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 .
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.
Election/Restrictions
Claims 16 and 19-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 26 June 2026 and a voicemail message delivered on 16 July 2026.
Applicant's election with traverse of claims 15 and 17-18 in the reply filed on 26 June 2026 and voicemail message delivered on 16 July 2026 is acknowledged. The traversal is on the ground(s) that examiner’s obviousness statement is improper because the statement lacks any basis in the prior art and the need for “access to shaft connector features is something not supported and explained as required by MPEP §2143 and §2144. This is not found persuasive because the rejection does not depend upon Miyanaga expressly recognizing such a need. Rather, the modification is based upon the well-established engineering principle that forming an integral structure as separate connected components to facilitate manufacture, assembly, servicing, replacement, or access is a predictable design alternative. See MPEP §2144.04(V)( C). The claimed endplate merely represents such a predictable segmentation of an integral terminal portion.
The requirement is still deemed proper and is therefore made FINAL.
col1viousness 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Miyanaga (WO 2018/052118 A1) as provided by (WO 2018/052118 A1) machine translation as an English language equivalent.
Claim 15:
Miyanaga discloses an apparatus configured to be connected in a rotatably fixed manner to a power tool, the apparatus comprising:
a tool bit (1, 2) including a hollow tool shaft having a longitudinal axis and a first end and a second end, a plate-like terminal portion (top surface of 1) connected to the first end, a cutting ring (22) having an inner diameter and being connected to the second end, and a connector (11) configured to be connected to the power tool and having a connector flow cross-section (figs. 1-2, ¶ ¶16 and ¶19);
a dust extracting device (3) including a suction head and a suction tube, the suction head having a body part (34) with a through-opening (34a) and having a contact face (bottom surface of body part (34)) configured to be placed against a workpiece and the suction tube (36) having a length direction (coincident with passage 15), a tube flow cross-section perpendicular to the length direction (coincident with passage 15), a tube first end and a tube second end opposite of the tube first end (figs. 1-2, ¶21); and
a further connector (14) configured to connect the dust extracting device (3) to the tool bit (1, 2), in a connected state of the tool bit (1, 2) and the dust extracting device, the suction tube (36) being arranged inside of the tool shaft (figs. 1-2, ¶17 and ¶22).
Miyanaga fails to disclose a separate endplate connected to the first end. Instead, Miyanaga discloses an integrated plate-like terminal portion located at the first axial end of the tool bit. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the integral plate-like terminal portion as a separate endplate because separating an integral component into multiple components to facilitate manufacture, assembly, servicing, replacement, or access is a well-known design alternative yielding predictable results. See MPEP §2144.04(V)( C) Making Separable which describes the prima facie obviousness of making separable elements disclosed in the prior art has being made integral. The court has held if it were considered desirable for any reason to obtain access to the end of the an apparatus to which an element was applied, it would be obvious to make the element removable for that purpose. In addition, MPEP 2144 expressly recognizes numerous predictable design modifications without requiring the reference itself to suggest every engineering reason.
Allowable Subject Matter
Claims 17 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 17:
The prior art of record renders obvious the apparatus as recited in claim 15; and the prior art of record fails to disclose or fairly suggest the suction tube is at least one of compressible or telescopic shiftable along the length direction of the suction tube.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohlendorf (EP 1 593 447 A1) discloses a dust extraction hood with a socket drill (figs. 1-2, ¶1, ¶2).
Ohlendorf et al. (US 2011/0266015 A1) discloses a drilling tool for percussive or rotary percussive processing of stone, concrete or other rock-like materials of the building and construction industry (figs. 1-4, ¶2); further comprising a telescopic shiftable suction tube (21) (figs. 1-4, ¶8, ¶21).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lee A Holly/Primary Examiner, Art Unit 3726
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