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 1-9 in the reply filed on 3 December 2025 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.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 3 December 2025.
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 1-2, 5-6, and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lokkinen (US 10,207,335).
Regarding claim 1, Lokkinen discloses a step drill bit (figure 4) comprising: a shank 40 operatively couplable to a tool (electric, hydraulic, or pneumatic motor, see column 4, lines 13-14); a body portion 50 coupled to the shank, the body portion including a tool bit tip (right side in figure 2) and a plurality of progressively sized, axially stacked steps 34, the body portion defining a hollow cavity (hollow inner portions formed between rear and 10 and safety ring 20, see figure 1); and an inner structure 16/18 having a plurality of support members 18 extending within the hollow cavity (as seen in figure 1).
Regarding claim 2, Lokkinen discloses wherein the plurality of support members 18 and the body portion 50 are formed as a single piece (see column 3, lines 59-61).
Regarding claim 5, Lokkinen discloses further comprising a transition portion 10 positioned between the shank 40 and the body portion 50, wherein the transition portion defines an aperture (hole for receiving shaft 40) in communication with the hollow cavity (the hole for receiving the shaft 40 is in communication with the hollow cavity through threaded holes 12).
Regarding claim 6, Lokkinen discloses wherein the body portion 50 defines a passageway 12 extending from the hollow cavity to an outer surface of the body portion (as seen in figure 1).
Regarding claim 8, Lokkinen discloses wherein the tool bit tip includes a plurality of chisel faces (flat surfaces seen at the tip attached to cutting edges 34), the chisel faces converge to a cutting edge 34.
Regarding claim 9, Lokkinen discloses wherein the tool bit tip includes a plurality of chisel faces (flat surfaces seen at the tip attached to cutting edges 34), the chisel faces converge to a cutting point (as seen in figure 1, the two cutting faces at the tool bit tip each converge to two outer points at the outer axial end of the tool).
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allen (US 9,676,041).
Regarding claim 1, Allen discloses a step drill bit 10 comprising: a shank 18 operatively couplable to a tool (impact driver, see column 1, lines 13-14); a body portion 14 coupled to the shank, the body portion including a tool bit tip 34 and a plurality of progressively sized, axially stacked steps 30, the body portion defining a hollow cavity 50; and an inner structure 52 having a plurality of support members (the faces forming square cross section 52 are used to support the drive portions 66 of shank 18) extending within the hollow cavity (as seen in figure 2).
Regarding claim 2, Allen discloses wherein the plurality of support members 52 and the body portion 14 are formed as a single piece (see figure 2).
Regarding claim 6, Allen discloses wherein the body portion 14 defines a passageway 54 extending from the hollow cavity 50 to an outer surface of the body portion (as seen in figure 2).
Regarding claim 7, Allen discloses wherein the body portion 14 includes a helical flute 42.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lokkinen.
Regarding claims 3-4, Lokkinen discloses the invention substantially as claimed, except Lokkinen does not disclose wherein the plurality of support members is formed as a plurality of cylinders, or wherein the plurality of support members is formed as a lattice structure. However, it would have been an obvious matter of design choice to make the support members to be of whatever form or shape was desired or expedient for the purpose of providing a desired level of strength to weight ratio in the tool. 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)
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 2 February 2026
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