction is frusto-conical in shape, or wherein the inner section comprises a conical funnel attached to one side of the inner section which extends the length of the hole. However, it would have been an obvious matter of design choice to make the different portions of the suction dust cup extractor of whatever form or shape was desired or expedient for the purpose of providing an optimal shape for receiving a drill bit. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Regarding claim 5, Wong et al. discloses the invention substantially as claimed, except Wong et al. does not disclose wherein a thickness of the inner section is approximately the same as that of the outer ring. However, it would have been an obvious matter of design choice to make the different portions of the device of whatever relative sizes were desired for the purpose of providing a desired seal strength to the resiliently deformable washer, since such a modification would have involved a mere change in the proportions of components. 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 10, Wong et al. discloses the invention substantially as claimed, except the embodiment 600 of Wong et al. does not disclose wherein the collar 618c/618d comprises a circular brush located adjacent the entrance of the drill passage 618a which extends radially inwardly, instead disclosing a disc 628 with a central hole 628b and three sections 628a. However, the embodiment 100 discloses a brush 128 that is used for the same purpose as the disc 628, such that it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have substituted the disc in the dust extraction of embodiment 600 with the brush of embodiment 100, because it has been held to be within the general skill of a worker in the art to select a known element on the basis of its suitability for the intended use as a matter of obvious design choice. Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,541,498. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious combinations of each other.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kelley (US 1,969,513) discloses a suction cup dust extractor with a pivoting cover portion.
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 5 October 2026
