DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 26 March 2026, which papers have been made of record.
Claims 1-20 are currently presented for examination, of which claims 14-20 have been withdrawn from consideration.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13, in the reply filed on 26 March 2026 is acknowledged.
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.
Claim 9 is 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 9 recites “wherein the driving device is an impact driver” at line 1. Claim 1 recites “wherein the coupling portion is configured to be operably coupled to a driving device to rotate the boring tool” at lines 11-12. The driving device of claim 1 is not understood to be positively required as part of the boring tool, such that it is unclear how the limitations of claim 9 further define the structure of the tool. Phrased differently: the device of claim 1 can be attached to a driving device, but is not understood to include the driving device itself, such that the recitation of claim 9 appears to further define a device which is not part of the claimed invention.
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 1-2 and 9-13
Claims 1-2 and 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2012/0275875 to Gischus et al. (hereinafter “Gischus”).
Regarding claim 1, Gischus discloses a boring tool (embodiments of tool bit 40 and 70 are exemplary; tool bit 40 in Fig. 4 selected for simplification) comprising: a coupling portion (45; see Fig. 4 and paragraph [0065]); a shank (42); and a cutting portion (41), wherein the shank further comprises: a first end (end at 43; see Fig. 4) proximate to the coupling portion (45), a second end (shank end towards cutting portion 41) proximate to the cutting portion (41), a torsion release neck (44) disposed between the first end and the second end (see Annotated Figure), a first transition (see Annotated Figure, upper end of neck 44) between the first end and the torsion release neck (44), a second transition (see Annotated Figure, lower end of neck 44) between the second end and the torsion release neck (44), and wherein the coupling is configured to be operably coupled to a driving device (not positively required as part of the boring tool) to rotate the boring tool (see paragraph [0065]).
PNG
media_image1.png
686
619
media_image1.png
Greyscale
Regarding claim 2, Gischus discloses the limitations of claim 1, and further Gischus discloses that the torsion release neck (44) is disposed closer to the second end (upper end with respect to Fig. 1) of the shank (43).
Regarding claim 9, Gischus discloses the limitations of claim 1, and further Gischus discloses that the driving device is an impact driver (the driving device is not understood to be positively required, and any impact driver capable of connecting to the connecting portion 45 of the tool would allow the tool to read on the claim, without modification of the tool bit 40).
Regarding claim 10, Gischus discloses the limitations of claim 1, and further Gischus discloses that the first transition and the second transition are right angles (equivalent tool bit 70 has the same shank, coupling portion, and cutting portion, with differently shaped transition portions surrounding narrower portion 74 in Fig. 7).
Regarding claim 11, Gischus discloses the limitations of claim 1, and further Gischus discloses the first transition and the second transition are stepped (equivalent tool bit 70 has the same shank, coupling portion, and cutting portion, with differently shaped transition portions surrounding narrower portion 74 in Fig. 7 for a step from the inner radius at surface 74 to the outer radius of the shank at 73).
Regarding claim 12, Gischus discloses the limitations of claim 1, and further Gischus discloses that the first transition (see Annotated Figure above) and the second transition (see Annotated Figure) are sloped (see Fig. 4; transition portions narrowing to smallest radius of section 44 fairly understood to be angled or sloped)
Regarding claim 13, Gischus discloses the limitations of claim 1, and further Gischus discloses the first transition (see Annotated Figure above) and the second transition (see Annotated Figure) are curved (see Fig. 4; transition portions narrowing to smallest radius of section 44 shown curve towards narrowest portion.
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 3-6
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gischus as applied to claim 2 above.
Regarding claim 3, Gischus discloses the limitations of claim 2, and further Gischus discloses that a diameter of the torsion release neck (44) is less than a diameter of the first end and the second end of the shank (43; see paragraph [0064]), but does not explicitly disclose that the diameter of the torsion release neck is greater than 60% of the diameter of the first end and the second end and less than 95% percent of the diameter of the first end and the second end of the shank.
The MPEP teaches that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was no patentability distinct from the prior art device. (MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the recited range of diameter would cause the torsion neck taught by Gischus to behave differently in use than any other diameter. Accordingly, it would have been within the level of ordinary skill in the art to modify the dimensions such as the diameter of the torsion neck as a matter of design choice, without expecting any modification of the principles of operation of Gischus, including providing a diameter of between 60% and 95% of the diameter of the shank portion 43.
Thus, Gischus teaches the limitations of claim 3.
Regarding claim 4, Gischus teaches the limitations of claim 3. Gischus does not explicitly teach that a diameter of the torsion release neck is greater than 80% of a diameter of the first end and the second end of the shank, and less than 90% of the diameter of the first end and the second end of the shank. However, there is nothing of record that suggests that the recited range of diameters would cause the torsion neck taught by Gischus to behave differently in use than any other diameter. Accordingly, it would have been within the level of ordinary skill in the art to modify the dimensions such as the diameter of the torsion neck as a matter of design choice, without expecting any modification of the principles of operation of Gischus, including providing a diameter of between 80% and 90% of the diameter of the shank portion 43, because the MPEP teaches that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was no patentability distinct from the prior art device. (MPEP 2144.04(IV)(A)).
Thus, the Gischus teaches the limitations of claim 4.
Regarding claim 5, Gischus discloses the limitations of claim 1, and further Gischus discloses that the torsion release neck (44) has an axial length (see Fig. 4). Gischus does not does not explicitly disclose that the axial length of the torsion release neck is greater than 0.5 inches and less than 1.5 inches. Gischus teaches that “the length of the drive shaft is not critical.”
The MPEP teaches that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was no patentability distinct from the prior art device. (MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the recited range of lengths of the torsion neck would cause the torsion relief neck taught by Gischus to behave differently in use than any other length of torsion relief neck. Accordingly, it would have been within the level of ordinary skill in the art to modify the dimensions such as the length of the torsion neck as a matter of design choice, without expecting any modification of the principles of operation of Gischus, including providing a length of between 0.5 inches and 1.5 inches.
Thus, Gischus teaches the limitations of claim 5.
Regarding claim 6, Gischus discloses the limitations of claim 5, and further Gischus discloses that the torsion release neck (44) has an axial length (see Fig. 4). Gischus does not does not explicitly disclose that the axial length of the torsion release neck is 18 mm. Gischus teaches that “the length of the drive shaft is not critical.”
The MPEP teaches that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was no patentability distinct from the prior art device. (MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the recited range of lengths of the torsion neck would cause the torsion relief neck taught by Gischus to behave differently in use than any other length of torsion relief neck. Accordingly, it would have been within the level of ordinary skill in the art to modify the dimensions such as the length of the torsion neck as a matter of design choice, without expecting any modification of the principles of operation of Gischus, including providing a length of between 18 mm.
Thus, Gischus teaches the limitations of claim 6.
Claim 7-8
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gischus as applied to claim 1 above, and further in view of United States Patent Application Publication 2008/0193236 to Durfee (hereinafter “Durfee”).
Regarding claim 7, Gischus discloses the limitations of claim 1, however Gischus does not explicitly disclose that the boring tool is an auger bit. However, Gischus teaches that the working or cutting portion may be provided with means for carrying out any suitable kind of work and that “the work portion may be provided with means for drilling, tapping, milling, reaming or the like” (see paragraph [0012]). Gischus does not appear to consider the particular shape of the cutting portion to be critical.
It is known in the art of boring tools to provide another conventional tool functions, such as augers. For example, Durfee teaches such a tool. Durfee teaches a boring tool (see Fig. 2) having the form of an auger (100) including a cutting portion (106), a shank (102), a coupling portion (104) for connecting to a driving tool, and a reduced diameter portion (104b).
It would have been obvious to one having ordinary skill in the art to modify the device taught by Gischus to include another and conventional cutting portion, such as an auger as taught by Durfee. (See MPEP 2143(1)(A)). The resulting tool would predictably allow for the use of a cutting tool driven by a driving device in a conventional manner, with the torsion resistance taught by the device of Gischus.
Thus, the combination of Gischus and Durfee teaches the limitations of claim 7.
Regarding claim 8, Gischus discloses the limitations of claim 1, however Gischus does not explicitly disclose that the boring tool is a spade bit. However, Gischus teaches that the working or cutting portion may be provided with means for carrying out any suitable kind of work and that “the work portion may be provided with means for drilling, tapping, milling, reaming or the like” (see paragraph [0012]). Gischus does not appear to consider the particular shape of the cutting portion to be critical.
It is known in the art of boring tools to provide another conventional tool functions, such as spade bits. For example, Durfee teaches such a tool. Durfee teaches a boring tool (see Fig. 3) having the form of a space bit tool (300) including a cutting portion (306), a shank (302), a coupling portion (304) for connecting to a driving tool, and a reduced diameter portion (304b).
It would have been obvious to one having ordinary skill in the art to modify the device taught by Gischus to include another and conventional cutting portion, such as a spade bit as taught by Durfee. (See MPEP 2143(1)(A)). The resulting tool would predictably allow for the use of a cutting tool driven by a driving device in a conventional manner, with the torsion resistance taught by the device of Gischus.
Thus, the combination of Gischus and Durfee teaches the limitations of claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent 2,389,909 to Hofbauer teaches a boring tool (see Fig. 1) having a cutting portion (lower end) and a shank (13), with a torsion neck portion (groove 13) within the shank.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARRELL C FORD/Examiner, Art Unit 3726
Prosecution Insights