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 without traverse of Group I (Claims 1-18) in the reply filed on 1/28/2026 is acknowledged. Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1, 2, 8-9 and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kopton (U.S. Patent Publication No. 2017/0216945).
Regarding Claim 1, Kopton teaches a rotary drilling tool having an axis of rotation (Fig. 2, L), a shaft (Fig. 1, 7), and a cutting head, which has at least one tip (Fig. 2, 11) and a front-facing main cutting edge (Fig. 2, 29) defining a maximum diameter of the cutting head (Fig. 3 shows the cutting edge 29 extending outward beyond the drill body 9), characterized in that the cutting head has a tip-side axial portion (Fig. 2, 23), a shaft-side axial portion (Fig. 2, 13), and at least one undercut (Fig. 2, a groove formed between 31 and 23) extending axially between the tip-side axial portion (Fig. 2, 23) and the shaft-side axial portion (Fig. 2, 13), wherein the undercut has a radially inwardly springing ledge, which has a rear-facing blade (Fig. 2, 31) on a side facing away from the tip (Fig. 2, the cutting edge 31 is facing away from the tip 11), which edge is provided for cutting when the rotary drilling tool is pulled out of a workpiece ([0031], lines 17-20: Since the upper groove-flank cutting edge 31 is made to cut a groove in a workpiece, it is capable of cutting when the drilling tool is pulled out of a workpiece.).
Examiner notes that the claim language such as “edge is proved for cutting when the rotary drilling tool is pulled out of a workpiece” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of Kopton's cutting edge 31 is clearly capable of performing the intended use as indicated above. (see MPEP 2114)
Regarding Claim 2, Kopton teaches the rotary drilling tool according to claim 1, characterized in that the tip-side axial portion (Fig. 2, 23) extends axially from the inwardly springing ledge (Fig. 2, 31) towards the main cutting edge (Fig. 2, 29) and has the maximum diameter (Fig. 2 shows the cutting edge 23 having the maximum diameter).
Regarding Claim 8-9, Kopton teaches the rotary drilling tool according to claims 1-2, characterized in that the rear-facing blade (Fig. 2, 31) has a rear-facing cutting edge (Fig. 2, 31) formed by a rear-facing chipping surface (Fig. 2, 33) and a rear-facing free surface (Figure below, an inclined surface between a free surface 24 and the bottom surface of the groove), wherein the rear-facing free surface is inclined in relation to a plane extending perpendicular to the axis of rotation.
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Regarding Claims 16-17, Kopton teaches the rotary drilling tool according to claims 1-2, characterized in that the undercut is part of a constriction, in particular having U-shaped profile (In Fig. 2, the undercut shows a U-shaped profile in when viewed in a direction perpendicular to the face 33.).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 3-7, 10-15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kopton (U.S. Patent Publication No. 2017/0216945).
Regarding Claims 3-4, Kopton teaches the rotary drilling tool according to claims 1 and 2, characterized in that the rear-facing blade (Fig. 2, 31) extends from a radially outer end (Fig. 2, 27) of the rear-facing blade to a radially inner end (Fig. 2, corner between 31 and bottom of the groove) of the rear-facing blade, wherein the radially outer end has a first radial distance from the axis of rotation (Fig. 2, L), which corresponds to half the maximum diameter (Since a distance between radially outer ends of the two rear-facing blades located opposite from each other about the axis of rotation (L) form the maximum diameter, the first radial distance from the axis of rotation would be half the maximum diameter), and the radially inner end has a second radial distance from the axis of rotation, which is a less than 50% of the maximum diameter.
Although Kopton does not explicitly teach a second radial distance from the axis of rotation is less than 45% of the maximum diameter, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design the undercut in the cutting head having a certain depth such that the second radial distance would be less than 45% in order to achieve a desired resulting groove shape/size in the workpiece formed by the cutting edges.
Regarding Claims 5-7, although Kopton does not explicitly teach the axial distance between the inwardly springing ledge and the main cutting edge corresponds to at least 10% of the maximum diameter, Fig. 2 appears to show the axial distance between the inwardly springing ledge and the main cutting edge to be more than 10% of the maximum diameter. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine an optimal design of the groove head (21) of Kopton including the axial distance being more than 10% of the maximum diameter in order to achieve a desired groove shape particularly the width of the shaped formed by the cutting edge 24.
Regarding Claim 10-11, Kopton teaches the rotary drilling tool according to claims 3 and 5, characterized in that the rear-facing blade (Fig. 2, 31) has a rear-facing cutting edge (Fig. 2, 31) formed by a rear-facing chipping surface (Fig. 2, 33) and a rear-facing free surface (Figure above, an inclined surface between a free surface 24 and the bottom surface of the groove), wherein the rear-facing free surface is inclined in relation to a plane extending perpendicular to the axis of rotation.
Regarding Claim 12, although Kopton does not explicitly teach an inclined angle of the rear-facing free surface, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine an optimal design of the groove blade (21) of Kopton including the rear-facing free surface being inclined radially by an angle between 1° and 5°, and/or in that the rear-facing free surface being inclined circumferentially by an angle between 5° and 10° in order to achieve a desired shape/size of the groove in the workpiece formed by the groove blade 21.
Regarding Claims 13-15, Fig. 2 of Kopton shows the undercut having an axial length that corresponds to at least 10% of the maximum diameter. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine an optimal axial length of the undercut in order to achieve a desired groove shape/size in the workpiece.
Regarding Claim 18, Kopton teaches the rotary drilling tool according to claim 3, characterized in that the undercut is part of a constriction, in particular having U-shaped profile (In Fig. 2, the undercut shows a U-shaped profile when viewed in a direction perpendicular to the face 33.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kopton (U.S. Patent Publication No. 2019/0337060) teaches at least one undercut, however, it does not show a clear V-shaped or U-shaped profile.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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/JUN S YOO/Primary Examiner, Art Unit 3726 7/20/2026
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