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 .
Response to Amendment
The Applicant’s amendment filed 06/25/2026 has been fully considered and made of record. As such, the rejection of claims 1-7 under 112(b) has been withdrawn. Claims 1-7 and 15-20 are pending with claims 15-20 withdrawn from further consideration.
Claim Objections
Claims 1-7 are objected to because of the following informalities:
In claim 1, line 5, delete the limitation “and” at the end of the line.
Appropriate correction is required.
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.
(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.
Claim Rejections - 35 USC § 103
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 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) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Saitta et al. (US 6,601,659, hereinafter “Saitta”) or, in the alternative, under 35 U.S.C. 103 as obvious over Saitta.
As applied to claims 1-4, Saitta teaches a drill bit (1, Figs. 1-2, paragraph bridging cols. 1-2, col. 3, lines 31-45) comprising a body (3) including a shank (6) at a first end of the body (right end of 3), an end surface at a second end of the body opposite the shank (left end of 3), the end surface defining an axially outermost extent of the body, and a body flute extending from the second end of the body toward the first end (spiral flutes 2), the body configured to rotate about an axis extending through the shank and the end surface (drill axis A); and a cutting head (5) including a bottom surface that abuts and is attached to the end surface of the body (at circumferential seams 9 and 9’), the cutting head configured to drill a hole in a workpiece (intended use limitation but see col. 1, lines 7-10), wherein a ratio of a cross-sectional area of the hole, measured perpendicular to the axis, to a cross-sectional area of the body at the end surface, measured perpendicular to the axis, is greater than 2 (the outer diameter of cutting head 5 appears to be twice as much as the outer diameter of the body at end surface and as such, would form a whole having the claimed ration of the cross section, see Figs. 1-2).
However, the cross-sectional area of the hole is not part of the claimed drill bit and is a result of the intended use of the claimed device. Therefore, depending on how and how many times the drill bit runs into the workpiece, the resultant hole could have a cross sectional area measured perpendicular to the axis to have a ratio of greater than 2, greater than 2.1, greater than 2.4 and between 2 and 4 times the cross-sectional area of the body at the end surface.
The cross-sectional area of the hole is considered to be intended use limitation. Although the recitation has been fully considered, it carries limited patentable weight. The applicant is reminded that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the structural limitations of the claim, as is the case here; refer to MPEP 2114-II. In the instant case, the apparatus of Saitta meets all of the structural limitations, as claimed, and is capable of performing the limitation above.
Alternatively, if the Applicant does not agree that Saitta explicitly teaches the claimed ratios between the cross-sectional area of the hole and body at the end surface of the drill bit, as in claims 1-4, then it would have been an obvious matter of design choice to a person of ordinary skill in the art, at the time the invention was filed, to have used a drill bit with body and cutting tip having the appropriate sizes and dimensions such that the cross-sectional area of the hole produced by the drill bit in the workpiece would have a ratio to a cross-sectional area of the body at the end surface, to be measured perpendicular to the axis, to meet the claimed ranges, because Applicant has not disclosed that only the claimed ratios provide any advantages, are used for any particular purposes, or solve any stated problems (no criticality of the ratios are disclosed by the Applicant).
As such, one of ordinary skill in the art, furthermore, would have expected applicant's invention to perform equally well with any other insert drill bit having body and size dimensions such as one taught by Saitta or the claimed ratios because either one performs the same function of forming a hole in the workpiece having desired dimensions based on specific design requirements.
As applied to claim 5, Saitta teaches the invention cited including wherein the cutting head (5) is oriented perpendicular to the axis (see Figs. 1-2).
As applied to claim 7, Saitta teaches the invention cited including the drill bit having a cutting head which is configured to drill a hole having a certain cross-section in a workpiece. However, Saitta does not explicitly teach the drill hole has a cross-sectional area greater than 285
m
m
2
.
However, the cross-sectional area of the hole is not part of the claimed drill bit and is a result of the intended use of the claimed device. Therefore, depending on how and how many times the drill bit runs into the workpiece, the resultant hole could have a cross-sectional area greater than 285
m
m
2
.
Alternatively, if the Applicant does not agree that Saitta explicitly teaches the claimed cross-sectional area of the hole being greater than 285
m
m
2
, then it would have been an obvious matter of design choice to a person of ordinary skill in the art, at the time the invention was filed, to have used a drill bit with body and cutting tip having the appropriate sizes and dimensions such that the cross-sectional area of the hole produced by the drill bit in the workpiece would have been greater than 285
m
m
2
, because Applicant has not disclosed that only the claimed cross-sectional area provides any advantages, is used for any particular purpose, or solves any stated problems (no criticality of the area).
As such, one of ordinary skill in the art, furthermore, would have expected applicant's invention to perform equally well with any other insert drill bit having body and size dimensions such as one taught by Saitta or the claimed ratios because either one performs the same function of forming a hole in the workpiece having desired dimensions based on specific design requirements.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saitta et al. (US 6,601,659, hereinafter “Saitta”).
As applied to claim 6, Saitta teaches the invention cited in claim 1 including wherein the cutting head includes a body having a bottom surface, a cutting tip (4) positioned opposite from the bottom surface and having a tip length measured between the bottom surface and the cutting tip, and a cutting edge formed on a land, the cutting edge having a peripheral length measured between the bottom surface and the cutting edge at a peripheral cutting end of the land, and wherein the peripheral length is a fraction of the tip length (see Figs. 1-2). However, Saitta does not explicitly teach the cutting head is a unitary body.
However, the court has held that the use of a one piece/unitary construction instead of the multi-piece construction for the cutting head of Saitta would be merely a matter of obvious engineering choice. (see MPEP 2144-V-B). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to employ a unitary structure for the multi-piece cutting head of Saitta, as an effective means of providing a cutting head based on specific design requirements without requiring additional assembly steps.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 SARANG AFZALI whose telephone number is (571)272-8412. The examiner can normally be reached M-F 7 am - 4 pm EST.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 09/08/2026
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