Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Drawings
The drawings were received on April 9, 2026. These drawings are unacceptable because fig. 1 contains new matter. Specifically, reference number “3a” was added with an arrow pointing to an added box on/in the core drill (wherein the specification states that “3a” represents the gyro sensor). The specific location of this gyro sensor was not taught by the originally filed disclosure. The originally filed disclosure also fails to disclose the gyro sensor “3a” being in a location separate from the sensor system “3”.
Thus, the replacement drawing of figure 1 is not entered.
The examiner recommends removing “3a” from the specification so that the original drawings are acceptable.
Rejections under 35 USC 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 14-31 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 claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 recites the intuitive movement being defined as an intentional movement of an entirety of the core drill by a user. Applicant’s originally filed disclosure teaches the intuitive movement being specific or predetermined movements of the core drill by a user (see ¶ [0019] of Applicant’s originally filed specification). Applicant’s originally filed disclosure does not teach the sensor in the core drill being able to determine whether the specific movements are “intentional” or unintentional. Thus, this limitation fails to comply with the written description.
For purposes of compact prosecution, for prior art purposes this limitation will be interpreted as: the intuitive movement being defined as a predetermined movement of an entirety of the core drill by a user.
Claim 30 recites the at least one gyro sensor recognizes both a linear and a rotational movement component of the intuitive movement. Gyro sensors are known to only measure rotation—not linear motion. Applicant’s originally filed disclosure teaches the gyro sensor determining rotational movement of the tool about any three spatial axes (see ¶ [0011] of Applicant’s originally filed specification). Even when a user attempts to move the tool in a linear direction the tool will inevitably have some amount of rotation. It is this rotational movement component the gyro sensor recognizes—not the linear movement component (see ¶ [0012] of Applicant’s originally filed specification). Thus, the gyro sensor recognizes the rotational movement of the tool when it is shaken—however Applicant’s invention does not provide support for the gyro sensor recognizing both linear and rotational movement components.
Claims 15-29 and 31 are rejected for requiring the limitations of claim 14.
The following is a quotation of 35 U.S.C. 112:
(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.
Claim 27 is 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 applicant regards as the invention.
Claim 27 recites a user. It is unclear if this is referring to the user introduced in claim 14, or is introducing a second user.
Rejections under 35 USC 1032
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 obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14-17, 19-25, and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (“AAPA”) in view of USPGPub No. 2014/0102742 (“Eshleman”).
Claim 14 recites method for releasing a drill core from a drill bit of a core drill, the method comprising the following steps: b) starting a shaking process for the drill core to aid in release of the drill core from the drill bit when the intuitive movement is detected. AAPA teaches removing a drill core from a drill bit of a core drill by a user activating a switch which causes a shaking process (see ¶ [0002]-[0004], wherein all references to Applicant’s specification refer to Applicant’s originally filed specification).
AAPA fails to explicitly teach detecting [the] intuitive movement of the core drill by the core drill, the intuitive movement being defined as [a predetermined] movement of an entirety of the core drill by a user. However, this would be obvious in view of Eshleman.
Eshleman is directed to controlling operation of a power tool other than with buttons, switches, and triggers (¶ [0002]-[0006]). Eshleman teaches the power tool comprises a gyroscope 22 therein that monitors rotational motion of the power tool (fig. 17, ¶ [0078]-[0079]). A controller of the power tool is configured to modify operation of the power tool upon a predetermined rotation of the power tool sensed by the gyroscope (¶ [0076], [0079]-[0084]). Eshleman teaches other non-contact sensing methods that can be used individually or in combination, including optic sensors to sense when the tool is approaching or withdrawing from a workpiece and inertial sensors to detect linear motion of the tool towards or away form a workpiece (¶ [0075]). Eshleman teaches that this non-contact means of controlling operation of a power tool is a more intuitive and improved means (¶ [0006] & [0060]).
In this case, AAPA teaches to start a shaking process after a drill process is complete, wherein the shaking process is started by a user actuating a switch on the power tool (see ¶ [0004] of AAPA). Eshleman teaches one of skill in the art that non-contact sensing methods to control operation of a power tool are known substitutes to mechanical switches/triggers/buttons. Eshleman teaches that a user rotating the power tool a certain angle can control/modify operation of a power tool, and/or optical or inertial sensors can sense when a tool is being moved away from a workpiece in order to control operation of the power tool. Thus, in order to more intuitively and efficiently start a shaking process, it would be obvious to modify AAPA so that the power tool comprises an optical or inertial sensor to detect linear motion of the tool away form a workpiece, and/or comprise a gyroscope that starts a shaking process when a user rotates the power tool a predetermined angle.
This modification provides a more intuitive way to stark a shaking process that can make a drilling process more efficient by starting the shaking process as the tool is moving away from a workpiece instead of a user having to remove the tool from a workpiece and then actuate a switch with their finger.
Claim 15 recites between method steps a) and b), the core drill is started by a further action by the user of the core drill. As detailed in the rejection to claim 14, above, Eshleman teaches a combination of sensing methods can be used. MPEP 2144.06(I) states that it is prima facie obvious to combine equivalents known for the same purpose. In this case, Eshleman teaches a variety of ways to sense intuitive movements of the power tool to control/modify operation of the tool (i.e. acoustic/inertial sensors and gyroscopes as detailed in the rejection to claim 14 above). Thus, it is prima facie obvious to combine both a gyroscope and an acoustic or inertial sensor to determine when to start a shaking process (wherein the acoustic or inertial sensor senses when the tool is moved linearly away from a workpiece, and the gyroscope determines when the tool is rotated a predetermined angle).
Since both the linear movement and rotational movement are detected intuitive movements, after detecting a first intuitive movement (e.g. the power tool moving linearly away from a workpiece), a further action is needed (i.e. the second intuitive movement).
Regarding claim 16, AAPA et al. fails to explicitly teach the shaking process is ended by a second action by the user of the core drill. However, this is also obvious in view of Eshleman.
Eshleman teaches a combination of sensing methods can be used, for example one for startup and one for shutdown (¶ [0076]). Eshleman further teaches that after the gyroscope modifies/controls operation of the power tool when sensing a first rotation, it can continue to sense additional rotation of the power tool to further control/modify operation (¶ [0079]-[0084]). Thus, it would be obvious and predictable to shutdown the shaking process of AAPA et al. when a further intuitive movement is sensed (e.g. the user rotates the tool again to a predetermined angle).
Regarding claim 17, AAPA further teaches the shaking process is an electronic function which is implemented in the core drill (¶ [0004]).
Regarding claim 19, AAPA et al. further teaches the intuitive movement of the core drill is detected by a sensor (see rejection to claim 14 above, i.e. the gyroscope and/or optical or inertial sensor taught by Eshleman).
Claim 21 recites the intuitive movement of the core drill includes a shaking movement. Since Applicant’s specification teaches the intuitive movement including the unintentional but natural and likely movements of the power tool when a user attempts a certain predetermined movement (see ¶ [0012] of Applicant’s originally filed disclosure, i.e. when attempting to move the power tool in a linear direction the movement will inevitably have a curved movement instead of completely linear, and a gyroscope can sense this curved movement of a user attempting to move the power tool in linear directions), the broadest reasonable interpretation of “intuitive movement” includes those unintentional but natural and likely movements of the power tool when a user attempts a predetermined movement.
Since a user’s hand will most likely have a certain amount of shaking that will shake the power tool (since it is normal for everyone’s hands to shake slightly), any movement will naturally and likely comprise some amount of shaking.
In the alternative, this would be an obvious design choice. Eshleman teaches to control operation of a power tool by monitoring linear motion of the power tool (¶ [0075] of Eshleman). While Eshleman fails to explicitly teach a shaking motion, one of skill in the art is capable of determining types of linear motions that can be sensed by the sensor (including forward and backward movement along a spatial axis). Further, a shaking movement does not seem to be a critical feature of the claimed invention, and Applicant’s originally filed disclosure does not state that a shaking motion produces unexpected results or solves a stated problem with respect to other types of motions of the power tool.
Claim 22 recites a core drill for carrying out the method as recited in claim 14 the core drill comprising a sensor for detecting the intuitive movement of the core drill. As detailed in the rejection to claim 14 above, AAPA teaches a core drill that can carry out the method of claim 14. Furthermore, as detailed in the above rejection to claim 14, AAPA et al. teach a sensor within the core drill to detect the intuitive movement (specifically the gyroscope and/or optical or inertial sensor taught by Eshleman).
Regarding claims 20 and 23, AAPA et al. further teaches the sensor includes at least one gyro sensor (see rejection to claim 14 above, specifically ¶ [0078] of Eshleman).
Claim 24 recites the core drill does not require an additional switch for activating the shaking process. As detailed in the rejection to claims 14 and 22, above, the shaking process is activated only by the intuitive movement(s) and does not require a switch.
Regarding claim 25, AAPA et al. further teaches a controller set up to recognize the intuitive movement of the core drill and to start the shaking process as a reaction to the recognition of the intuitive movement (¶ [0079]-[0080] of Eshleman, wherein the power tool comprises a controller that receives input from the sensor(s) and operates the power tool based upon input from the sensor(s)).
Claim 27 recites the detection of the intuitive movement is independent of a user interfacing with a button or switch. As detailed in the rejection to claims 14 and 22, above, the sensor(s) are configured to detect an intuitive movement whether or not a user is directly interfacing with a button or switch since the shaking process is activated by the intuitive movement(s) and does not require a switch or button (the intuitive movement replaced the additional switch of AAPA).
Claim 28 recites the intuitive movement comprises linear and rotational motion. As detailed in the rejection to claim 15, above, it is prima facie obvious to combine both a gyroscope and an acoustic or inertial sensor to determine when to start a shaking process (wherein the acoustic or inertial sensor senses when the tool is moved linearly away from a workpiece, and the gyroscope determines when the tool is rotated a predetermined angle).
In the alternative, since Applicant’s specification teaches the intuitive movement including the unintentional but natural and likely movements of the power tool when a user attempts a certain predetermined movement (see ¶ [0012] of Applicant’s originally filed disclosure, i.e. when attempting to move the power tool in a linear direction the movement will inevitably have a curved movement instead of completely linear, and a gyroscope can sense this curved movement of a user attempting to move the power tool in linear directions), the broadest reasonable interpretation of “intuitive movement” includes those unintentional but natural and likely movements of the power tool when a user attempts a predetermined movement.
When a user rotates a power tool, the center of mass of the power tool likely won’t be completely stationary but will have a movement with a linear component. Likewise, when moving a power tool linearly, it is natural and likely that the rotational angle of the power tool will change at least a little. Thus, when the intuitive movement of the core drill is interpreted as user rotating or linearly moving the power tool, both of these movements will naturally have both a linear component and rotational component.
Claim 29 recites the intuitive movement comprises curved motion. When moving the tool away from a workpiece, one of skill in the art will appreciate that the movement of the tool won’t be completely linear but will have curved motion (see also ¶ [0012] of Applicant’s originally filed specification). Thus, the optical/inertial sensors will still sense this curved, intuitive movement as a movement of the power tool away from the workpiece.
Likewise, when a user rotates the power tool, one of skill in the art will appreciate that the power tool’s center of mass won’t be completely fixed. Thus, the power tool will have some movement in space that won’t be completely linear (i.e. it will be a curved movement).
Claims 18, 26, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over AAPA et al. as applied to claims 14 and 22, respectively, and further in view of US Patent No. 5,733,074 (“Stock”).
Regarding claim 18, AAPA et al. fails to explicitly teach the shaking process is brought about by making a motor of the core drill vibrate with current. However, this would have been obvious in view of Stock.
Stock is also directed to a core drill comprising a rotating drill bit 3 (fig. 1, col. 1 lines 5-52, col. 7 lines 15-20). Stock teaches that in addition to comprising a motor that rotates a shaft and bit 3, the drill comprises an electro-acoustic converter and a vibration amplifier to provide ultrasonic vibrations to the shaft and drill bit (fig. 1, col. 7 lines 15-29).
In this case, AAPA teaches to provide an electronic shaking process to the core drill to remove a drill core, but is silent as to the specific means to provide the shaking. Stock teaches a known means to provide vibration/shaking to a core drill and drill bit that is separate from a motor means to rotate the drill bit. Thus, in order to carry out the shaking process of AAPA, it would be obvious to provide the core drill of AAPA with an electro-acoustic converter and a vibration amplifier. This means reads on “motor” because it comprises a machine that converts electrical energy into movement/mechanical energy of the shaft and drill bit. Further, the electro-acoustic converter operates via current.
Regarding claim 26, AAPA et al. fail to explicitly teach a motor, the core drill set up to make the motor vibrate with current. However, this would be obvious in view of Stock for the same reasons detailed in the rejection to claim 18, above.
In addition, the examiner is taking Official Notice that it is well known in the art for drills to rotate drill bits via electric motors. Thus, it would be obvious and predictable to use an electric motor to rotate the drill bit of the core drill of AAPA. Since electric motor use current to function, and one of skill in the art will reasonably infer the electric motor has some amount of vibration when operating (due to the rotating parts), this electric motor reads one the claimed motor.
Claim 31 recites the motor is not running during the intuitive movement. As detailed in the rejection to claim 14, above, the intuitive movement happens after a drilling process and before the shaking process. Thus, the motor for performing the shaking process as detailed in the rejection to claim 18, above, is not running during the intuitive movement. Further, while not explicitly taught by the rejection, it is obvious for the motor that rotates the drill bit to also be off during this time period since the drill process is over and the shaking step has not yet begun.
In addition, Eshleman teaches a combination of sensing methods can be used, for example one for startup and one for shutdown (¶ [0076]). Thus, it would be obvious and predictable to shutdown the drilling process when an optical or inertial sensor senses the tool moving away from the workpiece, and subsequently starting the shaking process when a subsequent predetermined rotational movement of the tool is sensed by the gyroscope. Given this modification, the motor(s) are off during the intuitive movement since the drilling process has been stopped and the shaking process has yet to start.
Response to Arguments
Applicant's arguments filed April 9, 2026 (“the remarks”) have been fully considered. The examiner agrees that the amendments to the claims overcome the previous prior art rejections. Thus, the previous prior art rejections are withdrawn.
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights