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, a punching tool, in the reply filed on 1-9-2026 is acknowledged.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1-9-2026.
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, 6-8, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 40,747 to Garretson.
In re Claim 1, Garretson teaches a punching tool configured for punching out at least one beam element with both ends attached to an inside surface of an elongated through hole (the Examiner notes that the claim is an apparatus claim and not a method claim – the structure of Garretson is capable of punching out a beam element in a hole of an unclaimed workpiece),
wherein the punching tool has an elongated shape (see annotated Fig. 2, below) with a punching end (see annotated Fig. 2, below) and a holding end (see annotated Fig. 2, below) and wherein the punching end comprises:
a front surface (see annotated Fig. 1, below) for being inserted into the elongated through hole first, and
at least one cutting edge (see annotated Fig. 1, below) which is spaced apart from the front surface along a longitudinal axis of the punching tool and extends substantially transverse to the longitudinal axis.
PNG
media_image1.png
270
298
media_image1.png
Greyscale
PNG
media_image2.png
310
370
media_image2.png
Greyscale
In re Claim 2, Garretson teaches wherein the at least one cutting edge is adjacent to a peripheral surface of the punching tool (see annotated Fig. 1, in view of annotated Fig. 2, above).
In re Claim 6, Garretson teaches wherein the punching end comprises a recess (see annotated Fig. 1, above – the Examiner notes that the surfaces “below” the “front surface” are considered recesses) formed into the front surface along the longitudinal axis of the punching tool.
In re Claim 7, Garretson teaches wherein preferably the at least one cutting edge forms part of the recess (see annotated Fig. 1, above).
In re Claim 8, Garretson does not teach wherein the recess tapers from the front surface to the at least one cutting edge (see Garretson, Fig. 2, “a”).
In re Claim 11, Garretson teaches wherein a peripheral edge of the front surface is rounded and/or beveled (see annotated Fig. 1, above) and wherein a peripheral edge is substantially perpendicular to the longitudinal axis of the punching tool (see annotated Figs. 1-2, the peripheral surfaces/edge of the tool are perpendicular to the longitudinal axis of the tool).
In re Claim 12, Garretson teaches wherein the punching tool comprises two instances of the at least one cutting edge (see annotated Fig. 1, above).
In re Claim 13, Garretson teaches wherein the two instances of the at least one cutting edge are arranged opposite to each other and are axially spaced apart from each other along the longitudinal axis (see annotated Fig. 1, above).
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.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over US 40,747 to Garretson in view of JP H0947828 A
In re Claim 3, Garretson does not teach wherein the at least one cutting edge is inclined relative to the longitudinal axis of the punching tool and wherein an inclination angle between the at least one cutting edge and the longitudinal axis lies in a range from 91 to 103 degrees.
However, JP H0947828 A teaches that it is known in the art of punches to provide the one cutting edge is inclined relative to the longitudinal axis of the punching tool (see Fig. 1, “α”) and wherein an inclination angle between the at least one cutting edge and the longitudinal axis lies in a range from 91 to 103 degrees (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide at least one cutting edge of Garretson inclined relative to the longitudinal axis between 91-103 degrees, as taught by JP H0947828 A). Doing so eliminates the occurrence of burrs on the workpiece (see JP H0947828 A, Para. 0003).
In re Claim 4, modified Garretson, in re Claim 3, teaches wherein the longitudinal axis lies in a range from 93 to 100 degrees (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
In re Claim 5, modified Garretson, in re Claim 3, teaches wherein the longitudinal axis lies in a range from 940 to 970 (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 40,747 to Garretson.
In re Claim 9, Garretson does not teach wherein the recess has a T-shape or an X-shape as seen in a direction from the punching end to the holding end. The Examiner notes that Garretson teaches the letter “R.” It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to for the punch of Garretson in any letter of the alphabet including “T” and “X” in order to form different words.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 40,747 to Garretson in view of US 300624 to Mitchell.
In re Claim 10, Garretson does not teach wherein the punching tool comprises a flex portion arranged between the punching end and the holding end and wherein a cross-sectional area in the flex portion of the punching tool is reduced compared to portions of the punching tool adjacent to the flex portion and wherein the cross-sectional area in the flex portion continuously decreases to a minimum.
However, Mitchell teaches that that it is known to provide a flex portion (see Mitchell, Figs. 1-4, “b”) arranged between the punching end and the holding end and wherein a cross-sectional area in the flex portion of the punching tool is reduced (see Mitchell, Fig. 2) compared to portions of the punching tool adjacent to the flex portion and wherein the cross-sectional area in the flex portion continuously decreases to a minimum (see Mitchell, Fig. 2).
In the same field of invention, punches, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide a bore and a channel in the punch of Garretson. Doing so provides a hollow punch that captures and passes through the workpiece into the handle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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, Boyer Ashley can be reached at 571-272-4502. 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.
/JONATHAN G RILEY/Primary Examiner, Art Unit 3724