Prosecution Insights
Last updated: April 19, 2026
Application No. 18/511,436

ARRANGEMENT COMPOSED OF AT LEAST ONE DRILL BIT AND AT LEAST ONE LIMIT STOP

Non-Final OA §102§112
Filed
Nov 16, 2023
Examiner
COOK, KYLE A
Art Unit
3726
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Tyrolit Schleifmittelwerke Swarovski AG & Co. K.G.
OA Round
1 (Non-Final)
62%
Grant Probability
Moderate
1-2
OA Rounds
2y 10m
To Grant
99%
With Interview

Examiner Intelligence

Grants 62% of resolved cases
62%
Career Allow Rate
172 granted / 277 resolved
-7.9% vs TC avg
Strong +41% interview lift
Without
With
+40.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
49 currently pending
Career history
326
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
70.6%
+30.6% vs TC avg
§102
4.5%
-35.5% vs TC avg
§112
18.9%
-21.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 277 resolved cases

Office Action

§102 §112
Detailed Action Election/Restriction Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim. Applicant's election without traverse of Group I, claims 1-13, in the reply filed on March 6, 2026 is acknowledged. 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 limitations are: drill bit fastening mechanism in claims 3 and 9, drilling machine fastening mechanism in claim 9, suction device in claim 10, and a fixing mechanism in claim 12 FILLIN "Indicate the claim(s) in which each respective limitation appears." \d "[ 2 ]" . Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Thus, the drill bit fastening mechanism, drilling machine fastening mechanism, and fixing mechanism are all interpreted as a thread. The suction device is interpreted as a vacuum cleaner. If applicant does not intend to have these limitations 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. Claim s 3, 5, and 8-13 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 s 3, 5, and 9-13 each recite “preferably” at least once before a limitation. The word “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the limitations following “preferably” will be treated as optional limitations. Claim 3 recites a drilling machine three separate times. It is unclear if the second and third recitations are referring to the initially introduced drilling machine or are referring to other drilling machines. Claim 5 recites an axis of rotation twice. It is unclear if this is referring to the axis of rotation introduced in claim 1, or is introducing other axes of rotation. Claim s 8 and 12 each recite a centering pin . It is unclear if this is referring to the centering pin introduced in claim 1, or is introducing another centering pin. Claim 9 recites A drilling machine comprising a fluid-conducting portion, an air-suction portion, the arrangement according to claim 1 , and a drilling machine fastening mechanism for fastening the drill bit or the arrangement to the drilling machine . In light of Applicant’s originally filed disclosure, it is unclear if the fluid-conducting portion and the air suction portion are separate required elements, or if the fluid conducting portion is an air suction portion. Claims 10 and 11 further add confusion to this by reciting: “ the at least one fluid-conducting portion, preferably the at least one air-suction portion ”. For purposes of examination, the claim will be interpreted as requiring a fluid-conducting portion which is preferably an air-suction portion. In addition, it is unclear how the drill bit or the arrangement can be fastened to the drilling machine if the arrangement and drill bit are part of the drilling machine. For purposes of examination, this limitation will be interpreted as: a drilling machine fastening mechanism for fastening the drill bit or the arrangement to another portion of the drilling machine . Regarding claim 11, it is unclear how the adapter can be part of the drilling machine and also be detachably connected to the drilling machine. For purposes of examination, this limitation will be interpreted as: a drill adaptor that can preferably be detachably connected to another portion of the drilling machine. 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. Claim s 1- 13 are rejected under 35 U.S.C. 102( a ) (1) as being anticipated by US Patent No. 5,253,961 (“Geissler”) . Regarding c laim 1 , Geissler discloses an arrangement comprises at least one drill bit (2) and at least one limit stop ( 4 ) for a drilling core, or parts of a drilling core, forming in the course of drilling (fig. 2, col. 3 lines 4-7, col. 4 lines 28-32, col. 5 lines 19-34, wherein portion 28 of limit stop 4 is for stopping drill cores, and, sloped surface 27 is also capable of stopping a broken part of a drill core) , wherein the at least one limit stop has at least one fluid opening (29) transverse to an axis of rotation of the at least one drill bit (fig. 2, col. 5 lines 29-34) , wherein the at least one limit stop has a central through-hole for receiving a centering pin (fig. 2, 4-5 & 8, col. 2 lines 25-45, col. 3 lines 45-49, cols. 5-6, lines 47-13, col. 7 lines 47-55 , wherein the limit stop has a longitudinally extending central through hole—wherein pin 11 extends across the through hole and perpendicular to the longitudinal axis of the through hole—that allows a centering pin/drill to be at least partially received therein ). Regarding c laim 2 , Geissler further discloses the at least one drill bit and the at least one limit stop form a coherent structural unit (figs. 1-2, col. 4 lines 28-32) . Regarding c laim 3 , Geissler further discloses the at least one drill bit comprises: a substantially hollow-cylindrical drill bit body (figs. 1-2). The rest of the limitations of claim 3 are optional due to the word “or”. Regarding c laim 4 , Geissler further discloses the at least one drill bit and/or the at least one limit stop consist and/or consists of one component and/or of a multi-part component assembly, wherein the component assembly can be connected detachably and/or non-detachably (figs. 1-2, col. 3 lines 4-19, i.e. the drill bit consist s of multiple parts 2 & 6 non-detachably connected) . Regarding c laim 5 , Geissler further discloses the at least one limit stop has at least one limit stop point and/or at least one limit stop line and/or at least one limit stop surface (fig. 2, col. 5 lines 19-28, i.e. projection 28 of limit stop 4 has a limit surface at and end thereof to contact a drill core ) . The rest of the limitations are optional due to the word “preferably”. Regarding c laim 6 , Geissler further discloses the at least one fluid opening (29) is arranged substantially perpendicular to the axis of rotation of the at least one drill bit (fig. 2) . Regarding c laim 7 , Geissler further discloses the at least one fluid opening has a round and/or an angular cross section (figs. 1 & 2, which illustrate round openings 29) and is delimited by at least one contour surface of the at least one limit stop (figs. 1-2, wherein the openings 29 are delimited by multiple contoured surfaces of the limit stop 4, including the sloped surface 27 delimiting an end of the openings, and the round wall of openings 29 within the limit stop) . Regarding c laim 8 , Geissler further discloses the central through-hole, for receiving a centering pin, of the at least one limit stop is concentric with the axis of rotation of the at least one drill bit (fig s . 1 & 2 , wherein the through hole that can at least partially receive a centering pin as detailed in the rejection to claim 1, extends longitudinally with a center aligned with the center of the limit stop and drill bit so the through hole is concentric with a rotational axis of the drill bit ) . Regarding c laim 9 , Geissler discloses a drilling machine (1 & B) (fig. 1, col. 3 lines 4-7) comprising a fluid-conducting portion, an air-suction portion (42) (fig. 1 , col. 4 lines 33-46) , the arrangement according to claim 1 (see rejection to claim 1 above) , and a drilling machine fastening mechanism for fastening the drill bit or the arrangement to the drilling machine (figs. 2 & 3, col. 3 lines 4-12, col. 4 lines 48-52, col. 5 lines 35-46, wherein the drilling machine fastening mechanism can be interpreted as the internal thread 456 of adapter 45—which is configured to fasten the drill bit to portion B of the drilling machine—or, the external thread on element B of the drilling machine that mates with internal thread 456 of adapter 45) . The rest of the limitations are optional due to the word “preferably”. Regarding c laim 10 , Geissler further discloses the at least one fluid-conducting portion, preferably the at least one air-suction portion, is in or can be brought into a fluid connection with a connector for a suction device (fig. 1, col. 1 lines 40-44, col. 4 lines 33-44, wherein air suction portion 42 is configured to be attached to a connector/hose of a component that extracts air and drill cuttings/dust, which reads on “ suction device ”) . Claim 11 recites the at least one fluid-conducting portion, preferably the at least one air-suction portion, and/or the drilling machine fastening mechanism are formed in and/or on a drill adaptor that can preferably be detachably connected to the drilling machine . When interpreting the drilling machine fastening mechanism as the internal thread 456 of adapter 45—which is configured to fasten the drill bit to the drilling machine—the drilling machine fastening mechanism is formed in an adapter 45 that can be detachably connected to portion B of the drilling machine (figs. 1-3, col. 3 lines 4-12, col. 4 lines 48-52, col. 5 lines 35-46). Claim 12 recites a fixing mechanism for detachably fixing a further part is provided on the drilling machine . The drilling machine (1 & B) of Geissler teaches an external thread on adapter 45 that is configured to engage with and secure to an internal thread on member 3 (fig. 2, col. 4 lines 33-52) . Either of the external or internal threads can be interpreted as the fixing mechanism which is configured to detachably fix a further part 3 or 45, respectively. The rest of the limitations are optional due to the word “preferably”. Claim 13 recites the at least one fluid opening is formed as a fluid connection between the drill bit and the at least one fluid-conducting portion . The rest of the limitations are optional due to the word “preferably”. When interpreting the limit stop as including each of elements 3 & 4, the at least one transverse fluid opening is interpreted as hole 40, which provides a fluid connection between the drill bit and fluid conducting portion 42 (fig. 2, col. 4 lines 33-46, cols. 4-5 lines 66-18). Claims 1- 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP-1447194-A1 (“ Ralf ”) . Regarding c laim 1 , Ralf discloses an arrangement comprises at least one drill bit (2) and at least one limit stop (elements 14 & the inner component comprising shaft 8) for a drilling core, or parts of a drilling core, forming in the course of drilling (fig. 1, wherein the distal end of the inner component—i.e. distal end of portion 35 and holes 39/40—is capable of contacting a drill core to limit how far the drill core can move in the proximal direction) , wherein the at least one limit stop has at least one fluid opening (20) transverse to an axis of rotation of the at least one drill bit (fig. 1, ¶ [0022], wherein all references to the Ralf specification refer to the machine translation submitted herewith) , wherein the at least one limit stop has a central through-hole for receiving a centering pin (fig. 1, ¶ [0024], wherein central through hole extends through shaft 8 and includes bores 39, 40 & the bore between bores 39 & 40 ). Regarding c laim 2 , Ralf further discloses the at least one drill bit and the at least one limit stop form a coherent structural unit (fig. 1, ¶ [0022] & [0025] -[ 0028] ) . Regarding c laim 3 , Ralf further discloses the at least one drill bit (2) comprises: a substantially hollow-cylindrical drill bit body (fig. 1, ¶ [0011] ). The rest of the limitations of claim 3 are optional due to the word “or”. Regarding c laim 4 , Ralf further discloses the at least one drill bit and/or the at least one limit stop consist and/or consists of one component and/or of a multi-part component assembly, wherein the component assembly can be connected detachably and/or non-detachably (fig. 1, ¶ [0011] , i.e. the drill bit 2 consist s of multiple parts 4 & 5 non-detachably connected) . Regarding c laim 5 , Ralf further discloses the at least one limit stop has at least one limit stop point and/or at least one limit stop line and/or at least one limit stop surface (fig. 1 , i.e. the distal end of part 35 comprises a limit surface/line that can contact a drill core) . The rest of the limitations are optional due to the word “preferably”. Regarding c laim 6 , Ralf further discloses the at least one fluid opening (2 0 ) is arranged substantially perpendicular to the axis of rotation of the at least one drill bit (fig s . 1 & 2) . Regarding c laim 7 , Ralf further discloses the at least one fluid opening has a round and/or an angular cross section (figs. 1 & 2, which illustrate round openings 2 0 ) and is delimited by at least one contour surface of the at least one limit stop (figs. 1-2, wherein the openings 2 0 are delimited by inner and outer circumferential/contoured surfaces of component 14 of the limit stop ) . Regarding c laim 8 , Ralf further discloses the central through-hole, for receiving a centering pin, of the at least one limit stop is concentric with the axis of rotation of the at least one drill bit ( fig. 1, wherein the through hole that can at least partially receive a centering pin as detailed in the rejection to claim 1, extends longitudinally with a center concentric with the axis of rotation 10 ) . Regarding c laim 9 , Ralf discloses a drilling machine ( 1, 2, and the drilling machine discussed in ¶ [0012] ) comprising a fluid-conducting portion, an air-suction portion ( 15 ) (fig s . 1 -3 , ¶ [0014]-[0015] ) , the arrangement according to claim 1 (see rejection to claim 1 above) , and a drilling machine fastening mechanism for fastening the drill bit or the arrangement to the drilling machine (fig. 1 , ¶ [0012] , wherein the drilling machine fastening mechanism can be interpreted as the internal thread 9 —which is configured to fasten the drill bit to the torque providing device of the drilling machine—or, the external thread on the torque providing device of the drilling machine that mates with internal thread 9 ) . The rest of the limitations are optional due to the word “preferably”. Regarding c laim 10 , Ralf further discloses the at least one fluid-conducting portion, preferably the at least one air-suction portion (15) , is in or can be brought into a fluid connection with a connector for a suction device (fig. 1, ¶ [0001], [0013] & [0015] , wherein portion 12 of air suction portion 15 is configured to be attached to a connector/hose of a suction device that extracts air and drill cuttings/dust, which reads on “ suction device ”) . Claim 11 recites the at least one fluid-conducting portion, preferably the at least one air-suction portion, and/or the drilling machine fastening mechanism are formed in and/or on a drill adaptor that can preferably be detachably connected to the drilling machine . When interpreting the drilling machine fastening mechanism as the internal thread 9 of shaft 8 —which is configured to fasten the drill bit to another part of the drilling machine—the drilling machine fastening mechanism is formed in an adapter 8 that can be detachably connected to the torque providing device of the drilling machine (fig. 1, ¶ [0012] ). Claim 12 recites a fixing mechanism for detachably fixing a further part is provided on the drilling machine . The drilling machine of Ralf teaches an external thread that is configured to engage with and secure to an internal thread 9 on member 8 (fig. 1 , ¶ [0012] ). When interpreting one of these threads as the drilling machine fastening mechanism of claim 9, the other of the threads can be interpreted as the fixing mechanism since a further part is capable of being connected between the fixing mechanism and the drilling machine fastening mechanism (the examiner notes that the further part is not a positively recited claim element) . The rest of the limitations are optional due to the word “preferably”. Regarding c laim 13 , Ralf further discloses the at least one fluid opening is formed as a fluid connection between the drill bit and the at least one fluid-conducting portion (fig. 1, ¶ [0017] & [0022]) . The rest of the limitations are optional due to the word “preferably”. Conclusion 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
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Prosecution Timeline

Nov 16, 2023
Application Filed
Mar 19, 2026
Non-Final Rejection — §102, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
62%
Grant Probability
99%
With Interview (+40.7%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 277 resolved cases by this examiner. Grant probability derived from career allow rate.

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