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 elected Group 1, and Species A-1, B-5, C-1 and D-1 Claims 1, 5, 6, 9, 10, 13-24. Claims 10, 13 & 16 are partially withdrawn because of non-elected ranges, and Claims 25 & 51 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/12/2026. The restriction is made FINAL.
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter), Filed 09/25/1944
U.S. 2022/0331894 Beer et al. (‘Beer hereafter), App 17/642596
U.S. 2024/0227038 German Anchique (‘Anchique hereafter), App 18/559000
U.S. 2004/0144187 Abele et al. (‘Abele hereafter), App 10/479071
U.S. 2,308,447 E. R. Greenbaum (‘Greenbaum hereafter), Filed 03/09/1942
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1, 5, 6, 9, 10, 13 – 25 & 51 are currently being examined.
Claims 10, 13 & 16 are partially withdrawn because of non-elected ranges, and 25 & 51 have been withdrawn.
Claims 2 – 4, 7, 8, 11, 26 – 50 and 52 – 68 have been canceled.
Claims 17 – 20 & 23 - 24 are objected to for allowable subject matter.
Specification
The disclosure is objected to because of the following informalities: item 322 (Fig 3), is not recited in the specification.
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 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.
Claim(s) 1, 5, 6, 9, 12, 14, 15 & 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter).
Regarding Claim[s] 1, ‘Gwinn discloses all the claim limitations including: A reverse countersink cutting assembly (‘Gwinn, Fig 1, shows is capable of being used as a reverse countersink cutting assembly, Pg 2, Col. 1, ln 5 – 6, “Figure 1 is a longitudinal section of a. countersink device embodying the invention.” Pg. 2, Col. 2, ln 15 – 20, “either direction with respect to the inner shell. When the nut is turned in one direction it serves downwardly to displace the outer shell and when the nut is turned in the opposite or reverse direction it permits of upward displacement of the outer shell with respect to the inner shell.”), comprising:
a countersink cutting head (‘Gwinn, #11 (rotary countersink tool/ countersink cutting head)) defining a longitudinal axis extending from a cutter distal end through a cutter proximal end (‘Gwinn, Figs 1 – 3, longitudinal axis is through #S (drive shaft/ near proximal end), and #42 (stem/ near distal end) not drawn), Figs 1 & 2 (below) reference axis added),
the countersink cutting head (‘Gwinn, #11) comprising a cutter distal portion (‘Gwinn, Fig 2 (below) -A-),
a cutting portion (‘Gwinn, Fig 1 (below) -B-) and a cutter proximal portion (‘Gwinn, Fig 2 (below) #29a (outwardly extending integral flange)) axially spaced along the longitudinal axis (‘Gwinn, Fig 2 (below)),
the cutting portion defining a countersink cutting range (‘Gwinn, Fig 1 (below) -B-, the distance of -B- defines the cutting range);
a depth stop sleeve comprising a central cavity that coaxially receives the cutter proximal portion (‘Gwinn, Fig 2 (below) #29a (outwardly extending integral flange)) of the countersink cutting head (‘Gwinn, #11) and further comprising one or more projections that extend coaxially along the longitudinal axis to a predetermined point within the countersink cutting range to define a depth of cut for the reverse countersink cutting assembly (‘Gwinn, Figs 1 & 2 (below), Fig 1 shows retracted state, Fig 2 shows projected state, the difference in length shown in Fig 1 and Fig 2 is the range); and
a fastener that retains the depth stop sleeve on the countersink cutting head (‘Gwinn, Figs 1 & 2 (below), #13 (tubular combined guide and stop member)).
Regarding Claim[s] 5, ‘Gwinn discloses all the claim limitations including: the cutting portion of the countersink cutting head comprising:
a cutting surface that rises from a narrower outer diameter proximate the cutter distal portion to a wider outer diameter proximate the cutter proximal portion in relation to the longitudinal axis (‘Gwinn, Figs 1 & 2 (below) reference axis added, Figs 1 & 2 show cutting surface narrower at the bottom and larger nearer to the top).
Regarding Claim[s] 6, ‘Gwinn discloses all the claim limitations including: wherein the cutting surface comprises one or more flutes (‘Gwinn, Fig 2 (below) shows #11a (inwardly inclined cutting edges) are shown to be flutes).
Regarding Claim[s] 9, ‘Gwinn discloses all the claim limitations including: cutting surface rises at a predetermined countersink angle (‘Gwinn, Pg 1, Col. 1, ln 2 – 10, “ More particularly the invention relates to that type of countersink device which is adapted to be driven by an electric or pneumatic motor, operates to countersink the outer ends of previously drilled holes, such, for example, as those that are formed in aircraft for the reception of rivets of the flush or flat head variety,” Teaches the countersink has a predetermined angle to be compatible to the reception of the rivets to be flush).
Regarding Claim[s] 12, ‘Gwinn discloses all the claim limitations including: the countersink cutting range (‘Gwinn, Fig 1 (below) -B-, the distance of -B- defines the cutting range); is based at least in part on the predetermined countersink angle and half of a difference between the wider outer diameter of the cutting portion and the narrower outer diameter of the cutting portion (the limitations: “based at least in part on the predetermined countersink angle and half of a difference between the wider outer diameter of the cutting portion and the narrower outer diameter of the cutting portion,” is considered a “product by process” limitation (see below)).
A recitation of “product by process” claims are limited by and defined by the process, determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113(I).
Since there is no structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, the predetermined cutting range of ‘Gwinn meets the claim.
Regarding Claim[s] 14, ‘Gwinn discloses all the claim limitations including: one or more projections contact a working surface of a workpiece to limit further reverse countersinking of the working surface surrounding a through hole in the workpiece to the depth of cut associated with the predetermined point within the countersink cutting range (‘Gwinn, Figs 1 & 2 (below), show #42 (stem) projected in a through hole #h in the workpiece #W.
Regarding Claim[s] 15, ‘Gwinn discloses all the claim limitations including: depth of cut for the reverse countersink cutting assembly is adjustable such that a depth of cut range is defined for the reverse countersink cutting assembly (‘Gwinn, Pg 2, Col. 2, ln 64 - 68, “Since the annular shoulder 65 20 is longitudinally. adjustable with respect to the Inner shell, as heretofore described, the depth or size of the countersink may be controlled at will.”).
Regarding Claim[s] 21, ‘Gwinn discloses all the claim limitations including: rotation of the depth stop sleeve (18) about the longitudinal axis is independent of rotation of the countersink cutting head and the fastener about the longitudinal axis (‘Gwinn, Pg 1, Col. 2, ln 5 - , “Another object of the invention is to provide a
countersink device of the heretofore mentioned type in which the countersink tool is rotatably mounted in the tubular body in a simple and novel manner and the body has a twofold pupose in that it serves not only slidably to support the combined guide and stop member but also so to limit tilting of the adaptor relatively to the countersink tool as to prevent the adaptor from being laterally displaced to such an extent as to cause the universal joint between the adaptor and the tool to bind.” #10 (tubular body), incorporates #13 (tubular combined guide and stop member), see Figs 1 & 2)
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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter), and in view of U.S. 2022/0331894 Beer et al. (‘Beer hereafter).
Regarding Claim[s] 10, ‘Gwinn discloses all the claim limitations except does not teach:
predetermined countersink angle comprises an angle that ranges between approximately 38 degrees and approximately 52 degrees.
However, ‘Beer teaches: Para 0119, “n at least one embodiment, the countersink has a countersink angle which is greater than 25° and less than 60°, preferably between 30° and 45°, in particular at least substantially 30°.”
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Gwinn with a countersink angle between 38 and 52 degrees as taught by ‘Beer in order to provide a tool to manufacture a countersink to fit a sized fastener head.
Since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further ‘Beer provides a simple substitution of one known element (the angle of the countersink tool) for another to obtain predicable results;
Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter), and in view of U.S. 2024/0227038 German Anchique (‘Anchique hereafter).
Regarding Claim[s] 13, ‘Gwinn discloses all the claim limitations except does not teach:
countersink cutting range comprises approximately 0.060 inches [1.524 mm] to approximately 0.180 inches [4.572 mm].
However, ‘Anchique does teach: Clm 8, “The drill bit according to claim 7, wherein the length of the countersink cutter is in the range of: 1.6 mm to 16 mm.”
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Gwinn with a countersink range between 0.060 inches [1.524 mm] to approximately 0.180 inches [4.572 mm] as taught by ‘Anchique in order to manufacture a countersink to fit a sized fastener head. Since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further ‘Anchique provides a simple substitution of one known element (the angle of the countersink tool) for another to obtain predicable results;
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter), and in view of U.S. 2004/0144187 Abele et al. (‘Abele hereafter).
Regarding Claim[s] 16, ‘Gwinn discloses all the claim limitations except does not teach:
the depth of cut range comprises at least one of approximately 0.020 inches [0.508 mm] to approximately 0.080 inches [2.032 mm]
However, ‘Abele does teach: Claim 19. “the bore depth is 1 to 3 mm, preferably 1.5 to 2 mm.“
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Gwinn with a depth cut range of approximately 0.020 inches [0.508 mm] to approximately 0.080 inches [2.032 mm] as taught by ‘Abele in order to manufacture a countersink to fit a sized fastener head. Since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further ‘Anchique ‘Abele provides a simple substitution of one known element (the bore depth) for another to obtain predicable results;
Claim 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2,383,854 J. M. Gwinn Jr. et al. (‘Gwinn hereafter), and in view of U.S. 2,308,447 E. R. Greenbaum (‘Greenbaum hereafter).
Regarding Claim[s] 22, ‘Gwinn discloses all the claim limitations including:
a bearing (‘Gwinn, system of #30, #31, #32, #33, #34, #35, #36 are the bearing system) positioned around a shank portion (‘Gwinn, #48 (shank)) of the fastener and disposed between a head portion (142) (‘Gwinn, #12 (adapter) is capable of being used as the head portion) of the fastener and an end portion of the depth stop sleeve (‘Gwinn, #13 (tubular combined guide and stop member)); and a sleeve bearing (148) (‘Gwinn, #13 (sleeve like part)) positioned around the shank portion of the fastener (‘Gwinn, Fig 1), laterally disposed between the shank portion and the depth stop sleeve and axially disposed between the thrust bearing and the cutter proximal end of the countersink cutting head (‘Gwinn, Fig 1), and wherein the bearing and the sleeve bearing enable independent rotation of the depth stop sleeve and the countersink cutting head (‘Gwinn, Fig 1), the fastener rotating along with the countersink cutting head (‘Gwinn, Fig 1).
Except ‘Gwinn does not teach: thrust bearing.
However, ‘Greenbaum does teach: a thrust bearing: Pg 2, ln 13 – 16, “Cutting can proceed only until the shoulder 15 abuts the thrust bearing which in turn is abutted against end wall 16 of the body 11.”
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Gwinn with a thrust bearing as taught by ‘Greenbaum in order to provide a bearing for the spindle (Greenbaum, Pg. 1 Col. 1, ln 36 – 47).
Further, ‘Greenbaum makes a simple substitution of one known element (thrust bearing) for another (ball bearing) to obtain predicable results;
Allowable Subject Matter
Claim 17 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 17with the limitations of claim 15 and 1. Specifically, the prior art does not teach the combination of limitations wherein “set of shims positioned around a shank portion of the fastener and disposed between a head portion of the fastener and the depth stop sleeve to define a minimum depth of cut within the depth of cut range.”
The closest prior art is as cited were ‘Gwinn, ‘Beer, ‘Anchique and ‘Abele.
‘Gwinn, ‘Beer, ‘Anchique and ‘Abele does not teach set of shims positioned around a shank portion of the fastener and disposed between a head portion of the fastener and the depth stop sleeve to define a minimum depth of cut within the depth of cut range.
Neither of these references provides the above limitations. Also, neither of these references anticipates nor renders obvious the combinations of limitations mentioned above.
Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claims 18 - 20. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Claim 23 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 23 with the limitations of claim 1. Specifically, the prior art does not teach the combination of limitations wherein "fastener comprising a shoulder bolt.”
The closest prior art is as cited were ‘Gwinn, ‘Beer, ‘Anchique, ‘Abele and ‘Greenbaum.
‘Gwinn, ‘Beer, ‘Anchique, ‘Abele and ‘Greenbaum do not teach: fastener comprising a shoulder bolt. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 24. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
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U.S. 2,383,854 Figures 1 & 2
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U.S. 2,383,854 Figures 3 - 6
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
03/12/2026