Prosecution Insights
Last updated: April 19, 2026
Application No. 18/324,236

BACKSIDE COUNTERSINKING INSERTED CUTTER

Final Rejection §102§103§112
Filed
May 26, 2023
Examiner
VITALE, MICHAEL J
Art Unit
3722
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
The Boeing Company
OA Round
2 (Final)
66%
Grant Probability
Favorable
3-4
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

Grants 66% — above average
66%
Career Allow Rate
304 granted / 459 resolved
-3.8% vs TC avg
Strong +33% interview lift
Without
With
+32.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
32 currently pending
Career history
491
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
36.5%
-3.5% vs TC avg
§102
24.6%
-15.4% vs TC avg
§112
36.9%
-3.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 459 resolved cases

Office Action

§102 §103 §112
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. Election/Restrictions Applicant’s election of Species A (which corresponds to what Examiner identified as Species i in the Requirement for Restriction/Election that mailed on 11/28/2025, wherein Species A/i is “A first embodiment in which the neck (130) of the countersink tool (100) has the configuration of Figure 8A ” ) in the reply filed on 12/2/2025 was previously acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election was treated as an election without traverse (MPEP § 818.01(a)). Next, Applicant's election with traverse of Group I ( Claims 1-15 , drawn to “A countersink tool”) in the reply filed on 12/2/2025 was previously acknowledged. Claims 16-20 were previously withdrawn (and still are) from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and/or invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/23/2023. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “ a fastening member …secures the insert within the slot” in claim 7 . Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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 5 and 7 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 5 recites the limitation "the insert object" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 9 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Lines 2-4 of claim 9 state, “wherein a second portion of the tapered surface is oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” This limitation fails to comply with the written description requirement. This will now be explained. First, please be advised that claim 9 is dependent upon claim 1 via intervening claim 8. Noting this, lines 11-12 of claim 1 state therein, “wherein the insert comprises a tapered surface.” Based on the foregoing, as it pertains to lines 2-4 of claim 9, “the tapered surface” which is referred to therein is the tapered surface of the insert (160) . As such, what claim 9 is setting forth is a second portion of the tapered surface (164) of the insert (160) ( emphasis added ) is oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” Please further be advised that claim 8 (on which claim 9 is directly dependent) sets forth therein, “wherein a first portion of the tapered surface is oriented at a first angle with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees.” Thus , by claim 9, what is Applicant is setting forth is the same tapered surface (164) of the insert (160) having each of “a first portion” that is “oriented at a first angle with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees” and “a second portion” that is “oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” Noting the above, with respect to the drawings filed on 5/26/2023, in none of the figures thereof is the tapered surface (164) of the insert (160) shown as having each of “a first portion” that is “oriented at a first angle with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees” and “a second portion” that is “oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” Rather, the tapered surface (164) of the insert (160) is shown as having only (in at least Figure 2, for example) the “first portion” which is “oriented at a first angle with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees.” That is to say that none of the figures of the drawings show the tapered surface (164) of the insert (160) as having ( in addition to the aforesaid “first portion” ) the “second portion” that is “oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” As such, the drawings filed on 5/26/2023 do not provide disclosure for, “wherein a second portion of the tapered surface is oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” With respect to the specification filed on 5/26/2023, Examiner directs attention to paragraph [0026] thereof: [0026] The tapered surface 134 of the insert housing 130 and/or the tapered surface 164 of the insert 160 may be oriented at an angle 240 with respect to the axis 210 (and/or axes 220, 230). The angle 240 may be from about 40 degrees to about 70 degrees, about 45 degrees to about 65 degrees, or about 50 degrees to about 60 degrees. As can be seen above, disclosure isn’t provided by Applicant on the tapered surface (164) of the insert (160) having each of “a first portion” that is “oriented at a first angle with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees” and “a second portion” that is “oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” Rather, it would instead appear that the tapered surface (164) of the insert (160) is oriented at a singular angle, e.g. a first angle, with respect to the insert housing longitudinal axis, and wherein the angle is from about 40 degrees to about 70 degrees, about 45 degrees to about 65 degrees, or about 50 degrees to about 60 degrees. That is to say that there isn’t anything to indicate in the specification that the tapered surface (164) of the insert (160) has each of “a first portion” and “a second portion,” each of which is oriented at a respective angle “with respect to the insert housing longitudinal axis, and wherein the first angle is from about 40 degrees to about 70 degrees.” Therefore, the specification filed on 5/26/2023 does not provide disclosure for, “wherein a second portion of the tapered surface is oriented at a second angle with respect to the insert housing longitudinal axis, and wherein the second angle is from about 40 degrees to about 70 degrees.” Based on the foregoing, it has not been demonstrated that the Applicant has made an invention that achieves the claimed functions because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the invention had possession of the claimed invention. 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, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng (China Publication No. CN 203804286 U). Please be advised that an EPO Machine Translation of Peng has been provided with this office action. Claim 1 : Figure 3 of Peng shows a countersink tool [EPO Machine Translation, paragraph 00 0 2] comprising a shank (1) having a shank width and a shank longitudinal axis; a neck (2) that is coupled to or integral with the shank (1), wherein the neck (2) has a neck width and a neck longitudinal axis; and an insert housing that is coupled to or integral with the neck (2), wherein the insert housing has an insert housing width and an insert housing longitudinal axis. As can be seen below within annotated Figure 1, the shank longitudinal axis, the neck longitudinal axis, and the insert housing longitudinal axis are parallel to and laterally offset from one another. As to the neck longitudinal axis, it is disposed between the shank longitudinal axis and the insert housing longitudinal axis. Next , as can be seen below in annotated Figure 3, the insert housing width is less than the shank width and greater than the neck width. Next, Figures 2-4 of Peng show the countersink tool as further comprising an insert (3) which is configured to be positioned within the insert housing, wherein the insert (3) comprises a tapered surface. This tapered surface can be seen below in annotated Figure 4 of Peng. Also, as can be seen below, the neck (2), the insert housing, and the insert (3) are configured to be inserted at least partially through a hole in an object so as to form the countersink in the object. Next, it is noted that the diameter of the hole must be wide enough so as that the insert housing, the insert (3), and the neck (2) can be moved into and at least partially through the hole such that the countersink can be formed in the object. It is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (3) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. As it pertains to the tapered surface of the insert (3), it is configured to form the countersink in the object, noting that a cutting edge of the insert (3) is disposed at the tapered surface. Lastly, please be advised that the tapered surface is configured to form the countersink in the object whilst the neck (2) and insert housing are positioned within the hole of the object. Claim 5 : The insert housing defines a wedge-shaped groove [EPO Machine Translation, paragraph 00 36 ], which is a slot that configured to receive the insert (3), wherein the insert (3) in and of itself is an “insert object.” Claim 7 : First, Peng discloses that the insert (3) defines an opening (33) (see Figure 4) [EPO Machine Translation, paragraph 0036]. Next, be advised lines 3-4 of claim 7 set forth therein, “ a fastening member …secures the insert within the slot”. Noting this, “a fastening member” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that said “fastening member” is being interpreted as comprising the structure (“a countersunk bolt, screw, or rivet”) disclosed in paragraph [0036] of Applicant’s specification filed on 5/26/2023, as well as equivalents thereto. Next, with respect to the prior art, the insert (3) is disclosed by Peng as being fixed to the slot (the wedge-shaped groove) by a screw passing through the opening (33) [EPO Machine Translation, paragraph 0036]. Please be advised that it is inherent that slot of the insert housing defines a hole for receiving the screw passing through the opening (33). This is because the slot receives the insert (3) and because the screw passes through the opening (33) of said insert (3). Noting this, it is inherent that the opening (33) and the hole (that is inherently defined in the slot of the insert housing) are aligned. This is because the only way for the disclosed screw to be received in each is if the opening (33) of the insert (3) and the opening defined in the slot of the insert housing are aligned with one another. Next, please be advised that the disclosed screw of Peng corresponds in structure to the “fastening member” of Applicant, noting that the “fastening member” of Applicant may be a “screw” as per paragraph [0036] of Applicant’s specification. Based on the foregoing , the screw/fastening member of Peng is received in the aligned openings when the insert (3) is positioned withing the slot , and said screw/ fastening member functions to secure said insert (3) with in said slot . 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, 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 1 and 5- 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mao (China Publication No. CN 217474879 U) in view of Peng (China Publication No. CN 203804286 U). B e advised that an EPO Machine Translation of Mao is relied upon below. This EPO Machine Translation was previously provided with th e office action that mailed on 12/23/2025. Please be advised that an EPO Machine Translation of Peng has been provided with this office action. Claim 1 : Figure 1 of Mao shows a countersink tool [EPO Machine Translation, paragraph 00 27 ] comprising a shank (1) having a shank width and a shank longitudinal axis ; a neck (2) that is coupled to or integral with the shank (1) , wherein the neck (2) has a neck width and a neck longitudinal axis; and an insert housing that is coupled to or integral with the neck (2) , wherein the insert housing has an insert housing width and an insert housing longitudinal axis. As can be seen below within annotated Figure 1, the shank longitudinal axis, the neck longitudinal axis, and the insert housing longitudinal axis are parallel to and laterally offset from one another. As to the neck longitudinal axis, it is disposed between the shank longitudinal axis and the insert housing longitudinal axis. Next, as can be seen below, the insert housing width is greater than a width of the neck (2). Mao though does not provide disclosure as to whether the insert housing width “is less than the shank width.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the countersink tool of Mao to have the insert housing width be less than the shank width, since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the countersink tool of Mao would not operate differently with the insert housing width being less than the shank width, because the shank (1) (unlike the neck (2) and insert housing) is not , for example, inserted through a hole of an object when a countersink is produced within said object. Furthermore , Applicant places no criticality on the insert housing width being less than the shank width, indicating simply that the insert housing (130) “may” (emphasis added) have a smaller width (e.g., diameter) than the shank (110) (Applicant’s specification, paragraph [0020]). Next, with respect to the insert housing, it defines a mounting slot (3) which is configured to receive the insert (4) [EPO Machine Translation, paragraph 0028], wherein the insert (4) is configured to form a countersink in an object. Since the mounting slot (3) receives the insert (4) , the insert (4) is configured to be positioned within the insert housing. Also, as can be seen below, the neck (2), the insert housing, and the insert (4) are configured to be inserted at least partially through a hole in the object so as to form the countersink in the object. Next, it is noted that the diameter of the hole must be wide enough so as that the insert housing, the insert (4), and the neck (2) can be moved into and at least partially through the hole such that the countersink can be formed in the object. It is noted that Figure 3 of Mao has been annotated (see below) to show the (minimum) diameter of the hole so as that the insert housing, insert (4), and neck (2) can be moved into and at least partially through the hole of the object. Noting this, it can be seen in the annotated figure that the diameter of the hole is equal to a width taken from, for example, a side of the neck (2) to a side of the insert (4). It is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (4) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. Mao though, does not provide disclosure on the insert (4) “comprises a tapered surface.” Based on the foregoing, Mao does not teach, “wherein the tapered surface of the insert is configured to form the countersink in the object while the neck is positioned in the hole.” Figures 2 and 4 of Peng though, show a countersinking tool comprising an insert (3) that is configured to be positioned within an insert housing. In addition to the insert housing and the insert (3), the countersinking tool comprises a shank (1) and a neck ( 2 ). Please be advised that the insert (3) comprises a tapered surface which has been pointed to below in annotated Figure 4. As to the tapered surface, it is configured to form a countersink in an object , noting that a cutting edge of the insert (3) is disposed at the tapered surface. Lastly, please be advised that the tapered surface is configured to form the countersink in the object whilst the neck (2) and insert housing are positioned within a hole of the object. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the insert (3) of Peng for the insert (4) of Mao, as this is a substitution of one known insert for forming a countersink in an object for another, in order to obtain the predictable result of the insert (3) of Peng being positioned within the insert housing of Mao, and the predictable result of the neck (2), the insert housing, and the insert (3) being able to be inserted at least partially through the hole in the object so as to form the countersink in said object. Since in making the above substitution the insert (3) of Peng is positioned within the insert housing of Mao, the result is the modified countersink tool of Mao having the insert (3) that “comprises a tapered surface.” It is this tapered surface of the insert (3) (which was pointed to by Examiner on the preceding page of this office action in annotated Figure 4 of Peng) that is configured to form the countersink in the object whil st the neck (2) of the countersink tool is positioned in the hole of the object. This is because the cutting edge of the insert (3) is disposed at said tapered surface. Claim 5 : The insert housing defines the mounting slot (3) [EPO Machine Translation of Mao, paragraph 0028], which is configured to receive the insert ( 3 ) , wherein the insert ( 3 ) in and of itself is an “insert object.” Please be advised that as a result of the substitution (see rejection of claim 1), the insert (3) of Peng assumes a position within the mounting slot (3) previously occupied by the insert (4) of Mao. Claim 6 : First, please be advised that as a result of the substitution (see rejection of claim 1), the insert (3) of Peng assumes a position within the mounting slot (3) of Mao previously occupied by the insert (4) of Mao. Examiner is noting this, because in the below annotated drawings of Mao, the insert (4) of Mao is of course shown rather than the insert (3) of Peng. (In the below annotated figures, although reference character “4” is shown for pointing to the insert shown therein, Examiner will use reference character “3” when discussing the insert (3) of the modified countersink tool of Mao. This is because as a result of the substitution (see rejection of claim 1), the insert (3) of Peng assumes a position within the mounting slot (3) of Mao that was previously occupied by the insert (4) of Mao). As can be seen below, the neck (2), the insert housing, and the insert ( 3 ) are configured to be inserted at least partially through a hole in the object to form the countersink in the object. Next, it is noted th at the diameter of the hole must be wide enough so as that the insert housing, the insert ( 3 ), and the neck (2) can be moved into and at least partially through the hole such that the countersink can be formed in the object. I t is noted that Figure 3 of Mao has been annotated (see below ) to show the (minimum) diameter of the hole so as that the insert housing, insert ( 3 ), and neck (2) can be moved into and at least partially through the hole of the object. Noting this, it can be seen in the annotated figure that the diameter of the hole is equal to a width taken from , for example, a side of the neck (2) to a side of the insert ( 3 ). Next, it is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (4) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. With this lateral movement and the formation of the countersink, a diameter of the formed countersink will be greater than the diameter of the hole (noting again that the diameter of the hole is equal to , for example, a width from the side of the neck (2) to the side of the insert ( 3 )). Mao though does not provide disclosure on a ratio of the diameter of the countersink to a diameter of the hole is from about 2:1 to about 3:1.” Noting this, the ratio between these diameters is a result effective variable, as changing this ratio changes the size of the countersink and the size of a fastener, e.g. countersunk bolt or countersunk screw, that can be received within said countersink. Therefore , it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the countersink tool of Mao by sizing the aforedescribed width from the side of the neck (2) thereof to the side of the insert ( 3 ) thereof such that when said countersink tool is in operation that “a ratio of the diameter of the countersink to a diameter of the hole is from about 2:1 to about 3:1” as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Claim 7 : First, according to Mao, the mounting slot (3) defines a threaded hole/opening [EPO Machine Translation, paragraph 0033]. Thus, by way of the mounting slot (3) thereof, the insert housing “defines an opening.” Also, the insert (3) of Peng (which again replaced the insert (4) of Mao), defines an annular opening (33) at the center thereof. (This is like the insert (4) of Mao (see Figure 2) which also defined an annular opening at the center thereof). Next, be advised lines 3-4 of claim 7 set forth therein, “ a fastening member …secures the insert within the slot”. Noting this, “a fastening member” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that said “fastening member” is being interpreted as comprising the structure (“a countersunk bolt, screw, or rivet”) disclosed in paragraph [0036] of Applicant’s specification filed on 5/26/2023, as well as equivalents thereto. Next, with respect to the prior art, Mao discloses that the mounting slot (3) “has a threaded hole running through it from front to back, and a screw is screwed onto the threaded hole. The blade is installed in the mounting [slot] 3 through the threaded hole and the screw” [EPO Machine Translation, paragraph 0033]. Please be advised that it is inherent that the threaded hole/opening of the mounting slot (3) and the annular opening of the insert ( 3 ) are aligned. This is because the only way for the disclosed screw to be received in each is if the threaded hole/opening and the annular opening are indeed aligned. Next, please be advised that the disclosed screw of Mao corresponds in structure to the “fastening member” of Applicant, noting that the “fastening member” of Applicant may be a “screw” as per paragraph [0036] of Applicant’s specification. As such, the screw/fastening member of Mao is received in the aligned openings when the insert ( 3 ) (of Peng) is positioned withing the mounting slot (3) (of Mao) , and said fastening member functions to secure said insert ( 3 ) in said mounting slot (3). Claim 8 : First, please be advised that as a result of the substitution (see rejection of claim 1), the insert (3) of Peng assumes a position within the mounting slot (3) of Mao previously occupied by the insert (4) of Mao. Examiner is noting this, because in the below annotated drawing of Mao, the insert (4) of Mao is of course shown rather than the insert (3) of Peng. As can be seen above, the insert (4) of Mao is set at an angle within the mounting slot (3) with respect to the insert housing longitudinal axis. Thus, as it pertain to the insert (3) of Peng, because of a result of the substitution (see rejection of claim 1) in which the insert (3) of Peng assumes a position in the mounting slot (3) of Mao previously occupied by the insert (4) of Mao, it follows that the insert (3) of Peng is set at the angle within the mounting slot (3) of Mao with respect to the insert housing longitudinal axis. Since the entirety of the insert (3) of Peng is set at the angle within the mounting slot (3) of Mao with respect to the insert housing longitudinal axis, a first portion of the tapered surface of said insert (3) is also set/oriented at the angle, e.g. a first angle, with respect to the insert housing longitudinal axis. Disclosure; however, is not provided on “the first angle is from about 40 degrees to about 70 degrees.” Noting this, the first angle is a result effective variable, as changing the first angle changes the angle and thus the shape of the countersink that is to be formed in the object. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the countersink tool of Mao/Peng by having the first angle between the first portion of tapered surface of the insert (3) and the insert housing longitudinal axis be “from about 40 degrees to about 70 degrees” as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Peng (China Publication No. CN 203804286 U). Claim 6 : First, as can be seen below, the neck (2), the insert housing, and the insert (3) are configured to be inserted at least partially through a hole in an object so as to form the countersink in the object. Next, it is noted that the diameter of the hole must be wide enough so as that the insert housing, the insert (3), and the neck (2) can be moved into and at least partially through the hole such that the countersink can be formed in the object. It is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (3) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. Next, it is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (4) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. With this lateral movement and the formation of the countersink, a diameter of the formed countersink will be greater than the diameter of the hole (noting that a diameter of the hole is equal to, for example, a width from a side of the neck (2) to a side of the insert (3)). Peng though does not provide disclosure on a ratio of the diameter of the countersink to a diameter of the hole is from about 2:1 to about 3:1.” Noting this, the ratio between these diameters is a result effective variable, as changing this ratio changes the size of the countersink and the size of a fastener, e.g. countersunk bolt or countersunk screw, that can be received within said countersink. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the countersink tool of Peng by sizing the aforedescribed width from the side of the neck (2) thereof to the side of the insert (3) thereof such that when said countersink tool is in operation that “a ratio of the diameter of the countersink to a diameter of the hole is from about 2:1 to about 3:1” as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Response to Arguments Applicant’s arguments with respect to claim 1 and Liu (CN 202963493 U) have been considered but are moot because the new ground of rejection does not rely on Liu for any teaching or matter specifically challenged in the argument. Applicant’s arguments with respect to claim 1 and Yehud (U.S. PG Publication No. 2022/0388073 A1)) have been considered but are moot because the new ground of rejection does not rely on Liu for any teaching or matter specifically challenged in the argument. Applicant's arguments filed 1/16/2026 with respect to claim 1 and Mao (CN 217474879 U) have been fully considered but they are not persuasive. Please be advised that Applicant’s arguments concerning Mao were respect to the rejection under 35 U.S.C. 102(a)(1) made in the prior office action. However, in light of Applicant’s amendments filed on 1/16/2026, Mao is now being utilized by Examiner as a the base reference in a rejection under 35 U.S.C. 103. Noting this, for the sake of completeness, Examiner would like to address the arguments presented by Applicant that are directed to Mao. With respect to Mao, Applicant argues that Mao does not teach, “wherein the insert housing width is less than the shank width and greater than the neck width, wherein the shank longitudinal axis, the neck longitudinal axis, and the insert housing longitudinal axis are parallel to and offset from one another, and wherein the neck longitudinal axis is disposed between the shank longitudinal axis and the insert housing longitudinal axis .” Please be advised that Mao does indeed teach, “wherein the shank longitudinal axis, the neck longitudinal axis, and the insert housing longitudinal axis are parallel to and offset from one another, and wherein the neck longitudinal axis is disposed between the shank longitudinal axis and the insert housing longitudinal axis .” This is evident in annotated Figure 1 of Mao ( see below). Mao also teaches, “wherein the insert housing width is” “greater than the neck width.” This can be seen below in another annotated version of Figure 1 of Mao. Examiner agrees with Applicant though that Mao does not provide disclosure upon the insert housing width being “less than the shank width.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the countersink tool of Mao to have the insert housing width be less than the shank width, since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the countersink tool of Mao would not operate differently with the insert housing width being less than the shank width, because the shank (1) (unlike the neck (2) and insert housing) is not , for example, inserted through a hole of an object when a countersink is produced within said object. Furthermore, Applicant places no criticality on the insert housing width being less than the shank width, indicating simply that the insert housing (130) “may” (emphasis added) have a smaller width (e.g., diameter) than the shank (110) (Applicant’s specification, paragraph [0020]). Based on the foregoing, “wherein the insert housing width is less than the shank width and greater than the neck width, wherein the shank longitudinal axis, the neck longitudinal axis, and the insert housing longitudinal axis are parallel to and offset from one another, and wherein the neck longitudinal axis is disposed between the shank longitudinal axis and the insert housing longitudinal axis,” is not found to define over the prior art. With respect to Mao, Applicant further argues that Mao does not teach, “an insert configured to be positioned within the insert housing, wherein the insert comprises a tapered surface, wherein the neck, the insert housing, and the insert are configured to be inserted at least partially through a hole in an object, and wherein the tapered surface of the insert is configured to form the countersink in the object while the neck is positioned in the hole.” Please be advised that Mao does indeed teach, “an insert configured to be positioned within the insert housing” and “wherein the neck, the insert housing, and the insert are configured to be inserted at least partially through a hole in an object.” First, with respect to the insert housing, it defines a mounting slot (3) which is configured to receive an insert (4) [EPO Machine Translation, paragraph 0028], wherein the insert (4) is configured to form a countersink in an object. Since the mounting slot (3) receives the insert (4), the insert (4) is configured to be positioned within the insert housing. Next, as can be seen below, the neck (2), the insert housing, and the insert (4) are configured to be inserted at least partially through a hole in the object so as to form the countersink in the object. Please note that the diameter of the hole must be wide enough so as that the insert housing, the insert (4), and the neck (2) can be moved into and at least partially through the hole such that the countersink can be formed in the object. It is noted that Figure 3 of Mao has been annotated (see below) to show the (minimum) diameter of the hole so as that the insert housing, insert (4), and neck (2) can be moved into and at least partially through the hole of the object. Noting this, it can be seen in the annotated figure that the diameter of the hole is equal to a width taken from, for example, a side of the neck (2) to a side of the insert (4). It is noted that once the insert housing, a corresponding portion of the neck (2), and the insert (4) axially clear the hole, then the countersink tool can be moved laterally, and the countersink can thus be formed in the object. Examiner agrees with Applicant though that Mao does not provide disclosure upon the insert (4) “comprises a tapered surface.” Based on the foregoing, Mao does not teach, “wherein the tapered surface of the insert is configured to form the countersink in the object while the neck is positioned in the hole.” As such, Examiner has applied new prior art in the form of Peng (China Publication No. CN 203804286 U) as a modifying reference to Mao. Noting this, Figures 2 and 4 of Peng show a countersinking tool comprising an insert (3) that is configured to be positioned within an insert housing. In addition to the insert housing and the insert (3), the countersinking tool comprises a shank (1) and a neck (2). Please be advised that the insert (3) comprises a tapered surface which has been pointed to below in annotated Figure 4. As to the tapered surface, it is configured to form a countersink in an object, noting that a cutting edge of the insert (3) is disposed at the tapered surface. Lastly, please be advised that the tapered surface is configured to form the countersink in the object whilst the neck (2) and insert housing are positioned within a hole of the object. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the insert (3) of Peng for the insert (4) of Mao, as this is a substitution of one known insert for forming a countersink in an object for another, in order to obtain the predictable result of the insert (3) of Peng being positioned within the insert housing of Mao, and the predictable result of the neck (2), the insert housing, and the insert (3) being able to be inserted at least partially through the hole in the object so as to form the countersink in said object. Since in making the above substitution the insert (3) of Peng is positioned within the insert housing of Mao, the result is the modified countersink tool of Mao having the insert (3) that “comprises a tapered surface.” It is this tapered surface of the insert (3) (which was pointed to by Examiner on the preceding page of this office action in annotated Figure 4 of Peng) that is configured to form the countersink in the object whil e the neck (2) of the countersink tool is positioned in the hole of the object. This is because the cutting edge of the insert (3) is disposed at said tapered surface. Based on the foregoing, “an insert configured to be positioned within the insert housing, wherein the insert comprises a tapered surface, wherein the neck, the insert housing, and the insert are configured to be inserted at least partially through a hole in an object, and wherein the tapered surface of the insert is configured to form the countersink in the object while the neck is positioned in the hole,” is not found to define over the prior art. Examiner’s Comment A thorough search has been conducted re: the invention/claims. That being said, though no art rejections are considered to presently apply to claims 9 and 10 . Examiner notes that no indication regarding the allowability of the subject matter of claim 9 and 10 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, particularly given that it is unclear what changes to the claims might be necessary to overcome the above-described issue(s) with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. 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 FILLIN "Examiner name" \* MERGEFORMAT Michael Vitale whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-5098 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 8:30 AM- 6:00 PM . Examiner interviews are available via telephone 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, FILLIN "SPE Name?" \* MERGEFORMAT Sunil K Singh can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-4502 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL VITALE/ Examiner, Art Unit 3722 /SUNIL K SINGH/ Supervisory Patent Examiner, Art Unit 3722
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Prosecution Timeline

May 26, 2023
Application Filed
Dec 13, 2025
Non-Final Rejection — §102, §103, §112
Jan 14, 2026
Examiner Interview Summary
Jan 14, 2026
Applicant Interview (Telephonic)
Jan 16, 2026
Response Filed
Mar 28, 2026
Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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99%
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3y 2m
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