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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/20/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-12 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 1, line 2 “which” is unclear whether the “which” refers back to the substrate or the spotter bit. Claim 7 has the same issue.
Claims 6, 8-12, the phrase “characterized” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention or not. The transitional phrase (i.e. between the preamble and the body of a claim) “characterized” and phrases incorporating it (“characterized by”, “characterized in that”, etc.) are common in applications of European origin in US practice claims containing these words and phrases may be rejected under 35 USC 112b when characterized may connote more than mere description (see a dictionary definition). Therefore, the reader may be unsure about the meaning of the wording of the claim, and additionally the scope of the claim is often unclear. Avoiding the confusion and making the claim more clearer, the phrase “characterized such that …” should be suggested to replace for “having” or “comprising” or delete the language or amending any equivalent language.
The scope of claim 6 is unclear since the preamble of the claim is directed to “the spotter bit”, not a workpiece. Therefore, the construction substrate is a workpiece and intended use limitation. Does claim 6 recites any structure of the spotter bit? Claim 12 has the same issue.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of copending application No. 18/649338.
Although the claims language at the copending application are not identical, they are not patentably distinct from each other because it is clear that all structures of Claims of this pending application are found in Claims of the copending application.
See at least claim 1, the copending application shows “a spotter bit for use with a hole of a predetermined diameter D extending through a construction substrate having a thickness T, which includes:
a first end configured to be positionably disposed against the construction substrate and a second end extending from said first end and is elongated and has a diameter D´ less than the hole diameter D and a length L longer than the thickness T of the construction substrate and extending beyond a surface of the construction substrate when said second end extends through the hole and said first end abuts the construction substrate, and wherein said second end is configured to illuminate” as stated in claim 1 of the copending application.
Regarding claims 2-12, see claims 2-20 of the copending application.
This is a nonprovisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4, 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adrian (US 2007/0068020 A1).
Regarding claim 1, Adrian shows a spotter bit (10, Figures 1-3) for use with “a hole of a predetermined diameter D extending through a construction substrate having a thickness T” (this is intended use limitation, in which the finder has structures as set below to be used with this intended use limitation), the spotter bit includes:
a first end (where the reference 16 is pointing, Figure 2) configured to be positionably disposed against the construction substrate and a second end (10) extending from said first end and is elongated and has a diameter D' less than the hole diameter D and a length L longer than the thickness T of the construction substrate and extending beyond a surface of the construction substrate (this finder 10 be smaller than a hole of the substrates since the substrate is an intended use limitation), when said second end extends through the hole and said first end abuts the construction substrate (since the finder is having a length and it can be performed the limitation), and wherein said second end is configured to illuminate (Figure 1 shows a light beam 18).
See MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent".
Regarding claims 2-3, Adrian shows that said first end is equipped with a housing (100) made of metal (see MPEP 608.02, Section IX, drawing symbols, the wall or housing 100 is metal) having operably disposed therein a power source (74, battery 42) which operably connects to said second end in a manner to deliver power thereto to cause illumination thereof (Figure 3 and see Paras. 64-65), wherein said power source includes a rechargeable battery (Para. 59 “recharge batteries 42”).
Regarding claim 4, Adrian shows that said first end includes an on/off switch to control illumination of said second end (Paras 63-64 “an ON/OFF switch”).
Regarding claim 6, the construction substrate can be one of a truss and joist connected thereto for support thereof and said second end having a length L is greater than the thickness T plus width W of said one of the truss and joist (the length of the second end of the finder 10 can be greater since it does not define a workpiece).
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 7-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Adrian.
Regarding claim 7, Adrian shows a spotter bit system (see claim 1 above, Figure 1) for use in locating a plurality of holes in a construction substrate, the system includes:
“a spotter bit for use with a hole of a predetermined diameter D extending through a construction substrate having a thickness T and has a
first end configured to be positionably disposed against the construction substrate and a second end extending from the first end and is elongated and has a diameter D' less than the hole diameter D and a length L longer than the thickness T of the construction substrate and extending beyond a surface of the construction substrate when said second end extends through the hole and said first end abuts the construction substrate, and wherein said second end is configured to illuminate” as set forth in claim 1.
However, Adrian fails to show a plurality of spotter bits.
Examiner takes Official Notice that it has long been known to have a plurality of spotter bits. Examples can be provided if challenged, as they are numerous. It would have been obvious to a person having ordinary skill in the art (PHOSITA) to have a plurality of spotter bits, in order to allow to have spare ones for replacement if one is damaged.
Regarding claim 8, the modified system of Adrian shows each said spotter bit having said first end is equipped with a housing made of metal having operably disposed therein a power source which operably connects to said second end in a manner to deliver power thereto to cause illumination thereof (see claim 2 above).
Regarding claim 9, the modified system of Adrian shows that each said spotter bit having said power source includes a rechargeable battery (see claim 3 above).
Regarding claim 10, the modified system of Adrian shows that each said spotter bit having said first end includes an on/off switch to control illumination of said second end (see claim 4 above).
Regarding claim 12, see the discussion in claim 6 above.
Claims 5, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Adrian in view of Kilwin (US 2008/0050187).
Regarding claims 5 and 11, Adrian shows all of the limitations as stated above except that said first end of said spotter bit includes an audible sound chip operably connected thereto to assist in emitting a sound for location.
Kilwin shows a system (100) having a bit (110, Figure 1), wherein a first end of said bit includes an audible sound chip operably connected thereto to assist in emitting a sound for location (Para. 24 “a coordinate indicator 114, for example, may be an audio indicator, such as an indicator which emits recognizable tones or signals as the probe tip 112 nears a target position”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have had an audible sound chip operably connected thereto to assist in emitting a sound for location, as taught by Kilwin to the spotter bit of Adrian, in order to know where a bit tip (probe tip) that nears a target position (Kilwin’s para. 24).
Conclusion
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/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 2/24/2026