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 2 January 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 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oka et al. (US 2014/0363249 A1).
Regarding claim 1, Oka et al. discloses a mini cutting bit 1 (as the term “mini” has not been further defined by the claim or the specification, the drill bit of Oka et al., which discloses in Embodiment 1 as having a diameter of 6.375 mm, is seen to meet this limitation), comprising: a shank 2; a cutting part 6 (cemented carbide portion under diamond film 11) connected to an end of the shank; and a bit tip 11 (diamond film) connected to an end of the cutting part opposite to the shank (connected by diamond film coating to an outer surface of the cutting part), wherein the bit tip and the cutting part are made of different materials (the bit tip being diamond film and the cutting part being cemented carbide), and the bit tip is harder than the cutting part (it is known in the art of materials that diamond is harder than carbide), wherein the bit tip 11 has a first cutting portion 3a (coated portion of 3a) and a second cutting portion 3b (coated portion of 3b); the first cutting portion is connected to an end of the second cutting portion and is proximal to a front end of the bit tip than the second cutting portion (see figure 4); the first cutting portion has a first cutting angle Ө1 (120 to 135 degrees) while the second cutting portion has a second cutting angle Ө2 (70 to 100 degrees); the first cutting portion is greater than the second cutting angle, wherein the bit tip 11 further has a third cutting portion 3c (coated portion of 3c) connected to an end of the second cutting portion 3b opposite to the first cutting portion 3a; the third cutting portion has a third cutting angle Ө3 (55 to 10 degrees), and the second cutting angle is greater than the third cutting angle, wherein the bit tip further has a connecting portion 9 having opposite ends (top and bottom of portion 9, see figure 1) connected to the third cutting portion and the cutting part (the bottom portion of the diamond film of connecting portion 9 connects to the cemented carbide surface of cutting part 6); wherein a diameter of the connecting portion gradually decreases from the third cutting portion toward the cutting part (the connecting portion tapers inward (back taper) as measured from the top to the bottom in figure 1, see paragraph [0044])); wherein the connecting portion is inclined relative to an axial direction of the cutting part (connecting portion 9 is inclined at an angle α, see figure 6).
Regarding claim 8, Oka et al. discloses wherein the shank 2 and the cutting part 6 are made of a single element (cemented carbide).
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, 5-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Oka et al. (US 2014/0363249 A1).
Regarding claims 3-4, Oka et al. discloses the invention substantially as claimed, except Oka et al. does not disclose wherein the first cutting angle is 137 degrees (disclosing 120 to 135 degrees), and the second cutting angle is 92 degrees (disclosing 70 to 100 degrees). However, these angles are result-effective variables because Oka et al. teaches that the angles are selected based on optimizing thrust load and reducing burrs during a drilling operation. Therefore, it would have been an obvious matter of design choice to make the first and second cutting angles to be the desired value for the purpose of providing a desired thrust load and hole quality based on the material being drilled, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding claim 6, Oka et al. discloses wherein the shank 2 has a conical portion 8, and the conical portion has a taper angle β (disclosed as 60 degrees from the rotation axis). Oka et al. does not disclose the taper angle is 47 degrees. However, this angle is a result-effective variables because Oka et al. teaches that the angle is selected based on working the outside diameter of a drilled hole cut by the smaller diameter portion of the drill bit during a drilling operation. Therefore, it would have been an obvious matter of design choice to make the taper angle to be the desired value for the purpose of providing a desired finish to a hole being drilled, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding claim 7, Oka et al. discloses wherein the cutting part 6 has a first spiral portion (first land portion 12) and a second spiral portion (second land portion 12) parallelly and twistedly formed on the cutting part 6; the first spiral portion has a helix angle (disclosed as preferably being between 15 and 45 degrees). Oka et al. does not disclose the helix angle is 32 degrees. However, this angle is a result-effective variables because Oka et al. teaches that the angle is selected based on providing a desired strength and cutting ability to the drill bit. Therefore, it would have been an obvious matter of design choice to make the helix angle to be the desired value for the purpose of providing a desired strength and ease of cutting to the drill bit, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding claims 9-10, Oka et al. discloses the invention substantially as claimed, except Oka et al. does not disclose wherein the cutting part 6 and the shank 2 are made of tungsten carbide alloy (only disclosing cemented carbide), or wherein the bit tip 11 is made of polycrystalline diamond (only disclosing diamond). However, 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 tungsten carbide alloy for the cutting part and shank of the drill and polycrystalline diamond particles for the diamond film coating bit tip for the purpose of providing a desired strength to the cutting part and shank while also providing a desired durability to the diamond film coating bit tip, 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)
Response to Arguments
Applicant's arguments filed 2 January 2026 have been fully considered but they are not persuasive.
Applicant argues that the connecting portion 9 of Oka is parallel to the cutting part 1 and is not inclined relative to the cutting part, which is not persuasive because Oka teaches that connecting part 9 has a back taper and is inclined relative to cutting part 1.
Applicant argues that the bit tip 3 and the cutting part 1 of Oka are made of the same material. However, the cutting part of Oka was defined as the cemented carbide portion of small diameter portion 6, and the bit tip was defined as the diamond film 11 that is the coating over the cemented carbide portion, as the claim does not cite any further requirements for the cutting part. Therefore, these elements are seen to be made of different materials.
For the reasons set forth above, the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 23 February 2026