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 Rejections - 35 USC § 112
2. 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 1-20 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.
Applicant recites the term “generally” in claim 1 lines 8, 11, 15, claim 13 lines 8, 11, 15, 20 and claim 18 lines 8, 11, 15. The term “generally” is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Applicant recites “the other plurality of steps” in claim 4, 5, 12, 14, and 15. The structure applicant is intending to refer to is unclear and lacks proper antecedent basis. It appears as if applicant is intending to describe the other steps other than the rearmost step. For the purpose of examination, it is interpreted as if applicant is intending to describe the other steps other than the rearmost step.
Applicant recites “the rearmost portion” in claim 2. The structure applicant is intending to describe is unclear and lacks proper antecedent basis. It appears as if applicant may be intending to refer to the “rearmost step”. For the purpose of examination it is interpreted as if applicant is intending to describe the “rearmost step”.
Applicant recites “the first angle” in claim 6. It is unclear whether applicant is intending to refer to the “first outward angle” recited in claim 1 line 8, the “first inward angle” recited in claim 2 lines 2-3, or both the “first outward angle” and the “first inward angle” recited in claims 1-2. It appears as if applicant may be intending to refer to the “first inward angle” recited in claim 2. For the purpose of examination, it is interpreted as if applicant is intending to refer to the “first inward angle” recited in claim 2.
Claims 2-12, 14-19, and 19-20 are rejected as a result of being dependent on a rejected claim.
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.
Claim(s) 1-20 is/are rejected, as best understood in view of the above 112 rejection, under 35 U.S.C. 103 as being unpatentable over Parendo et al. (US 11,691,203) in view of Giess & Quanz GMBH (DE 29803261 U1).
Regarding to Claim 1, Parendo et al. discloses a step drill bit (10, as can be seen from Figure 1 in Parendo et al.) comprising: a shank portion (shank 12, as can be seen from Figure 1 in Parendo et al.) configured to be coupled to a power tool (power tool, as described in column 2 lines 51-53 in Parendo et al.) and extending along an axis [as can be seen from Figure 1 in Parendo et al.]; a cutting head portion (body 18, as can be seen from Figure 1 in Parendo et al.) extending along the axis and including a rear end (first or proximate end 19a, as can be seen from Figure 1 in Parendo et al.) coupled to the shank portion (12), a front cutting tip (bit tip 21, as can be seen from Figure 1 in Parendo et al.), a plurality of steps (steps 20A-20L, as can be seen from Figure1 in Parendo et al.) of progressively increasing diameter from the cutting head (18) to the rear end portion (19a) [as can be seen from Figure 1 in Parendo et al.], each step including a portion (step chamfer 58, as can be seen from Figure 1 in Parendo et al.) that flares radially outward from the axis at a first outward angle (ramp angle 60 of a first 58, as described in column 3 lines 44-58 and can be seen from Figure 1 in Parendo et al.) relative to the axis and a generally cylindrical portion (exterior portion of steps 20A-20L, as can be seen from Figure 1 in Parendo et al.) that extends axially rearward from the tapered portion, the steps configured to form a plurality of different diameter holes in a workpiece [as described in column 7 lines 51-55 in Parendo et al.], a flute (a first flute 46, as can be seen from Figure 3-4 in Parendo et al.) that extends through the series of steps (20A-20L) generally parallel to or helically relative to the axis [as can be seen from Figures 1-5 in Parendo et al.], primary cutting edges (lead cutting edges 64A, as described in column 4 lines 20-25 and can be seen from Figure 3 in Parendo et al.) formed at junctions between each portion (58) and the flute (first 46) [as described in column 4 lines 20-25 and can be seen from Figure 1 in Parendo et al.], secondary cutting edges (cutting edge 64C, 64M, as described in column 4 lines 20-52 and can be seen from Figures 4 and 6 in Parendo et al.) formed at junctions between each generally cylindrical portion (exterior portion of steps 20A-20L) and the flute(first 46) [as can be seen from Figure 1 in Parendo et al.], a depth stop flange (20M) extending radially outward from a rearmost step (20L) of the plurality of steps(20A-20L) [as can be seen from Figure 1 in Parendo et al.], the flange(20M) having a diameter greater (diameter of 20M) than the diameter of the cylindrical portion of the rearmost step (20L) [as described in column 3 lines 1-8 and can be seen from Figure 1 in Parendo et al.].
Parendo et al. discloses a recess (a second flute 46, as can be seen from Figures 3-4 in Parendo et al.) disposed within or between one of the steps (20A-20L), a deburring edge (edge of second flute 46) at junction between the deburring recess (second flute 46) and the flute (first flute 46) configured to remove burrs from an edge of a hole that has been formed by the plurality of steps (20A-20L).
However, Parendo et al. does not explicitly disclose the recess being a deburring recess disposed within or between one of the steps, the deburring recess including a deburring edge. Giess & Quanz GMBH, however, discloses an apparatus having a deburring recess (22, 24) having deburring edges (28) [as can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a deburring recess having deburring edges, as taught by Giess & Quartz GMBH, as a known technique applied to a known device ready for improvement to yield predictable results.
Parendo et al. discloses each step including a portion being a chamfer portion rather than a conical tapered portion. Giess & Quanz GMBH, however, discloses an apparatus having cutting edges defining a conical transition which is tapered [as described in paragraph 0019 of the Machine Translation of Giess & Quanz GMBH, and can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a conical tapered portion, as taught by Giess & Quanz GMBH, as a simple substitution of one known step shape for another, which would yield predictable results.
7. Regarding to Claim 13, Parendo et al. discloses a step drill bit (10, as can be seen from Figure 1 in Parendo et al.) comprising: a shank portion (shank 12, as can be seen from Figure 1 in Parendo et al.) configured to be coupled to a power tool (power tool, as described in column 2 lines 51-53 in Parendo et al.) and extending along an axis [as can be seen from Figure 1 in Parendo et al.]; a cutting head portion (body 18, as can be seen from Figure 1 in Parendo et al.) extending along the axis and including a rear end (first or proximate end 19a, as can be seen from Figure 1 in Parendo et al.) coupled to the shank portion (12), a front cutting tip (bit tip 21, as can be seen from Figure 1 in Parendo et al.), a plurality of steps (steps 20A-20L, as can be seen from Figure1 in Parendo et al.) of progressively increasing diameter from the cutting head (18) to the rear end portion (19a) [as can be seen from Figure 1 in Parendo et al.], each step including a portion (step chamfer 58, as can be seen from Figure 1 in Parendo et al.) that flares radially outward from the axis at a first outward angle (ramp angle 60 of a first 58, as described in column 3 lines 44-58 and can be seen from Figure 1 in Parendo et al.) relative to the axis and a generally cylindrical portion (exterior portion of steps 20A-20L, as can be seen from Figure 1 in Parendo et al.) that extends axially rearward from the tapered portion, the steps configured to form a plurality of different diameter holes in a workpiece [as described in column 7 lines 51-55 in Parendo et al.], a flute (a first flute 46, as can be seen from Figure 3-4 in Parendo et al.) that extends through the series of steps (20A-20L) generally parallel to or helically relative to the axis [as can be seen from Figures 1-5 in Parendo et al.], primary cutting edges (lead cutting edges 64A, as described in column 4 lines 20-25 and can be seen from Figure 3 in Parendo et al.) formed at junctions between each portion (58) and the flute (first 46) [as can be seen from Figure 1 in Parendo et al.], secondary cutting edges formed at junctions between each generally cylindrical portion (exterior portion of steps 20A-20L) and the flute(first 46) [as can be seen from Figure 1 in Parendo et al.], a depth stop flange (20M) extending radially outward from a rearmost step (20L) of the plurality of steps(20A-20L) [as can be seen from Figure 1 in Parendo et al.], the flange(20M) having a diameter greater (diameter of 20M) than the diameter of the cylindrical portion of the rearmost step (20L) [as can be seen from Figure 1 in Parendo et al.], wherein the generally cylindrical portion of the rearmost step (20L) includes an inwardly tapered portion (58, as can be seen from Figure 1 in Parendo et al.) that is inwardly tapered a first inward taper angle (ramp angle 60 of 20L) relative to the axis [as can be seen from Figure 1 in Parendo et al.].
Parendo et al. discloses a recess (a second flute 46, as can be seen from Figures 3-4 in Parendo et al.) disposed within or between one of the steps (20A-20L), a deburring edge (edge of second flute 46) at junction between the deburring recess (second flute 46) and the flute (first flute 46) configured to remove burrs from an edge of a hole that has been formed by the plurality of steps (20A-20L).
However, Parendo et al. does not explicitly disclose the recess being a deburring recess disposed within or between one of the steps, the deburring recess including a deburring edge. Giess & Quanz GMBH, however, discloses an apparatus having a deburring recess (22, 24) having deburring edges (28) [as can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a deburring recess having deburring edges, as taught by Giess & Quartz GMBH, as a known technique applied to a known device ready for improvement to yield predictable results.
Parendo et al. discloses each step including a portion being a chamfer portion rather than a conical tapered portion. Giess & Quanz GMBH, however, discloses an apparatus having cutting edges defining a conical transition which is tapered [as described in paragraph 0019 of the Machine Translation of Giess & Quanz GMBH, and can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a conical tapered portion, as taught by Giess & Quanz GMBH, as a simple substitution of one known step shape for another, which would yield predictable results.
Regarding to Claim 18, Parendo et al. discloses a step drill bit (10, as can be seen from Figure 1 in Parendo et al.) comprising: a shank portion (shank 12, as can be seen from Figure 1 in Parendo et al.) configured to be coupled to a power tool (power tool, as described in column 2 lines 51-53 in Parendo et al.) and extending along an axis [as can be seen from Figure 1 in Parendo et al.]; a cutting head portion (body 18, as can be seen from Figure 1 in Parendo et al.) extending along the axis and including a rear end (first or proximate end 19a, as can be seen from Figure 1 in Parendo et al.) coupled to the shank portion (12), a front cutting tip (bit tip 21, as can be seen from Figure 1 in Parendo et al.), a plurality of steps (steps 20A-20L, as can be seen from Figure1 in Parendo et al.) of progressively increasing diameter from the cutting head (18) to the rear end portion (19a) [as can be seen from Figure 1 in Parendo et al.], each step including a portion (step chamfer 58, as can be seen from Figure 1 in Parendo et al.) that flares radially outward from the axis at a first outward angle (ramp angle 60 of a first 58, as described in column 3 lines 44-58 and can be seen from Figure 1 in Parendo et al.) relative to the axis and a generally cylindrical portion (exterior portion of steps 20A-20L, as can be seen from Figure 1 in Parendo et al.) that extends axially rearward from the tapered portion, the steps configured to form a plurality of different diameter holes in a workpiece [as described in column 7 lines 51-55 in Parendo et al.], a flute (a first flute 46, as can be seen from Figure 3-4 in Parendo et al.) that extends through the series of steps (20A-20L) generally parallel to or helically relative to the axis [as can be seen from Figures 1-5 in Parendo et al.], primary cutting edges (lead cutting edges 64A, as described in column 4 lines 20-25 and can be seen from Figure 3 in Parendo et al.) formed at junctions between each portion (58) and the flute (first 46) [as can be seen from Figure 1 in Parendo et al.], secondary cutting edges formed at junctions between each generally cylindrical portion (exterior portion of steps 20A-20L) and the flute(first 46) [as can be seen from Figure 1 in Parendo et al.], a depth stop flange (20M) extending radially outward from a rearmost step (20L) of the plurality of steps(20A-20L) [as can be seen from Figure 1 in Parendo et al.], the flange(20M) having a diameter greater (diameter of 20M) than the diameter of the cylindrical portion of the rearmost step (20L) [as can be seen from Figure 1 in Parendo et al.],
wherein the depth stop flange (20M) includes a conical tapered portion (conical tapered portion of 20M located at 19a, as can be seen from Figure 1 in Parendo et al.) that flares radially outward from the axis at a second outward angle (angle of 19a, as can be seen from Figure 1 in Parendo et al.) relative to the axis [as can be seen from Figure 1 in Parendo et al.].
Parendo et al. discloses a recess (a second flute 46, as can be seen from Figures 3-4 in Parendo et al.) disposed within or between one of the steps (20A-20L), a deburring edge (edge of second flute 46) at junction between the deburring recess (second flute 46) and the flute (first flute 46) configured to remove burrs from an edge of a hole that has been formed by the plurality of steps (20A-20L).
However, Parendo et al. does not explicitly disclose the recess being a deburring recess disposed within or between one of the steps, the deburring recess including a deburring edge. Giess & Quanz GMBH, however, discloses an apparatus having a deburring recess (22, 24) having deburring edges (28) [as can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a deburring recess having deburring edges, as taught by Giess & Quartz GMBH, as a known technique applied to a known device ready for improvement to yield predictable results.
Parendo et al. discloses each step including a portion being a chamfer portion rather than a conical tapered portion. Giess & Quanz GMBH, however, discloses an apparatus having cutting edges defining a conical transition which is tapered [as described in paragraph 0019 of the Machine Translation of Giess & Quanz GMBH, and can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a conical tapered portion, as taught by Giess & Quanz GMBH, as a simple substitution of one known step shape for another, which would yield predictable results.
However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the second outward angle being smaller than the first outward angle. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second outward angles in the combination of Parendo et al. and Giess & Quanz GMBH to include various angles, including the instance of having the second outward angle being smaller than the first outward angle, as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
Regarding to Claim 2, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 1, wherein the rearmost step (20L) includes an inwardly tapered portion (58 located at 20L, as can be seen from Figure 1 in Parendo et al.) is inwardly tapered from the cylindrical portion of the rearmost portion at a first inward angle (ramp angle 60 of 58 located at 20L, as can be seen from Figure 1 in Parendo et al.) relative to the axis [as can be seen from Figure 1 in Parendo et al.].
Regarding to Claim 3, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 2, having a first inward angle (ramp angle 60 of 58 located at 20L, as can be seen from Figure 1 in Parendo et al.). Parendo et al. discloses the angle being approximately 40-50 degrees or larger or smaller [as described in column 3 lines 44-58 in Parendo et al.]. However, the combination of Parendo et al. and Giess & Quanz does not explicitly disclose the first inward angle being approximately 5 degrees to 15 degrees. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first inward angle in the invention of Parendo et al. to include various angles, including the instance of having an angle of approximately 5 degrees to 15 degrees, as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
11. Regarding to Claim 4 and 15, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claims 2 and 14 having steps 20A-20L progressively sized in that the steps incrementally increase in size (e.g. diameter) from the bit tip 21 to the proximate end 19A [as described in column 3 lines 1-10 in Parendo et al.]. It is therefore inferred that the rearmost step (20L) has an axial length that is greater than an axial length of each of the other plurality of steps (20A-20K). However, the combination of Parendo et al. modified by Giess & Quanz GMBH does not explicitly disclose the axial length of the rearmost step being greater than an axial length of each of the other plurality of steps. However, it would have been obvious to one of ordinary skill in the art to before the effective filing date of the claimed invention to modify the axial length of the rearmost step to include having a length greater than a length of other plurality of steps as an obvious to try length which would yield predictable results with a reasonable expectation of success. Furthermore, these limitations are directed solely to the change in size of axial length of the rearmost step and other plurality of steps. One having ordinary skill in the art at the time of the invention would have selected the appropriate axial length and steps for the purpose of engaging with workpieces of various sizes and dimensions. Furthermore, 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 USPQ 232 (1984). In this case, changing the size of the axial length and steps does not change how the stepped drill bit taught by Parendo et al. and Giess & Quanz GMBH would perform drilling operations.
12. Regarding to Claim 5 and 15, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claims 2 and 13, wherein the cylindrical portions of the other plurality of steps (20A-20K) are tapered inward. Parendo et al. disclose the ramp angle 60 may vary per each step [as described in column 3 line 57-58]. However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the second inward angle (a ramp angle 60 of a respective 58 of steps 20A-20K) being less than the first inward angle (ramp angle 60 of 58 located at 20L, as can be seen from Figure 1 in Parendo et al.). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second inward angle in the invention of Parendo et al. to include various angles, including the instance of having the second inward angle being less than the first inward angle, as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
Regarding to Claim 6 and 16, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claims 5 and 15, having a first angle (ramp angle 60 of 58 located at 20L, as can be seen from Figure 1 in Parendo et al.) and a second angle (a ramp angle 60 of a respective 58 of steps 20A-20K). However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the first angle (ramp angle 60 of 58 located at 20L, as can be seen from Figure 1 in Parendo et al.) being approximately 5 degrees to 15 degrees and the second angle is approximately 0.1 to 3 degrees. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second inward angles in the invention of Parendo et al. to include various angles, including the instance of having the
the first angle being approximately 5 degrees to 15 degrees and the second angle being approximately 0.1 to 3 degrees as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
Regarding to Claim 7, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 1, having a first outward angle (ramp angle 60 of a first 58) and wherein the depth stop flange (20M) includes a conical tapered portion (conical tapered portion of 20M located at 19a, as can be seen from Figure 1 in Parendo et al.) that flares radially outward from the axis at a second outward angle (angle of 19a, as can be seen from Figure 1 in Parendo et al.) relative to the axis [as can be seen from Figure 1 in Parendo et al.]. However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the second outward angle γ being smaller than the first outward angle. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second outward angles in the invention of Parendo et al. to include various angles, including the instance of having the second outward angle being smaller than the first outward angle, as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
Regarding to Claim 8 and 19, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claims 7 and 18, having a first outward angle (ramp angle 60 of a first 58) and a second outward angle (conical tapered portion of 20M located at 19a, as can be seen from Figure 1 in Parendo et al.). However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the first outward angle being approximately 135 to 155 degrees and the second outward angle being approximately 110 to 130 degrees However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second outward angles in the invention of Parendo et al. to include various angles, including the instance of having the first outward angle being approximately 135 to 155 degrees and the second outward angle being approximately 110 to 130 degrees, to inhibit cutting and marring of a workpiece by the depth stop flange, as obvious to try angles, which would yield predictable results with a reasonable expectation of success.
16. Regarding to Claim 9, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 1, having a deburring recess (a second flute 46, in Parendo et al., deburring sections 22, 24 in Giess & Quanz GMBH). However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the shape of the deburring recess being a C-shaped or V-shaped. However, these limitations are directed solely to the shape of the deburring recess. One having ordinary skill in the art at the time of the invention would have selected the appropriate shape to engage with workpieces of various sizes and dimensions. Furthermore, it has been held that a change in shape or configuration is a matter of choice which “a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration ... was significant." In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, changing the shape of the deburring recess does not change how the drill bit would perform any differently in performing drilling operations.
17. Regarding to Claim 10, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 1, wherein the deburring edge (edge of second flute 46 in Parendo et al., cutting edge 28 in Giess & Quanz GMBH ) includes a wall edge (edge of 46 in Parendo et al., edge of 28 in Giess & Quanz, as can be seen from Figure 1 of Parendo et al. and Figure 1 in Giess & Quanz GMBH) at an angle (angle of 28, as can be seen from Figure 1 in Giess & Quanz GMBH) that is configured to remove the burrs from the edge of the hole [as can be seen from Figure 1 in Parendo et al. and Figure 1 in Giess & Quanz GMBH].
18. Regarding to Claim 11, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 1, wherein the deburring recess (second flute 46 in Parendo et al., deburring sections 22, 24 in Giess & Quanz GMBH) is within the cylindrical portion of one of the steps [as can be seen from Figure 1 in in Parendo et al. and Figure 1 in Giess & Quanz GMBH].
19. Regarding to Claim 12, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 11, wherein the one of the steps with the deburring recess (second flute 46 in Parendo et al., deburring sections 22, 24 in Giess & Quanz GMBH) has an axial length. However, the combination of Parendo et al. and Giess & Quanz GMBH does not explicitly disclose the axial length of the deburring recess being greater than an axial length of each of the other plurality of steps. However, it would have been obvious to one of ordinary skill in the art to before the effective filing date of the claimed invention to modify the length of the deburring recess to include a length greater than a length of other plurality of steps as an obvious to try length which would yield predictable results with a reasonable expectation of success. Furthermore, these limitations are directed solely to the change in size of the deburring recess. One having ordinary skill in the art at the time of the invention would have selected the appropriate sized deburring recess for the purpose of engaging with workpieces of various sizes and dimensions. Furthermore, 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 USPQ 232 (1984). In this case, changing the size of the deburring recess does not change how the stepped drill bit taught by Parendo et al. and Giess & Quanz GMBH would perform drilling operations.
20. Regarding to Claims 17 and 20, Parendo et al. modified by Giess & Quanz GMBH discloses the step drill bit of claim 15 and 19. Parendo et al. discloses a recess (a second flute 46, as can be seen from Figures 3-4 in Parendo et al.) disposed within or between one of the steps (20A-20L), a deburring edge (edge of second flute 46) at junction between the deburring recess (second flute 46) and the flute (first flute 46) configured to remove burrs from an edge of a hole that has been formed by the plurality of steps (20A-20L).
However, Parendo et al. does not explicitly disclose the recess being a deburring recess disposed within or between one of the steps, the deburring recess including a deburring edge. Giess & Quanz GMBH, however, discloses an apparatus having a deburring recess (22, 24) having deburring edges (28) [as can be seen from Figure 1 in Giess & Quanz GMBH]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Parendo et al. to include a deburring recess having deburring edges, as taught by Giess & Quartz GMBH, as a known technique applied to a known device ready for improvement to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIRVANA DEONAUTH whose telephone number is (571)270-5949. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, 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, Thomas Hong can be reached at 5712720993. 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.
/NIRVANA DEONAUTH/ Primary Examiner, Art Unit 3726