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 .
Specification Objections
The disclosure is objected to because of the following informalities: Page 2 mentions specific claims. Specific claim numbers should not be recited in the specification as they are subject to amendment and/or cancellation.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 16, 22-24, 26-28 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.
Regarding claim 16, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 22 recites the limitation "the display device" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the alignment aid" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "the alignment aid" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation "the same display means" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation “the shank of the friction-welded element is removed with a hand-held machine having a machining tool, by passing the rotating machining tool through the head of the friction-welded element in the direction of the shank” and “after completion of the drilling operation, a new friction-welded is inserted to form a friction-welded joint with the bottom of the blind hole”. It is unclear if the claim is positively performing the steps being discussed. Examiner suggests positively reciting the method steps (i.e. removing the shank of the friction-welded element with a hand-held machine having a machining tool, for example) such that it can not be interpreted that the claim only requires an absence of the shank to meet the claim language as opposed to requiring the method step of removing the shank. The current scope is unclear.
Claim 27 recites the limitation “a hand-held machine as claimed in any one of claims 1 to 11”. As claims 1-11 are cancelled, the scope of the claim is unclear. Additionally, Examiner suggests reciting a positive method step in this claim (i.e. removing the friction welded element using a hand-held machine as claimed in claim 1, for example). Also, it is noted that claim 26 already introduces “a hand-held machine”, claim language should clarify whether there are multiple machines or specifically recite that the machine from claim 26 is a machine from a previous claim. Finally, Claim 27 is bordering on being ambiguous as attempting to embrace two different statutory classes of invention. The claim preamble recites a "method", but the body thereof injects product/apparatus structure and non-positively implies steps of using that structure. See MPEP 2173.05 (p) (II).
Claim 27 recites the limitation “a friction welded element”. However, this element was already introduced in claim 26. Examiner suggests replacing this with -- the friction welded element--.
Claim 28 recites the limitation "the opening" and “the contact element” in line 2. There is insufficient antecedent basis for this/these limitation in the claim.
Claim Rejections - 35 USC § 102
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 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) 15-19, 25 is/are rejected under 35 U.S.C. 102a1 and a2 as being anticipated by Otten (PGPub 2004/017524).
Re Claim 15, Otten discloses hand-held machine for removing a friction-welded element, having a head, from a component assembly, wherein the hand-held machine comprises a machine housing and a drive unit which is received therein, wherein, furthermore, an attachment de vice is provided which is connected to the machine housing, wherein the attachment device comprises furthermore, a telescopic element which has a first component 18, arranged free from movement relative to the machine housing, and a second component 19, arranged movably in the axial direction relative to the first component, wherein the second component is prestressed in the axial direction in the pressing direction against the machine housing, furthermore, the attachment device has a tool drive shaft which is driven via the drive unit, wherein the tool drive shaft is mounted rotationally on the second component by a bearing element 3 and is guided axially movably relative to the second component, wherein the second component has a contact element 12, by way of which the second component can be placed onto the component assembly, wherein a machining tool is connected to the tool drive shaft, wherein, furthermore, a stop 28, by which the drilling depth is limited, acts between the second component and the machine housing (Fig. 2-3; para. 24-37).
Re Claim 16, as best understood, Otten discloses the bearing element is a sliding bearing (Fig. 2-3), in particular taking the form of a sliding bearing sleeve.
Re Claim 17, Otten discloses the first component and the second component engage with one another in a guide region, with the bearing element being located between the front end of the contact element and the guide region (Fig. 2-3).
Re Claim 18, Otten discloses the bearing element is of a sleeve-shaped design and has lateral recesses made therein [for chip evacuation] (Fig. 2-3). 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.
Re Claim 19, Otten discloses the stop is adapted to be varied for adjusting the maximum drilling depth and comprises an adjusting element (Fig. 2-3; para. 37).
Re Claim 25, Otten discloses the first component is located radially inward and the second component is located radially outward (Fig. 1-2).
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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otten in view of Strasser (PGPub 20040215395).
Re Claim 20, Otten does not disclose the stop interacts with a signal unit. However, Strasser teaches a stop interacts with a signal unit (para. 13). It would be obvious to one of ordinary skill in the art to utilize a signal unit, as taught by Strasser, for the purpose of providing a visible cue to a user for optimizing the process.
Claim(s) 21-22, 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otten in view of Thompson (JP 2020142365 A, machine translation relied on)
Re Claims 21-22, 24, as best understood, Otten discloses the attachment device includes an alignment aid that comprises a display device for positional deviation, the alignment aid comprises at least one accelerometer capable of measuring acceleration about at least two axes, and the display device for positional deviation comprises an electro-optical, the signal unit is an electro-optical display, and in that the electro-optical display and the alignment aid use the same display means. However, Thompson teaches the attachment device includes an alignment aid that comprises a display device for positional deviation, the alignment aid comprises at least one accelerometer capable of measuring acceleration about at least two axes, and the display device for positional deviation comprises an electro-optical, the signal unit is an electro-optical display, and in that the electro-optical display and the alignment aid use the same display means (pages 2-3, 5). It would be obvious to one of ordinary skill in the art to utilize these features, as taught by Thompson, for the purpose of enabling enhanced control of the drilling process and ensuring the drill is operating effectively and efficiently and enabling monitoring of the angle and positioning of the drill and providing this information to the user.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otten in view of Kim (WO2013191487, machine translation relied on).
Re Claim 23, as best understood, Otten does not disclose the alignment aid comprises diodes capable of projecting a pattern onto a drilling surface. However, Kim teaches an alignment aid comprises diodes capable of projecting a pattern onto a drilling surface (Fig. 1-7; pg. 5). It would be obvious to one of ordinary skill in the art to utilize diodes capable of projecting a pattern onto a drilling surface, as taught by Kim, for the purpose of ensuring drilling is performed to desired areas and providing visual cues for the user to assist in the process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799