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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species III, claims 21-40 in the reply filed on 18 November 2025 is acknowledged.
Claim Objections
Claim 37 is objected to because of the following informalities: in line 2, “An endcap” should be replaced with “an endcap”. Appropriate correction is required.
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 30 and 40 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 30 recites the limitation "the sidewall" in lines 2, 3, and 4. However, it is not clearly stated which sidewall from parent claim 21 is referred to by the claim. For the purposes of examination, it has been assumed that these limitations refer to the sidewall of the hole saw body.
Claim 40 recites the limitation "the sidewall" in lines 2 and 4. However, it is not clearly stated which sidewall from parent claim 37 is referred to by the claim. For the purposes of examination, it has been assumed that these limitations refer to the sidewall of the hole saw body.
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 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 21-22, 27-29, 31, 33-35, 37, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enders (US 3,262,474).
Regarding claim 21, Enders discloses a hole-saw 10, comprising: an endcap 16 (while drive washer 16 is not a standard hole-saw endcap, it does meet the requirements for the term endcap, which is to cover or seal a component) comprising a sidewall (not labeled, outer circumference, see figure 4) defining an endcap diameter and a plurality of radially extending projections 17 extending radially outward from the sidewall; a sidewall 18 forming a hole-saw body 18 when coupled to the endcap, the sidewall comprising: a cutting edge 19 at a first axial end (bottom in figure 4) of the sidewall; and a second axial end (top in figure 4) coupled to the endcap; a plurality of notches 20 located at the second end of the sidewall; wherein each of the radially extending projections have a height that matches a height of the endcap (as seen in figure 4); and wherein the radial extending projections are received within the notches of the sidewall and couple the endcap to the sidewall (as seen in figure 1).
Regarding claim 22, Enders discloses further comprising a bore (not labeled, central bore, see figure 4) defined in the endcap 16, wherein the bore is configured to receive an arbor 11 (at least shank portion 12 of arbor 11 is received in the bore).
Regarding claim 27, Enders discloses wherein the radially extending projections 17 are coplanar with each other (as seen in figures 1-2 and 4-5).
Regarding claim 28, Enders discloses wherein the endcap 16 comprises a flat top surface and a top surface of each projection 17 are coplanar with the flat top surface of the endcap (as seen in figure 1-2 and 4-5).
Regarding claim 29, Enders discloses wherein the plurality of radially extending projections 17 comprise four radially extending projections spaced equally about a circumference of the endcap 16 (as seen in figure 2).
Regarding claim 31, Enders discloses a hole-saw 10, comprising: a circular endcap 16 (while drive washer 16 is not a standard hole-saw endcap, it does meet the requirements for the term endcap, which is to cover or seal a component) comprising a plurality of radially extending projections 17 and an endcap diameter (not labeled, outer circumference, see figure 4); a sidewall 18 forming a hole-saw body 18 when coupled to the endcap, the sidewall comprising: a cutting edge 19 at a first axial end (bottom in figure 4) of the sidewall; and a second axial end (top in figure 4) coupled to the endcap; an inner diameter extending between opposing sides of an inner surface of the sidewall (not labeled, see figure 4); a plurality of notches 20 located at the second end of the sidewall; and wherein the endcap diameter is less than the inner diameter of the sidewall (as seen in figure 2) and the radially extending projections extend beyond the endcap diameter (as seen in figure 2); and wherein the radially extending projections are received within the notches of the sidewall and couple the endcap to the sidewall (as seen in figures 1 and 2).
Regarding claim 33, Enders discloses wherein the radially extending projections 17 are coplanar (as seen in figures 1-2 and 4-5).
Regarding claim 34, Enders discloses wherein the radially extending projections 17 have a height that matches a height of the endcap (as seen in figures 1-2 and 4-5).
Regarding claim 35, Enders discloses further comprising a bore (not labeled, central bore, see figure 4) defined in the endcap 16, wherein the bore is configured to receive an arbor 11 (at least shank portion 12 of arbor 11 is received in the bore).
Regarding claim 37, Enders discloses a hole-saw 10, comprising: an endcap 16 (while drive washer 16 is not a standard hole-saw endcap, it does meet the requirements for the term endcap, which is to cover or seal a component) comprising a radial surface (not labeled, outer circumference, see figure 4), a plurality of projections 17, and a bore (not labeled, central bore, see figure 4) defined in the endcap, the bore being configured to receive an arbor 11 (at least shank portion 12 of arbor 11 is received in the bore); a sidewall 18 forming a hole-saw body 18 when coupled to the endcap, the sidewall comprising: a cutting edge 19 at a first axial end (bottom in figure 4) of the sidewall; and a second axial end (top in figure 4) coupled to the endcap; an inner diameter (not labeled, see figure 4) extending between opposing sides of an inner surface of the sidewall; a plurality of notches 20 located at the second end of the sidewall; and wherein the projections are received within the notches of the sidewall and couple the endcap to the sidewall (as seen in figures 1 and 2); and wherein each projection is located on an opposing side of the radial surface of the endcap relative to another projection such that a distance between opposing projections is greater than the inner diameter of the sidewall (as seen in figure 2).
Regarding claim 39, Enders discloses wherein the projections 17 have a height that matches a height of the endcap 16 (as seen in figures 1-2 and 4-5).
Claims 21-24, 27, 29, 31, 33-37, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawamata et al. (CN 102990788 A).
Regarding claim 21, Kawamata et al. discloses a hole-saw 10 (a core drill is equivalent to a hole saw in the art), comprising: an endcap 22 comprising a sidewall (outer diameter, see figure 2) defining an endcap diameter and a plurality of radially extending projections 23 extending radially outward from the sidewall; a sidewall 11 forming a hole-saw body 11 when coupled to the endcap, the sidewall comprising: a cutting edge 12 at a first axial end (bottom in figure 1) of the sidewall; and a second axial end (top in figure 1) coupled to the endcap; a plurality of notches 13 located at the second end of the sidewall; wherein each of the radially extending projections have a height that matches a height of the endcap (the height of one projection matches a second height of a second projection on the endcap, this second height being considered to correlate to “a height of the endcap” as the claim doesn’t require the height to be a maximum height of the entire endcap); and wherein the radial extending projections are received within the notches of the sidewall and couple the endcap to the sidewall (as seen in figure 1).
Regarding claim 22, Kawamata et al. discloses further comprising a bore (not labeled, receives mounting shaft 21) defined in the endcap 22, wherein the bore is configured to receive an arbor 21/21a (see figure 6).
Regarding claim 23, Kawamata et al. discloses the endcap 22 further comprising a plurality of openings 22c spaced radially away from the bore (see figure 2) and extending the height of the endcap (as seen in figure 6, the openings extend the defined height of the endcap and beyond).
Regarding claim 24, Kawamata et al. discloses wherein the plurality of openings 22c comprises four openings 22c, and each of the plurality of openings is generally circular (for receiving pins 27 as seen in figure 2).
Regarding claim 27, Kawamata et al. discloses wherein the radially extending projections 23 are coplanar with each other (as seen in figure 6).
Regarding claim 29, Kawamata et al. discloses wherein the plurality of radially extending projections 23 comprise four radially extending projections 23 spaced equally about a circumference of the endcap 22 (to mate with the four notches 13).
Regarding claim 31, Kawamata et al. discloses a hole-saw 10, comprising: a circular endcap 22 comprising a plurality of radially extending projections 23 and an endcap diameter (lower portion not including flange 22b, see figure 2); a sidewall 11 forming a hole-saw body 11 when coupled to the endcap, the sidewall comprising: a cutting edge 12 at a first axial end (bottom in figure 1) of the sidewall; and a second axial end (top in figure 1) coupled to the endcap; an inner diameter (not labeled, see figure 2) extending between opposing sides of an inner surface of the sidewall; a plurality of notches 13 located at the second end of the sidewall; and wherein the endcap diameter is less than the inner diameter of the sidewall (see figure 1) and the radially extending projections extend beyond the endcap diameter (see figure 6); and wherein the radially extending projections are received within the notches of the sidewall and couple the endcap to the sidewall (see figure 1).
Regarding claim 33, Kawamata et al. discloses wherein the radially extending projections 23 are coplanar (see figure 6).
Regarding claim 34, Kawamata et al. discloses wherein the radially extending projections 23 have a height that matches a height of the endcap 22 (the height of one projection matches a second height of a second projection on the endcap, this second height being considered to correlate to “a height of the endcap” as the claim doesn’t require the height to be a maximum height of the entire endcap).
Regarding claim 35, Kawamata et al. discloses further comprising a bore (not labeled, receives mounting shaft 21) defined in the endcap 22, wherein the bore is configured to receive an arbor 21/21a (see figure 6).
Regarding claim 36, Kawamata et al. discloses the endcap 22 further comprising a plurality of openings 22c spaced radially away from the bore (see figure 2) and extending an entire height of the endcap (as seen in figure 6, the openings extend the defined height of the endcap and beyond).
Regarding claim 37, Kawamata et al. discloses a hole-saw 10, comprising: an endcap 22 comprising a radial surface (outer diameter, see figure 2), a plurality of projections 23, and a bore (not labeled, receives mounting shaft 21) defined in the endcap, the bore being configured to receive an arbor 21/21a (see figure 6); a sidewall 11 forming a hole-saw body 11 when coupled to the endcap, the sidewall comprising: a cutting edge 12 at a first axial end (bottom in figure 1) of the sidewall; and a second axial end (top in figure 1) coupled to the endcap; an inner diameter (not labeled, see figure 2) extending between opposing sides of an inner surface of the sidewall; a plurality of notches 13 located at the second end of the sidewall; and wherein the projections are received within the notches of the sidewall (see figure 1) and couple the endcap to the sidewall; and wherein each projection is located on an opposing side of the radial surface of the endcap relative to another projection (see figure 6) such that a distance between opposing projections is greater than the inner diameter of the sidewall (see figures 1-2).
Regarding claim 39, Kawamata et al. discloses wherein the projections 23 have a height that matches a height of the endcap 22 (the height of one projection matches a second height of a second projection on the endcap, this second height being considered to correlate to “a height of the endcap” as the claim doesn’t require the height to be a maximum height of the entire endcap).
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 of this title, 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 26, 32, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Enders.
Regarding claims 26, 32, and 38, Enders discloses wherein the endcap 16 is formed as a single continuous piece of material. Enders does not disclose that the material is metal. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a metal material for the endcap (drive washer 16) for the purpose of providing the endcap to have desired strength and wear characteristics, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Kawamata et al.
Regarding claim 25, Kawamata et al. discloses the invention substantially as claimed, except Kawamata et al. does not disclose wherein each of the plurality of openings is radially aligned with one of the radially extending projections. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have radially aligned each of the plurality of openings with one of the radially extending projections, as this arrangement would be one of only a limited number of arrangements available for the projections and openings, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Allowable Subject Matter
Claims 30 and 40 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 7 January 2026