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 no longer objected to in view of the documents filed 19 April 2026.
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 is no longer objected to in view of the documents filed 19 April 2026.
Claim Rejections - 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.
Claims 1-3, 5-6, 8, 11, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bohnet (DE 3823409 A1).
As to claim 1, Bohnet teaches a cutting body (drill plate 3) for a drilling tool (the drill bit shown in Fig 1 having shaft 1 and head 2) comprising: a center axis (see Fig 6; a vertical line extending through the center of the drill plate is a center axis); at least one cutting element having at least one cutting edge (the top surfaces shown in the orientation of Fig 6 are cutting elements having cutting edges 4); and at least one side face (sides faces 19, 20) having at least one radially inwardly directed cutout (sides 5, 6 as shown in Fig 3, or sides 22, 23 as shown in Fig 6) configured to produce a drilled hole (the drill plate 3 is capable of producing a drilled hole as shown in Fig 2 and described at Paragraph [0007]: “With a drill head diameter of 15 mm, tests have shown that a cutting edge length of 3 mm achieves very good drilling results for producing a borehole in concrete.”), wherein the cutout has precisely three open sides (see Fig 6: the cutout is open to the side facing the viewer, is open to the side facing the page, and open on side 20).
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As to claim 2, Bohnet teaches the cutting body according to claim 1, wherein the cutting body is made of a carbide ([0006]: “The drill plate can thus be inserted into a longitudinal slot from the drill head using the molded-on pins. If the drill plate is made of carbide, the attachment of the pins does not represent any significant additional effort, yet the considerable advantages outlined above are still achieved.”).
As to claim 3, Bohnet teaches the cutting body according to claim 1, wherein the at least one side face has a minimum distance from the center axis, and wherein the minimum distance is in the cutout (as illustrated).
As to claim 5, Bohnet 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 (as illustrated, the diameter of the cutting body is large at side 20, narrower in the cutout, and large again at projecting pins 24, 25.).
As to claim 6, Bohnet teaches the cutting body according to claim 1, wherein the cutout is angular or concave (as shown in the Figures, the cutout is angular).
As to claim 8, Bohnet teaches the cutting body according to claim 1, further comprising: a second side face having at least one second cutout (Fig 6 shows right and a left side faces).
As to claim 11, Bohnet teaches a drill tool (the drill bit shown in Fig 1 having shaft 1 and head 2) comprising: a cutting body (drill plate 3) comprising: a center axis to which a longitudinal axis of the drilling tool extends coaxially or parallel (as shown in Figs 1 and 2, the drill plate is centered on the drill bit); at least one cutting element having at least one cutting edge (the top surfaces shown in the orientation of Fig 6 are cutting elements having cutting edges 4); and at least one side face (sides faces 19, 20), having a radially inwardly directed cutout (sides 5, 6 as shown in Fig 3, or sides 22, 23 as shown in Fig 6) configured to produce a drilled hole (the drill plate 3 is capable of producing a drilled hole as shown in Fig 2 and described at Paragraph [0007]: “With a drill head diameter of 15 mm, tests have shown that a cutting edge length of 3 mm achieves very good drilling results for producing a borehole in concrete.”), wherein the cutout has precisely three open sides (see Fig 6: the cutout is open to the side facing the viewer, is open to the side facing the page, and open on side 20).
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As to claim 13, Bohnet teaches the drilling tool according to claim 11, further comprising: a base body (drill shaft 1), wherein a diameter of the base body in an area of the cutout corresponds to a minimum diameter of the cutting body (as shown for example in Figs 1 and 2, the minimum diameter of the drill plate at the cutout corresponds to the outer diameter of the drill shaft 1).
As to claim 14, Bohnet 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 (as shown in Figs 1 and 2, the drill head 2 has a diameter which decreases in the area of the cutout of the drill plate).
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.
Claims 9, 10, 12, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bohnet.
As to claims 9, 10, 16, and 17, Bohnet teaches the cutting body according to claim 1, but does not teach 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;
wherein the range is between 10% and 30% of the length of the side face;
the range is between 10% and 20% of the length of the side surface; or
wherein 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.
Rather, as shown in Fig 3, the distance between the cutout and the machining surface (measured from the top of side 6 to the bottom of side 4 along vertical side 20) is determined by the angle α which Bohnet teaches at [0018] is “acute.”
Mathematically, if the angle were 90°, there would be no cutout and the claimed distance would be 100%. Similarly, if the angle were 0°, the cutout would extend the entire height of the drill plate 3 and the claimed distance would be 0%.
Choosing any particular acute angle, including an acute angle which forms a sidewall having the claimed percentage of 10-20% would have been, at the time the invention was effectively filed, a matter of “Obvious to Try” as detailed in MPEP § 2143 E. That is, since the angle α is acute, there is a finite number of identified solutions (the number of reasonable angles to try within 0° to 90°) some of which necessarily arrive at the claimed value.
The same logic applies to the claim limitation “0.15 mm < h <HHM – C” which recites a height which is, as above, controlled by Bohnet’s angle α.
As to claim 12, Bohnet 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 drill plate 3 of Bohnet is not integral with the drill, but neither is it explicitly taught to be bonded.
However, examiner previously took official notice and now treats as fact 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.
Claims 1, 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sian (DE 102007020051 A1) in view of Takeyoshi (JP 2017202541 A).
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 wherein the cutout has precisely three open sides.
Rather, because the cone sections 37, 137, 375 extend to the bottom of the carbide plate 4, the cutout is considered to have four open sides. However, if the cutout did not extend all the way to the bottom of the carbide plate, then the cutout would be said to have precisely three open sides (for example in the Orientation of Fig 1a, the side facing the viewer, the side facing the page, and the side 33 would be the three open sides).
In the field of cutting tools having reaming edges facing perpendicular to the cutting direction, it was known at the time the invention was effectively filed to introduce cutouts on side edges to form a drilled hole having advantageous side wall surface roughness, and such cutouts were known to have precisely three open sides. See Takeyoshi which teaches a drill reamer A with a wavy margin 5a. Takeyoshi teaches cutouts (valleys 5c) which have various configurations. Takeyoshi teaches at paragraph [0036]: “As a result [of the wavy margin 5a], the hole accuracy achieved in this embodiment was ultra-high precision, reaching IT6 class (0 to +5 μm), the surface roughness of the inner surface of the hole was 1.5 μmRa or less, and the tool life allowed for drilling 300 holes.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have swapped the cutout on at least one side face of Sian for the cutouts of the side face of Takeyoshi. Such a person would have been motivated to do so, with a reasonable expectation of success, in order to achieve the benefits of Takeyoshi such as the advantageous roughness values of the drilled holes described at Paragraph [0036].
As to claim 4, Sian in view of Takeyoshi teaches the cutting body according to claim 1, further comprising: a second side face comprising a second cutout with four open sides (as shown in Sian, the carbide plate has four open sides, the two large faces, a side face, and a bottom face.).
As to claim 7, Sian in view of Takeyoshi 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 (Takeyoshi teaches a wavy margin 5 having many cutouts per face.).
Response to Arguments
Applicant’s arguments, see pages 8-11, filed 9 April 2026, with respect to the rejection(s) of claims 1-14 and 16-17 under Sian and Flynn have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bohnet or Sian in view of Takeyoshi.
Sian in view of Flynn is no longer relied upon to rejection claims 1 or 11.
Instead, Examiner provides Bohnet which teaches all of the limitations of independent claims 1 and 11.
As to claims 4 and 7, Examiner relies on Sian in view of Takeyoshi. Applicant’s arguments pertaining to the combination of Sian and Flynn focused on Flynn. As Flynn is no longer relied upon, applicant’s arguments against Flynn and moot. However, Applicant’s arguments regarding the cutting face, cutting direction, and reaming face was convincing. Takeyoshi is different from Flynn. As Flynn was a milling cutter, Takeyoshi is a drill having cutters on a tip and reaming faces on the side edges. The reaming faces have margins which have a wavy geometry 5 which Takeyoshi credits with forming advantageous roughness to the drilled/reamed hole.
Accordingly, there is no concern as with Flynn that an artisan may attempt to put the wavy margin geometry (cutouts) on the cutting edges 15, 17 of Sian.
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.
See Examiner’s reasons in the Action mailed 20 January 2026.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 5 June 2026
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