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
Election/Restrictions
Applicant’s election without traverse of Invention I, Species A, claims 1-8 and 10-13, in the reply filed on 5 November 2025 is acknowledged.
Claims 9 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.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 5 November 2025.
Claim Objections
Claim 5 is objected to because of the following informalities: in line 3, the phrase “about 80% and 95% a diameter” should be changed to about 80% and 95% of a diameter”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function, or the specification provides more than a single example of the structure, materials, or acts necessary to entirely perform the recited function. Such claim limitation(s) is/are: “a coupling portion”, “a cutting portion”, “an inner portion”, and “an outer portion” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 2, 5, 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.
The term “about” in claims 2 and 5 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 2 recites the limitation “about 1/4 to 3/4 of the radius”, and claim 5 recites the limitation “about 80% and 95% a diameter”. It is unclear as to what amount of deviation is acceptable for these limitations.
Claim 13 recites the limitation "the transition" in line 1. 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 1-4, 8, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parendo et al. (US 2019/0232391 A1).
Regarding claim 1, Parendo et al. discloses a boring tool 10 comprising: a coupling portion 34 (portion of 34 to the left of the groove in figure 1) for interfacing with a powered driver; a shank 34 (portion of 34 to the right of the groove in figure 1) operably coupled to the coupling portion; a cutting portion 14 operably coupled to the shank, the cutting portion being defined by a plurality of helical cutting flutes 30; and a cutting tip 42 operably coupled to a distal end of the cutting portion relative to the shank, wherein the coupling portion, the shank, the cutting portion and the cutting tip share an axis 26, wherein the cutting tip comprises: an inner portion 54 defined by inner faces 54 (see figure 2) bisected by the axis and extending a first radial distance (half of D2, see figure 3) away from the axis to define a first point angle η1 between the inner faces, and an outer portion 58 defined by outer faces 58 (see figure 2) extending from respective ones of the inner faces at the first radial distance to a second radial distance (half of D1, see figure 3) equal to a radius of the cutting portion to define a second point angle η2 between the outer faces, the second point angle being less than the first point angle (η1 may be within a range between 130 degrees and 140 degrees, η2 may be within a range between 100 and 130 degrees, see paragraphs [0018] to [0019]).
Regarding claim 2, Parendo et al. discloses wherein the first radial distance (half of D2) is between about 1/4 to 3/4 of the radius of the cutting portion (half of D1; in the illustrated embodiment, D2 is approximately two thirds the diameter D1).
Regarding claim 3, Parendo et al. discloses wherein the first point angle is 135 degrees +/- 5 degrees and the second point angle is 118 degrees +/- 5 degrees (in some embodiments, the first tip angle η1 is 135 degrees, and the second tip angle η2 may be 118 degrees).
Regarding claim 4, Parendo et al. discloses wherein the first point angle is 135 degrees and the second point angle is 118 degrees (as set forth in the rejection of claim 3 above).
Regarding claim 8, Parendo et al. discloses wherein the boring tool 10 is an impact bit and the powered device is an impact driver (the drill bit may be a bit used with a hammer-type drill, see paragraph [0003]).
Regarding claim 11, Parendo et al. discloses wherein the first radial distance (half of D2) defines a transition between the inner faces 54 and the outer faces 58, respectively (see figures 2 and 3).
Regarding claim 12, Parendo et al. discloses wherein the transition defines a distinct transition between the first point angle η1 and the second point angle η2 (see figures 2 and 3).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Parendo et al. in view of Henke et al. (DE 10 2012 224 437 A1).
Regarding claim 5, Parendo et al. discloses the invention substantially as claimed, except Parendo et al. does not disclose wherein the shank comprises a torsion zone having a reduced diameter relative to remaining portions of the shank, and wherein the torsion zone has a diameter that is between about 80% and 95% a diameter of the remaining portions of the shank. Henke et al. teaches the use of a boring tool 10e (figure 6) that comprises a shank 14e having a torsion zone 30e, wherein the tapered torsion zone has at least a portion that has a diameter between about 80% and 95% of the main portion of the full diameter shank above and below the tapered portion (see figure 6), as the full reduction at the center of the taper is an 80% reduction, for the purpose of reducing torque peaks in the shank during a drilling operation. 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 modified the shank of the boring tool of Parendo et al. with the torsion zone of Henke et al. in order to reduce high torque peaks in the shank during a drilling operation.
Claims 6-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Parendo et al.
Regarding claims 6-7, Parendo et al. discloses the invention substantially as claimed, except Parendo et al. does not disclose wherein the boring tool is formed from high-speed steel, or wherein the boring tool is formed of a cobalt infused material, although Parendo et al. does disclose that the material is preferably a durable steel alloy. 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 the material of the boring tool to be a high-speed steel, especially a cobalt infused high-speed steel, for the purpose of enhancing hardness, wear resistance, and heat tolerance of the tool, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claim 10, Parendo et al. discloses wherein the coupling portion 34 is a hex head. Parendo et al. does not disclose wherein the coupling portion is a 1/4-inch hex head. However, the Examiner takes Official Notice that it is well known in the art of powered drivers to use a tool having a 1/4-inch coupling portion for the purpose of being held by a driver having a 1/4-inch tool socket.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Parendo et al. in view of Watanabe et al. (US 12,202,057).
Regarding claim 13, Parendo et al. discloses the invention substantially as claimed, except Parendo et al. does not disclose wherein the transition defines a curved transition between the first point angle and the second point angle. Watanabe et al. teaches the use of a boring tool 1 (figure 7) that comprises a first portion having a first point angle at the tip and a second portion 7 having a second point angle, wherein there is a curved transition 5 between the first and second portions for the purpose of simplifying production of the boring tool while maintaining high hole quality. 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 modified the cutting tip of the boring tool of Parendo et al. with the curved transition portion of Watanabe et al. in order to reduce manufacturing costs while maintaining high quality of the bored hole.
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 15 December 2025