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 Claims 9-24 in the reply filed on 10/8/25 is acknowledged.
Claims 1-8 and 25-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
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 9-24 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 9 recites “pin receptacle recessed the first head end surface”. From the disclosure, it is apparent that the pin receptacle (80) is recessed in the shank. For the purpose of this Office Action, Examiner interprets it as “the pin receptacle
recessed in a shank”. Please be advised, “shank” has not been claimed so when making the changes, the shank should be defined to avoid LAB (lack of antecedent basis).
- Claim 9 recites “a clamping through bore recessed in the head peripheral surface”. From the disclosure, it is clear that a clamping through bore (96) recessed in the shank peripheral surface (36) (figure 9). For the purpose of this Office Action, Examiner interprets it as “a clamping through bore recessed in the shank peripheral surface”. Please be advised, “shank” has not been claimed so when making the changes, the shank should be defined to avoid LAB (lack of antecedent basis).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-11, 18 and 19, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Scott (USP 4,514,117).
Regarding claim 9, Scott discloses a cutting head, having a head central axis that defines opposite forward and rearward directions, the cutting head comprising: a head peripheral surface (420) extending circumferentially about the head central axis and forming a boundary of a rearwardly facing first head end surface (defined by Examiner as E, i.e. the planar surface); a head axial abutment surface located on the first head end surface (E); an insert pocket (figure 11 shows an alternative embodiment of the base of the tool bit assembly of FIG. 8 for use with removable drill bits (drill equating to “insert”, therefore, Examiner is defining the insert pocket to be S); and either: a coupling pin (P) projecting from the first head end surface (E), the coupling pin comprising: a pin outer peripheral surface extending about a pin central axis (figure 8); a pin vertical axis which is perpendicular to, and intersects, the pin central axis to thereby define a pin vertical plane (figure 8); a pin engagement groove (424) recessed in the pin outer peripheral surface and extending from a pin free end towards a pin fixed end along a groove longitudinal axis (figure 8); and a clamping recess (426) recessed in the pin outer peripheral surface (44) opposite the pin engagement groove (424) about the pin central axis (Please note: the claim language does not say the clamping recess is “diametrically opposite” the pin engagement groove, thus reads on the claim from the standpoint of 426 is positioned on a circumferential side of the coupling pin (P) that is opposite the side on which the pin engagement groove (424) is formed/on the opposite side of the axis); or (also further reads on the alterative choice); a pin receptacle (412) recessed in a shank, the pin receptacle (412) comprising :a receptacle inner peripheral surface extending about a receptacle central axis (438) (figures 8 and 9); a receptacle vertical axis which is perpendicular to, and intersects, the receptacle central axis (438) to thereby define a receptacle vertical plane (figure 8); and a receptacle engagement ridge (422) protruding from the receptacle inner peripheral surface and extending from a receptacle open end towards a receptacle bottom end along a ridge longitudinal axis (figures 8 and 9); and a clamping through bore (432) recessed in the shank peripheral surface and opening out to the pin receptacle (412) at a receptacle through bore opening located opposite the receptacle engagement ridge (422) about the receptacle central axis (figure 8).
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Regarding claim 10, Scott discloses wherein: the coupling pin (P) projects from the first head end surface (E) (see figure above).
Regarding claim 11, Scott discloses wherein: the pin vertical plane intersects the pin engagement groove (424); and the pin engagement groove (424) exhibits mirror asymmetry about the pin vertical plane (figure 8).
Regarding claim 18, Scott discloses wherein: the pin engagement groove (424) extends lengthwise along an entire axial extent of the coupling pin (P) (see figure above).
Regarding claim 19, Scott discloses wherein: the groove longitudinal axis is parallel to the pin central axis (figures 8, 9 and 11).
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.
Claims 12-17 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Scott (USP 4,514,117).
Scott discloses all aspects of the claimed subject matter as set forth in the rejection above. Furthermore, Scott discloses wherein: the pin engagement groove (424) comprises two opposing groove side surfaces (figures 8 and 11). Scott does not disclose the groove side surfaces sloping inwardly in opposite widthwise directions of the pin engagement groove so that they converge towards each other/intersect each other nor the pin engagement groove (424) being a concavely curved portion with specific radius of claims 15 and 17 or with specific depth of claims 16 and 17. It would have been an obvious matter of design choice to make the different portions of the pin engagement groove of whatever form or shape was desired or expedient depending on the space available as long as the groove and the engaging ridge have complementary shape. 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 et al., 149 USPQ 47. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the different portions of Scott’s pin engagement groove of whatever form or shape was desired or expedient depending on the space available as long as the groove and the engaging ridge have complementary shape. Furthermore, regarding claim 23, Scott discloses clamping recess (426) located on the pin upper surface (figure 8). Scott is silent about the details of the clamping recess (426). Again, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the Scott’s clamping recess of whatever form or shape was desired or expedient depending on the space available and cutting conditions.
Allowable Subject Matter
Claims 20-22 and 24 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ADDISU at (571) 272-6082. The examiner can normally be reached on Monday - Friday 9:00 am - 5:00 pm (Mondays and Wednesday-Friday).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. 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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/SARA ADDISU/Primary Examiner, Art Unit 3722 1/24/26