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 II Species B (Claims 11-15 and 17-20) in the reply filed on 06/22/2026 is acknowledged. Claims 1-10 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Claim Interpretation – 35 USC 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.
Claim 11 recites “fixing means”. (A) the term “means” is a generic placeholder; (B) the fixing means has the function of attaching the base portion to the cutting portion; (C) the claim does not recite further structure to perform the claimed action. The limitation will be interpreted under 35 USC 112(f) as screw thread or welding based on ¶0008 of the published application.
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 11-12, 14-15, 17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park (KR100549735B1) (text citations are from the attached machine translation).
Claim 11
Park teaches a drill bit (Figure 6), comprising: a base portion (54); and a cutting portion (57); wherein the cutting portion comprises a cutting surface (55) comprising braze material (55b) and abrasive particles (55a); and wherein the cutting portion is formed separately to the base portion (Figure 6) and fixing means (threads) attach the base portion to the cutting portion. (Figure 6)
Claim 12
Park teaches the drill bit according to claim 11, wherein the abrasive particles are diamond particles. (Line 104)
Claim 14
Park teaches the drill bit according to claim 11, wherein the abrasive particles comprise tungsten carbide or cubic boron nitride. (Line 104)
Claim 15
Park teaches the drill bit according to claim 11 being a grinding pin. (Figure 6 shows the grinding tool is a pin shape.)
Claim 17
Park teaches the drill bit according to claim 11, configured to be used with a drilling tool operating between 500 to 30,000 rpm. (The claim does not identify further structure outside of what is claimed in Claim 11 that is required by the functional limitation / intended use limitation. As such, the grinding tool of Park meets all of the structural limitations of Claim 11 and will have the same capabilities.)
Claim 19
Park teaches the drill bit according to claim 11, wherein the cutting portion comprises a central channel. (Figure 6 shows a male threaded portion (54) of the base that fits into a female receptacle of the cutting portion (57). This means the cutting portion has a central channel.)
Claim 20
Park teaches the drill bit according to claim 19, wherein the central channel only extends partially along the length of cutting portion. (Figure 6 shows the cutting portion (57) has a closed end with a socket (57b) for a Phillips head screwdriver. This closed end means that the central channel does not extend the entire length of the cutting portion.)
Claims 11-13 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (US20190329449A1).
Claim 11
Wang teaches a drill bit (100), comprising: a base portion (130); and a cutting portion (120); wherein the cutting portion comprises a cutting surface (101) comprising braze material (¶0020 “bond matrix”) and abrasive particles (¶0020 “abrasive grains”); and wherein the cutting portion is formed separately to the base portion (Figure 1) and fixing means (¶0104 “A shaft can be screwed to the body or bonded to the body by brazing. The body and the shaft can be formed by methods known in the art, such as machining.”) attach the base portion to the cutting portion. (¶0104)
Claim 12
Wang teaches the drill bit according to claim 11, wherein the abrasive particles are diamond particles. (¶0028)
Claim 13
Wang teaches the drill bit according to claim 12, wherein the diamond particles are substantially spherical (The specification does not define the bounds of “substantially spherical”. It is interpreted that a particle having a diameter (See Wang ¶0029) is “substantially spherical”. See also Figure 10A item 1001, which is a particle with a circular cross section.) and are 300-700 micron in diameter. (¶0029 teaches a particle size (D50) of 400, 350, and 300 microns.)
Claim 18
Wang teaches the drill bit according to claim 11, wherein the cutting surface extends only over a tip section of a length of the cutting portion. (The first region (101) extends only over a tip section of the length of the cutting portion (120).)
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 Form.
Document
Date
Description of Relevant Subject Matter
US20190329449A1
2019-04-25
Figure 1 teaches a drill bit having a body (130) and a cutting portion (120) with a cutting tip (101) having abrasive grains.
US3495359
1968-10-10
Figure 4 teaches a drill having a body (30), a cutting portion (11), and abrasive grains (16) formed on the tip.
US5733074A
1995-12-15
Figure 7 teaches a grinding pin having a body (15) and a cutting portion (14) having grains (11) formed thereon.
US20050279533A1
2004-06-22
Figure 4 teaches a drill bit having a body (24) and a cutting portion (32) with diamond abrasive cutting tips (31). The body and cutting portion are joined by a weld (34).
US20030084894A1
2002-09-27
Figure 1 teaches a series of super abrasive particles (20) embedded in a braze (25) material. ¶0092 teaches the invention is used with diamond tools such as saws.
US20070151554A1
2005-02-04
Figures 4-5 show a method where diamond abrasives (130) are bonded to a cutting tool (110) using a brazing method. ¶0008 teaches the brazing temperature can be 600 to 1300C.
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.
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.
/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
Prosecution Insights