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 .
Response to Amendment
This Action is in response to Applicant’s Reply of March 3, 2026.
Claims 2, 12, and 18 have been cancelled.
Claims 21-23 have been added.
Applicant’s amendment to claim 8 overcomes the previously presented objection to the drawings.
Applicant’s amendment to claim 13 overcomes the previously presented 35 USC 112(b) rejection thereof.
Applicant’s amendments to claims 1 and 10 overcomes the previously presented 35 USC 102(a)(2) rejection thereof.
Applicant’s amendment to claim 17 overcomes the previously presented 35 USC 102(a)(1) rejection thereof.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 6-8 have been amended, with claims 6-8 being rewritten in independent form, to require that the bit be configured to rotate relative to the stem in the first rotational direction. This is considered new matter. In paragraphs [0043] and [0044], the original disclosure makes clear that the bit rotates with the stem, via the collar, when the assembly rotates in the first rotational direction and is in the penetrating configuration. The bit is disclosed as rotating relative to the stem when in the displaced configuration and the rotatable configuration [0045], [0046]. There is no disclosure of the bit rotating relative to the stem when the pilot bit is in the penetrating configuration. As such, this limitation is considered new matter.
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 1, 3-5, 8-11, and 13 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.
Regarding claim 1: Claim 1 requires a stem, a collar coupled to the stem, and a bit that rotates in two opposing directions. Beyond the further recitation of the stem having spline that are complimentary to and opposite from a spline on the bit, there is no claimed interaction between the bit and collar and stem. The bit is not even required to be in contact with the collar and stem; the recitation of the splines is not a requirement of interaction. How is the bit rotated in the same “first rotational direction” as the stem and collar if it isn’t even connected to either the stem and/or the collar? The lack of structural relationship between the components of claim 1 makes it unclear as how the drill bit is arranged or operated.
Regarding claims 3-5 and 9: These claims are considered indefinite due to their dependence on claim 1.
Regarding claim 8: Claim 8 requires a stem, a collar coupled to the stem, and a bit that rotates in two opposing directions. Beyond the further recitation of the collar and stem being configured to allow removal of the bit from the stem, there is no claimed interaction between the bit and collar and stem. The bit is not even required to be in contact with the collar and stem before it is required to be removable from the collar and stem. The drill bit cannot be removed from something it was not required to be in contact with. Further, how is the bit rotated in the same “first rotational direction” as the stem and collar if it isn’t even connected to either the stem and/or the collar? The lack of structural relationship between the components of claim 8 makes it unclear as how the drill bit is arranged or operated.
Regarding claim 10: Claim 10 requires a stem, a collar coupled to the stem, and a bit that rotates in two opposing directions. There is no claimed interaction between the bit and collar and stem. The bit is not even required to be in contact with the collar and stem. How is the bit rotated in the same “first rotational direction” as the stem and collar if it isn’t even connected to either the stem and/or the collar? The lack of structural relationship between the components of claim 10 makes it unclear as how the drill bit is arranged or operated.
Regarding claims 11 and 13: These claims are considered to be indefinite due to their dependence on claim 10.
Claim Rejections – Art Rejection
While the prior art of record fails to disclose or suggest the subject matter of claims 1, 6, and 7, due to the above presented 35 USC 112(a) rejection thereof, the allowability of claims 1, 3-7, and 9 cannot be determined.
While the prior art of record fails to disclose or suggest the subject matter of claim 8 as currently presented, due to the above presented 35 US 112(a) rejection thereof, it is noted that the removal of the new matter from claim 8 will result in claim 8 being rejected as anticipated by Sanogo et al. Sanogo et al. discloses that the drill bit 30 is couplable to the arbor 40, which includes the collar 41 and stem 42. If the drill bit is couplable, or capable of being coupled, it is capable of being removed as well.
Allowable Subject Matter
Claims 17 and 19-20 are allowed.
Claims 10, 11, 13-16, and 21-23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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 JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
3/19/2026