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 Species A in the reply filed on 05/15/2026 is acknowledged. Claims 24-25 and 27-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 15-20 and 22-23 are provisionally rejected (the withdrawn claims will be examined if rejoined) on the ground of nonstatutory double patenting as being unpatentable over claim 19-24 and 28-29 of copending Application No. 18698316 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application (US 18698318) is a broader version of the claims of the reference application (US 18698316) due to the claims of the instant application requiring only two drilling segments vs the three drilling segments required by the reference application’s claims. Since the instant application claims are “comprising” or open-ended, the three drilling segment claims of the reference application anticipate the claims of the instant application.
US App 18698318 (instant application)
US App 18698316 (reference application)
15. A drill bit comprising: a drilling shaft having a cylinder with a longitudinal axis, wherein the cylinder has, in a plane perpendicular to the longitudinal axis, an outside diameter, an inside diameter and a shaft width, and two drilling segments spaced apart from one another in a circumferential direction and fastened by an underside to the drilling shaft, wherein the two drilling segments include a first drilling segment with a first inner lateral surface having a first inner distance from the longitudinal axis perpendicular to the longitudinal axis, and a second drilling segment with a second inner lateral surface having a second inner distance from the longitudinal axis perpendicular to the longitudinal axis, the first inner distance varying between a first maximum value and a first minimum value and having precisely one first absolute minimum value over the circumference of the first drilling segment, the second inner distance being greater than or equal to the first absolute minimum value over the circumference of the second drilling segment.
19. A drill bit comprising:
a drilling shaft having a cylinder with a longitudinal axis, wherein the cylinder has, in a plane perpendicular to the longitudinal axis, an outside diameter, an inside diameter and a shaft width, and a plurality of drilling segments spaced apart from one another in a circumferential direction and fastened by an underside to the drilling shaft, wherein the plurality of drilling segments include a first drilling segment with a first inner lateral surface having a first inner distance from the longitudinal axis perpendicular to the longitudinal axis, a second drilling segment with a second inner lateral surface having a second inner distance from the longitudinal axis perpendicular to the longitudinal axis, and a third drilling segment with a third inner lateral surface having a third inner distance from the longitudinal axis perpendicular to the longitudinal axis, the first inner distance varying between a first maximum value and a first minimum value and having precisely one first absolute minimum value over the circumference of the first drilling segment, the second inner distance being greater than or equal to the first absolute minimum value over the circumference of the second drilling segment, and the third inner distance being greater than or equal to the first absolute minimum value over the circumference of the third drilling segment.
16. The drill bit as recited in claim 15 wherein the first inner distance has two first maximum values over the circumference of the first drilling segment, wherein the first absolute minimum value is arranged between the first maximum values in the circumferential direction.
20. The drill bit as recited in claim 19 wherein the first inner distance has two first maximum values over the circumference of the first drilling segment, wherein the first absolute minimum value is arranged between the first maximum values in the circumferential direction.
17. The drill bit as recited in claim 15 wherein the first inner distance follows, over the circumference of the first drilling segment, a strictly monotonic profile in the region of the first absolute minimum value.
21. The drill bit as recited in claim 19 wherein the first inner distance follows, over the circumference of the first drilling segment, a strictly monotonic profile in the region of the first absolute minimum value.
18. The drill bit as recited in claim 17 wherein the second inner distance varies between a second maximum value and a second minimum value and has precisely one second absolute minimum value over the circumference of the second drilling segment.
22. The drill bit as recited in claim 21 wherein the second inner distance varies between a second maximum value and a second minimum value and has precisely one second absolute minimum value over the circumference of the second drilling segment.
19. The drill bit as recited in claim 18 wherein the second inner distance has two second maximum values over the circumference of the second drilling segment, wherein the second absolute minimum value is arranged between the second maximum values in the circumferential direction.
23. The drill bit as recited in claim 22 wherein the second inner distance has two second maximum values over the circumference of the second drilling segment, wherein the second absolute minimum value is arranged between the second maximum values in the circumferential direction.
20. The drill bit as recited in claim 18 wherein the second inner distance follows, over the circumference of the second drilling segment, a strictly monotonic profile in the region of the second absolute minimum value.
24. The drill bit as recited in claim 22 wherein the second inner distance follows, over the circumference of the second drilling segment, a strictly monotonic profile in the region of the second absolute minimum value.
22. The drill bit as recited in claim 15 wherein the first inner lateral surface is formed as a portion of a first cylinder, and the second inner lateral surface is formed as a portion of a second cylinder.
28. The drill bit as recited in claim 19 wherein the first inner lateral surface is formed as a portion of a first cylinder, the second inner lateral surface is formed as a portion of a second cylinder, and the third inner lateral surface is formed as a portion of a third cylinder.
23. The drill bit as recited in claim 22 wherein the first cylinder has a first base surface differing from a circular shape, or the second cylinder has a second base surface differing from a circular shape.
29. The drill bit as recited in claim 28 wherein the first cylinder has a first base surface differing from a circular shape, or the second cylinder has a second base surface differing from a circular shape, or the third cylinder has a third base surface differing from a circular shape.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 15-23 and 26 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 15 recites “the circumference”. There is insufficient antecedent basis for this limitation.
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 15-23 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pearce (US20170362900A1).
Claim 15
Pearce teaches a drill bit (Figure 7) comprising: a drilling shaft (20) having a cylinder (Figure 5) with a longitudinal axis (12), wherein the cylinder has, in a plane perpendicular to the longitudinal axis, an outside diameter (Figure 3 shows the shank (20) has an outer diameter.), an inside diameter (Figure 3 shows an interior space defined by an inside diameter.) and a shaft width (The shaft width is the difference between the inner and outer diameters.), and two drilling segments (34A/B) spaced apart from one another in a circumferential direction (Figure 7) and fastened by an underside to the drilling shaft (Figure 4 shows the lower (under) portion of the segments (34) is attached to the shaft (20).), wherein the two drilling segments include a first drilling segment with a first inner lateral surface having a first inner distance from the longitudinal axis perpendicular to the longitudinal axis, and a second drilling segment with a second inner lateral surface having a second inner distance from the longitudinal axis perpendicular to the longitudinal axis (Figure 7 shows a plan/top down view of the drilling segments (34) where the inner surfaces have a distance to the center (18).), the first inner distance varying between a first maximum value and a first minimum value and having precisely one first absolute minimum value over the circumference of the first drilling segment, the second inner distance being greater than or equal to the first absolute minimum value over the circumference of the second drilling segment. (Figure 7 shows the segments (34) are shaped such that the curved inner surface includes an absolute minimum (74A/B) distance from the center (18) and two maximum distances (36A/B and 38A/B) at either end.)
Claim 16
Pearce teaches the drill bit as recited in claim 15 wherein the first inner distance has two first maximum values over the circumference of the first drilling segment, wherein the first absolute minimum value is arranged between the first maximum values in the circumferential direction. (Figure 7 shows each drilling segment (34) has two maximum values at 36A/B and 38A/B and a minimum in between the two maximums at 74A/B.)
Claim 17
Pearce teaches the drill bit as recited in claim 15 wherein the first inner distance follows, over the circumference of the first drilling segment, a strictly monotonic profile in the region of the first absolute minimum value. (Figure 7 and ¶0050-0051 detail the first and second inner surfaces (44 and 46) of the segments (34). The inner surfaces of the segments have a consistently increasing distance from the central axis from the minimum location (74).)
Claim 18
Pearce teaches the drill bit as recited in claim 17 wherein the second inner distance varies between a second maximum value and a second minimum value and has precisely one second absolute minimum value over the circumference of the second drilling segment. (Figure 7 shows the drilling segments (34) have a minimum (74) and two maximum (36, 38) distance locations.)
Claim 19
Pearce teaches the drill bit as recited in claim 18 wherein the second inner distance has two second maximum values over the circumference of the second drilling segment, wherein the second absolute minimum value is arranged between the second maximum values in the circumferential direction. (Figure 7 shows each drilling segment (34) has two maximum values at 36A/B and 38A/B and a minimum in between the two maximums at 74A/B.)
Claim 20
Pearce teaches the drill bit as recited in claim 18 wherein the second inner distance follows, over the circumference of the second drilling segment, a strictly monotonic profile in the region of the second absolute minimum value. (Figure 7 and ¶0050-0051 detail the first and second inner surfaces (44 and 46) of the segments (34). The inner surfaces of the segments have a consistently increasing distance from the central axis from the minimum location (74).)
Claim 21
Pearce teaches the drill bit as recited in claim 18 wherein the first absolute minimum value of the first drilling segment and the second absolute minimum value of the second drilling segment are offset from one another by about 180° in the circumferential direction. (Figure 7 shows the two drilling segments (34) are mirrors of one another across a hypothetical central mirror line running through the longitudinal axis.)
Claim 22
Pearce teaches the drill bit as recited in claim 15 wherein the first inner lateral surface is formed as a portion of a first cylinder, and the second inner lateral surface is formed as a portion of a second cylinder. (The cross sectional view as shown in Figure 7 teaches that the drilling segments make up portions of cylinder(s) (See annotation below), and therefore the inner surfaces are formed of portions of said cylinder(s).)
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Claim 23
Pearce teaches the drill bit as recited in claim 22 wherein the first cylinder has a first base surface differing from a circular shape, or the second cylinder has a second base surface differing from a circular shape. (Applicant does not assign “base surface” an item number nor call out what the base surface is in the drawings. There are multiple surfaces on the drilling segments (34) that are not circular and can qualify as a “base surface” due to the broad nature of the claim and lack of explicit illustration in the application.)
Claim 26
Pearce teaches the drill bit as recited in claim 15 wherein the first drilling segment and the second drilling segment are of identical design. (Figure 7 shows the cross sectional view of the segments (34) where they have the same shape and orientation of holes (64) and channels (68). ¶0050 teaches the radii or curvature of portions of the segments can be equal. ¶0054 teaches the lengths of the inner surfaces of the segments can be equal. ¶0056 teaches the height of the cutting faces of the two segments can be equal.)
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
US20170362900A1
2016-03-03
Figure 3 teaches a drilling shaft (20) that is a cylinder having an axis (12) and includes an inner and outer diameter. There are a plurality of drilling segments (234A/B/C in Figure 15) that are spaced apart from one another. The drilling segments have inner lateral surfaces that include a varying distance to the central axis (See Figure 19). The distance includes a single absolute minimum (at the tip of the triangular shape) and two maximums at either end. The inner surface of each segment consistently slopes towards the maximum from the minimum area. Each of the drilling segments (234A/B/C) make up portions of a cylindrical cross sections, such that the inner surfaces make up parts of this cross section. ¶0050 teaches the inner surface of the segments (34) can be convex, concave, serpentine, or the like.
US20050084349A1
2002-12-28
Figure 1-5 show a drilling shaft (10) having an inner and outer diameter and an axis. There are a plurality of drilling segments (30) spaced apart around the central axis. The drilling segments have an absolute minimum distance from the central axis and multiple maximum distances (Figure 5).
GB2423536A
2006-08-30
Figures 1-3 show a drilling shaft (1) that has inner and outer diameters and an axis. There are a plurality of drilling segments (5) spaced apart around the central axis. The drilling segments have an absolute minimum at one end and an absolute maximum at another end and the distance consistently slopes between the two. (See Figures 2-3)
US20200040663A1
2018-08-02
Figures 1-2 show a drilling shaft (1) that has inner and outer diameters and an axis. There are a plurality of drilling segments (portions of item 2) that are spaced apart (choosing individual segments around the circumference) around the central axis. The drilling segments have an absolute minimum flanked by two absolute maximums and the distance consistently slopes between the two (See Figure 2).
US20100329805A1
2010-06-24
Figure 2 teaches a drilling shaft (52 and 53) having an inner and outer diameter and an axis. There are a plurality of drilling segments (54) spaced apart around the central axis. The drilling segments have an absolute minimum flanked by two absolute maximums. (See Figure 2)
US4189015A
1978-08-21
Figures 3-4 teach a drilling shaft (30) that has an inner and outer diameter and a longitudinal axis. The drill bit includes a plurality of drilling segments (34) spaced apart around the central axis. The drilling segments have an absolute minimum and maximum where the inner surface consistently slopes between the two (See Figure 4).
US6564887B2
2001-06-25
Figure 1 teaches a drill shaft (10) that includes an inner and outer diameter and an axis. The drill includes a plurality of drilling segments (30) that are spaced apart around the central axis. The drilling segments include an absolute minimum flanked by two maximums and slope consistently between the two. (See Figure 2e)
US20030141115A1
2002-12-12
Figure 1 teaches a drill shaft (2) that includes an inner and outer diameter and an axis. The drill includes a plurality of drilling segments (6) that are spaced apart around the central axis. The drilling segments include an absolute minimum and a maximum and slope consistently between the two. (See Figure 2)
US20160354846A1
2016-06-02
Figure 3 teaches a drill shaft having spaced drill portions (42) that have a minimum and maximum distance from the central axis and form a conical shape. (Figure 3)
US5676501A
1996-01-27
Figure 14 teaches a drill shaft having spaced drill portions (21-23) that are a varying distance from the central axis of the shaft. Each “portion” can refer to a group of three where the grouped cutting elements have a minimum distance flanked by two maximum distances, with a constant slope in between.
US20070227521A1
2006-11-16
Figure 9A-9B teach a drill shaft (300) having a plurality of spaced drill portions (100) including a varying distance between the drill portion and the central axis (See Figure 9A).
EP0156762A1
1985-01-25
Figure 6 teaches a drill element shape where the distance from the centerline transitions from a minimum at one end to a maximum in the middle. Figure 1 shows the drill element is one of a plurality that are spaced apart around a drill shaft.
JP3587589B2
1997-01-07
Figure 1 teaches a drill shaft (1) having spaced drill portions (2). Figure 5 shows the drill portions are shaped such that there is a maximum and minimum distance portion and a consistent slope in between.
US20150021099A1
2013-07-18
Figures 5-6 teach a drill shaft (218, 220) that has spaced drill portions (230). The drill portions have a varying spacing from the central axis of the cavity of the drill shaft. The varying spacing changes from a minimum to two maximums in a constant manner.
US3353526A
1964-10-12
Figure 6 teaches a drill shaft (26) that includes drill portions (portions of 28) that have a varying spacing from the central axis of the drill tube such that the drill portions include a minimum and maximum distance location.
US3382743A
1965-12-08
Figures 1 and 2 teach a drill tube (15) having drill portions (portions of 17) that include varying spacing from the central axis of the drill tube such that the drill portions include a minimum and maximum distance location.
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.
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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.
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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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