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 .
Drawings
Figures 1, 2A, 2B, 3, and 4 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Paragraph [0033] of the originally filed Specification describes Figures 1-4 are depicting “an existing drill bit 500.”
Claim Objections
Claim 11 is objected to because of the following informalities: line 5 recites, “a first helix angle relative t the axis”. The word “t” should be “to”. Appropriate correction is required.
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 § 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 1-10 and 20 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 1 recites the limitation "the central axis" after “the axis” had already been introduced. “The central axis” is more specific than “the axis.” There is insufficient antecedent basis for this limitation in the claim because it is unclear whether “the central axis” refers to “the axis” since “the central axis” is more specific.
Note that claim 11 recites “the central axis” first. Thus references to “the central axis” and “the axis” do not result in a lack of antecedent basis as both are presumed to refer to the same axis.
Claim 20 recites “the arbor” even though no arbor had previously been recited.
Claim 20 recites “a cutting edge of the holesaw” even though a cutting edge of the holesaw had already been recited”
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Parendo et al. (US 2021/0154749) in view of Piper et al. (US 10,245,656).
As to claim 1, Parendo teaches a drill bit comprising: a shank extending along the axis; an intermediate portion extending forward of the shank along the 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, 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 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 does not explicitly teach: wherein the elongated portion (72) of each step has an axial relief tapered inward toward the axis.
Rather, Parendo 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 intends for the elongated portion (72) to be “approximately parallel to the axis of rotation 26.” However, the Figure Parendo references clearly indicates surfaces 72 have angles relative to the axis which are not parallel. Examiner has labeled these three different angles theta 1, theta 2, theta 3 in the annotated Figure above. 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. As Parendo teaches the surfaces are merely “approximately” parallel to the axis, a person in the art would have followed the drawn angles.
Moreover, it was known in the art of stepped drill bits to provide for an axial relief of elongated portions. See Piper which teaches at Col 4 lines 16-24: “In some embodiments, the distal end 64a of the proximal surface 64 is relieved by an axial relief as is known in the art. In some embodiments, the axial reliefs of the first lands 56a-56k increase in size from the first step 54a proximally. In some embodiments, the axial relief of the first lands 56a-56k increase in size from the first step 54a to the terminal step 54k, but some of the first lands are defined by the same axial relief.”
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 the elongated portions 72 of Parendo with the axial reliefs illustrated by Parendo and discussed by Piper. Such a person would have been motivated to do so in order to improve the function of the stepped bit. See also MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Parendo 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 at a first angle relative to the central axis (angle theta 1 as annotated 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 annotated above), the second angle greater than the first angle (as made obvious in view of the drawings of Parendo and the teachings of Piper to “an increased in [axial relief] size from the first step… to the terminal step.”).
As to claim 2, Parendo in view of Piper 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 steps illustrated in Fig 3 of Parendo, above).
As to claim 3, Parendo in view of Piper 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 made obvious by Piper which teaches “an increased in [axial relief] size from the first step… to the terminal step.” (Col 4 lines 16-24)).
As to claim 4, Parendo in view of Piper teaches the drill bit of claim 3, wherein the intermediate angle is equal to the first angle (Piper teaches “some of the first lands are defined by the same axial relief.” (Col 4 lines 16-24). Based on Piper’s teachings, it would have been within the purview of a skilled artisan to choose any reasonable number of angles to make equal, including the first and second angles of Parendo).
As to claims 5 and 6, Parendo in view of Piper 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 in view of Piper does not address the dimensions of the angle. However, the illustrated angle is slight, and the provided relief distances of Piper (0.0167 inches discussed at Col 4 line 24) is very small, 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 in view of Piper, 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 in view of Piper 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 in view of Piper.
As to claim 7, Parendo in view of Piper 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 (Piper Col 4 lines 26-30 teaches, “In some embodiments, the proximal surface 64 is defined by a diametral relief as is known in the art. In some embodiments, the diametral relief is defined by an angle of approximately 1 degree, 0 degrees, or −1 degrees.”).
As to claim 8, Parendo in view of Piper 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 in view of Piper 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 in view of Piper 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.).
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) and Piper et al. (US 10,245,656) .
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 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 does not explicitly teach: wherein the elongated portion of each step has an axial relief tapered inward toward the axis.
Rather, Parendo 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 intends for the elongated portion (72) to be “approximately parallel to the axis of rotation 26.” However, the Figure Parendo references clearly indicates surfaces 72 have angles relative to the axis which are not parallel. Examiner has labeled these three different angles theta 1, theta 2, theta 3 in the annotated Figure above. 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. As Parendo teaches the surfaces are merely “approximately” parallel to the axis, a person in the art would have followed the drawn angles.
Moreover, it was known in the art of stepped drill bits to provide for an axial relief of elongated portions. See Piper which teaches at Col 4 lines 16-24: “In some embodiments, the distal end 64a of the proximal surface 64 is relieved by an axial relief as is known in the art. In some embodiments, the axial reliefs of the first lands 56a-56k increase in size from the first step 54a proximally. In some embodiments, the axial relief of the first lands 56a-56k increase in size from the first step 54a to the terminal step 54k, but some of the first lands are defined by the same axial relief.”
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 the elongated portions 72 of Parendo with the axial reliefs illustrated by Parendo and discussed by Piper. Such a person would have been motivated to do so in order to improve the function of the stepped bit. See also MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Parendo 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 at a first angle relative to the central axis (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 (as made obvious in view of the drawings of Parendo and the teachings of Piper to “an increased in [axial relief] size from the first step… to the terminal step.”).
As to claim 12, Morse in view of Parendo and Piper 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 steps illustrated in Fig 3 of Parendo, above).
As to claim 13, Morse in view of Parendo and Piper 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 made obvious by Piper which teaches “an increased in [axial relief] size from the first step… to the terminal step.” (Col 4 lines 16-24)).
As to claim 14, Morse in view of Parendo and Piper teaches the holesaw system of claim 13, wherein the intermediate angle is equal to the first angle (Piper teaches “some of the first lands are defined by the same axial relief.” (Col 4 lines 16-24). Based on Piper’s teachings, it would have been within the purview of a skilled artisan to choose any reasonable number of angles to make equal, including the first and second angles of Parendo).
As to claims 15 and 16, Morse in view of Parendo and Piper 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 and Piper does not address the dimensions of the angle. However, the illustrated angle is slight, and the provided relief distances of Piper (0.0167 inches discussed at Col 4 line 24) is very small, 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 in view of Piper, 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 in view of Piper 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 and in view of Piper.
As to claim 17, Morse in view of Parendo and Piper 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 (Piper Col 4 lines 26-30 teaches, “In some embodiments, the proximal surface 64 is defined by a diametral relief as is known in the art. In some embodiments, the diametral relief is defined by an angle of approximately 1 degree, 0 degrees, or −1 degrees.”).
As to claim 18, Morse in view of Parendo and Piper 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 and Piper 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 and Piper teaches the holesaw system of claim 1, wherein, when assembled with the holesaw and the arbor, 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).
Conclusion
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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 11 December 2025