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 .
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 1-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12059734. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘734 anticipate the instant claims, although they are written in a slightly different order. See table below.
Instant Claim
US ‘734 claim(s)
Comments
1
1
Instantly claimed “second opening” corresponds to the “first circular opening” claimed in US ‘734.
2
1
3
5
4
1
5
1
6
6
7
1
8
2
9
5
The instantly claimed “second opening” corresponds to the “first partial circular opening” claimed in US ‘734.
10
5
11
5
12
5
13
5
14
5 & 12
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the hole saw of claim 5 to include the second group of openings set forth in claim 12 to provide more chip removal/slug removal properties to the hole saw.
15
5 & 12
16
12
17
5 & 12
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the hole saw of claim 12 to include the claimed spacing of claim 5 in order to provide the optimum chip removal/hole saw strength properties to the hole saw.
18
-
Not taught or rendered obvious by US ‘734
19
3 & 12
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the hole saw of claim 12 to include the claimed spacing of claim 3 in order to provide the optimum chip removal properties to the hole saw.
20
12 & 23
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the hole saw of claim 12 by providing the circular openings and partial circular openings with the same respective diameters as taught by claim 23 to make the hole saw easier to produce and provide the optimum chip removal properties to the hole saw.
Claim Rejections - 35 USC § 102
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)(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 9, 11 and 14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bek et al. (US 20200282474, hereinafter ‘Bek’).
Regarding claim 9, Bek discloses a hole saw 2 comprising an endcap 3/11 and a sidewall 7 defining a cylindrical shape and extending along a longitudinal axis. The sidewall comprises a cutting edge 6 at a first end and a second end opposite the cutting edge with respect to the longitudinal axis, the second end being coupled to the endcap and a first group of openings. The first group of openings comprises a first circular opening formed in the sidewall between the first end and second end and a second opening formed in the sidewall between the first end and second end (see e.g. Fig. 2, the group of openings in section D). An area of the second opening (small circle) is smaller than an area of the first circular opening (large circle), and wherein the second opening is located closer to the cutting edge than the first circular opening.
Regarding claim 11, Bek discloses the second opening being spaced a distance from the cutting edge such that there is solid area in a longitudinal direction of the sidewall between the second opening and the cutting edge.
Regarding claim 14, Bek discloses the hole saw comprising a second group of openings (e.g. groups E and or A in Fig. 2). The second group of openings comprises a second circular opening and a fourth opening.
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, 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 10, 12-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bek et al. (US 20200282474).
Regarding claims 10, 12 and 13, Bek discloses the group of openings being a variety of shapes (see e.g. Fig. 2, group D), with no specific required arrangement/configuration of shapes other than an exemplary configuration illustrated. Therefore, providing the second opening with a different shape other than the circular shape illustrated, such that the second opening is a different shape than the first circular opening would have been an obvious design choice modification one having ordinary skill in the art at the time of filing would have made. Specifically, forming the second opening as a first partial circular opening (i.e. a semicircle) comprising an arc extending between a first end and second end and a straight portion extending in a line from the firs tend of the arc to the second end of the arc would have been obvious to one having ordinary skill in the art at the time of filing depending on the chip evacuation properties and structural strength requirements desired by the hole saw. See MPEP 2144.04, IV, B and 2143, I, E.
Regarding claim 15, as above, Bek discloses the group of openings being a variety of shapes (see e.g. Fig. 2, group D), with no specific required arrangement/configuration of shapes other than an exemplary configuration illustrated. Therefore, providing the fourth opening as a second partial circular opening (e.g. a semicircle) would have been obvious to one having ordinary skill in the art at the time of filing depending on the chip evacuation properties and structural strength requirements desired by the hole saw. See MPEP 2144.04, IV, B and 2143, I, E.
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim (the double patenting rejection of claim 16 above), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1-8 and 16-20 would be allowed upon overcoming the double patenting rejection above.
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior art of record is considered to be Bek et al. (US 20200282474) as discussed above, in addition to Kim (US 5316416) and Kwang (US 5392759).
As discussed, Bek discloses much of independent claim 1, including the hole saw, endcap, sidewall and first and second openings. Although a suggestion to provide a semicircular/partial circular opening exists, orienting the arc/straight portions as instantly claimed is not explicitly taught, nor would not have been rendered obvious by Bek. Kim and Kwang both disclose partial circular openings 3A located closer to the cutting edge than respective circular openings, however, as above, orienting the partial circular openings so that the straight portion is closer to the cutting edge than the arc portion would not have been obvious to one having ordinary skill in the art at the time of filing, absent impermissible hindsight reconstruction of the instant invention.
Similarly, Bek discloses much of independent claim 16, including the hole saw, endcap, sidewall and a plurality of openings. Although a suggestion to provide a semicircular/partial circular opening exists, specifically separating the openings into discrete groups is not expressly taught. Fig. 2 illustrates various types of openings, but no disclosure exists to teach the claimed solid area between first and second groups of openings, and with Figures 1 and 4 taken into consideration, Bek is believed to disclose one type of openings extending around the entire circumference of the hole saw. Providing the discrete first and second groups, as well as the specific partial circular openings is not considered to have been obvious to one having ordinary skill in the art at the time of filing, absent impermissible hindsight reconstruction of the instant invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alan Snyder whose telephone number is (571)272-4603. The examiner can normally be reached M-R 7:00a - 5:00p.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Alan Snyder/Primary Examiner, Art Unit 3722
Prosecution Insights