DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Parendo et al. (US 2021/0154749) with evidence taken from a filing in US Application 16/965,385. The filing is an amendment to the Specification published in the file wrapper of application 16/965,385 dated 12 May 2022 and referred to as NPL U.
As to claim 1, Parendo teaches a drill bit comprising: a shank extending along a central axis; an intermediate portion extending forward of the shank along the central axis with a helical flute; and a multi-stepped tip portion coupled to a front end of the fluted portion (as illustrated in annotated Fig 1, below).
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Parendo further teaches: the multi-stepped tip portion including a cutting tip with a pair of primary cutting edges extending radially outward from the axis (cutting tip shown in the box in annotated Fig 3 below), a plurality of steps (three steps are illustrated in Fig 3 below) each having an elongated portion and a tapered portion that is tapered outward from the elongated portion relative to the axis, the elongated portions progressively increasing in diameter from the cutting tip to the intermediate portion, and a tip flute in communication with the helical flute in the intermediate portion (all of these limitations are illustrated in annotated Fig 3, below).
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Parendo further teaches: wherein the elongated portion (72) of each step has an axial relief tapered inward toward the axis (as shown in Fig 3). Even though it is acknowledged that Drawings are not to scale (MPEP § 2125), a person having ordinary skill in the art would nonetheless have appreciated that practicing a teaching would naturally begin with a replication of what is illustrated in view of the written teachings. Examiner has labeled these three different angles theta 1, theta 2, theta 3 in the annotated Figure above1.
Examiner acknowledges that Parendo (US 2021/0154749) teaches at [0020]: “In the illustrated embodiment, each step 54 includes an outer periphery surface 72 that is approximately parallel to the axis of rotation 26 and a taper surface 74 that connects the outer periphery surface 72 to consecutive steps 54.” Thus Parendo’s specification appears to contradict Parendo’s drawing.
As evidence that Parendo’s drawing is correct and the specification was incomplete, Examiner provides NPL U. The inventors of Parendo (US 2021/0154749) put a more detailed description of Fig 3 on the record before the effective filing date of the present invention. See Parendo (NPL) which teaches “The outer periphery surface 72 of the first step 62 is approximately parallel to the axis of rotation 26 and the outer periphery surface 72 of the terminal step 66 is oriented at a relief angle relative to the axis of rotation 26. An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.”
Note that Parendo teaches anywhere from 3 to 6 steps (see paragraph [0019]). Step 1 is interpreted as the “cutting tip” and steps 2-4 are interpreted as the claimed steps 1-3 (represented by angles theta 1-3 in the Figure above). Any intermediate steps (for example the step associated with theta 2) are interpreted as having relief angles less than the relief angle of the terminal step 66 in accordance with NPL U.
Parendo in view of NPL U further teaches: wherein a frontmost elongated portion of a frontmost step of the plurality of steps closest to the cutting tip has a first axial relief tapered inward toward the central axis at a first angle relative to the central axis (angle theta 1 as annotated above of Parendo has an inward relief taper), and wherein a rearmost elongated portion of a rearmost step of the plurality of steps closest to the intermediate portion has a second axial relief tapered inward toward the central axis at a second angle relative to the central axis (angle theta 3 as annotated above), the second angle greater than the first angle (NPL U teaches: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.”).
As to claim 2, Parendo with evidence from NPL U teaches the drill bit of claim 1, wherein the plurality of steps includes one or more intermediate steps between the frontmost step and the rearmost step (there are three to six total steps described by Parendo paragraph [0019]. Since step 1 is considered the tip, step 2 is associated with theta 1, and step 6 is considered the terminal step, there are three intermediate steps.).
As to claim 3, Parendo with evidence from NPL U teaches the drill bit of claim 2, wherein the elongated portion of each of the one or more intermediate steps has an intermediate axial relief at an intermediate angle that is less than the second angle (this is illustrated by Parendo and described at NPL U: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.”).
As to claim 7, Parendo with evidence from NPL U teaches the drill bit of claim 1, wherein each tapered portion has a radial relief relative to the axis such that a leading edge of the tapered portion has a greater radius than a trailing edge of the tapered portion (As illustrated in Parendo. This is also the definition of having a taper in the direction described).
As to claim 8, Parendo with evidence from NPL U teaches the drill bit of claim 1, wherein the tip flute is helical or is parallel to the axis (as shown in Fig 1, the tip flute of Parendo is a continuation of the flute of the intermediate portion, and is helical).
As to claim 9, Parendo with evidence from NPL U teaches the drill bit of claim 1, further comprising a secondary cutting edge formed at junctions between each tapered portion and the tip flute (there are junctions between each tapered portion and the tip flute in the stepped drill of Parendo. These junctions are cutting edges.).
As to claim 10, Parendo with evidence from NPL U teaches the drill bit of claim 1, wherein the multi-stepped tip portion has an axial length between 4 mm and 12 mm (Parendo [0013] teaches the length of the body L is from 45 to 152 mm. [0014] teaches “The shank 34 is approximately one sixth to one tenth the total length L of the drill bit 10.” Thus the length L1 is 5/6 to 9/10 of body L. Parendo [0016] teaches the length L2 is from ½ to 1/10 the length L1 of the body. Thus, as L1 is from 37.5 to 136.8mm, the length of L2 is from 3.75 to 68.4mm, which overlaps the claimed axial length) and the plurality of steps comprise between two and four steps (Parendo Fig 3 illustrates three steps and [0019] teaches any number of steps between three and six.).
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Parendo et al. (US 2021/0154749) with evidence from NPL U.
As to claim 4, Parendo with evidence from NPL U teaches the drill bit of claim 3, but does not teach the intermediate angle is equal to the first angle. NPL U teaches the terminal step has the largest angle: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.” Even though NPL U defines the relief angle of the terminal step relative to the other steps, the intermediate step’s relief angles are not defined in relation to each other.
Applicant has not disclosed that having relief angles of the intermediate steps be equal to each other solves any stated problem or is for any particular purpose. Applicant is foremost concerned with the angle of the terminal step. Moreover, it appears that the drill bit of Parendo or applicant’s invention, would perform equally well with the intermediate relief angles of any reasonable value, including equal to each other.
As to claims 5 and 6, Parendo with evidence from NPL U teaches the drill bit of claim 1, but does not teach the first angle is between 0.5° and 5° and the second angle is between 8° and 12°.
Parendo does not address the dimensions of the angle. However, the illustrated angle is slight which indicates values similar to 0.5 to 5 and 8 to 12 degrees.
Applicant has not disclosed that having relief angles be these specific angles solves any stated problem or is for any particular purpose. Moreover, it appears that the drill bit of Parendo or applicant’s invention would perform equally well with the relief angles at any reasonable angle.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Parendo such that the first relief angle of the elongated portions is between 0.5° and 5° and the second relief angle is between 8° and 12° because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Parendo.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Morse (US 3,647,310) in view of Parendo et al. (US 2021/0154749) with evidence taken from a filing in US Application 16/965,385. The filing is an amendment to the Specification published in the file wrapper of application 16/965,385 dated 12 May 2022 and referred to as NPL U.
As to claim 11, Morse teaches a holesaw system (Abstract: “A universal hole saw arbor construction for mounting all types and sizes of hole saws which also accommodates the pilot drill used with the hole saws.”) comprising: a holesaw (hole saw blade 2) including a base (body 4), a cylindrical blade portion extending forward of the base about a central axis (circular blade portion 23), and a cutting edge at a front end of the blade portion (saw teeth 24. See Fig 2); and a pilot drill bit (pilot drill 6).
Morse does not disclose the specifics of the pilot drill as claimed. However, any reasonable pilot drill can be used by Morse, as morse discloses the adjustability of the pilot drill within the hole saw in order to achieve a desired protrusion. See Col 3 lines 26+: “Pilot drill 6 is received within axial stem bore 7 and may be clamped in any axially adjusted position by setscrew 12 extending through central flange 9.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for the stepped drill bit of Parendo as the pilot drill of Morse. Both function as a drill bit and in terms of Morse are interchangeable. See MPEP § 2143 B which describes the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results.
Parendo teaches: a shank extending along the central axis, an intermediate fluted portion extending axially forward of the shank with a helical flute at a first helix angle relative to the axis, and a stepped tip portion coupled to a front end of the fluted portion (as illustrated in annotated Fig 1, in the rejection of claim 1 above), the stepped tip portion including a pilot tip with a pair of primary cutting edges extending radially outward from the central axis, a plurality of steps each having an elongated portion and a tapered portion that is tapered outward from the elongated portion relative to the axis, the elongated portions progressively increasing in diameter from the pilot tip to the intermediate portion, and a tip flute in communication with the helical flute in the intermediate portion (as illustrated in annotated Fig 3, in the rejection of claim 1 above).
Parendo teaches: wherein the elongated portion (72) of each step has an axial relief tapered inward toward the axis (as shown in Fig 3). Even though it is acknowledged that Drawings are not to scale (MPEP § 2125), a person having ordinary skill in the art would nonetheless have appreciated that practicing a teaching would naturally begin with a replication of what is illustrated in view of the written teachings. Examiner has labeled these three different angles theta 1, theta 2, theta 3 in the annotated Figure above2.
Examiner acknowledges that Parendo (US 2021/0154749) teaches at [0020]: “In the illustrated embodiment, each step 54 includes an outer periphery surface 72 that is approximately parallel to the axis of rotation 26 and a taper surface 74 that connects the outer periphery surface 72 to consecutive steps 54.” Thus Parendo’s specification appears to contradict Parendo’s drawing.
As evidence that Parendo’s drawing is correct and the specification was incomplete, Examiner provides NPL U. The inventors of Parendo (US 2021/0154749) put a more detailed description of Fig 3 on the record before the effective filing date of the present invention. See Parendo (NPL) which teaches “The outer periphery surface 72 of the first step 62 is approximately parallel to the axis of rotation 26 and the outer periphery surface 72 of the terminal step 66 is oriented at a relief angle relative to the axis of rotation 26. An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.”
Note that Parendo teaches anywhere from 3 to 6 steps (see paragraph [0019]). Step 1 is interpreted as the “cutting tip” and steps 2-4 are interpreted as the claimed steps 1-3 (represented by angles theta 1-3 in the Figure above). Any intermediate steps (for example the step associated with theta 2) are interpreted as having relief angles less than the relief angle of the terminal step 66 in accordance with NPL U.
Parendo in view of NPL U further teaches: wherein a frontmost elongated portion of a frontmost step of the plurality of steps closest to the cutting tip has a first axial relief tapered inward toward the central axis at a first angle relative to the central axis (step 1 having angle theta 1 as shown in annotated Fig 3 in the rejection of claim 1 above), and wherein a rearmost elongated portion of a rearmost step of the plurality of steps closest to the intermediate portion has a second axial relief tapered inward toward the central axis at a second angle relative to the central axis (angle theta 3 as shown in annotated Fig 3 in the rejection of claim 1 above), the second angle greater than the first angle (NPL U teaches: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.” Thus theta 3 is larger than theta 1.).
As to claim 12, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 11, wherein the plurality of steps includes one or more intermediate steps between the frontmost step and the rearmost step (there are three to six total steps described by Parendo paragraph [0019]. Since step 1 is considered the tip, step 2 is associated with theta 1, and step 6 is considered the terminal step, there are three intermediate steps.).
As to claim 13, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 12, wherein the elongated portion of each of the one or more intermediate steps has an intermediate axial relief at an intermediate angle that is less than the second angle (this is illustrated by Parendo and described at NPL U: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.”).
As to claim 14, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 13, but does not teach the intermediate angle is equal to the first angle.
NPL U teaches the terminal step has the largest angle: “An intermediate step 54 positioned between the first step 62 and the terminal step 66, is oriented at a relief angle that is less than the relief angle of the terminal step 66.” Even though NPL U defines the relief angle of the terminal step relative to the other steps, the intermediate step’s relief angles are not defined in relation to each other.
Applicant has not disclosed that having relief angles of the intermediate steps be equal to each other solves any stated problem or is for any particular purpose. Applicant is foremost concerned with the angle of the terminal step. Moreover, it appears that the drill bit of Parendo or applicant’s invention, would perform equally well with the intermediate relief angles of any reasonable value, including equal to each other.
As to claims 15 and 16, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 11, but does not teach the first angle is between 0.5° and 5° and the second angle is between 8° and 12°.
Morse in view of Parendo does not address the dimensions of the angle. However, the illustrated angle is slight which indicates values similar to 0.5 to 5 and 8 to 12 degrees.
Applicant has not disclosed that having relief angles be these specific angles solves any stated problem or is for any particular purpose. Moreover, it appears that the drill bit of Parendo, or applicant’s invention, would perform equally well with the relief angles at any reasonable angle
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Parendo such that the first relief angle of the elongated portions is between 0.5° and 5° and the second relief angle is between 8° and 12° because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Morse in view of Parendo with evidence from NPL U.
As to claim 17, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 11, wherein each tapered portion has a radial relief relative to the axis such that a leading edge of the tapered portion has a greater radius than a trailing edge of the tapered portion (As illustrated in Parendo. This is also the definition of having a taper in the direction described).
As to claim 18, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 1, wherein the tip flute is helical or is parallel to the axis (as shown in Fig 1, the tip flute of Parendo is a continuation of the flute of the intermediate portion, and is helical).
As to claim 19, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 1, further comprising an arbor (Morse teaches arbor 1 includes shank 8) that is coupleable to the holesaw (as illustrated), to the pilot drill bit (the pilot bit is attached to the arbor by setscrew 12), and to a rotary power tool (Morse Col 3 lines 18-20: “Shank 8 is adapted to be drivingly engaged by a chuck (not shown) of power drive mechanism for the saw.”).
As to claim 20, Morse in view of Parendo with evidence from NPL U teaches the holesaw system of claim 1, wherein, when assembled with the holesaw, the multi-stepped tip extends beyond a cutting edge of the holesaw (as shown in Fig 1 of Morse, the tip of the pilot drill extends beyond the saw teeth 24).
Response to Arguments
Applicant’s arguments, see pages 8-11, filed 13 April 2026, with respect to the rejection(s) of claim(s) 1-10 under Parendo in view of Piper and claims 11-20 under Morse, Parendo and Piper have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Parendo with evidence from NPL U and Morse in view of Parendo with evidence from NPL U.
On Page 8, Applicant argues Parendo does not teach the first step has a first axial relief tapered inward toward the central axis. Applicant points to paragraph [0020] of Parendo which teaches that surface 72 is approximately parallel to the axis of rotation 26.
On Pages 9 and 10, Applicant convincingly argues that Piper does not cure the deficiencies of Parendo.
However, the present rejection does not rely on Piper. Rather, Examiner presents NPL U which was filed in Application 16/965,385 from which Parendo (US 2021/0154749) is a pre-grant publication. NPL U is an amendment to the Specification in Application 16/965,385 further describing the geometry and relationship of the tapered surfaces of Parendo Fig 3.
On Page 9, Applicant argues that Parendo teaches the foremost step includes a surface 72 which is tapered outward from – not inward toward – the central axis. Examiner notes that Parendo’s “step 1” is interpreted here as the “cutting tip” and that Parendo’s step 2 is interpreted as the claimed “frontmost step.” This interpretation is consistent with what is known in the art, see for example Piper Fig 2 which teaches tip 26 has a length 29.
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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 26 May 2026
1 Note that the Figure above is different from the annotated figure relied upon in the Non Final rejection mailed 12 January 2026.
2 Note that the Figure above is different from the annotated figure relied upon in the Non Final rejection mailed 12 January 2026.
Prosecution Insights