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 restriction/election requirement (1/8/25) in the reply filed on 3/10/25 is acknowledged.
Claims 44-48, 63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention/Specie, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/25.
Applicant's election with traverse of Restriction/Election in the reply filed on 2/27/26 is acknowledged. The traversal is on the ground(s) that the previous office action did not acknowledge the response to restriction/election. This is not found persuasive because applicant clearly elected bit of Fig. 12 with retainer of Fig. 46 in response filed 3/10/25; as a result current claim 68 is directed to non-elected Specie (Fig. 8). Claim 68 is directed to non-elected Specie directed to “at least two cutouts from the rear annular flange” and should be canceled (see applicant’s arguments filed 3/10/2025). The requirement is still deemed proper and is therefore made FINAL.
Specification
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 specification fails to provide basis for “a second slot axially extending from the notch … from the first slot” as called for in claim 59.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a second slot axially extending from the notch … from the first slot” as called for in claim 59 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 49-62, 64-67 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 49 lines 2-3, “a washer portion body portion” is awkward and confusing; it appears as if it should be –a washer body portion--.
Claim 49 line 7 calls for “the body portion”; however, it is unclear if it relates back to claim 49 line 2 “a unitary body portion” or “a washer body portion”.
Claim 49 is confusing because at line 8, the first transition radius (30) extends radially inwardly and axially from a rear annular flange (26), it is not clear how it is upwardly from a rear annular flange.
Claim 49 line 9 calls for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 50 line 3 calls for “a bit holder”; claim 49 calls for “a bit holder”; it is unclear if and how they are related.
Claim 51 line 2 calls for “a second angle” of the countersink; however there was never “a first angle” of the countersink previously recited.
Claim 52 line 5 calls for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 53 line 3 calls for “a forward end of a bit holder”; claim 49 line 5 calls for “a forward end of a bit holder”; it is unclear if and how they are related.
Claim 54 line 2 calls for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 58 lines 3,4 call for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 59 line 2, “the at least one tab” lacks clear antecedent basis.
Claim 59 is directed to non-elected Specie directed to “a second slot extending from a notch” and should be canceled (see applicant’s arguments filed 3/10/2025).
Claim 65 line 2 calls for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 66 line 2, “the notch” lacks clear antecedent basis.
Claim 66 line 3 calls for “a bit holder”; claim 49 line 5 calls for “a bit holder”; it is unclear if and how they are related.
Claim 66 line 4 calls for “the shank”; claim 49 line 7 calls for “a generally cylindrical shank”; it is unclear if and how they are related.
Claim 67 line 2, “the notch” lacks clear antecedent basis.
Claim 67 line 3 calls for “a bit holder”; claim 49 line 5 calls for “a bit holder”; it is unclear if and how they are related.
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) 49-54 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Canadian document (CA 2959838).
Canadian document ‘838 discloses a bit (see Figs. 5-13) comprising:
a unitary body portion comprising an arcuate forward body portion (18, Figs. 5-13) and a washer portion body portion (32) adjacent the arcuate forward body portion, the washer body portion integrally formed as part of the unitary body portion and adapted to include an outer diameter that is at least an outer diameter of a forward end of a bit holder in which the bit is retained (this is the case since the claim is directed to a bit and a holder is not positively claimed, one can choose a holder to meet this limitation); a generally cylindrical shank (20) depending from a bottom of the unitary body portion; and an annular first transition radius (see marked up Figure below) extending radially inwardly and axially upwardly from a rear annular flange of the washer body portion adjacent the shank.
Re claim 50, further comprising: a tapered portion (near where member 52 is pointing Fig. 8) adjacent the rear annular flange of the washer body portion, the tapered portion adapted to contact a countersink (52, Fig. 8) 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. 8).
Re claim 51, 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 where 52 is pointing in Fig. 8).
Re claim 52, further comprising: the annular first transition radius of the washer portion extending from the rear annular flange to the tapered portion; and an annular second transition radius of the tapered portion extending axially distally from a shoulder at a distal end of the tapered portion to a forward end of the shank (see marked up Figure below).
Re claim 53, further comprising: the rear annular flange at the bottom of the unitary body portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (see Fig. 8).
Re claim 54, further comprising: a generally cylindrical hollow retainer (46) disposed circumferentially about the shank.
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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) 55,62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky (US 20050082899).
Canadian document discloses the retainer further comprising: a first slot (48, Fig. 9) 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 (48, Fig. 9);
Canadian document discloses the invention substantially as claimed. However, Canadian document is silent about 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, 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. Levankovsky teaches 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, 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). 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 to include 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, 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 as taught by Levankovsky since such a modification facilitates the insertion of the bit into the holder.
Re claim 62, at least one of the first radial end surface of the first slot (48, Fig. 9 of Canadian document or Fig. 6 of Levankovsky), the second radial end surface of the first slot, and the gap profile formed by the first radial end surface and the second radial end surface of the slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (48, Fig. 9 of Canadian document ‘838 or Fig. 6 of Levankovsky).
Claim(s) 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky ‘899 as applied to claim 55 above, and further in view of German document (DE 10142438).
Canadian document ‘838 (as modified above) discloses the invention substantially as claimed. However, Canadian document ‘838 (as modified above) it silent about including a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer. German document ‘438 teaches a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (where 33 is pointing in Figs. 1,2). 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 Canadian document ‘838 (as modified above) to include a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer as taught by German document ‘438 since such a modification facilitates the insertion of the bit into the bit holder.
Claim(s) 57-61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky ‘899 as applied to claim 55 above, and further in view of Beach et al. (US 4850649).
Canadian document ‘838 (as modified above) discloses the invention substantially as claimed. However, Canadian document (as modified above) is silent about including
a notch opposite the axial forward end of the retainer, the notch extending inwardly from
the axial distal end of the retainer. Beach et al. teaches a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer (see Figs. 3,5,6).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Canadian document ‘838 (as modified above) to include a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the bit into the bit holder.
Re claim 58, 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 Canadian document ‘838 (as modified above) to 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 as taught by Beach et al. (see Figs. 2 to 7) to prevent the retainer from being removed from the shank.
Insofar claim 59 is understood, Re claim 59, further comprising: at least one tab aperture (116, see Fig. 6 of Beach et al.) defined by the at least one tab (114); and a second slot (the upper portion of slot 112) axially extending from the notch (lower portion of slot 112) through the sidewall of the retainer to a second slot termination, the second slot disposed approximately 180 degrees from the first slot.
Re claim 60, wherein the notch is one of arcuate and angular (112, Fig. 6 of Beach et al.).
Re claim 61, further comprising: an angular notch (112, Fig. 6 of Beach et al.) opposite the axial forward end of the retainer, the angular notch extending inwardly from the axial distal end of the retainer; a first angled side of the angular notch extending from a first location at the axial distal end of the retainer to a vertex of the angular notch axially inward from the axial distal end of the retainer; and a second angled side of the angular notch adjacent the first angled side, the second angled side extending from a second location at the axial distal end of the retainer to the vertex, the first location spaced from the second location at the axial distal end of the retainer (112, Fig. 6 of Beach et al.).
Claim(s) 64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Ojanen (US 20160273356).
Canadian document ‘838 discloses the invention substantially as claimed. However, Canadian document ‘838 is silent about including a tapered portion extending from the rear annular flange to an outer surface of the washer body portion. Ojanen teaches a tapered portion (see Figs. 1,3) extending from the rear annular flange to an outer surface of the washer body portion. 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 include a tapered portion extending from the rear annular flange to an outer surface of the washer body portion as taught by Ojanen since such a modification enables removal of the bit.
Claim(s) 65-67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Beach et al. (US 4850649).
Canadian document ‘838 discloses the invention substantially as claimed. However, Canadian document ‘838 is silent that a distal end of the retainer adapted to grip a
distal portion of the shank. Beach et al. teaches a distal end of a retainer adapted to grip a distal portion of the shank (see Figs. 2-7). 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 distal end of the retainer adapted to grip a distal portion of the shank as taught by Beach et al. since such a modification facilitates insertion of the bit into the block holder.
Re claim 66, further comprising: an internal diameter of the notch (112,Fig. 6 of Beach et al.) the distal end of the retainer adapted to reduce the internal diameter of the notch as the bit is inserted into a bore of a bit holder, thereby providing negative, minimal, and/or zero clearance at the distal portion of the shank.
Re claim 67, further comprising: an internal diameter of the notch (112, Fig. 6 of Beach et al.), the distal end of the retainer adapted to reduce the internal diameter of the notch as the bit is inserted into a bore of a bit holder, thereby reducing radial movement, improving bit rotation, and reducing axial forward movement of the bit.
Response to Arguments
Applicant’s arguments with respect to claim(s) 49 have been considered but are moot in view of the new grounds of rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Topka, Jr. et al. (US 6176552) teaches cut-outs on flanges.
Mouthaan (US 20050173966) teaches washer body portion adapted to include an outer diameter that is at least an outer diameter of a forward end of a bit holder.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, 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, 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
3/20/26