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 .
Specification
The disclosure is objected to because of the following informalities: Under the brief description of the drawings, the description of Figures 90-93 should be deleted since the corresponding figures were deleted.
Appropriate correction is required.
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 3,4,11,13 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 3 is confusing because it calls for “second compression slot”; “second compression slot termination”; however, there was never a “first compression slot” and “first compression slot termination” previously recited.
Claim 4 calls for “a plurality of compression slots”; claim 1 calls for “at least one compression slot”; it is unclear if and how they are related.
Claim 11 is confusing because it calls for “second compression slot”; “second compression slot termination”; however, there was never a “first compression slot” and “first compression slot termination” previously recited.
Claim 13 line 2 calls for “at least one compression slot”; claim 9 line 9 calls for “at least one compression slot”; it is unclear if and how they are related.
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.
Claim 13 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. Claim 13 calls for “variable axial length”; however, the originally filed disclosure fails to provide basis for such language; therefore such language constitutes new matter.
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.
Claim(s) 1-5,9-13,19,23,24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Emmerich (US 4484783) in view of Ojanen (US 20020153175).
Emmerich ‘783 discloses a retainer (see Figs. 1,5,6,11) comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end;
a first slot (see marked up Figure below) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one compression slot (see marked up Figure below) opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and
the axial forward end of the retainer comprising a solid circular end wall except for a single gap in the end wall formed by the first slot; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Emmerich ‘783 discloses the invention substantially as claimed. However, Emmerich ‘783 lacks at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height, the axial distance of the at least one compression slot being greater than the height of the at least one chamfer; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 teaches at least one chamfer (para 0040) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5-9,15); the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Emmerich ‘738 to include at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Ojanen ‘175 since such a modification facilitates the installation of the retainer into the block/holder.
With regards to the limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of references above. As noted in Emmerich the compression slot (46) extends pass the bulge/dimple portion (43) and in Ojanen the height of the at least one chamfer (51) does not extend pass the bulge/dimple portion (46). Therefore, the above limitation
“the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of Emmerich in view of Ojanen.
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Re claim 2, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 3, further comprising: at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 4, further comprising: a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slots disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot and second slot (see marked up Figure above).
Re claim 5, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot disposed circumferentially around the axial distal end of the retainer (see marked up Figure above)
Re claim 19, the at least one compression slot notch being one of angular and arcuate (see marked up Figure above).
Re claim 23, the at least one compression second slot positioned along a central portion of a solid back axial portion of the retainer opposite the first slot of the retainer, the solid back axial portion axially extending from the axial distal end of the retainer to the axial forward end of the retainer (see marked up Figure above).
Re claim 9, Emmerich discloses a bit (see Figs. 1,2,5,6,11) comprising:
a body portion; a generally cylindrical shank axially depending from a bottom of the body portion (see Figs. 1,2,5,6); and
a retainer (see Figs. 1,5,6,11) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end; a first slot (see marked up Figure above) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one compression slot opposite the first slot of the retainer, the at
least one compression slot extending inwardly from the axial distal end of the
retainer, an axial length less than the axial length of the body portion;
the axial forward end of the retainer comprising a solid circular end wall except for
a single gap in the end wall formed by the first slot; the at least one compression slot
providing a radial direction of collapse of the axial distal end of the generally cylindrical
hollow body portion upon the application of radial pressure to an outer surface of the
retainer.
Emmerich ‘783 discloses the invention substantially as claimed. However, Emmerich ‘783 lacks at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the axial distance of the at least one compression slot greater than the chamfer height;
the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 teaches at least one chamfer (para 0040) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5-9,15); the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Emmerich ‘738 to include at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Ojanen ‘175 since such a modification facilitates the installation of the retainer into the block/holder.
With regards to the limitation “the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of references above. As noted in Emmerich the compression slot (46) extends pass the bulge/dimple portion (43) and in Ojanen the height of the at least one chamfer (51) does not extend pass the bulge/dimple portion (46). Therefore, the above limitation
“the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of Emmerich in view of Ojanen.
Re claim 10, the retainer further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 11, the retainer further comprising: at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 12, the retainer further comprising: the at least one compression slot comprising a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slot terminations each disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot (see marked up Figure above).
Re claim13, the retainer further comprising: at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot comprising a variable axial length and disposed circumferentially around the axial distal end of the retainer, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 24, the at least one compression slot of the retainer positioned along a central portion of a solid back axial portion of the retainer opposite the first slot of the retainer, the solid back axial portion axially extending from the axial distal end of the retainer to the axial forward end of the retainer (see marked up Figure above).
Claim(s) 1-5,9-13,19,23,24 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO document (WO 2010027315) in view of Ojanen (US 20020153175).
WO document ‘315 discloses a retainer (see Figs. 2,3C, 4A) comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end;
a first slot (see marked up Figure below) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one compression slot (see marked up Figure below) opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and
the axial forward end of the retainer comprising a solid circular end wall except for a single gap in the end wall formed by the first slot; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
WO document ‘315 discloses the invention substantially as claimed. However, WO document ‘315 lacks at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height, the axial distance of the at least one compression slot being greater than the height of the at least one chamfer; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 teaches at least one chamfer (para 0040) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5-9,15); the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify WO document ‘315 to include at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Ojanen ‘175 since such a modification facilitates the installation of the retainer into the block/holder.
With regards to the limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of references above. As noted in WO document ‘315 the compression slot (see marked up Figure below) extends pass the bulge/dimple portion (see marked up Figure below; para 0021) and in Ojanen the height of the at least one chamfer (51) does not extend pass the bulge/dimple portion (46). Therefore, the above limitation
“the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of WO document ‘315 in view of Ojanen.
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Re claim 2, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 3, further comprising: at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 4, further comprising: a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slots disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot and second slot (see marked up Figure above).
Re claim 5, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot disposed circumferentially around the axial distal end of the retainer (see marked up Figure above)
Re claim 19, the at least one compression slot notch being one of angular and arcuate (see marked up Figure above).
Re claim 23, the at least one compression second slot positioned along a central portion of a solid back axial portion of the retainer opposite the first slot of the retainer, the solid back axial portion axially extending from the axial distal end of the retainer to the axial forward end of the retainer (see marked up Figure above).
Re claim 9, WO document ‘315 discloses a bit (see Figs. 2,3C,4A) comprising:
a body portion; a generally cylindrical shank axially depending from a bottom of the body portion (see Figs.2,3C,4A); and
a retainer (see Figs. 3C) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end; a first slot (see marked up Figure above) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one compression slot opposite the first slot of the retainer, the at
least one compression slot extending inwardly from the axial distal end of the
retainer, an axial length less than the axial length of the body portion;
the axial forward end of the retainer comprising a solid circular end wall except for
a single gap in the end wall formed by the first slot; the at least one compression slot
providing a radial direction of collapse of the axial distal end of the generally cylindrical
hollow body portion upon the application of radial pressure to an outer surface of the
retainer.
WO document ‘315 discloses the invention substantially as claimed. However, WO document ‘315 lacks at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the axial distance of the at least one compression slot greater than the chamfer height; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 teaches at least one chamfer (para 0040) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5-9,15); the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify WO document ‘315 to include at least one chamfer at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height; the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Ojanen ‘175 since such a modification facilitates the installation of the retainer into the block/holder.
With regards to the limitation “the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of references above. As noted in WO document ‘315 the compression slot (see marked up Figure above) extends pass the bulge/dimple portion (see marked up Figure above; para 0021) and in Ojanen the height of the at least one chamfer (51) does not extend pass the bulge/dimple portion (46). Therefore, the above limitation “the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of WO document ‘315 in view of Ojanen.
Re claim 10, the retainer further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 11, the retainer further comprising: at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 12, the retainer further comprising: the at least one compression slot comprising a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slot terminations each disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot (see marked up Figure above).
Re claim13, the retainer further comprising: at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot comprising a variable axial length and disposed circumferentially around the axial distal end of the retainer, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure above).
Re claim 24, the at least one compression slot of the retainer positioned along a central portion of a solid back axial portion of the retainer opposite the first slot of the retainer, the solid back axial portion axially extending from the axial distal end of the retainer to the axial forward end of the retainer (see marked up Figure above).
Claim(s) 1-16,19 is/are rejected under 35 U.S.C. 103 as being unpatentable over German document (DE 102010017587) in view of Beach et al. (US 4850649).
German document ‘587 discloses a retainer (see Figs. 1-6) comprising:
a generally cylindrical hollow body portion including an axial forward end and an axial
distal end;
a first slot (see Figs. 1,3,5) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one chamfer (5) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Fig. 5),
the axial forward end of the retainer comprising a solid circular end wall except for a single gap in the end wall formed by the first slot (see Fig. 1);
the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
German document ‘587 discloses the invention substantially as claimed. However, German document ‘587 lacks at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and
the axial distance of the at least one compression slot being greater than the height of the at least one chamfer; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion
upon the application of radial pressure to an outer surface of the retainer.
Beach et al. teaches at least one compression slot opposite the first slot of the retainer (see marked up Figure below), the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify German document ‘587 to include
at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the retainer into the holder/block.
With regards to the limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of references above. As noted in Beach et al. the distance from tab/aperture (114,116) to the compression slot (112, see marked up Figure below) is substantially less than the distance from the tab/aperture to proximal the distal end. Therefore, the above limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of German document ‘587 in view of Beach et al. because the compression slot would be juxtapose the tab/aperture thus the axial distance of the compression slot is greater than the chamfer height.
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Re claim 2, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180
degrees from the first slot, the at least one compression slot termination disposed a
predetermined distance from the axial distal end of the retainer (see marked up Beach et al. figure above).
Re claim 3, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify German document ‘587 to further include at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second
compression slot termination disposed a predetermined distance from the axial distal end of the retainer as taught by Beach et al. (see Fig 6, marked up above) since such a modification facilitates the insertion of the retainer within the holder/block.
Re claim 4, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify German document ‘587 to further include a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slots disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot as taught by Beach et al. (see Fig. 6, marked up above) since such a modification facilitates the insertion of the retainer within the holder/block.
Re claim 5, the at least one compression slot axially extending from the axial distal end
of the retainer through the sidewall of the retainer to at least one compression slot
termination, the at least one compression slot disposed circumferentially around the axial distal end of the retainer, the at least one slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 6, the sidewall comprising at least one tab (6)extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of a bit preventing the retainer from being removed from the shank (see Figs. 4,6 of German document).
Re claim 7, wherein the at least one tab comprises two tabs disposed approximately 180 degrees from each other, each tab being approximately 90 degrees from the
first slot (see Fig. 5 of German document).
Re claim 8, further comprising: at least one tab aperture (see Figs. 1,2 of German document) defined by the at least one tab.
Re claim 9, German document ‘587 discloses a bit (see Figs. 1-6) comprising:
a body portion;
a generally cylindrical shank axially depending from a bottom of the body portion; and
a retainer (see Figs. 1-5) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end;
a first slot (see Figs. 1,5) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one chamfer (5, Fig. 4) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height,
the axial forward end of the retainer comprising a solid circular end wall except for
a single gap in the end wall formed by the first slot (see Figs. 1,5);
the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
German document ‘587 discloses the invention substantially as claimed. However, German document ‘587 lacks at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion;
the axial distance of the at least one compression slot greater than the chamfer height;
the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Beach et al. teaches at least one compression slot opposite the first slot of the retainer (see marked up Figure 6 above), the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date to modify German document ‘587 to include at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the retainer within the holder/block.
With regards to the limitation “the axial distance of the at least one compression slot greater than the chamfer height ” is met by the combination of references above. As noted in Beach et al. the distance from tab/aperture (114,116) to the compression slot (112, see marked up Figure above) is substantially less than the distance from the tab/aperture to proximal the distal end. Therefore, the above limitation “the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of German document ‘587 in view of Beach et. because the compression slot would be juxtapose the tab/aperture thus the axial distance of the compression slot is greater than the chamfer height.
Re claim 10, the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 11, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify German document ‘587 to include at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second
compression slot termination disposed a predetermined distance from the axial distal end of the retainer as taught by Beach et al. (see marked up Figure 6 above) since such a modification facilitates the installation of the retainer into the holder/block.
Re claim 12, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify German document ‘587 to have the at least one compression slot include a plurality of compression slots each
axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slot terminations each disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot as taught by Beach et al. (see marked up Figure 6 above) since such a modification facilitates the insertion of the retainer into the block/holder.
Re claim 13, the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot comprising a variable axial length and disposed circumferentially around the axial distal end of the retainer, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 14, the sidewall of the retainer comprising at least one tab (6 of German document ‘587) extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of a bit preventing to prevent the retainer from being removed from the shank.
Re claim 15, the at least one tab comprising two tabs disposed approximately 180 degrees from each other, each tab being approximately 90 degrees from the
first slot of the retainer (see Fig. 5 of German document ‘587).
Re claim 16, the retainer further comprising: at least one tab aperture defined by the at least one tab (see Figs. 1,4 of German document ‘587).
Re claim 19, the at least one compression slot being one of angular and arcuate (see marked up Figure 6 above).
Claim(s) 1-16,19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ojanen (US 20020153175) in view of Beach et al. (US 4850649).
Ojanen ‘175 discloses a retainer (see Figs. 5-11) comprising:
a generally cylindrical hollow body portion including an axial forward end and an axial
distal end;
a first slot (see Fig. 9) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one chamfer (51) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5-9,15), the axial forward end of the retainer comprising a solid circular end wall except for a single gap in the end wall formed by the first slot (see Figs. 5-15);
the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 discloses the invention substantially as claimed. However, Ojanen ‘175 lacks at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and
the axial distance of the at least one compression slot being greater than the height of the at least one chamfer; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion
upon the application of radial pressure to an outer surface of the retainer.
Beach et al. teaches at least one compression slot opposite the first slot of the retainer (see marked up Figure 6 below), the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ojanen ‘175 to include
at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; and the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the retainer into the holder/block.
With regards to the limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of references above. As noted in Beach et al. the distance from tab/aperture (114,116) to the compression slot (112, see marked up Figure below) is substantially less than the distance from the tab/aperture to proximal the distal end. Therefore, the above limitation “the axial distance of the at least one compression slot being greater than the height of the at least one chamfer” is met by the combination of Ojanen ‘175 in view of Beach et al. because the compression slot would be juxtapose the tab/aperture thus the axial distance of the compression slot is greater than the chamfer height.
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Re claim 2, further comprising: the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180
degrees from the first slot, the at least one compression slot termination disposed a
predetermined distance from the axial distal end of the retainer (see marked up Beach et al. figure above).
Re claim 3, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ojanen ‘175 to further include at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second
compression slot termination disposed a predetermined distance from the axial distal end of the retainer as taught by Beach et al. (see Fig 6, marked up above) since such a modification facilitates the insertion of the retainer within the holder/block.
Re claim 4, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ojanen ‘175 to further include a plurality of compression slots each axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slots disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot as taught by Beach et al. (see Fig. 6, marked up above) since such a modification facilitates the insertion of the retainer within the holder/block.
Re claim 5, the at least one compression slot axially extending from the axial distal end
of the retainer through the sidewall of the retainer to at least one compression slot
termination, the at least one compression slot disposed circumferentially around the axial distal end of the retainer, the at least one slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 6, the sidewall comprising at least one tab (44) extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of a bit preventing the retainer from being removed from the shank (see Figs. 5,7,9,11 of Ojanen).
Re claim 7, wherein the at least one tab comprises two tabs disposed approximately 180 degrees from each other, each tab being approximately 90 degrees from the
first slot (see Fig. 9 of Ojanen).
Re claim 8, further comprising: at least one tab aperture (see Figs. 6,7 of Ojanen) defined by the at least one tab.
Re claim 9, Ojanen ‘175 discloses a bit (see Figs. 5-15) comprising:
a body portion;
a generally cylindrical shank axially depending from a bottom of the body portion; and
a retainer (see Figs. 5,6,7,11,15) disposed circumferentially about the shank, the retainer comprising: a generally cylindrical hollow body portion including an axial forward end and an axial distal end;
a first slot (see Figs. 6,9) extending through a sidewall of the body portion from the axial forward end to the axial distal end;
at least one chamfer (51, Fig. 7) at the axial distal end of the retainer extending to an outer surface of the retainer, the at least one chamfer comprising a chamfer length and a chamfer height, the chamfer length being greater than the chamfer height (see Figs. 5,7,15), the axial forward end of the retainer comprising a solid circular end wall except for a single gap in the end wall formed by the first slot (see Figs.5,9);
the at least one chamfer providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Ojanen ‘175 discloses the invention substantially as claimed. However, Ojanen ‘175 lacks at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion;
the axial distance of the at least one compression slot greater than the chamfer height;
the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
Beach et al. teaches at least one compression slot opposite the first slot of the retainer (see marked up Figure 6 above), the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer.
It would have been considered obvious to one of ordinary skill in the art before the effective filing date to modify Ojanen ‘175 to include at least one compression slot opposite the first slot of the retainer, the at least one compression slot extending inwardly from the axial distal end of the retainer, an axial length less than the axial length of the body portion; the at least one compression slot providing a radial direction of collapse of the axial distal end of the generally cylindrical hollow body portion upon the application of radial pressure to an outer surface of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the retainer within the holder/block.
With regards to the limitation “the axial distance of the at least one compression slot greater than the chamfer height ” is met by the combination of references above. As noted in Beach et al. the distance from tab/aperture (114,116) to the compression slot (112, see marked up Figure above) is substantially less than the distance from the tab/aperture to proximal the distal end. Therefore, the above limitation “the axial distance of the at least one compression slot greater than the chamfer height” is met by the combination of Ojanen ‘175 in view of Beach et. because the compression slot would be juxtapose the tab/aperture thus the axial distance of the compression slot is greater than the chamfer height.
Re claim 10, the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to a compression slot termination, the at least one compression slot disposed approximately 180 degrees from the first slot, the compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 11, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ojanen ‘175 to include at least one second compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one second compression slot termination, the at least one second compression slot disposed circumferentially around the axial distal end of the retainer, the at least one second compression slot termination disposed a predetermined distance from the axial distal end of the retainer as taught by Beach et al. (see marked up Figure 6 above) since such a modification facilitates the installation of the retainer into the holder/block.
Re claim 12, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ojanen ‘175 to have the at least one compression slot include a plurality of compression slots each
axially extending from the axial distal end of the retainer through the sidewall of the retainer to a plurality of compression slot terminations, the plurality of compression slot terminations each disposed a predetermined distance from the axial distal end of the retainer, a subset of compression slots from the plurality of compression slots disposed on either side of the first slot as taught by Beach et al. (see marked up Figure 6 above) since such a modification facilitates the insertion of the retainer into the block/holder.
Re claim 13, the at least one compression slot axially extending from the axial distal end of the retainer through the sidewall of the retainer to at least one compression slot termination, the at least one compression slot comprising a variable axial length and disposed circumferentially around the axial distal end of the retainer, the at least one compression slot termination disposed a predetermined distance from the axial distal end of the retainer (see marked up Figure 6 above).
Re claim 14, the sidewall of the retainer comprising at least one tab (44, Figs. 5, 7,9,11 of Ojanen) extending axially and radially inwardly, the at least one tab adapted to engage a flange on a shank of a bit preventing to prevent the retainer from being removed from the shank.
Re claim 15, the at least one tab comprising two tabs disposed approximately 180 degrees from each other, each tab being approximately 90 degrees from the
first slot of the retainer (see Fig. 9 of Ojanen).
Re claim 16, the retainer further comprising: at least one tab aperture defined by the at least one tab (see Figs. 6,7 of Ojanen ‘175).
Re claim 19, the at least one compression slot being one of angular and arcuate (see marked up Figure 6 above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1,9 have been considered but are moot because the new ground of rejection does not rely on at least one 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 SUNIL SINGH whose telephone number is (571)272-7051. The examiner can normally be reached M-Th 8-3, F 9-8 and 2nd Sat 11-7.
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/SUNIL SINGH/Primary Examiner, Art Unit 3678
SS
7/17/2026
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