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 objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “aperture being positioned between the groove and the second end” in Claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Figures 4 and 8 show the set screw aperture (132) is located between the groove (78) and the second end (98). However, Claim 1 requires a first end operable to be coupled to a power tool and the second end is opposite the first end. The specification, ¶0027 discloses that the second end (98) is configured to be coupled to a power tool, as shown in Figure 4. Therefore, there is no disclosure in the drawings of the claimed subject matter regarding the location of the aperture.
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 Interpretation
It is noted that “first end” and “second end” of the arbor assembly as claimed in Claims 1 and 4 is the opposite of what is detailed in the specification. In Claim 1, the “first end” is to be coupled to a power tool, yet Figure 2 and published ¶0027 show that the second end (98) is to be coupled to a power tool.
¶0034 discusses the dimensions presented in Claims 8-9. No criticality or motivation for choosing the claimed dimensions was found.
Claim Interpretation (112(f))
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1 recites “locking member”. (A) the term member is a generic placeholder term; (B) “member” performs the function of engage a hole saw or an adapter; (C) there is no further structure to perform the claimed action. Therefore, the limitation will be interpreted under 35 USC 112(f) based on the specification as “ball detent” as recited in Claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Novak (US20090226270A1).
Claim 1
Novak teaches an arbor assembly (Figure 4) for a hole saw (12) and a pilot bit (66), the arbor assembly comprising: a shank (24) having a first end operable to be coupled to a power tool (¶0061 teaches the end (24) is a power drive shank.), a second end (22) opposite the first end, and a longitudinal axis extending between the first and second ends (Figure 4), the shank including a groove (62) and an aperture (Where item 48 is located), the aperture being positioned between the groove and the second end (Figure 4); a sleeve (30 and 50) moveable relative to the shank along the longitudinal axis (¶0080 and Figures 4 and 16-17 teach the collar (50) and drive pin plate (30), which make up the analogous sleeve assembly, move axially.); a locking member (41) supported by the shank (Figure 4), the locking member configured to engage a hole saw or an adapter (30) of the hole saw to selectively secure the hole saw to the arbor assembly (Figure 4 and ¶0084); a retaining ring (60) supported by the groove of the shank to limit the axial movement of the sleeve relative to the shank (Figure 4); and a fastener (48) at least partially received in the aperture (Figure 4), the fastener configured to secure the pilot bit to the arbor assembly (Figure 4 and ¶0086); and wherein the sleeve is moveable relative to the shank between a first position, where the locking member secures the hole saw to the arbor assembly, and a second position, where the locking member releases the hole saw from the arbor assembly. (¶0077 and 0078, alongside Figures 16-17 teach the sleeve assembly (30 and 50) moves axially between two positions to engage or release the bit (66).)
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Examiner Interpretation of Novak, Figure 4
Claim 2
Novak teaches the arbor assembly of claim 1, wherein the shank further includes a bore (29) defined in the second end, the bore configured to receive a portion of the pilot bit. (Figure 4)
Claim 3
Novak teaches the arbor assembly of claim 2, wherein the bore (29) includes a first portion with a first diameter, and wherein the bore includes a second portion adjacent the first portion with a second diameter that is smaller than the first diameter. (See annotated Figure above for the interpreted first and second portions.)
Claim 4
Novak teaches the arbor assembly of claim 1, wherein the sleeve moves toward the first end of the shank when moving from the first position to the second position. (Figure 17 shows the second position, where the sleeve (30 and 50) is moved towards the first end.)
Claim 5
Novak teaches the arbor assembly of claim 1, further comprising a spring that biases the sleeve toward the first position. (¶0080 teaches the spring biases the collar (50) into the engaged position. The engaged position in Novak is the analogous first position.)
Claim 6
Novak teaches the arbor assembly of claim 1, wherein the locking member is a ball detent. (Figure 4 shows the locking member (41) is a rounded locking member.)
Claim 7
Novak teaches the arbor assembly of claim 1, wherein the sleeve includes a limiting groove that receives the locking member when in the second position. (Figure 17 shows the second position and that the locking member (41) is received in a groove (45) in a part of the sleeve assembly.)
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.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Novak (US20090226270A1).
Claim 8
Novak teaches the arbor assembly of Claim 1 where the aperture is positioned a distance from the first end of the shank.
Novak does not explicitly disclose dimensions, and as such does not disclose the distance being less than 0.8 inches.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to size distance of Novak with the claimed dimension because applicant has not disclosed that having the claimed dimension provides an advantage, is used for a particular purpose, or solves a stated problem. The claimed dimension is discussed in published ¶0034. One of ordinary skill in the art, furthermore, would have expected Novak’s aperture, and applicant’s invention, to perform equally well with either the dimension by Novak or the claimed dimension because both dimensions would perform the same function of placing the aperture in a location where the fastener can engage the pilot bit.
Therefore it would have been prima facie obvious to modify Novak to obtain the invention as specified in Claim 8 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Novak.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Claim 9
Novak teaches the arbor assembly of Claim 1 where the groove is positioned a second distance from the first end of the shank.
Novak does not explicitly disclose dimensions, and as such does not disclose the second distance being greater than 1 inch.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to size distance of Novak with the claimed dimension because applicant has not disclosed that having the claimed dimension provides an advantage, is used for a particular purpose, or solves a stated problem. The claimed dimension is discussed in published ¶0034. One of ordinary skill in the art, furthermore, would have expected Novak’s groove, and applicant’s invention, to perform equally well with either the dimension by Novak or the claimed dimension because both dimensions would perform the same function of placing the groove in a location where the retaining ring can secure the sleeve and spring in place.
Therefore it would have been prima facie obvious to modify Novak to obtain the invention as specified in Claim 9 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Novak.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Response to Arguments
Applicant's arguments filed 08/19/2026 have been fully considered but they are not persuasive.
Applicant argues that:
Novak does not teach “a locking member supported by a shank and configured to engage a hole saw or an adapter of the hole saw to selectively secure the hole saw”. (Page 4-5 of the remarks)
Novak teaches a drive pin plate (30) that is part of the sleeve (30, 50) assembly that acts as adapter for the hole saw. Figure 3 shows pins (36) that extend from the drive plate and interact with the drive pin apertures (18) of the hole saw plate (14). This drive pin plate (30) interacts with the locking member (41) through the shear plate (44) and the ball (46) (See ¶0077). As shown in Figure 16, when in the analogous first position, the drive pin plate (30) is abutted to the plate (14) of the hole saw (12) and secures the hole saw. In this position, the locking member (41) engages the shear plate (44), and the ball (46) through a mechanical interaction. Therefore, the locking member (41) engages the adapter (30) for the hole saw through a mechanical interaction while the adapter selectively secures the hole saw.
Novak does not disclose “the bore includes a first portion with a first diameter and wherein the bore includes a second portion adjacent the first portion with a second diameter than is smaller than the first diameter”
Novak teaches the arbor body (20) and shank (24) are one continuous piece of material in Figure 4. The figure also shows that the interior of the body and shank are hollow through illustration of an open area in the cross sectional view and the fact that the pilot bit (66) is passed within the illustrated open area. The “bore” as claimed is interpreted as the interior open area as shown in Figure 4, which has two areas of different diameter as indicated in the annotated figure used in the rejection. Even though the annotation only points to the bore being located at one end of the body (20), the Figure shows that this bore extends all the way through the body. In regards to the bore “configured to receive a portion of the pilot bit”, there is no indication in Figure 4 of Novak that the pilot bit could not be pushed further into the bore and extend all the way to the shank portion of the bore and the claim is an apparatus claim requiring the intended use/functional limitation of “configured to”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the PTO-892 Notice of References Cited Form.
Document
Prior Art Date
Description of Relevant Subject Matter
US20190151959US
2018-06-27
Figure 2 shows an arbor assembly that includes a power tool attachment end (12), a set screw (125) and a positioning pin (1121) that is an analogous locking member.
THIS ACTION IS MADE FINAL. 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 Michael W Hotchkiss whose telephone number is (571)272-3854. The examiner can normally be reached Monday-Friday from 0800-1600.
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, Sunil K Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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