Detailed Action1
Election/Restriction
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.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 timely traversed the restriction requirement in the reply filed on April 13, 2026.
The traversal between groups I and II is on the grounds that the claims are novel and have an inventive step, and there is not a serious search or examination burden. This argument lacks merit because claim 1 is not novel as detailed in the rejections below (thus common technical features cannot be considered special technical features). The examiner notes that Skaggs was not used in the below prior art rejections since better references were used (Lemieux).
With respect to a serious search burden—this is not a requirement for unity of invention. Applicant points to MPEP 808 to argue that unity of invention also requires a serious search burden. The burden described in MPEP 808 applies only to restrictions made under US practice, i.e. restriction made under the criteria of MPEP § 806.05(c) - § 806.06.2 Applicant also points to MPEP 823 as to why a serious search burden underlies any restriction requirement. MPEP 823 does not state this. MPEP 823 states that the analysis used for restrictions “differs” in national stage applications. MPEP 823 subsequently recites “other substantive and procedural matters (e.g., double patenting rejections (MPEP § 804), election and reply by applicant (MPEP § 818), and rejoinder of nonelected inventions (MPEP § 821.04) generally applies to national stage applications submitted under 35 U.S.C. 371.” The word “other” is used to separate a restriction analysis from other matters.
The restriction requirement between Group I and II is still deemed proper and is therefore made FINAL.
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 Objections
Claim 5 is objected to because of an informality: the word “a” should be inserted before “cylindrical tube”. Appropriate correction is required.
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 1-15 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 1 recites cylindrical shape of revolution and a cylindrical internal surface of revolution. This is confusing because it is unclear how “of revolution” narrows the claim. One of skill in the art understands what an axis of rotation or revolution is. However, cylindrical shape of revolution is unclear especially since an axis of rotation is introduced immediately after this limitation.
Claim 5 recites cylindrical tube of revolution. This limitation is confusing for the same reasons as the limitations of claim 1, above.
Claim 7 recites a plurality of cylindrical tube portions arranged in such a way as to form an alignment of portions. It is unclear what “an alignment of portions” is referring to. Is this attempting to recite the cylindrical tube portions are aligned?
Claim 14 recites a gripping member forming an ergonomic handle. The term “ergonomic” is a relative term which renders the claim indefinite. The term “ergonomic” 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. For example, it is unclear what makes a gripping member/handle “ergonomic” vs. non-ergonomic.
The rest of the claims are rejected for depending from claim 1.
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 1-4, 6-8, 12, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 5,954,461 (“Lemieux”).
Claim 1 recites a device for assistance in drilling through a board by means of a drilling tool of a type equipped with a drill bit, means for driving in rotation the drill bit, and a guide member for guiding the drill bit in rotation and in movement along a longitudinal axis of the drill bit, the guide member having an outer face of generally cylindrical shape of revolution about an axis of rotation of the drill bit. The device 3 of Lemieux has a plurality of holes that can allow a drill bit of the claimed drilling tool to extend therethrough and drill through a board (fig. 8).
Lemieux further teaches the device comprising: a rigid body having a flat sole (114) forming a surface of the rigid body (fig. 8), the surface providing a contact surface for contact with the board (fig. 8, wherein surface 114 is capable of resting on top or side of a board); and at least one guide space (145) defined by the rigid body, forming a bore passing through the rigid body, and opening onto the flat sole (figs. 8 & 10); each guide space being delimited laterally toward an outside by a cylindrical internal surface of revolution about an axis of revolution orthogonal to a main plane of the flat sole (figs. 8-10, wherein space 145 is cylindrical and extends orthogonal to flat sole 114).
Claim 1 also recites the internal surface being adapted to be able to interact with the guide member and guide the drill bit in rotation and in longitudinal movement along the axis of revolution. As illustrated in fig. 10, the spaces 145 are capable of guiding a drilling tool having a drill bit and guide member when the drill bit has a diameter less than the diameter of portion 119 of the space 145 and the guide member has a diameter greater than diameter of portion 119 but less than portion 118 of the space 145. Claim 1 further recites the internal surface of each guide space having a radial expansion for stopping the guide member in abutment on the radial expansion during the longitudinal movement of the drilling tool in a direction of the board, the radial expansion extending into the guide space from the internal surface and forming an axial cavity dimensioned such that the drill bit can pass through it. As illustrated in fig. 10, a radial expansion is present that separates portions 118 & 119 of the space 145. When the guide member has a diameter greater than diameter of portion 119 but less than portion 118 of the space 145 (and the drill bit has a diameter less than the diameter of portion 119) the guide member can abut the radial expansion while the drill bit passes through it.
Regarding claim 2, Lemieux further teaches the rigid body comprises a plurality of the guide spaces (figs. 8-10, wherein surface 114 has two guide spaces).
Claim 3 recites at least one part of the rigid body is in a form of at least one rigid plate, the at least one rigid plate forming the flat sole, and the at least one rigid plate having the at least one guide space. As illustrated in figs. 8-10, the portion of the device extending from surface 112 and comprising flat sole 114 is plate-shaped and rigid.
Regarding claim 4, Lemieux further teaches the flat sole of the rigid body is rectangular in shape (fig. 8).
Claim 6 recites the flat sole that is rectangular in shape is extended by a rim providing a lateral guide rim for guiding the device in lateral movement along the board, the lateral guide rim extending: protruding relative to the contact surface of the flat sole; from only one of four edges of the flat sole that is rectangular in shape; and in a half-space extending facing the contact surface. The portion of device 3 comprising surface 112 is interpreted as the rim (figs. 9-10). When surface 114 is placed on top of a board, the rim can be used as a lateral guide since surface 112 can abut and move along a lateral surface of the board. Further, surface 112 of rim protrudes from only one of four edges of the flat sole 114 and in a half space below and facing the flat sole 114. The examiner notes that the half space is interpreted as the space below the flat sole.
Claim 7 recites a plurality of cylindrical tube portions arranged in such a way as to form an alignment of portions, with an axis of alignment perpendicular to the lateral guide rim. As illustrated in figs. 8-10, the flat sole has two cylindrical tube portions that are aligned in a direction perpendicular to the direction the rim extends from flat sole 114.
Claim 8 recites a centering guide having a slot positioned such that a screw head inserted in a terrace can be seen through the slot and such that at least one of the guide spaces can be aligned with a screw having the screw head inserted. The opposite portion of device 3 having surface 110 can be interpreted as the centering guide since a screw can be seen through slot 146 so that one of guide spaces 145 can be aligned with the screw seen via slot 146 (see fig. 10).
Claim 12 recites the each guide space has a depth chosen and adapted to be at least equal to a distance separating a distal drilling end of the drill bit and a distal end of the guide member. This limitation is attempting to define the structure via a method of making the structure. Thus, the structure of Lemieux merely has to be capable of being formed as claimed. The depth of the guide spaces 145 of Lemieux are capable of being at least equal to a distance between a distal end of a drill bit and a distal end of a guide member on a hypothetical drilling tool. Thus, the structure of Lemieux reads on the structural limitations provided by claim 12.
Claim 14 recites the rigid body is shaped so as to have a gripping member forming an ergonomic handle. The portion of Lemieux extending from flat sole (comprising surfaces 106 & 112) can be interpreted as a handle since it can be held by a user to place flat sole 114 on top of a board (see figs. 8-9).
Claim 15 recites the drilling tool is further equipped with a cutter mounted coaxially and such that it rotates as one with the drill bit, and the axial cavity in the radial expansion is dimensioned such that the cutter can pass through it. Since this limitation is directed to a non-positively recited claim element, i.e. the drilling tool, the structure of Lemieux merely has to be capable of being used with a drilling tool having the claimed structure. Since drilling bits/cutters can come in a wide variety of sizes, one of skill in the art will reasonably infer that the portion 119 of guide space can be bigger than a drill bit and cutter so that the cutter can pass through it.
Claims 1, 5, 11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2017/0043415 (“Cheney”).
Claim 1 recites a device for assistance in drilling through a board by means of a drilling tool of a type equipped with a drill bit, means for driving in rotation the drill bit, and a guide member for guiding the drill bit in rotation and in movement along a longitudinal axis of the drill bit, the guide member having an outer face of generally cylindrical shape of revolution about an axis of rotation of the drill bit. The device 200 of Cheney, prior to inserts 100 being inserted in bores 210-212, has a plurality of bores 210-212 that can allow a drill bit of the claimed drilling tool to extend therethrough and drill through a board (fig. 2-4, wherein since bores 210-212 are through-bores a drill bit can be extended therethrough).
Cheney further teaches the device comprising: a rigid body (210, 211 or 212) having a flat sole forming a surface of the rigid body (fig. 4, wherein the flat bottom surface of portions 230 of body 210 is interpreted as the flat sole), the surface providing a contact surface for contact with the board (fig. 3, wherein the bottom of portions 230 is capable of resting on top of a board); and at least one guide space (255) defined by the rigid body (figs. 2-4, ¶ [0032]), forming a bore passing through the rigid body, and opening onto the flat sole (fig. 4).
Claim 1 also recites each guide space being delimited laterally toward an outside by a cylindrical internal surface of revolution about an axis of revolution orthogonal to a main plane of the flat sole. One of skill in the art will reasonably infer that the portion of the guide space below portion 220 is cylindrical since it is not configured to contact hexagonal portion 120 of insert 100 and is configured to surround a cylindrical portion of insert 100 (see figs. 1-6). One of skill in the art would also reasonably infer this since cylindrical bores are the most common type since they are easier to make than bores with flat surfaces. Further, the entire guide space is orthogonal to the flat sole (figs. 2-4).
Claim 1 further recites the internal surface being adapted to be able to interact with the guide member and guide the drill bit in rotation and in longitudinal movement along the axis of revolution. As illustrated in figs. 2-4, the spaces 255 are capable of guiding a drilling tool having a drill bit and guide member when the drill bit has a diameter less than the inner diameter of portion 230 and the guide member has a diameter greater than the inner diameter of portion 230 but less than the diameter of the cylindrical portion of the guide space adjacent to portion 230. Claim 1 further recites the internal surface of each guide space having a radial expansion for stopping the guide member in abutment on the radial expansion during the longitudinal movement of the drilling tool in a direction of the board, the radial expansion extending into the guide space from the internal surface and forming an axial cavity dimensioned such that the drill bit can pass through it. As illustrated in fig. 4, radial expansions 230 are present that reduces the diameter of the guide space. When the guide member has a diameter greater than the inner diameter of portions 230 but less than the diameter of the cylindrical portion of the guide space adjacent to portions 230 (and the drill bit has a diameter less than the inner diameter of portions 230) the guide member can abut the radial expansion while the drill bit passes through it.
Claim 5 recites the cylindrical internal surface delimiting the each guide space is formed of an internal surface of a portion of cylindrical tube of revolution extending from the flat sole into a half-space providing a drilling space, the half-space being opposite a half-space extending facing the surface of the flat sole. As illustrated in figs. 2-3, the spaces 155 are formed via an internal surface of tubular portions 210-212 extending from the flat soles. Further, the guide spaces and tubular portions extend upward form the flat sole into a half-space providing a drilling space, wherein this half space is opposite a half space facing and below the flat sole (figs. 2-4). The examiner notes that the two half spaces are interpreted as being spaces above and below the flat sole, respectively.
Claim 11 recites at least one radial expansion, of the radial expansions of the internal surfaces of the at least one guide space, has at least one radial notch for evacuating sawdust during drilling. There are slots/notches 226 between the radial expansions 230 that are capable of allowing sawdust to be evacuating during a drilling procedure since the notches are at an end of the guide space that can be placed on top of a workpiece to be drilled (figs. 2-4).
Regarding claim 14, Cheney further teaches the rigid body is shaped so as to have a gripping member forming an ergonomic handle (250) (fig. 3, ¶ [0026]).
Rejections under 35 USC 1033
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious4 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Lemieux as applied to claims 8 and 1, respectively, and further in view of US Patent No. 6,394,713 (“Yates”).
Regarding claim 9, Lemieux fails to explicitly teach the centering guide is removable with respect to the rigid body and defines at least one hole adapted to receive and interact with at least one peg on the rigid body in such a way as to rigidly secure the centering guide and the rigid body by means of a non-deformable rigid connection.
However, MPEP 2144.04(V) states that it is prima facie obvious to make components integral or separable. Yates is also directed to a drill guide having a first portion 12 extending in one direction and a second portion 24 extending in an orthogonal direction (figs. 1-2, col. 1 lines 5-10 & cols. 3-4 lines 62-29). The portions 12 & 24 are connected via a peg 25 extending from one of the portions and a locking member 40 (figs. 3-4, col. 4 lines 42-51).
In this case, each of Lemieux and Yates teach drill guides having a first portion extending in one direction and a second portion extending in an orthogonal direction. While Lemieux teaches component 3 being a one-piece component, Yates teaches that orthogonal portions of a drill guide can be removably secured via a peg extending from one of the portions. One of skill in the art also appreciates that modular components have numerous benefits such as flexibility in creating products of different shapes or sizes by swapping modules with other modules, easier customization, and improved repairability by allowing a damaged piece to be replaced while keeping the non-damaged pieces. Thus, it would be obvious to modify Lemieux so that the device is a two-piece structure wherein the rigid body comprises a hole configured to receive and lock a peg on the other piece, i.e. the centering guide, to rigidly secure the centering guide and the rigid body by means of a non-deformable rigid connection.
Claim 13 recites at least one alignment member for aligning the rigid body on a longitudinal end of the board; … the alignment member having an alignment rim adapted to extend: protruding relative to the contact surface of the flat sole; and in a half-space extending facing the contact surface. Lemieux teaches a portion of device comprising rim 112 that is capable of contacting a longitudinal end of a board to align the rigid body over the board (see figs. 8-10). The rim 112 protrudes from the flat sole 114 and into a half-space below the flat sole and facing the contact surface (see figs. 8-10). Lemieux fails to explicitly teach the alignment member being removable relative to the rigid body and defining at least one hole adapted to receive and interact with at least one peg on the rigid body in such a way as to rigidly secure the alignment member and the rigid body by means of a non-deformable rigid connection.
However, MPEP 2144.04(V) states that it is prima facie obvious to make components integral or separable. Yates is also directed to a drill guide having a first portion 12 extending in one direction and a second portion 24 extending in an orthogonal direction (figs. 1-2, col. 1 lines 5-10 & cols. 3-4 lines 62-29). The portions 12 & 24 are connected via a peg 25 extending from one of the portions and a locking member 40 (figs. 3-4, col. 4 lines 42-51).
In this case, each of Lemieux and Yates teach drill guides having a first portion extending in one direction and a second portion extending in an orthogonal direction. While Lemieux teaches component 3 being a one-piece component, Yates teaches that orthogonal portions of a drill guide can be removably secured via a peg extending from one of the portions. One of skill in the art also appreciates that modular components have numerous benefits such as flexibility in creating products of different shapes or sizes by swapping modules with other modules, easier customization, and improved repairability by allowing a damaged piece to be replaced while keeping the non-damaged pieces. Thus, it would be obvious to modify Lemieux so that the rigid body and alignment member of component 3 are removably attached via a peg on the rigid body configured to be inserted and locked into a hole on the alignment member to rigidly secure the alignment member and the rigid body by means of a non-deformable rigid connection.
In the alternative, claims 1, 5, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2017/0043415 (“Cheney”).
Regarding claim 1, Cheney teaches all the limitations as detailed in the 102 rejection above. Assuming arguendo that one of skill in the art would not reasonably infer the portion of the guide space below portion 220 is cylindrical, this would be an obvious design choice absent persuasive evidence that the particular shape of the claimed container is significant. See MPEP 2144.04(IV)(B). In this case, the portion of guide space 255 below upper hexagonal portion 220 is configured to surround a cylindrical portion of insert 100 (see figs. 1-6 of Cheney). Thus, any shape of this portion of the guide space (including cylindrical) that allows the portion to surround a cylindrical shaft is obvious.
In the alternative, the examiner is taking Official Notice that cylindrically shaped bores are well known and are generally easier to form than bores with flat sides. Thus, for ease of manufacturing, it would be obvious to form the portion of guide space 255 below hexagonal portion 220 as cylindrical.
Claim 5 recites the cylindrical internal surface delimiting the each guide space is formed of an internal surface of a portion of cylindrical tube of revolution extending from the flat sole into a half-space providing a drilling space, the half-space being opposite a half-space extending facing the surface of the flat sole. As illustrated in figs. 2-3, the spaces 155 are formed via an internal surface of tubular portions 210-212 extending from the flat soles. Further, the guide spaces and tubular portions extend upward form the flat sole into a half-space providing a drilling space, wherein this half space is opposite a half space facing and below the flat sole (figs. 2-4). The examiner notes that the two half spaces are interpreted as being spaces above and below the flat sole, respectively.
Claim 11 recites at least one radial expansion, of the radial expansions of the internal surfaces of the at least one guide space, has at least one radial notch for evacuating sawdust during drilling. There are slots/notches 226 between the radial expansions 230 that are capable of allowing sawdust to be evacuating during a drilling procedure since the notches are at an end of the guide space that can be placed on top of a workpiece to be drilled (figs. 2-4).
Regarding claim 14, Cheney further teaches the rigid body is shaped so as to have a gripping member forming an ergonomic handle (250) (fig. 3, ¶ [0026]).
Allowable Subject Matter
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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
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 MPEP 808.02, e.g. “Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious search and/or examination burden on the examiner if restriction is not required.” Emphasis added.
3 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
4 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
