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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/05/2026 has been entered.
Claim Objections
Claims 1, 17, and 21 are objected to because of the following informalities: In claims 1, 17, and 21, the phrase “stopper comprises a compliant material” is not clear what the “compliant material” is limited to since the specification indicates that the compliant material comprises rubber only in the example sections (examples 5 and 16-17, [0033, 0044-0045]) and all other indications/recitations that the stopper is not limited to a particular material and is simply “compliant material”. Examiner is interpreting as the “stopper comprises a compliant material” as any material. Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 6-7, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akutsu (US 20120109140 A1) or, in the alternative, under 35 U.S.C. 103 as obvious over Akutsu (US 20120109140 A1) in view of Suter et al. (US 20100151411 A1) and further in view of Vogel et al. (US 20100173259 A1).
Regarding claims 1-3 and 24, Akutsu discloses a depth setter tool (1), comprising: a spacer (guide ring 3) having an inner diameter (fig. 1) sized to fit around a shank (6) of a driver bit (4) such that the spacer can rotate about an axis passing through a center of the driver bit and independently of the driver bit ([0073-0079], figs. 1-7 and 20), the spacer further having an opening (8) extending along an entire length of the spacer from a first end of the spacer (spacer end closest to drill device 24) to a second end of the spacer (distal end from drill 24, figs. 1-7 and 20), the opening providing access to the inner diameter
and having a width that allows the spacer to be press-fit or snap-fit onto the shank (6), the spacer is configured to elastically deform as it is press-fit or snap-fit onto the shank of the driver bit ([0069], figs. 1-7 and 20); wherein the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer ([0066-0079], figs. 1-7 and 20); and
a stopper (44 and/or nose/chuck of 24) comprising a compliant material (material is “compliant” at least to some degree) and configured to engage the first end of the spacer and teaches having an O-ring 43 stopper for flange 44 ([0090-0094], figs. 1-7 and 20).
In the alternative, if it can be argued that Akutsu fails to disclose the spacer having a width that allows the spacer to be press-fit or snap-fit onto the shank of the driver bit, the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer, and a stopper comprising a compliant material and configured to engage the first end of the spacer and the spacer is not configured to elastically deform as it is press-fit or snap-fit onto the shank of the driver bit –
Suter et al. teaches having a spacer (1, 100, 200, 300, 400, 500) the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer ([0051-0054], figs. 1-7) and a stopper (448 or drill template 550) comprising a compliant material and configured to engage the first end of the spacer ([0051-0054], figs. 1-7).
Vogel et al. teaches a drill guide system (50) having a depth setter spacer (54) having a width that allows the spacer to be press-fit or snap-fit onto the head of tool and capable of being press-fit or snap-fit onto the shank of the driver bit, the spacer is configured to elastically deform as it is press-fit or snap-fit onto the shank of the driver bit [0047-0051] and a stopper (52 - wall 60 of guide receptacle 58) comprising a compliant material (semi-rigid plastic material) and configured to engage the first end of the spacer ([0045-0051], fig. 5) and teaches having a stopper for the spacer (“interface structure may also operate to prevent handpiece guide 54 from moving or translating axially… key or lip or protuberance may cooperate with a portion of head portion 22” [0047], fig. 5).
Given the teachings of Akutsu to have a spacer with continuous diameter or differing diameters to fit around a shank and or sleeve of drill bit and teachings of having a stopper for the spacer, it 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 to modify the spacer with having a width that allows the spacer to be press-fit or snap-fit onto the shank of the driver bit, the spacer is configured to elastically deform as it is press-fit or snap-fit onto the shank of the driver bit, the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer, and a stopper comprising a compliant material and configured to engage the first end of the spacer to have precise adjustment of a drill bit with close tolerance/tight fit of a guide tube spacer around the drill bit (avoid slanting/wobbling), easier installation/fitting on the drill bit and/or for reducing friction purposes as taught by Suter et al. and Vogel et al.
Regarding claim 6, Akutsu discloses the shank further comprises a body portion having a larger diameter compared to the neck portion but fails to disclose the spacer is configured to rest adjacent to the body portion when it is snap-fit or press-fit around the neck portion of the shank.
Suter et al. teaches drill (440) has a shank that further comprises a body portion (448) having a larger diameter compared to the neck portion (446, fig. 6), and wherein the spacer (420) is configured to rest adjacent to the body portion (448) when it is snap-fit or press-fit around the neck portion (446) of the shank ([0053], fig. 6).
Given the teachings of Akutsu to have a spacer with continuous diameter or differing diameters to fit around a shank and or sleeve of drill bit and teachings of having a stopper for the spacer, it 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 to modify the spacer to be configured to rest adjacent to the body portion when it is snap-fit or press-fit around the neck portion (smaller diameter) of the shank to have precise adjustment of a drill bit with close tolerance/tight fit of a guide tube spacer around the drill bit (avoid slanting/wobbling), easier installation/fitting on the drill bit and/or for reducing friction purposes as taught by Suter et al. and Vogel et al.
Regarding claim 7, Akutsu discloses a washer (44 and/or 43) between one end of the spacer (3) and the body portion (6) of the shank ([0066-0079], figs. 1-7 and 20).
Claim(s) 8, 11-14, 16-17, 19, 21-23, and 25 is/are rejected under 35 U.S.C. 103 as obvious over Akutsu (US 20120109140 A1) in view of Suter et al. (US 20100151411 A1) and further in view of Vogel et al. (US 20100173259 A1).
Regarding claims 8, 11-13, 16-17, 19, 21-23, and 25, Akutsu discloses a driver bit (4) having a bit tip (7) and a shank (6) extending from the bit tip (figs. 1-7 and 20); wherein the shank includes a neck portion (5) along its axial length having a smaller diameter compared to adjacent regions (6/7) of the driver bit (differing diameters of drill bit shown in figs. 1-7 and 20);
an elongated spacer (3) having an inner diameter (interior region) and an opening (8) that provides access to the inner diameter, the opening extending along an entire length of the spacer from a first end (spacer end closest to drill device 24) of the spacer (figs. 1-7 and 20) to a second end of the spacer (distal end from drill 24, figs. 1-7 and 20), thereby allowing the spacer to elastically deform as it is press-fit or snap-fit onto the shank of the driver bit such that the inner diameter of the spacer receives the shank (6) of the driver bit ([0069], figs. 1-7 and 20- shown C-shaped also will be “press fit”) and the spacer can rotate independently of the driver bit ([0073-0079], figs. 1-7 and 20), wherein the entire length of the spacer is press-fit or snap-fit onto the neck portion of the shank ([0066-0079], figs. 1-7 and 20), and
a stopper (44 and/or nose/chuck of 24) having a hole (center hole and outer holes 49), the stopper removably affixable to the first end of the spacer (3/44 are removable from each other), such that the bit tip (7) of the driver bit extends through the hole of the stopper ([0066-0079], figs. 1-7 and 20), and
the spacer comprises a body region (distal portion from drill 24, figs. 1-7 and 20) and a neck region (spacer portion closest to drill device 24) extending from the body region, wherein the stopper is removably affixable to the neck region of the spacer (3/44 are removable from each other),
wherein the neck region and the body region of the spacer both have the same inner diameter (has same diameter) and the body and neck region are part of a monolithic and continuous piece, ([0066-0079], figs. 1-7 and 20) and wherein the entire length of the spacer (3) from the first end of the spacer to the second end of the spacer is at least 2 times longer than the entire length of the stopper from the first end of the stopper to the second end of the stopper (as shown in the figure 20, spacer 3 is at least 2 times longer than 44) and the body region and the neck region are both configured to elastically deform as they are press-fit or snap-fit onto the portion of the shank ([0015, 0034], plastic/metal which are elastic figs. 1-7 and 20- shown C-shaped also will be “press fit”).
Akutsu fails to disclose the driver bit neck region has a first outer diameter and the body region has a second outer diameter larger than the first outer diameter, the spacer having a neck region that has a first outer diameter and a body region has a second outer diameter larger than the first outer diameter body region having a first axial length, the neck region having a second axial length, wherein the first axial length is at least twice as large as the second axial length and In the alternative, if it can be argued that Akutsu fails to disclose the spacer having a width that allows the spacer to be press-fit or snap-fit onto the shank of the driver bit, wherein a width of the opening is less than the inner diameter and allows both the body region and the neck region to be press- fit or snap-fit around a portion of the shank, the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer, and a stopper comprising a compliant material and configured to engage the first end of the spacer-
Suter et al. teaches having a spacer (1, 100, 200, 300, 400, 500) the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer ([0051-0054], figs. 1-7) and a stopper (448 or drill template 550) comprising a compliant material and configured to engage the first end of the spacer ([0051-0054], figs. 1-7) and having a neck region (lower thinner region) that has a first outer diameter and a body region (upper region) has a second outer diameter larger than the first outer diameter (“radial protrusion 128, 228, 328, 328', which is arranged at a distance 1 from the lower end 124, 224, 324, 324' of the guide sleeve” [0052] and fig. 6 has lower end with a first diameter and upper end 422 (body region) with second larger outer diameter (figs. 3-7), the body region having a first axial length, the neck region having a second axial length, wherein the first axial length is at least twice as large as the second axial length (claims 7-10, 13, and 21, figs. 3-7) the body and neck region are part of a monolithic and continuous piece and are both configured to elastically deform as they are press-fit or snap-fit onto the portion of the shank ([0051-0054], figs. 1-7).
Vogel et al. teaches a drill guide system (50) having a depth setter spacer (54) having a width that allows the spacer to be press-fit or snap-fit onto the head of tool and capable of being press-fit or snap-fit onto the shank of the driver bit [0047-0051] and a stopper (52 - wall 60 of guide receptacle 58) comprising a compliant material (semi-rigid plastic material) and configured to engage the first end of the spacer ([0045-0051], fig. 5) and teaches having a stopper for the spacer (“interface structure may also operate to prevent handpiece guide 54 from moving or translating axially… key or lip or protuberance may cooperate with a portion of head portion 22” [0047], fig. 5).
Given the teachings of Akutsu to have a spacer with continuous diameter or differing diameters to fit around a shank and or sleeve of drill bit and teachings of having a stopper for the spacer, it 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 to modify the driver bit neck region has a first outer diameter and the body region has a second outer diameter larger than the first outer diameter, the spacer having a neck region that has a first outer diameter and a body region has a second outer diameter larger than the first outer diameter body region having a first axial length, the neck region having a second axial length, wherein the first axial length is at least twice as large as the second axial length and the spacer having a width that allows the spacer to be press-fit or snap-fit onto the shank of the driver bit, wherein a width of the opening is less than the inner diameter and allows both the body region and the neck region to be press- fit or snap-fit around a portion of the shank, the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer, and a stopper comprising a compliant material and configured to engage the first end of the spacer to have precise adjustment of a drill bit with close tolerance/tight fit of a guide tube spacer around the drill bit (avoid slanting/wobbling), easier installation/fitting on the drill bit, easier insertion of smaller intro diameter into work area, and/or for reducing friction purposes as taught by Suter et al. and Vogel et al.
Regarding claim 14, Akutsu discloses the shank further comprises a body portion having a larger diameter compared to the neck portion but fails to disclose the spacer is configured to rest adjacent to the body portion when it is snap-fit or press-fit around the neck portion of the shank.
Suter et al. teaches drill (440) has a shank that further comprises a body portion (448) having a larger diameter compared to the neck portion (446, fig. 6), and wherein the spacer (420) is configured to rest adjacent to the body portion (448) when it is snap-fit or press-fit around the neck portion (446) of the shank ([0053], fig. 6).
Given the teachings of Akutsu to have a spacer with continuous diameter or differing diameters to fit around a shank and or sleeve of drill bit and teachings of having a stopper for the spacer, it 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 to modify the spacer to be configured to rest adjacent to the body portion when it is snap-fit or press-fit around the neck portion (smaller diameter) of the shank to have precise adjustment of a drill bit with close tolerance/tight fit of a guide tube spacer around the drill bit (avoid slanting/wobbling), easier installation/fitting on the drill bit and/or for reducing friction purposes as taught by Suter et al. and Vogel et al.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as obvious over Akutsu (US 20120109140 A1) in view of Suter et al. (US 20100151411 A1) and further in view of Vogel et al. (US 20100173259 A1) in view of Marshall (US 20220313278 A1) in view of Frey et al. (US 20220039808 A1) and further in view of Gertner (US 7258513 B2).
Regarding claim 20, Akutsu fails to disclose the monolithic and continuous piece is made of nylon
Marshall teaches the body region and neck region are part of a monolithic and continuous piece ([0045-0047], figs. 1-2 and 6-9) but fails to disclose the monolithic and continuous piece is made of nylon.
Gertner teaches having spacer (14) made of nylon, (col. 6, lines 10-32, col. 7, lines 57-67, figs. 1-6).
Frey et al. also teaches having collars (10/20) made of nylon ([0044], figs. 1-4).
Given the teachings of Akutsu to have a spacer with continuous diameter or differing diameters to fit around a shank and or sleeve of drill bit and teachings of having a stopper for the spacer, it 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 to modify the spacer to be a monolithic and continuous piece is made of nylon to have a stronger body region with more compact design, precise adjustment of a drill bit with close tolerance/tight fit of a guide tube spacer around the drill bit (avoid slanting/wobbling with same diameter with longer body region), reduce friction, and/or for dampening purposes as taught by Gertner and Frey et al. and since it has been held to be within the general skill of a worker in the art to select at known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a depth setter tool, comprising a spacer with all the structural and functional limitations and further comprising, amongst other limitations/features the depth spacer having an inner diameter sized to fit around a shank of a driver bit such that the spacer can rotate about an axis passing through a center of the driver bit and independently of the driver bit, the spacer further having an opening extending along an entire length of the spacer from a first end of the spacer to a second end of the spacer, the opening providing access to the inner diameter thereby allowing the spacer to be engaged onto the shank of the driver bit, wherein the inner diameter does not change along the entire length of the spacer from the first end of the spacer to the second end of the spacer; and a stopper comprising a compliant material and configured to engage the first end of the spacer; wherein the spacer comprises a body region and a washer between one end of the spacer and the body portion of the shank. Though Gao (US 20210353384 A1) teaches a spacer having an inner diameter sized to fit around a shank with a C shaped opening along the entire length and stopper for setting the depth, it would not be obvious to modify the spacer to have a body region and a neck region extending from the body region with a washer between one end of the spacer and the body portion of the shank and one of ordinary skill would recognize that the washer between one end of the spacer and the body portion of the shank would stabilize the spacer and drill bit and prevent further driving of the fastener when the drill bit continues to spin independently of the spacer and the stopper. Having the efficiency and support of the added washer between one end of the spacer and the body portion of the shank provides a stable depth setter tool to drill the correct depth.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6-8, 11-17 and 19-23 have been considered but are moot because the new ground of rejection does not rely on all new references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Additional prior art considered pertinent:
Santamarina et al. (US 20090311061 A1) - stopper (damping mechanism 236, fig. 20) comprising a compliant material (rubber) and configured to engage a first end (232) of a spacer (234) and teaches having rubber washers 46 and 48, [0062-0063], figs. 20-21)
US 9421619 B2 – spacer with C shape opening and see form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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, SHELLEY SELF can be reached at (571) 272-4524. 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.
/ROBERT F LONG/Primary Examiner, Art Unit 3731
Prosecution Insights