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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 126f. Rather, the drawings show 126d in Fig 6, which is not found in the Specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim Objections
Claim 11 recites, “A drill tool having comprising” which is objected to because of the following informalities: “having comprising” is incorrect grammar. Appropriate correction is required.
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 1-17 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 “increased roughness” in claims 1 and 11 is a relative term which renders the claim indefinite. The term “increased” 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. It is unclear what the roughness should be compared to.
The term “substantially corresponds” in claim 13 is a relative term which renders the claim indefinite. The term “corresponds” is itself already imprecise. When paired with “substantially,” the term overall is indefinite and 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.
Claim Rejections - 35 USC § 103
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.
Claims 1-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sian (DE 10 2007 020 051 A1) in view of Flynn (US 7,544,021 B2).
As to claim 1, Sian teaches a cutting body (carbide plate 1) for a drilling tool (the carbide plate is fitted onto a drill as shown in Fig 1d) comprising: a center axis (a vertical axis through tip 31 in the orientation shown in Fig 1a); at least one cutting element (cutting edge sections 11, 13, 15, 17) having at least one cutting edge (cutting edge 19); and at least one side face (short side 5) having at least one radially inwardly directed cutout (Sian teaches several embodiments: cone sections 37, 137, and steps 375) configured to produce a drilled hole (the drill produces a drilled hole the cutouts of Sian are useful for conveying dust and debris from the hole).
Sian does not teach the cutout is configured to increase roughness, nor wherein the cutout has precisely three open sides.
However, in the field of cutting tools, it was known at the time the invention was effectively filed to introduce cutouts on cutting edges to form a rough drilled hole, and such cutouts were known to have precisely three open sides. See Flynn which teaches a rotary cutting tool with non-uniform distribution of chip-breaking features. Flynn teaches cutouts 40 which have various configurations. Flynn teaches at Col 4 lines 64-67 that at least one of the cutout 40 configurations creates a “rough” surface finish.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have chosen a configuration of cutout to produce a rough surface finish because Flynn teaches that this configuration removes material “aggressively,” which is interpreted by Examiner as removing material more quickly than other options.
Flynn teaches the cutouts geometries at Figs 4a-5p. As shown in Fig 1, the cutouts have precisely three open sides.
As to claim 2, Sian in view of Flynn teaches the cutting body according to claim 1, wherein the cutting body is made of a carbide (Sian Page 3 paragraph 2 of the translation teaches the plate is tungsten carbide.).
As to claim 3, Sian in view of Flynn teaches the cutting body according to claim 1, wherein the at least one side face has a minimum distance from the center axis in an area of the cutout (as shown in Sian Fig 4b, the plate has the smallest diameter at the steps 375).
As to claim 4, Sian in view of Flynn teaches the cutting body according to claim 1, further comprising: a second side face comprising a second cutout with four open sides (as shown for example in Fig 1a, the cone 37 is a cutout with four open sides. Flynn specifically teaches that different cutting edges may have different arrangements of cutouts: “The chip-breaking features 40 can assume a variety of different geometric configurations” (Col 6 lines 60-61) and “In both examples, the chip-breaking features 40 are arranged in a non-uniform distribution within each blade 22, and relative to adjacent blades 22.” (Col 7 lines 39-42).).
As to claim 5, Sian in view of Flynn teaches the cutting body according to claim 1, wherein the cutout is configured such that a diameter of the cutting body along the center axis in a direction of the cutout initially decreases in size and enlarges after the cutout (this configuration is shown for example in the configuration of Sian Fig 1a).
As to claim 6, Sian in view of Flynn teaches the cutting body according to claim 1, wherein the cutout is angular or concave (the cutout options of Flynn Figs 4a-5p include both angular and concave configurations.).
As to claim 7, Sian in view of Flynn teaches the cutting body according to claim 1, wherein the at least one radially inwardly directed cutout comprises two or more cutouts defined in the at least one side face (Flynn shows that the choice between singular cutouts as well as more than one cutouts is obvious in view of the interchangeable options shown in Figs 4a-4g.).
As to claim 8, Sian in view of Flynn teaches the cutting body according to claim 1, further comprising: a second side face having at least one second cutout (as shown for example in Fig 1a, the cone 37 is a cutout with four open sides. Flynn specifically teaches that different cutting edges may have different arrangements of cutouts: “The chip-breaking features 40 can assume a variety of different geometric configurations” (Col 6 lines 60-61) and “In both examples, the chip-breaking features 40 are arranged in a non-uniform distribution within each blade 22, and relative to adjacent blades 22.” (Col 7 lines 39-42).).
As to claim 9, Sian in view of Flynn teaches the cutting body according to claim 1, wherein a distance between the cutout and a machining surface of the cutting body measures within a range of between 10% and 40% of a length of the side face (Sian teaches at page 5 lines 45-46: “The short side 5 has in the course of the axial direction A from the front side 9 an axial section 33 , which is essentially one third of the total length of the short side 5 accounts.”).
As to claim 10, Sian in view of Flynn teaches the cutting body according to claim 1, but does not teach a length (h) of the cutout measures within a range 0.15 mm≤h≤HHM−C, wherein: HHM is a length of the side face, and C is a distance between the cutout and the machining surface.
The resulting geometry can be reduced to a length of cutout being larger than 0.15mm, but less than the length of the side face minus the distance between the cutout and machining surface.
Examiner notes that in all cases where there are more than one cutout, the length of the cutout must be less than the length of the side face minus the distance between the cutout and machining surface. As Flynn obviates a cutting surface having more than one cutout, the only limitation not met in the claim is the specific length of the cutout being larger than 0.15mm.
As Sian teaches the cutout is 2/3 the length of the side 5 of the plate, any plate in the form of Sian in view of Flynn having a height of more than .225mm would meet the claim.
Even though Sian in view of Flynn do not teach particular values for the lengths, heights, or thicknesses of their cutting tools, Examiner takes official notice that cutting tools were well known in the art to be of various sizes, including having heights larger than 0.225mm.
Thus, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to modified Sian in view of Flynn to meet the particular geometry which meets the claimed formula. That is, a plate of Sian in view of Flynn having multiple cutouts, and which has a height of greater than 0.225mm.
As to claim 11, Sian teaches a drill tool (shown in Fig 1d) having comprising: a cutting body (plate 1) comprising: a center axis to which a longitudinal axis of the drilling tool extends coaxially or parallel (a vertical axis through tip 31 in the orientation shown in Fig 1a. The drill shown in Fig 1d is coaxial with the axis of the plate); at least one cutting element having at least one cutting edge (cutting edge 19); and at least one side face (short face 5) having a radially inwardly directed cutout (Sian teaches several embodiments: cone sections 37, 137, and steps 375) configured to produce a drilled hole (the drill produces a drilled hole the cutouts of Sian are useful for conveying dust and debris from the hole).
Sian does not teach the cutout is configured to increase roughness, nor wherein the cutout has precisely three open sides.
However, in the field of cutting tools, it was known at the time the invention was effectively filed to introduce cutouts on cutting edges to form a rough drilled hole, and such cutouts were known to have precisely three open sides. See Flynn which teaches a rotary cutting tool with non-uniform distribution of chip-breaking features. Flynn teaches cutouts 40 which have various configurations. Flynn teaches at Col 4 lines 64-67 that at least one of the cutout 40 configurations creates a “rough” surface finish.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have chosen a configuration of cutout to produce a rough surface finish because Flynn teaches that this configuration removes material “aggressively,” which is interpreted by Examiner as removing material more quickly than other options.
Flynn teaches the cutouts geometries at Figs 4a-5p. As shown in Fig 1, the cutouts have precisely three open sides.
As to claim 12, Sian in view of Flynn teaches the drilling tool according to claim 11, but does not teach the cutting body is integral with the drilling tool or is connected to a base body of the drilling tool in a bonded manner.
Rather, the plate 1 of Sian is not integral with the drill, but neither is it explicitly taught to be bonded.
However, examiner takes official notice that carbide plates were known in the art at the time the invention was effectively filed to be bonded to drills.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have bonded the plate to the drill in order to ensure the plate does not come loose during drilling.
As to claim 13, Sian in view of Flynn teaches the drilling tool according to claim 11, further comprising: a base body, wherein a diameter of the base body in an area of the cutout substantially corresponds to a minimum diameter of the cutting body (Sian Page 6 line 3 teaches, “the carbide plate goes 1 continuously transition-free” with reference to Fig 1e).
As to claim 14, Sian in view of Flynn teaches the drilling tool according to claim 11, further comprising: a base body, wherein the base body has a diameter reduction in an area of the cutout (see cone section 237 in Fig 3b of Sian.).
As to claims 16 and 17, Sian in view of Flynn teaches the cutting body according to claim 9, but does not teach the range is between 10% and 30% of the length of the side face or the range between 10% and 20% of the length of the side surface.
Rather, Sian’s teaching of 1/3 (or 33%) is close to the claimed 30% and 20% lengths. See MPEP § 2144.05: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Sian to arrive at the claimed 20% length since Sian teaches the length of the side 33 is modified in relation to the length of the cone 37 to change the strength of the carbide plate versus the dust clearing abilities. It would have been within the purview of a skilled artisan to choose any reasonable percent length of face 33.
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.
The following is a statement of reasons for the indication of allowable subject matter: claim 15 requires a formula which compares the depth of the cutout by the length and number of side faces. Examiner’s best art does not teach or obviate such a formula to derive the geometry of the cutout.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 9 January 2026