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
This office action is in response to Applicant’s amendment filed 9 January 2026.
Drawings
Applicant has requested that the drawing objection related to claim 17 be withdrawn, as claim 17 was withdrawn by restriction. The Examiner will withdraw the objection for now, but if the application becomes allowable and claim 17 is rejoined, the objection will be reinstated.
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 10-11, 15, 19, 27, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van der Klip et al. (WO 2019/203640 A1).
Regarding claim 10, Van der Klip et al. discloses a hole saw assembly 1A comprising: a cylindrical body 2 having a first end with cutting teeth 3 for cutting a workpiece and a second end opposite the first end, wherein the cylindrical body includes an inner surface and an outer surface; a base 8 secured to the second end of the cylindrical body, the base including a central bore (for hole saw adapter 28) and at least one discharge slot 15 configured to eject material cut by the hole saw; an internal auger blade 4 comprising a blade body 4 positioned within the cylindrical body, the blade body having a cutting edge (see figure 15B) positioned adjacent to the at least one discharge slot (as the term “adjacent” is a broad term defined as “near”, the cutting edge is seen to be “adjacent” to the discharge slot, see figure 14A), and a pitched blade geometry defined by a blade pitch towards the first end of the cylindrical body (as seen in figure 15B, the blade has a pitched edge towards the first end of the cylindrical body), the pitched blade geometry forming a sloping material-guiding surface extending between the cutting edge and the base (as seen in figure 15B, the pitched blade geometry forms a sloping surface that will guide material cut by the blade); and a shank 6A extending from the base, the shank being configured to attach to an arbor 28, wherein the shank is configured for attachment to a drill chuck.
Regarding the intended use limitations “thereby providing increased durability and stability during operation”, and “wherein the internal auger blade is configured to guide cut material toward the at least one discharge slot in the base for ejection, allowing the hole saw assembly to cut through thick materials without interruption for material removal”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The extraction holes 15 at the rear of the hole saw of Van der Klip et al. are configured such that any dust or chips that do not exit the hole by the extraction slits 18 will continue to the rear of the hole saw and may exit through holes 15, with or without the use of a dust extractor, the use of a dust extractor not being prevented by the language of the claim.
Regarding claim 11, Van der Klip et al. discloses wherein the cylindrical body 2 further comprises a plurality of circumferentially disposed holes or slots 18 extending from the inner surface to the outer surface, configured to assist in the ejection of cut material from within the cylindrical body.
Regarding claim 15, Van der Klip et al. discloses wherein the base 8 includes a plurality of apertures surrounding the central bore (not shown but inherent to accept the pins seen on adapter 9 in figure 15A), each aperture configured to accommodate drive pins from different arbor designs 9, enhancing compatibility with various drill setups (at least different drill setups with two drive pins or no drive pins may be used).
Regarding claim 19, Van der Klip et al. discloses wherein the cutting teeth 3 on the first end of the cylindrical body 2 project both axially and radially (as seen in figures 14A and 14B).
Regarding claim 27, Van der Klip et al. discloses wherein the shank 6A is configured to attach to the arbor 28, allowing the hole saw assembly to be used with various drill setups by engaging with drive pins on the arbor (see figure 15A).
Regarding claim 29, Van der Klip et al. discloses wherein the internal auger blade 4 is permanently affixed to the base 8 by welding (as disclosed, the blade 4 may alternatively be attached by using screws or by welding to the base to provide a permanent attachment), providing a fixed and durable connection that enhances stability during cutting operations.
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.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Van der Klip et al. (WO 2019/203640 A1).
Regarding claim 26, Van der Klip et al. discloses the invention substantially as claimed, except Van der Klip et al. does not disclose wherein the shank is integrally formed with the base, providing a permanent connection to the base and enhancing durability and stability during cutting operations. 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 made the shank and base integrally for the purpose of using the hole saw in applications where hard materials are drilled and greater strength between the shank and base is required, because it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965)
Response to Arguments
Applicant's arguments filed 9 January 2026 have been fully considered but they are not persuasive.
Applicant points to the planar milling blades of figures 5A and 5B to show that the blades of Van der Klip to not have the claimed pitch geometry. However, it was the cutting blades of figures 14A to 15B that were relied upon to teach the pitch geometry, and these can be seen in the figures to have a blade pitch.
Applicant argues that the blade of Van der Klip is not adjacent to the discharge slot, but this is not persuasive as the term “adjacent” has been interpreted to mean “near”.
Applicant argues that the pitch blade geometry sloped surface is not used for material guiding. This is not persuasive because as the cutting edge cuts material from a workpiece, the material will naturally be guided along the sloping portion of the blade.
For the reasons set forth above, the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 4 March 2026