Detailed Action1
Election/Restriction
Newly submitted claims 27 and 28 are directed to an unelected invention and are withdrawn.2
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: fluid conducting portion in claim 22.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Thus, the fluid conducting portion is interpreted as a channel having an inlet and an outlet.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 17 and 29-32 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 applicant regards as the invention.
Claim 17 recites a second end of the drill bit in each of lines 4 and 5. It is unclear if the recitation in line 5 is referring to the second end of claim 4, or is introducing another second end.
Claims 29-32 are rejected for depending from claim 17.
Rejections under 35 USC 102
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.
Claims 15-26 and 29-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2019/0193173 (“Broekman”).
Regarding claim 15, Broekman teaches an arrangement comprising: a drill bit (3) (fig. 7, wherein the arrangement of figure 7 includes saw 3 of figs. 1-5 that attaches to thread 14 of elements 12 & 13—see ¶ [0071], [0093] & [0098]); and a limit stop (12/13) for at least part of a drilling core (figs. 7-8, wherein the distal ends of elements 12/13 are capable of abutting a drilling core to limit its proximal movement), wherein: the limit stop has a fluid opening which is transverse to an axis of rotation of the drill bit (figs. 7-8, i.e. openings D4); the limit stop has a central through-hole for receiving a centering pin (figs. 7-10, ¶ [0094]); and the fluid opening extends outwardly into a hollow volume of the drill bit from a section of the central through-hole defined by the limit stop (figs. 2 & 7). The examiner also notes that the embodiment of figures 1-6 also read on this claim.
Claim 16 recites the drill bit and the limit stop define a structural unit. The bit and limit stop 12/13 are coupled together to form a structural unit (figs. 2 & 5, ¶ [0071]).
Regarding claim 17, due to the word “or”, only one of a hollow-cylindrical drill bit body, cutter, closure, and drill bit receiver have to be taught. In this case, Broekman teaches the drill bit includes: a hollow-cylindrical drill bit body (4); a cutter (6) arranged at a first end of the drill bit; a closure (5) arranged toward the first end of the drill bit or a second end of the drill bit (fig. 3); or a drill bit receiver (2) arranged toward the first end of the drill bit or a second end of the drill bit, wherein the drill bit receiver includes: a fitting for making contact with a tool (fig. 7, i.e. the hexagonal portion at the end of the drill bit receiver 2 that is capable of contacting and being clamped by a tool); or a drill bit fastener for fastening the drill bit to a drilling machine.
Claim 18 recites the drill bit or the limit stop is a single component. As illustrated in figures 1-5, the drill bit 3 is a single component.
Claim 19 recites the limit stop has a limit stop point, a limit stop line or a limit stop surface. As illustrated in figures 7 & 9, the distal end of the limit stop 12/13 has a stop surface.
Claim 20 recites the fluid opening has a round cross section or an angular cross section; and the fluid opening is delimited by a contour surface of the limit stop. As illustrated in figs. 7 & 9, the cross-section of the fluid opening is rectangular, i.e. angular. In addition, as illustrated in fig. 7, the edges of the fluid opening are delimited by round/contoured outer and inner surfaces.
Regarding claim 21, Broekman further teaches the central through-hole is concentric with the axis of rotation of the drill bit (see figs. 8-10).
Regarding claim 22, Broekman teaches a drilling machine comprising: the arrangement of claim 15 (see rejection to claim 15 above); and a drilling machine fastener (14) for fastening the drill bit or the arrangement to another portion of the drilling machine (fig. 2-3 & 7, ¶ [0071] & [0073], wherein fastener 14 fastens the drill bit 3 to other portions of the machine). In light of Applicant’s originally filed disclosure, “fastener” as used in the claims can be interpreted as a thread since the “fasteners” as used in the claim appear to be referring to fastening mechanisms (i.e. thread) as taught in Applicant’s specification. Claim 32 also states that the drill bit fastener is a thread. Thus, the broadest reasonable interpretation of “fastener” includes threads. The drilling machine fastener can also be interpreted as the screw(s) that fasten arrangement 3/15/21 to the rest of the machine (figs. 7 & 10, i.e. screws that fix plate 21 and element 15 to element 2).
Broekman also teaches the arrangement of figure 7 to be connected to/part of a driving machine (¶ [0002] & [0064]).
Claim 22 also recites a fluid conducting portion. Openings on the annular wall 4 of drill bit 3 can be interpreted as a fluid conducting portion as they can allow fluid to pass therethrough (see fig. 1). In addition, since the centering pin is not a required element of the claims, the passage within element 2 along with bolt 22 hole can be interpreted as the fluid conducting portion because this channel allows fluid to travel from the bolt hole to inside the central through hole of the limit stop (see figs. 7 & 10).
Claim 23 recites the fluid conducting portion is configured to be in fluid connection with a connector for a vacuum. Since the connector and vacuum are not positively recited elements, the fluid conducting portion merely has to be capable of being fluidly connected to a connector for a vacuum. It is possible to have an annular connector for a vacuum to be positioned around the drill bit 3 so that suction from the vacuum sucks air from inside the drill bit 3 into the connector via the openings in wall 4. It is further possible to have a connector attached to bolt 22 hole so that a vacuum sucks air from inside of the saw 3 via the central through hole and fluid conducting portion (see fig. 10).
Claim 24 recites a drill adaptor, wherein the fluid conducting portion or the drilling machine fastener is in or on the drill adaptor. Element 2 is interpreted as the drill adapter, which includes the fluid conducting portion therein when the fluid conducting portion is interpreted as the passage within element 2 along with bolt 22 hole (fig. 10).
Claim 25 recites a connector for detachably fixing another part to the drilling machine. Connector can be interpreted as element 2 which is configured to detachably connect the drilling machine to a driving machine (i.e. another part) and to receive and transfer torque (¶ [0002] & [0064]). Connector can also be interpreted as a screw/bolt that connects plate 21, i.e. another part, to the drilling machine (see figs. 7 & 10).
Claim 26 recites the fluid opening defines a fluid connection between the drill bit and the fluid conducting portion. When the fluid conducting portion is interpreted as the passage within element 2 along with bolt 22 hole the fluid conducting portion is in communication with the central through hole of the limit stop and the fluid opening, i.e. a fluid connection is established by the fluid opening between the hollow of the drill bit 3 and the fluid conducting portion (see figs. 2 & 10).
Regarding claim 29, Broekman further teaches the closure is an end cap (5) (fig. 3, ¶ [0063]).
Regarding claim 30, Broekman further teaches the closure or the drill bit receiver is arranged toward the second end of the drill bit (figs. 3 & 7, wherein the closure 5 is at the second end of the drill bit 3 when the drill bit is only interpreted as saw 3, and wherein receiver 2 is at the second end of the drill bit when the drill bit is interpreted as including element 2).
Claim 31 recites the drill bit receiver includes the fitting which is an angular portion or a hexagon head. This limitation is not required since it is further defining a limitation that is not required (see the rejection to claim 17, above). However, the fitting of the drill bit receiver 2 of Broekman is a hexagon head (see fig. 7).
Claim 32 recites the drill bit fastener is a thread. This limitation is not required since it is further defining a limitation that is not required (see the rejection to claim 17, above). However, when interpreting end cap 5, or the through hole therein, as the drill bit receiver, Broekman further teaches the receiver including a drill bit fastener 11 which is thread and fastens the drill bit 3 to the drilling machine (fig. 3, ¶ [0066]).
Claim 33 recites the fluid conducting portion is an air suction portion. As detailed in claim 23 above, the fluid conducting portion is capable of being part of an air suction system.
Claim 34 recites a counter-fastener corresponding to the drilling machine fastener. Thread 11 is interpreted as the counter-fastener when the drilling machine fastener is interpreted as thread 14 since thread 11 corresponds with the drilling machine fastener 14. When the drilling machine fastener is interpreted as the screw(s) that fix arrangement 3/15/21 to element 2, the counter fastener is interpreted as the internal threads within element 2 (see fig. 10).
Response to Arguments
Applicant's arguments filed June 30, 2026 (“the remarks”) have been fully considered. The examiner agrees that the previously cited art does not read on the new claims.
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 See the response to the Requirement for Restriction/Election filed on March 6, 2026.
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