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
Claims 2, 4-7 and 11 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species of Figures 11A-11C, there being no allowable generic or linking claim. It is noted that independent claims 2 and 7 are now directed to species that were nonelected as set forth in the Response to Election/Restriction dated 07/08/2024. Applicant elected Species of Figures 1-6, which do not show a non-uniform and crown-like upper edge with alternating peaks and valleys.
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) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt US 8,770,900 in view of Novak et al. US 2011/0170971 (hereafter—Novak--).
In regards to claim 1, Schmidt discloses a device (Figure 3) comprising: a hole saw (2) comprising: a hollow cylindrical body having a first end (machining end), a second end (closer to shank 16), and a cylindrical wall (see at least Figures 1 and 2) extending from the second end to the first end; wherein the second end comprises a base plate (24) defining a central bore (where 18 extends therethrough) that engages with an arbor for a power tool; wherein the base plate (24) further comprises one or more cutting edges (26), each cutting edge (26) of the one or more cutting edges (26) is capable of being configured to cut away material within the hollow cylindrical body during rotation of the hole saw (note that cutting edges 26 are located adjacent to rectangular cutout on Figure 2, from which chips are being ejected from as indicated in Figure 5; note also that active cutting is being performed on top surface 92 of workpiece as shown in Figure 5); and wherein each cutting edge (26) cut into material inside the cylindrical body and guides the cut material to an open discharge slot on the base plate (of plate 24) and out and away from the hole saw (see Figure 5). Regarding the intended use limitations “cut away material within the hollow cylindrical body during rotation of the hole saw, thereby enabling continuous material ejection without need to pause for removal of cut material” and “guides the cut material to the open discharge slot on the base plate and out and away from the hole saw”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As indicated above, the extraction holes partially shown in Figure 1, at the base plate of the hole saw of Schmidt are configured such that any chips that have been shaved and or planed off, by cutting edges 26, will be ejected therethrough.
However, Schmidt fails to disclose that the that the central bore is threaded and that the base plate comprises one or more apertures that engage with drive pins on the arbor for the power tool.
Nevertheless, Novak teaches that it is well known in the art of hole saws to have a cylindrical hole saw (10) with a cylindrical wall (12) having one or more apertures (18) for removal of slug or chips located within the interior of the hole saw (10) (paragraph [0021]). Novak also teaches that it is well known in the art of hole saws to have a base plate (17) comprising one or more apertures (30) about a central threaded aperture (28) for engaging drive pins of an arbor or a power tool (paragraph [0019]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to modify Schmidt hole saw’s cylindrical wall to have one or more apertures, and base plate to have one or more apertures and a central threaded aperture based on the teachings of Novak for removal of slug or chips located within the interior of the hole saw and for engaging drive pins of an arbor or a power tool.
Response to Arguments
Rejections not based on Prior Art
In view of Applicant's amendments, the previous 35 U.S.C. § 112 1st and 2nd rejection for claim 1 has been withdrawn.
Rejections based on Prior Art
Applicant's arguments filed 03/08/2025, regarding the 35 U.S.C. § 103 rejection of claims 2 and 7, as being unpatentable over Schmidt US 8,770,900 in view of Novak et al. US 2011/0170971 (hereafter—Novak--) have been fully considered but they are not persuasive.
Applicant argues on pages 13-14 of the Remarks, regarding the 103 rejection of Schmidt in view of Novak for claims 2 and 7, as best understood, that because:
1) “the tool in Schmidt does not comprise a base plate with cutting edges that cut material within the hollow cylindrical body” but “the planning and cutting occur on external surfaces…” and there is not teaching or suggestion of any cutting edge integrated into the base plate itself, nor any mechanism for guiding cut material through discharge slots”; and
2) Novak does not disclose or suggest “material being cut by the base plate and guided through discharge slots formed in it” but that “material may be ejected upwardly or displaced through side walls, but the base plate does not cut or guide material out”
then the combination of Schmidt and Novak “wherein the base plate further comprises one or more cutting edges, each cutting edge cut into the material inside the cylindrical body and guides the cut material to an open discharge slot on the base plate and out an away from the hole saw”. The Examiner disagrees.
First, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As explained in the rejection above, base reference Schmidt was relied upon for the disclosure of a hole saw (2) comprising: a hollow cylindrical body (see at least Figures 1 and 2); a cylindrical wall; a base plate (24) with one or more cutting edges (26) adjacent to a cutout (note that blades 26 are located adjacent to rectangular cutout on Figure 2, from which chips are being ejected from as indicated in Figure 5). The cutting edge (26) capable of cutting into material inside the cylindrical body and guide the cut material to an open discharge slot on the base plate (24) and out and away from the hole saw (see Figure 5). Since the base plate (24) is disposed on plate 2, via screws, then when assembled, the base plate (24) is configured to rotate in coordination with the hollow cylindrical body and cut material during rotation (when 24 contact top surface 92, cutting action of the top surface is being performed) and ejecting the material through corresponding cutouts on the base plate (see Figure 5).
Since Schmidt failed to disclose that the cylindrical wall comprises one or more apertures for ejecting material; the Novak reference was relied upon for these teachings.
Novak teaches that it is well known in the art of hole saws to have a cylindrical hole saw (10) with a cylindrical wall (12) having one or more apertures (18) for removal of slug or chips located within the interior of the hole saw (10) (paragraph [0021]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to modify Schmidt hole saw’s cylindrical wall to have one or more apertures, for removal of slug or chips located within the interior of the hole saw.
Thus, a prima facie case of obviousness was properly established.
Second, in response to applicant's argument that the tool in Schmidt does not comprise a base plate with cutting edges “that cut material within the hollow cylindrical body” but “the planning and cutting occur on external surfaces…” and there is not teaching or suggestion of any cutting edge integrated into the base plate itself, nor any mechanism “for guiding cut material through discharge slots”; a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As explained above, because Schmidt discloses the claimed structure of a base plate with one or more cutting edges, each cutting edge adjacent to a cutout and Schmidt shows cut away material within the hollow cylindrical body during rotation of the hole saw as in Figure 5, then Schmidt’s device structure as claimed, is indeed capable of cutting material away within the hole saw body to facilitate ejection during rotation, allowing continuous operation without stopping to manually remove material. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Accordingly, a prima facie case of obviousness was properly established.
Third, in response to applicant's argument that Novak “material being cut by the base plate and guided through discharge slots formed in it” but that “material may be ejected upwardly or displaced through side walls, but the base plate does not cut or guide material out”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The Examiner relied on the teachings of Novak; as Novak teaches that it is well known in the art of hole saws to have a cylindrical hole saw (10) with a cylindrical wall (12) having one or more apertures (18) for removal of slug or chips located within the interior of the hole saw (10) (paragraph [0021]) (for both claims 2 and 7) and that it is well known in the art of hole saws to have a base plate (17) with one or more apertures (30) about a central threaded aperture (28) for engaging drive pins of an arbor or a power tool (paragraph [0019]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to modify Schmidt hole saw’s cylindrical wall to have one or more apertures, and base plate to have one or more apertures and a central threaded aperture based on the teachings of Novak for removal of slug or chips located within the interior of the hole saw and for engaging drive pins of an arbor or a power tool.
Therefore, a prima facie case of obviousness was properly established.
Conclusion
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 NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722