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
This office action is in response to Applicant’s amendment filed 29 April 2026.
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, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merriman (US 3,108,500).
Regarding claim 1, Merriman discloses a drill guide bushing assembly 10/50 for use with a drill and a bit to drill a hole in a first object (see column 1, lines 8-10), the drill guide bushing assembly comprising: a bushing holder 50 including at least one upper wall (top surface in figure 4), at least one lower wall (bottom surface in figure 4), and a body (portion between upper and lower walls) connected to the at least one upper wall and the at least one lower wall, the body including a bushing channel 48 having an axis, the channel extending along the axis and having a cylindrical shape (see figure 4); and a drill guide bushing 10 including a central passage 16/18 configured to receive the bit, the drill guide bushing positioned within the bushing channel and configured to move axially therein (the drill guide bushing moves axially within the bushing channel during assembly), the drill guide bushing coupled to the body of the bushing holder such that the drill guide bushing does not rotate within the bushing channel when the hole is being drilled (held rotationally by protrusions 32 to interlock the bushing within the fixture); wherein the drill guide bushing has a lower end (bottom portion in figure 2 including annular groove 26); wherein the lower end of the drill guide bushing extends below the lower wall of the bushing holder (as seen in figure 4).
Regarding the intended use limitation “to drill a hole in a first object while a second object having a second hole is positioned on the first object” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding the intended use limitation “wherein the lower end of the drill guide bushing is configured to be positioned in the second hole of the second object, and wherein the lower wall of the bushing holder is configured to contact a surface of the second object while the lower end of the drill guide bushing is positioned in the second hole; and wherein, with the lower end of the drill guide bushing positioned in the second hole of the second object and the lower wall of the bushing holder contacting the surface of the second object, the central passage of the drill guide bushing is positioned to guide the bit through the second hole and into the first object to drill the hole in the first object such that the hole in the first object is properly aligned relative to the second hole in the second object”, it is noted that the prior art used in the rejection is capable of being used for this function. A second object with an appropriately sized hole could be positioned on top of a first object such that a hole could be drilled as claimed. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 4, Merriman discloses further comprising a retaining ring 28 coupled to one end of the drill guide bushing 10, the retaining ring configured to retain the drill guide bushing within the bushing channel 48.
Regarding claim 7, Merriman discloses wherein the central passage 16/18 of the drill guide bushing has a first inner diameter 16 that is larger than a diameter of the bit and a second inner diameter 18 that is larger than the first inner diameter.
Allowable Subject Matter
Claims 2-3 and 5 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.
Claims 8-11 and 13 are allowed. Claim 8 is the independent claim.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is U.S. Patent 3,108,500 to Merriman as applied to the claims above. Suffice it to say, the patent to Merriman does not disclose “including a disc having a cutout along a circumference thereof and a central passage configured to receive the bit, the drill guide bushing positioned within the bushing channel and configured to move axially therein; and a pin connected to the body of the bushing holder and positioned in the cutout such that the drill guide bushing is prevented from rotating within the bushing channel” as claimed in independent claim 8, and as such does not anticipate the instant invention as disclosed in independent claim 8.
Furthermore, there is no combinable teaching in the prior art of record that would reasonably motivate one having ordinary skill in the art to so modify the teachings of Merriman, and thus, for at least the foregoing reasoning, the prior art of record does not render obvious the present invention as set forth in independent claim 8.
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
Conclusion
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 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 22 May 2026
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