Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-11, in the reply filed on 3 December 2025 is acknowledged.
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3 December 2025.
Claim Objections
Claim 11 is objected to because of the following informalities: in claim 11, “The cording tool of claim 9” should be changed to “The coring tool of claim 9” . 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 and 5-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “a base member in areas that the guide bushings are coupled to the base member”. It is unclear how the base member is only located in areas where the guide bushings are coupled. The drawings show that the base member extends beyond the areas where the guide bushings are coupled. For the purposes of examination, this limitation is being treated as saying “a base member, wherein the guide bushings are coupled to the base member.”
The term “fine-tunes” in claim 5 is a relative term which renders the claim indefinite. The term “fine-tunes” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, it has been assumed that “fine-tunes” means that the securing member is usable to adjust the separation distance between the clamp member and the tool body.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hengst (US 2,519,468).
Regarding claim 1, Hengst discloses a coring tool (drilling jig as seen in the figures) comprising: a tool body 5 having a first end (right side in figure 3) and an opposing second end 23; a clamp member 24 coupled to the tool body adjacent the second end, the tool body and the clamp member being moveable toward and away from each other in response to operation of a clamp actuator 25 (the upper and lower portions of thumb screw 24 move toward and away from clamping plate 5 when thumb engaging head 25 is turned); and a head 7 having guide bushings 33/34/35/36 for inserting a bit through the guide bushings for coring a door W, the head being coupled adjacent the first end of the tool body (coupled using rods 12, see figures 1 and 3) and being movable toward and away from the tool body (moved along rods 12 to adjust the distance for selecting the drilling position on the door) to align the guide bushings with the door to be cored.
Regarding claim 2, Hengst discloses further comprising a guide member 6 coupled to the clamp member 24 (through connection with tool body 5) by a bolt 20 extending through the tool body 5 and coupled on an opposing end of the guide member with a securing member 21.
Regarding claim 3, Hengst discloses wherein the head 7 further comprises a bit aperture (hole through each bushing) extending through the guide bushings 33/34/35/36 and a base member 28, wherein the guide bushings are coupled to the base member.
Regarding claim 4, Hengst discloses wherein the guide member 6 is slidable along guide pins 13 coupled to the tool body 5 (coupled through connection with threaded rod 20), and wherein the guide member is adjustable along the guide pins to accommodate different door thicknesses.
Regarding claim 9, Hengst discloses wherein the tool body 5 extends a predetermined distance onto the door when coupling the coring tool to the door W (as seen in figure 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hengst.
Regarding claims 10-11, Hengst discloses the invention substantially as claimed, except Hengst does not disclose wherein the predetermined distance is at least four inches, or wherein the predetermined distance is between 4 inches and five inches. However, it would have been an obvious matter of design choice to make the different portions of the device of whatever relative sizes were desired for the purpose of providing a desired clamping surface length on the tool body, since such a modification would have involved a mere change in the proportions of components. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, 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.
Allowable Subject Matter
Claims 5-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC A. GATES/Primary Examiner, Art Unit 3722 17 December 2025