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 without traverse of Species I, claims 1-5 in the reply filed on 24 July 2026 is acknowledged.
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 1-5 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 1 recites the limitation “a second helical groove located opposite to the first helical groove” in lines 7-8, and then recites “wherein the first and second helical grooves are located opposite to each other” in lines 9-10, causing unnecessary duplication in the claim.
Claim 1 recites the limitation “wherein the third and fourth helical grooves are located to each other” in lines 10-11. It is unclear what is meant by “located to each other”. For the purposes of examination, it has been assumed that this limitation should be “located opposite to each other”. However, this would be a similar limitation to “a fourth helical groove located opposite to the third helical groove” in lines 8-9, creating unnecessary duplication in the claim.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robertson (GB 155,004).
Regarding claim 1, Robertson discloses a step drill (embodiment of figure 2) comprising a stepped cone formed with a tip (bottom in figure 2) and a bottom (top in figure 2), a shank (b) coaxially extending from the bottom, and steps (1/2/3/4/5/6) formed between the tip and the bottom, wherein the stepped cone comprises a transitional portion (groove c and inclined face d located between steps 3 and 4) formed on one of the steps, wherein there is a first length between the transitional portion and the tip (not labeled, see figure 2), wherein there is a second length between the transitional portion and the bottom (not labeled, see figure 2); the stepped cone comprises a first helical groove (first full length groove a), a second helical groove (second full length groove a) located opposite to the first helical groove, a third helical groove (first half length groove a) and a fourth helical groove (second half length groove a) located opposite to the third helical groove, wherein the first and second helical grooves are located opposite to each other, wherein the third and fourth helical grooves are located opposite to each other, wherein the first, second, third and fourth helical grooves are evenly cut in the stepped cone (see figure 2); the first and second helical grooves extend from the tip to the bottom (see figure 2); and the third and fourth helical grooves extend from the transitional portion to the bottom (see figure 2 and page 2, lines 67-70).
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson.
Regarding claims 2-3, Robertson discloses where the first and second length appear to be close to equal as seen in figure 2. Robertson does not distinctly disclose wherein the first length is equal to the second length, or wherein the first length is larger than the second length. However, it would have been an obvious matter of design choice to make the different portions of the step drill of whatever relative lengths were desired for the purpose of providing a desired overall operational strength and chip evacuation to the step drill, since such a modification would have involved a mere change in the proportions of components, and Applicant has not provided an advantage to providing the different lengths as claimed. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Additionally, according to the teachings of KSR, it would have been obvious to try making the different portions of the step drill to have the claimed lengths, as one of ordinary level of skill in the art would have had a reasonable expectation of success to make this modification to the step drill. KSR Int’l Co. v. Teleflex, Inc., No 04-1350 (U.S. Apr. 30, 2007)
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson in view of Just et al. (US 5,678,960).
Regarding claims 4-5, Robertson discloses the invention substantially as claimed, except Robertson does not disclose wherein the first and second helical grooves get deeper from the tip to the bottom, wherein the third and fourth helical grooves get deeper from the transitional portion to the bottom, or wherein the first and second helical grooves get wider from the tip to the bottom, wherein the third helical and fourth grooves get wider from the transitional portion to the bottom. Just et al. teaches the use of a drill (1) comprising swarf grooves (4/4’) that get deeper from a tip (6) to a bottom (top in figure 1) of the drill (see column 5, lines 22-28) and gets wider from the tip to the bottom (see column 6, lines 17-27), all for the purpose of avoiding backup of chips in the grooves, making it possible to operate the drill at high cutting rates. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have combined the step drill of Robertson with the groove depths and widths of Just et al. in order to improve chip evacuation in the step drill during a drilling process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mai et al. (DE 10 2018 131 237 A1) discloses a step drill with 2 full length flutes and 2 partial length flutes.
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 25 August 2026
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