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
Applicant’s election without traverse of Group I (Claims 1-9) in the reply filed on 04/26/2026 is acknowledged. Claims 10-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 10-26 have been cancelled.
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 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.
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
US20210197296A1
Publication of WO2019090123A1 2019-05-09
Figure 7A shows an arbor having a shaft (14) on an end. The assembly also includes a sleeve (102); spring (174); retaining ring (190) in a groove of the arbor (Figure 7A); a bore (66, Figure 2) for a set screw (70, figure 2) that removably couples to the pilot pit (42); a locking member (98); the sleeve is movable between a first and second position (Figures 7A-7B)(¶0074).
EP3181275A1
2017-06-21
Figure 5 teaches a quick change device including an arbor (9) having a groove and a retaining ring; a sleeve (7); a locking member (10); and wherein the sleeve is movable and biased by a spring (25).
The reference does not disclose a set screw/fastener in an aperture in the arbor.
US20240278337A1
2022-03-11
Figure 4A(1)-(2) teaches an arbor (310) having two ends; a groove with a retaining ring; a spring (346); a sleeve (340) movable in relation to the arbor; a locking member (349) supported by the arbor.
The reference does not disclose a set screw/fastener in an aperture in the arbor.
US20090226270A1
2008-03-06
Figure 4 teaches an arbor (20) having a shank including a groove and a retaining ring (60) and a bore for a set screw (48); a sleeve (50); and a locking member (41). The assembly as a spring (38) that biases the sleeve (50) towards a locked position (¶0080).
US20140255117A1
2013-03-11
Figures 2-3 teach an adapter (10) that has a groove (132) and a bore (101) for a holding ring (19) and set screw (102) respectively. The assembly also includes a sleeve (18) that is biased into a first position using a spring (17); and a locking member (16) that is a ball detent.
The difference between the prior art and the claimed invention is the flange (103) on the adapter is a part of the arbor/adapter instead of a removable retaining ring within a groove. This structure is known in the art.
US20070160435A1
2006-04-11
Figure 2 teaches an exploded view of an assembly including an arbor (12) that has a bore (17) for a set screw (70) and retaining groove (19) for a ring (80). The assembly further includes a sleeve (30) that is biased by a spring (40). Figure 3 shows the assembly has a locking member (20) supported by the shank.
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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