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 .
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:
[AltContent: arrow][AltContent: arrow]Claims 9-11 are finally rejected under 35 U.S.C. 103 as being unpatentable over Stillwagon, Jr. et al. (3,253,626 “Stillwagon”) in view of Braunberger et al. (D568,474 “Braunberger”).
Stillwagon discloses all of the limitations of claim 9, i.e.,
a tool bit 12 comprising:
a working end 18;
a shank 15,12,17 (at least partially) extending from the working end 18 and defining a longitudinal axis dashed lines; and
a drive portion 15 coupled to an end of the shank opposite from the working end Fig. 2, the drive portion including a plurality of corners Fig. 2, the drive portion being configured to be engaged by a tool 11, Fig. 1;
wherein the drive portion 15 includes a plurality of grooves removed corners 16, 02:56-60, annotated Fig. 2 formed at the plurality of corners and circumferentially spaced around the longitudinal axis Fig. 1,
wherein each of the grooves is defined by a flat surface annotated Fig. 2 (partially shown here).
wherein the drive portion includes a plurality of flats annotated here, and wherein one of the plurality of flats center flat is positioned between each pair of adjacent grooves;
wherein the plurality of flats separate the plurality of grooves into discrete grooves Fig. 2; and
except for the plurality of grooves to be wider circumferentially than the plurality of flats.
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (FLATS)][AltContent: textbox (GROOVES)]Braunberger et al. teaches a shank for a drill having grooves annotated partial Figs. 1-3 that are separated by flats into discrete grooves, wherein the plurality of grooves are wider circumferentially than the plurality of flats.
It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the arrangements of the groove of Stillwagon with narrow flats separating the grooves as taught by Braunberger et al. as an alternative arrangements of the grooves for the quick change bits.
Regarding claim 10, PA (prior art, Stillwagon modified by Braunberger) meets the limitations, i.e., the tool bit of claim 9, wherein the flat surface is offset from and perpendicular to the longitudinal axis annotated Fig. 2.
Regarding claim 11, PA meets the limitations, i.e., the tool bit of claim 9, wherein the drive portion 15 is provided with a fillet end corners of the flat surfaces defined by the cutouts at an axial end of each groove to transition between a corresponding corner of the plurality of corners and the groove Fig. 2.
Claims 14-19 are finally rejected under 35 U.S.C. 103 as being unpatentable over Stillwagon in view of Mahajan et al. (2012/0275875 “Mahajan”).
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Stillwagon meets all of the limitations of claim 14, i.e., a tool bit 12 comprising:
a working end 18;
a shank 15,12,17 (at least partially) extending from the working end 18 and defining a longitudinal axis dashed lines; and
a drive portion 15 coupled to an end of the shank opposite from the working end Fig. 2, the drive portion including a plurality of corners Fig. 2, the drive portion being configured to be engaged by a tool 11, Fig. 1;
wherein the drive portion 15 includes a plurality of primary grooves removed corners or cutouts 16, 02:56-60 formed at the plurality of corners and circumferentially spaced around the longitudinal axis Fig. 1, except for a plurality of auxiliary grooves positioned circumferentially between the plurality of primary grooves to form an alternating pattern of primary grooves and auxiliary grooves about a circumference of the drive portion, and wherein the plurality of primary grooves and the plurality of auxiliary grooves are separated by a single edge at each interface between the primary grooves and the auxiliary grooves.
[AltContent: arrow][AltContent: arrow][AltContent: textbox (EDGE)]Mahajan teaches a setscrew for a surgical element disclosing a plurality of different embodiments for the retaining grooves, e.g., 29 Fig. 8 or Fig. 9, wherein the groove may be of any shapes, e.g., as in Fig. 10B, wherein the groove forms a compound groove defining a plurality of auxiliary base positioned circumferentially between the plurality of primary groove sloped sides, Fig. 10B about a circumference of the drive portion, and wherein the plurality of primary grooves and the plurality of auxiliary grooves are separated by a single edge intersection of bottom flat with curved sides, annotated partial Fig. 10B.
It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the groove of Stillwagon with the different shapes with auxiliary grooves as taught by Mahajan to reduce shock and/or as an alternative means of achieving the same results requiring routine experimentations with predictable results.
Regarding claim 15, PA (prior art, Stillwagon modified by Mahajan) meets the limitations, i.e., the tool bit of claim 14, wherein the plurality of auxiliary grooves Aux define edges formed at the intersection @ flat base located between each of the plurality of auxiliary grooves and adjacent primary grooves Fig. 10B annotated above.
Regarding claim 16, PA meets the limitations, i.e., the tool bit of claim 14, wherein the plurality of auxiliary grooves Aux differ in depth from the plurality of primary grooves Fig. 10B annotated above.
Regarding claim 17, PA meets the limitations, i.e., the tool bit of claim 16, wherein the plurality of auxiliary grooves are shallower in depth than the plurality of primary grooves Fig. 10B annotated above.
Regarding claim 18, PA meets the limitations, i.e., the tool bit of claim 14, wherein the plurality of primary grooves and the plurality of auxiliary grooves are both concave in shape Fig. 10B annotated above.
Regarding claim 19, PA meets the limitations, i.e., the tool bit of claim 14, wherein the plurality of auxiliary grooves Aux are circumferentially spaced around the longitudinal axis between the plurality of primary grooves Fig. 10B annotated above.
Allowable Subject Matter
Claims 1-5, 7 and 8 are allowed.
Claim 20 is 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.
The following is a statement of reasons for the indication of allowable subject matter: limiting the concave common edge to be defined by a single radius, in addition to all other limitation, as now recited in claim 1, reads over the teaching reference and Examiner sees no reason for modification to a single radius, lacking teaching or suggestion by prior art.
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.
Response to Arguments
Applicant's arguments filed August 5, 2026 have been fully considered but they are not persuasive.
With regarding claim 1, the amendment as discussed in the interview and after further consideration and search, the limitation of a single radius for the concave edge, places the case allowable over art applied..
Similarly with regards to claim 9, Applicant argument that the grooves are not wider than the flats therebetween, is moot in view of the modification over Braunberger as now applied and further because a modification in size is considered with routine experimentations with predictable results and since such modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Choosing a dimension for the flats, e.g., shortening it, would allow more area for engagement of the detent within the depression for a quicker operation, and since doing so would merely amount to
(A) combining prior art elements according to known methods, i.e., selecting the dimensions, to yield predictable results;
(B) Use of known technique to improve similar devices in the same way, i.e., routine experimentations with predictable results.
(C) Applying a known technique to a known device ready for improvement to yield predictable results;
(E) “obvious to try”-choosing form finite number of identified, predictable solutions, with a reasonable expectation of success. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007); See also MPEP 2143
Regarding the rejection of claim 14, Applicant argues that the primary and auxiliary grooves as taught by the teaching reference are not arranged as now recited in the claim, and remarks that the Examiner confuses the axial pattern with a circumferential pattern and that Examiner only points to a single auxiliary groove. Examiner, respectfully disagrees, since Applicant is bodily incorporating the reference
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and is attacking the references individually. Claim 14 is rejected over the base reference Stillwagon modified by Braunberger and further modified by Mahajan et al. Mahajan et al. teaches compound grooves. This feature is incorporated to the base (combination of Stillwagon and Braunberger), resulting a tool bit disclosing all the limitations recited. While Fig. 9 of Mahjan et al. may disclose a compound groove separated by a plurality of edges. Fig. 10B, discloses an embodiment wherein the primary and auxiliary grooves are separated by a single compound edge.
In response to applicant's argument that the combination fails to meet the claim, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, choosing the size of the flats relative to the groove to adjust the engagement of the detent; or modifying the grooves with different shapes with auxiliary groove, as taught by Mahjan to reduce shock, are considered well within the rule of obviousness rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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, Brian Keller can be reached on 571 272 8548. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hadi Shakeri/
October 12, 2026 Primary Examiner, Art Unit 3723
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