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
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant's election with traverse of Species I, claims 1-6 and 14-15 in the reply filed on 27 July 2026 is acknowledged. The traversal is on the ground(s) that there would be no burden on the Examiner to examine the non-elected species. This is not found persuasive because the non-elected species would at least require additional searching in B23B 39/161 and B23Q 11/10, which are not required for the elected species. Additionally, the inventions have different fields of search including different text search strategies and text search queries. Examination burden comes from developing and analyzing synonyms for each different species. Examination burden would also increase exponentially in subsequent actions as the subject matter further diverges due to increasing specificity of the separately claimed elements.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 27 July 2026.
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 5-6 and 14 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “dust suction portion” in claim 5 is used by the claim to mean “dust collection portion,” while the accepted meaning is “a portion which includes or is combined with a device for providing suction.” The term is indefinite because the specification does not clearly redefine the term. Claim 6 depends from claim 5.
Claim 14 recites the limitation "it" in line 1. There is insufficient antecedent basis for this limitation in the claim, and it is unclear what is referred to by the word “it”. For the purposes of examination, it has been assumed that “it” refers to the machining device of claim 1.
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 1, 4-6, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fischer (US 2,339,324).
Regarding claim 1, Fischer discloses a machining device (see figures) for producing at least one orifice in a workpiece (metal sheets), the machining device comprising a tool holder 32 and at least one drill bit 34 mounted on the tool holder, the drill bit being configured to be driven in rotation about an axis of rotation, characterized in that the machining device comprises a cylindrical guide body 42/43 (at least portions of the guide body are cylindrical, see figure 1) coaxial with the axis of rotation, mounted on the tool holder, and surrounding the drill bit, the guide body being configured to bear on the workpiece during the production of the orifice and the drill bit projecting from the guide body (see figure 4).
Regarding the intended use limitation “for producing at least one orifice in a workpiece made of composite material” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding claim 4, Fischer discloses wherein the tool holder 32 has at least one circular cross-section (see figures 4-5) and the guide body 42/43 has an external diameter (the diameter of portion 43) equal to or less than the external diameter of the tool holder (as seen in figures 4-5).
Regarding claim 5, Fischer discloses wherein the guide body 42/43 comprises a guide portion 43 for the drill bit 34 and a dust suction portion 42 which are arranged along the axis of rotation (see figures 4-5).
Regarding claim 6, Fischer discloses wherein the guide portion 43 has an internal diameter which is smaller than the internal diameter of the suction portion 42 (see figures 4-5).
Regarding claim 14, Fischer discloses the machining device according to claim 1, wherein it comprises a motor (contained in housing 20) configured to drive one or more drill bits 34.
Claims 1-2, 4-6, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGlasson et al. (US 5,033,917).
Regarding claim 1, McGlasson et al. discloses a machining device (see figures 1-3) for producing at least one orifice in a workpiece 38 made of composite material, the machining device comprising a tool holder 100 and at least one drill bit 44 mounted on the tool holder, the drill bit being configured to be driven in rotation about an axis of rotation, characterized in that the machining device comprises a cylindrical guide body 12 (at least portions of the guide body are cylindrical, see figure 3) coaxial with the axis of rotation, mounted on the tool holder, and surrounding the drill bit, the guide body being configured to bear on the workpiece during the production of the orifice and the drill bit projecting from the guide body (see figure 1).
Regarding claim 2, McGlasson et al. discloses wherein the guide body 12 has a length less than a length of the drill bit 44 (see figure 1).
Regarding claim 4, McGlasson et al. discloses wherein the tool holder 100 has at least one circular cross-section (see figure 1) and the guide body 12 has an external diameter (see figure 1) equal to or less than the external diameter of the tool holder (see figure 1).
Regarding claim 5, McGlasson et al. discloses wherein the guide body 12 comprises a guide portion (smaller inner diameter portion at the bottom in figure 1) for the drill bit 44 and a dust suction portion 48 which are arranged along the axis of rotation.
Regarding claim 6, McGlasson et al. discloses wherein the guide portion has an internal diameter which is smaller than the internal diameter of the suction portion 48 (as seen in figure 1).
Regarding claim 14, McGlasson et al. discloses the machining device according to claim 1, wherein it comprises a motor (not shown, part of the disclosed portable drilling equipment such as the Par-A-Matic drill motor) configured to drive one or more drill bits 44.
Regarding claim 15, McGlasson et al. discloses a method for machining a workpiece 38 made of composite material, comprising the following steps: supplying a workpiece 38 made of composite material, supplying a machining device (see figures 1-3) according to claim 1, and producing at least one orifice in the workpiece using the drill bit 44.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fischer or McGlasson et al.
Regarding claim 3, Fischer or McGlasson et al. disclose the invention substantially as claimed, except neither Fischer nor McGlasson et al. disclose wherein the guide body is made of a metallic material or a metallic alloy, being silent as to the material of the guide body. 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 guide body from a metallic material or a metallic alloy for the purpose of providing a desired strength and durability to the guide body, 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)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Erickson et al. (US 7,073,989) discloses a machining device with a guide body.
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 18 August 2026
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