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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species B (Figures 10-14) encompassed by claims 1-2, 4-6 and 10-12 in the reply filed on 05/20/2026 is acknowledged. Claims 3, 7-9 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is not in a narrative form (i.e., multiple short sentences). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-2, 4-6 and 10-12 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.
The term “generally” in claim 1 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. In specification, paragraph [0066] discloses that terms such as generally would be understood by one of ordinary skill in the art in the context of various elements being described. However, it is not clear what deviation from a cylindrical shape should one of an ordinary skill in the art consider to be accepted as a cylindrical shape.
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(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Despres (US 5,096,341, hereinafter “Despres ‘341”).
As applied to claims 1-2, Despres ‘341 teaches a holesaw system (Figs. 1-4) comprising:
a holesaw (10) including a base and a generally cylindrical wall with a proximal end coupled to the base and a distal end with a cutting edge (hole saw cup comprises essentially a cylindrical cup-shaped body 12 having a circular base 16 and teeth 14, Figs. 1-2);
a pilot drill bit including a front cutting tip, a rear shank portion, and an intermediate portion between the front cutting tip and the rear shank portion (bit 32 with a tip and a rear shank 34); and
an arbor (18) couplable to the holesaw and to the pilot drill bit (col. 3, lines 24-48), the arbor configured to be operable in a first mode in which the holesaw and the pilot drill bit are rotatable in unison to form a hole in a workpiece and in a second mode in which the pilot drill bit is rotatable independently of the holesaw to remove a plug of material from the holesaw (intended use limitation but Despres ‘341 teaches in Figs. 1-2 and col. 3, lines 55-61 the first clockwise rotation mode and further teaches in Figs. 3-4, paragraph bridging cols. 3-4 the second reversed/counterclockwise mode).
Claim(s) 1-2 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Despres (US 6,409,436).
As applied to claim 1, Despres teaches a holesaw system (Figs. 1, 13-14) comprising:
a holesaw (20) including a base and a generally cylindrical wall with a proximal end coupled to the base and a distal end with a cutting edge (hole saw cup 22 comprises essentially a cylindrical cup-shaped body 36 having a circular base 37 and a downwardly depending cylindrical shell 38 with and teeth 39, Figs. 1);
a pilot drill bit including a front cutting tip, a rear shank portion, and an intermediate portion between the front cutting tip and the rear shank portion (24 with a tip and a rear shank 30); and
an arbor couplable to the holesaw (by nose piece 61 and front collet flange 29) and to the pilot drill bit (arbor 23 includes a longitudinally elongated body 26 having a front portion 27 provided with external left-hand helical threads 28 which extend rearwardly from a front annular ring-shaped collet flange 29 which damping receives the rear shank 30 of pilot drill 24), the arbor configured to be operable in a first mode in which the holesaw and the pilot drill bit are rotatable in unison to form a hole in a workpiece and in a second mode in which the pilot drill bit is rotatable independently of the holesaw to remove a plug of material from the holesaw (intended use limitation but Despres teaches in Fig. 13 and col. 13, lines 12-18 the first mode and further teaches in Figs. 14-15, col. 13, lines 19-28 the second mode).
As applied to claim 2, Despres teaches the invention cited including wherein the arbor is configured to be operable only in the first mode when the arbor rotates in a first direction and to be operable only in the second mode when the arbor rotates in a second direction opposite the first direction (two modes, see col. 13, lines 12-28).
As applied to claim 10, Despres teaches the invention cited including wherein, when operable in the second mode, the arbor is configured to cause the pilot drill bit to be angled relative to the axis of the arbor (intended us limitation, but Despres teaches angled holesaw system with angled drill bit, Fig. 14, col. 13, lines 19-23).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Despres (US 6,409,436) in view of Richt et al. (US 9,216,459, hereinafter “Richt”).
As applied to claim 4, Despres teaches the invention cited including the arbor having a holesaw holder portion couplable to the holesaw (nose piece 61 and front collet flange 29), a pilot bit holder couplable to the pilot drill bit (ring-shaped collet flange 29 receives the rear shank 30 of pilot drill 24 coupled by set screw 31), and a two-mode operations of clockwise and counterclockwise which implies a mechanism to couple and decouple the holesaw and pilot drill in the first mode and second mode, respectively. However, Despres does not explicitly teach the decoupling mechanism a decoupling mechanism configured to be operable in the first mode in which the holesaw holder portion is coupled to the pilot bit holder portion to rotate in unison with the pilot bit holder portion, and in the second mode in which the holesaw holder portion is decoupled from the pilot bit holder portion so that the pilot bit holder portion may rotate independently of the holesaw holder portion.
Richt teaches a hoelsaw system (drilling machine 10 with core drilling tool 17, Figs. 1-4) comprising a holesaw (drill bit 18) and a pilot drill bit (24). The drilling machine further has a switching device which interacts with the drive and is designed to operate the drive selectively at least in a center drilling configuration or in a core drilling configuration, wherein, in the center drilling configuration, at least the pilot drill can be driven in the first transmission stage, and wherein, in the core drilling configuration, at least the drill bit can be driven in the second transmission stage (col. 3, lines 44-51). The switching drive between the first transmission stage and the second transmission stage can be carried out in principle manually by the operator or alternatively or in addition, the switching can take place automatically (col. 3, lines 57-60). It is conceivable to selectively connect and disconnect the first and second spindles to the first and second output, respectively (col. 4, lines 43-49) with first spindle section (66) serves as an arbor portion to connect the spindle (64) to the pilot drill bit (24) and second spindle section (68) works as an arbor portion to connect the spindle (64) to the holesaw/core drill (col. 10, lines 58-60). The switching device has at least one coupling, which is designed to couple at least the pilot drill or the drill bit to the tool spindle so that they are driven selectively in rotation, or to disengage them (col. 4, lines 60-65). The switching device can be a structural component of the gear mechanism or at least be indirectly or directly coupled functionally thereto (col. 4, lines 65-67). The coupling may have various configurations. It can be understood to be a brake, barrier, a freewheel or the like. The coupling can interact for instance by way of a force fit, a friction fit, a form fit or in a suitable combination with the elements to be coupled (col. 5, lines 1-5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to employ into the system of Despres an arbor with first and second holder portions for holding the holesaw and pilot drills and a coupling/decoupling mechanism, as taught by Richt, as an effective means of allowing the holesaw system to be selectively utilized in different and opposite rotational directions in both unison and independent from one another, respectively, based on desired operational requirement.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Despres (US 6,409,436) in view of Richt et al. (US 9,216,459, hereinafter “Richt”) as applied to claim 4 above, and further in view of Costin (US 5,853,073).
As applied to claims 5-6, Despres as modified by Richt teaches the invention cited including the arbor having a holesaw holder portion couplable to the holesaw, a pilot bit holder couplable to the pilot drill bit and a coupling mechanism for a two-mode operations of clockwise and counterclockwise to couple and decouple the holesaw and pilot drill in the first mode and second mode, respectively. The combination further teaches that the transmission and coupling/decoupling mechanism is configured to rotatably drive the holesaw holder portion when the pilot bit holder portion rotates in a first direction and configured not to drive the holesaw holder portion when the pilot bit holder portion is rotated in a second direction opposite the first direction (as in claim 5) and that the mechanism could be any of a variety of different mechanism (i.e., freewheel which could be considered as a one-way drive and clutch mechanism) but does not explicitly teach wherein the decoupling mechanism comprises a one-way drive mechanism (as in claim 5) with mechanism including a drive pawl coupled to one of the holesaw holder portion or the pilot bit holder portion and a one-way drive tooth coupled to the other of the holesaw holder portion or the pilot bit holder portion, the drive pawl configured to be driven by the drive tooth when the pilot bit holder portion rotates in the first direction and to slip over the drive tooth when the pilot bit holder portion rotates in the second direction (as in claim 6).
Costin teaches (Figs. 1-7) a power transmission assembly including a ratchet one-way clutch assembly 20 which includes a plurality of pawls 25 positioned in pockets in the outer race 24 of a clutch assembly. A plurality of corresponding notches 28 are positioned on the outer circumference of the inner race 22 to mate with the pawls in locking engagement during relative rotation of the races in one direction. The pawls have peaks or ridges on one side which mate with pivot ridges or recesses in the pockets in the outer race. The center of mass of the pawls is situated or positioned such that when the clutch rotates the centrifugal force on the center of mass causes the pawl to move toward the engaged position. This is accomplished without an axle or stationary pivot (col. 2, lines 3-15). The invention can be used in any mechanism where a positive backstop is desired to prevent undesired reverse or backward rotation (col. 2, lines 37-40). When the motion of the inner race 22 relative to the outer race member 24 is in the clockwise direction in FIG. 1, the inner race rotates freely. When the relative motion of the inner race member 22 relative to the other race member 24 is counter-clockwise the inner race and outer race are locked together by one of the pawls 25. In this regard, in FIG. 1, the locked pawl is indicated by the reference numeral 25'. The pawl 25' transmits force through pocket 26 in the outer race and notch 28 in the inner race (col. 3, lines 24-32).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the transmission drive (coupling and decoupling mechanism) of Despres/Richt with the one-way drive mechanism of Costing having claimed structure, as a matter of simple substitution of one known element for another to obtain predictable results (see MPEP 2143, KSR, rationale “B”). The resulting system would predictably produce a holesaw system having a decoupling mechanism including claimed structure in a conventional manner without the modification of the principles of operation of Despres as modified by Richt.
In addition, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the transmission drive (coupling and decoupling mechanism) of Despres/Richt with the one-way drive mechanism of Costin having claimed structure, considering the advantages of such a mechanism with minimal control interface (automatic) and increased load carrying capacity for a compact design with space constraint (Costin, col. 1, lines 13-19).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Despres (US 6,409,436) in view of McClure (US 6,640,827)
As applied to claims 11-12, Despres teaches the invention cited including the holesaw system comprising a pilot drill bit including cutting tip, rear shank and an intermediate portion between the tip and shank but does not explicitly teach wherein the intermediate portion includes a frictional surface configured to frictionally engage an interior of a plug formed by the holesaw (intended use limitation as in claim 11) and the frictional surface comprises a thread (as in claim 12).
McClure teaches a hole saw comprising a pilot drill (74) with a tip, end shank and an intermediate portion including a frictional surface in form of threads (76, Figs. 1-8, col. 4, lines 11-19). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the pilot drill of Despres to include an intermediate portion between the tip and end shank of the pilot drill with a frictional surface in form of threads, as taught by McClure, as an effective means of allowing the removed plug of material to be captured and held by the pilot drill upon the removal of the plug from the material.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Werner (US 8,113,748) teaches a hole saw with slug remover including a top cylindrical housing; a bottom cylindrical housing attached to the top cylindrical housing, the bottom cylindrical housing having teeth for cutting; a pilot drill extending through the top cylindrical housing and bottom cylindrical housing; a drive screw rotatably affixed to the top cylindrical housing, the drive screw having a threaded exterior; and an ejection plunger engaging the threaded exterior of the drive screw wherein the ejection plunger is forced downward to eject a slug when the drive screw rotates counter-clockwise and is forced upward when the drive screw rotates clockwise (abstract).
Hall et al. (US 5,435,672) teaches a hole saw having plug ejection feature. Using the arbor and arbor nut of the present invention, the arbor of an ordinary commercially available hole saw is replaced, the arbor nut of the present invention being threaded into the hole saw cup axial threaded inlet, to convert the ordinary hole saw into a plug ejecting hole saw. The arbor and arbor nut of the plug ejecting hole saw of the present invention function as the arbor of an ordinary hole saw when used with to drill the desired hole, the drill turning in a clockwise direction. When the drill rotation is reversed to a counter clockwise direction and the hole saw cup is held stationary, the arbor of the present invention screws through the also stationary arbor nut, thereby ejecting the plug from the hole saw cup (abstract).
Ecker(US 5,226,762) teaches a sealed holesaw arbor for affixing a hole saw toa drill (abstract).
Verdier et al. (US 4,754,669) teaches a mechanism for locking a spindle of a portable motorized screwdriver. This mechanism is coupled to the switch used to start and stop rotation of the spindle. This coupling is arranged so that operation of the switch to start rotation of the spindle is accompanied by unlocking of the spindle and so that returning the switch to the position to stop rotation of the spindle locks the spindle. The locking mechanism is arranged so that when the spindle is locked the screwdriver may be used as a ratchet type manual screwdriver (abstract).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 08/06/2026
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