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 .
Election/Restrictions
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/13/2026.
Applicant's election with traverse of Species A, claims 1-14, 19, in the reply filed on 3/13/2026 is acknowledged. The traversal is on the ground(s) that Fig. 6 is not distinct from Fig. 1. This is found persuasive and elected invention is being considered as Fig. 1-10. However, Fig. 14 is found to be distinct from the elected invention and thus claims 14-18 are hereby withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities:In line 8-9: “the cutting tip act as a bit driver” should read -- the cutting tip acts as a bit driver --Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the cutting tip has a profile, when viewed axially from the first end has one shape type selected from the following group of: hex, square, pentagon, hexlobe, hex key, TA, tri-point, tri-wing, clutch, polydrive, bistol, and spline” (claim 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 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 3-8, 12-14, 19 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.
Claim 3 recites the limitation " the edge " in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation " the countersink cutter ". There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation “the first helix and the second helix is an angle”. It is unclear how helixes can be an angle. The scope is unclear.
Claim 13 recites the limitation “the first helix of the first flute portion has a different helix angle to the second helix of the second flute portion”. The claim is relating a different helix angle to a second helix which is unclear. It would be clearer to relate a first helix angle to a second helix angle to clarify that each helix has a helix angle. The claim should also clarify if the angle from claim 12 is being referred to or not, without introducing it twice.
Claim 14 recites the limitation "the shape of the cutting tip comprises chamfered lines between the periphery of the cutting tip shape, when viewed axially above from the first end”. It is unclear what chamfered lines are. Are these surfaces? What is a “line” in relation to a drill tip shape? The claim states “between the periphery” so it does not seem to refer to chamfered edges, is this claim merely reciting an angled cutting tip? This may be a result of a direct translation from another language and thus the scope is unclear.
Claim 19 recites ““the cutting tip has a profile, when viewed axially from the first end has one shape type selected from the following group of: hex, square, pentagon, hexlobe, hex key, TA, tri-point, tri-wing, clutch, polydrive, bistol, and spline”. However, this is not explained in the specification or shown in the drawings. It appears that Fig. 5A could represent tri-point and/or tri-wing but none of the other profiles are shown or described. Paragraph 70 and Fig. 7 describe the cutting tip have alternate geometries (which still do not represent the claimed profiles) and it appears that said geometries would not possess the at least 135-degree angle required in claim 1. It is not clear how these profiles would exist in the cutting tip and the scope of the claim is thus unclear.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 9, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapitz (WO0234438A2, from IDS) in view of Greenhill (PGPub 2020/0108451).
Re Claim 1, Kapitz discloses a drill bit 3-7 comprising: a shaft having a cutting tip 32-37 at a first end and a drive shank at a second end, wherein the drive shank [is adapted to engage with a drive motor] (inherent), and wherein the cutting tip comprises an axially protruding shape; a first flute portion positioned between the cutting tip and the drive shank, wherein the first flute portion includes a first thread with a first sharpened cutting edge in a first helix (Fig. 2a-7b); and the cutting tip includes a cutting surface that joins to the first thread, and wherein the cutting tip acts as a bit driver (Fig. 2a-7b). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed. Kapitz does not disclose the first end of the cutting tip has a point angle greater than 135 degrees. However, Greenhill teaches a cutting tip has a point angle greater than 135 degrees (Fig. 1-3). It would be obvious to one of ordinary skill in the art to utilize a point angle greater than 135 degrees, as taught by Greenhill, for the purpose of providing a desired geometry of the drill and to form a desired hole using known configurations.
Re Claim 9, Kapitz does not specifically discloses the length of the first flute portion is in the range of: 19 mm to 120 mm. It would be obvious to have the specific dimensions since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and also since it would have been an obvious matter of design choice to make the drill of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47 and also such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re Claim 19, as best understood, Kapitz discloses the cutting tip has a profile, when viewed axially from the first end has one shape type selected from the following group of: hex, square, pentagon, hexlobe, hex key, TA, tri-point, tri-wing, clutch, polydrive, bistol, and spline (hexlobe and could also be considered polydrive; Fig. 3a-3b).
Claim(s) 2-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapitz in view of Greenhill in further view of Kim (KR 20140138503 A, machine translation relied on, from IDS).
Re Claim 2, Kapitz does not disclose a countersink cutting member secured to the first flute portion of a first diameter, wherein the countersink cutting member includes a second diameter larger than the first diameter and wherein the edge of the countersink cutting member proximal to the first end is sharpened. However, Kim teaches a countersink cutting member 131 secured to a first flute portion 130 of a first diameter, wherein the countersink cutting member includes a second diameter D larger than the first diameter and wherein the edge of the countersink cutting member proximal to the first end is sharpened (Fig. 1-5). It would be obvious to one of ordinary skill in the art to utilize a countersink cutting member, as taught by Kim, for the purpose of providing a desired geometry of the drill and to form a desired hole using known configurations and also since it would have been an obvious matter of design choice to make the drill of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Re Claim 3-4, Kapitz does not disclose the drill bit comprises a second flute portion secured between the first flute portion of a first diameter and a countersink cutting member of a second diameter, wherein the second flute portion includes a second thread with a second sharpened cutting edge in a second helix, and wherein the second flute portion includes a third diameter larger than the first diameter and smaller than the second diameter, and wherein the edge of the countersink cutting member proximal to the first end is sharpened, the countersink cutting member comprises a counterbore cutting member positioned between the countersink cutting member and the drive shank. However, Kim teaches drill bit comprises a second flute portion 120 secured between the first flute portion 130 of a first diameter and a countersink cutting member (right of 120) of a second diameter, wherein the second flute portion includes a second thread with a second sharpened cutting edge in a second helix, and wherein the second flute portion includes a third diameter larger than the first diameter and smaller than the second diameter, and wherein the edge of the countersink cutting member proximal to the first end is sharpened, the countersink cutting member comprises a counterbore cutting member positioned between the countersink cutting member and the drive shank (Fig. 1-5). It would be obvious to one of ordinary skill in the art to utilize a second flute portion and a countersink cutting member, as taught by Kim, for the purpose of providing a desired geometry of the drill and to form a desired hole using known configurations and also since it would have been an obvious matter of design choice to make the drill of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Re Claims 5-9, as best understood, Kapitz does not disclose the diameter of the counterbore cutting member is in the range of: 3.5 mm to 75.0 mm, the depth of the counterbore cutting member is in the range of: 1.6 mm to 48.0 mm, the diameter of the countersink cutting member is the in range of: 2.0 mm to 52.6 mm, the length of the countersink cutter is in the range of: 1.6 mm to 16 mm, the length of the first flute portion is in the range of: 19 mm to 120 mm. However, Kim teaches main body unit has a diameter of 75-350 micrometers while the step unit has a diameter of 50-70% of the diameter of the main body unit, The combined length Ld may be 5 to 20 times the diameter D of the body portion 120 (Abstract; para. 27; claim 1). It would be obvious to have the specific dimensions since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and also since it would have been an obvious matter of design choice to make the drill of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47 and also such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re Claim 12, as best understood, Kim teaches the first helix and the second helix is an angle chosen between the range of 10° to 45° (para. 35).
Re Claim 14, as best understood, Kapitz discloses the shape of the cutting tip comprises chamfered lines between the periphery of the cutting tip shape, when viewed axially above from the first end (Fig. 2a-7b).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapitz in view of Greenhill in further view of Wienhold (US 7,147,409).
Re Claim 10, Kapitz does not disclose the drive shank comprises a quick-release bit holder. However, Wienhold teaches drive shank comprises a quick-release bit holder (Fig. 1-6; col. 1, 4). It would be obvious to one of ordinary skill in the art to utilize quick-release bit holder, as taught by Wienhold, for the purpose of allowing changing of bits for different sizes as needed and also since it is a well known configuration.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapitz in view of Greenhill in further view of Kim, in further view of Ogawa (US 9,969,012).
Re Claim 13, as best understood, Kapitz does not disclose the first helix of the first flute portion has a different helix angle to the second helix of the second flute portion. However, Ogawa teaches a first helix of the first flute portion has a different helix angle to the second helix of the second flute portion (col. 4, lines 9-20; Fig. 1-8). It would be obvious to one of ordinary skill in the art to utilize different helix angles, as taught by Ogawa, since this configuration makes it possible to increase a rigidity on a rear portion side of the body while performing machining with a favorable cutting balance (col. 1) and for the purpose of providing a desired geometry of the drill and to form a desired hole using known configurations and also since it would have been an obvious matter of design choice to make the drill of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kapitz in view of Greenhill in further view of Scanlon (2013/0302101)
Re Claim 11, Kapitz does not disclose the drill bit is composed of one material selected from the following group of: carbon steel, and tungsten carbide. However, Scanlon teaches drill bit is composed of one material selected from the following group of: carbon steel (para. 2). It would be obvious to one of ordinary skill in the art to utilize these materials, as taught by Scanlon, for the purpose of obtaining high strength and durability and since these are known materials for drills and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
See form 892 for additional relevant prior art not relied on for rejection.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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