DETAILED ACTION
This action is in response to applicant’s amendment received on July 1st, 2026.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the drill bit having only two flute blades (claim 104) and the flutes having a twist of at least 1 degree per 1 mm (claim 105) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 104 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original disclosure of the application does not provide support for the device having only two flute blades (claim 104).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 41-46, 55-57, 59, 89-91, and 94 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by a first interpretation of Hollander (U.S. Patent 6,106,292).
Regarding claims 41-46, 51, and 89:
Hollander discloses a device (for example see Figure 7-9; the embodiment of the figures is disclosed as being similar to the embodiment shown in Figures 1-5 except for the outer shape of the bit and the length of two of the blade (column 3 lines 55-62)) comprising:
(claim 41) a cutting head including
(claim 41) a proximal end
(claim 41) a distal end
(claim 41) a longitudinal axis running from the proximal end to the distal end
(claim 41) a first flute blade positioned along the longitudinal axis (a first element 24; for example see Figure 5; for example see column 3 lines 8-17)
(claim 41) a second flute blade positioned along the longitudinal axis (a second element 24)
(claim 44) wherein the first and second flute blades are position in a helical arrangement along the longitudinal axis (for example see Figure 5; column 3 lines 14-17 discloses asymmetric cutting flutes, i.e. helically arranged cutting flutes)
(claim 41) an extrapolated outer profile established by rotation of the first and second flute blade about the longitudinal axis thereof (the outline of the device in cross-section as best shown in Figure 9 helps visualize this)
(claim 41) the extrapolated outer profile includes a first surface having tangents more perpendicular than parallel to the longitudinal axis, i.e. are at an angle more than parallel to the longitudinal axis
(claim 45) wherein the first surface forms a cone
(claim 41) the extrapolated outer profile includes a second surface having tangents more parallel than perpendicular to the longitudinal axis, i.e. are more parallel than at an angle to the longitudinal axis
(claim 42) wherein the first surface and the second surface are contiguous with one another and smoothly blend into one another (for example see Figure 9)
(claim 45) wherein the second surface forms a truncated cone
(claim 46) wherein the first surface and the second surface form a compound cone
(claim 41) a relief portion
(claim 41) wherein a cutting edge of the first and second flute blade extend smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 51) wherein the relief portion is positioned between the cutting head and a stop surface
(claim 51) wherein the stop surface extends outward on a plane relative to the longitudinal axis
(claim 43) a sharp distal tip
(claim 54) wherein the device is capable of drilling a hole with a substantially cylindrical shape adjacent to the surface of the mastoid bone (the linear parallel portions of the second surface are capable of performing this function)
(claim 89) wherein the device is fully capable of being used as a mastoid start drill bit
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Regarding claims 55-57, 59, and 90-91:
Hollander discloses a device (for example see Figures 7-9; the embodiment of the figures is disclosed as being similar to those shown in Figures 1-5 except for the outer shape of the bit and the length of two of the blades (column 3 lines 55-62)) comprising:
(claim 55) a cutting head including
(claim 55) a proximal end
(claim 55) a distal end
(claim 55) a longitudinal axis running from the proximal end to the distal end
(claim 55) at least one substantially straight flute blade (24) positioned along the longitudinal axis
(claim 56) further including a second, third, and fourth substantially straight flute blade positioned along the longitudinal axis (for example see Figure 5, Figure 7, and Figure 8)
(claim 56) wherein each of the flute blades are arrange about the longitudinal axis at substantially equidistant locations (for example see Figure 5)
(claim 57) wherein the first and second flute blades extend further in the distal direction than the third and fourth flute blades (for example see Figure 7 and Figure 8)
(claim 55) an extrapolated outer profile established by rotation of the at least one flute blade about the longitudinal axis including
(claim 55) a first surface having tangents more perpendicular than parallel to the longitudinal axis
(claim 56) the first surface having a spherical shape at the distal end of the cutting head
(claim 55) a second surface having tangents more parallel than perpendicular to the longitudinal axis
(claim 55) the second surface having a substantially linear tangential shape that is positioned proximally with respect to the first surface
(claim 55) a relief portion positioned between the cutting head a stop surface
(claim 55) wherein a cutting edge of the at least one flute blade extends smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 59) a first outer cross-section in form of an offset cruciform
(claim 59) wherein the outer cross-section is in a first plane normal to a longitudinal axis of the drill bit (for example see Figure 5) and extending through the flute blades
(claim 90) wherein the device is fully capable of being used as a mastoid bone start drill
(claim 91) wherein the extrapolated outer profile is such that it is either extending further away from the longitudinal axis or parallel with the longitudinal axis along a length of the longitudinal axis from the most distal portion to a beginning of the relief portion (the outer profile with either extending further away, i.e. the first surface extends away from, i.e. has a partially spherical and tapered conical shape, and the second portion extends parallel with the longitudinal axis)
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Claims 41-43, 47-50, 54, and 89 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by a second interpretation of Hollander (U.S. Patent 6,106,292) (this interpretation is similar to the first interpretation except for adding the third surface).
Hollander discloses a device (for example see Figures 7-9; the embodiment of the figures is disclosed as being similar to those shown in Figures 1-5 except for the outer shape of the bit and the length of two of the blades (column 3 lines 55-62)) comprising:
(claim 41) a cutting head including
(claim 41) a proximal end
(claim 41) a distal end
(claim 41) a longitudinal axis running from the proximal end to the distal end
(claim 41) a first flute blade positioned along the longitudinal axis (a first element 24; for example see Figure 5; for example see column 3 lines 8-17)
(claim 41) a second flute blade positioned along the longitudinal axis (a second element 24)
(claim 44) wherein the first and second flute blades are positioned in a helical arrangement along the longitudinal axis
(claim 41) an extrapolated outer profile established by rotation of the first and second flute blades about the longitudinal axis thereof (the outline of the device in cross-section as best shown in Figure 9 help visualize this)
(claim 41) the extrapolated outer profile includes a first surface having tangents more perpendicular than parallel to the longitudinal axis, i.e. are at an angle more than parallel to the longitudinal axis
(claim 41) the extrapolated outer profile includes a second surface having tangents more parallel than perpendicular to the longitudinal axis, i.e. are more parallel than at an angle to the longitudinal axis
(claim 42) wherein the first and second surfaces are contiguous with one another and smoothly blend into one another
(claim 47) wherein the extrapolated outer profile includes a third surface proximal to the second surface having tangents parallel to the longitudinal axis and different than those of the second surface
(claim 48) wherein the second and third surfaces a contiguous with one another and smoothly blend into one another
(claim 49) wherein the first, second, and third surfaces form a compound cone
(claim 106) wherein the second surface extends a distance along the length of the longitudinal axis greater than a change in distance in the width of the surface relative to the longitudinal axis, i.e. the change in width from the start of the second surface to the end of the second surface is less than the distance of the second surface along the length of the longitudinal axis (for example see Figure 9)
(claim 41) a relief portion
(claim 41) wherein a cutting edge of the first and second flute blades extend smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 50) wherein the relief portion is positioned between the cutting head and a stop surface
(claim 43) a sharp distal tip
(claim 54) wherein the device is configured to drill a hole substantially cylindrical in shape adjacent to the surface of a mastoid bone (the third surface is capable of performing this function)
(claim 89) wherein the device is fully capable of being used as a mastoid bone start drill
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Claims 73-75, 78-80, 83-89, 95, 97, and 100 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by a third interpretation of Hollander (U.S. Patent 6,106,292) (this interpretation is similar to the first interpretation except for the first surface including only the partially spherical end of the device, the second surface extending directly from the first surface, and the third surface including only the parallel portions of the surface to the relief portion).
Hollander discloses a device (for example see Figures 7-9; the embodiment of the figures is disclosed as being similar to those shown in Figures 1-5 except for the outer shaped of the bit and the length of two of the blades (column 3 lines 55-62)) comprising:
(claim 41) a cutting head including
(claim 41) a proximal end
(claim 41) a distal end
(claim 41) a longitudinal axis running from the proximal end to the distal end
(claim 41) a first flute blade positioned along the longitudinal axis (a first element 24; for example see Figure 5; for example see column 3 lines 8-17)
(claim 41) a second flute blade positioned along the longitudinal axis (a second element 24)
(claim 44) wherein the first and second flute blades are positioned in a helical arrangement along the longitudinal axis
(claim 41) an extrapolated outer profile established by rotation of the first and second flute blades about the longitudinal axis thereof (the outline of the device in cross-section as best shown in Figure 9 help visualize this)
(claim 41) the extrapolated outer profile includes a first surface having tangents more perpendicular than parallel to the longitudinal axis, i.e. are at an angle more than parallel to the longitudinal axis
(claim 73) wherein the device includes an end face comprising the first surface and the second surface immediately extends from the end face and wherein the second surface is a side face of the drill bit
(claim 78) wherein the first surface is completely a truncated hemisphere (a truncated hemisphere would be a partial hemisphere which is shown in the reference)
(claim 79) wherein the first surface is completely defined by curved portion of the extrapolated outer profile
(claim 80) wherein the first surface is completely defined by portions of the extrapolated outer profile having a constantly changing tangent surface with respect to a location along the longitudinal axis, i.e. a curved surface
(claims 83, 87, and 88) wherein the first surface is entirely made up of portions that have tangents more perpendicular than parallel to the longitudinal axis, i.e. a curved surface
(claim 41) the extrapolated outer profile includes a second surface having tangents more parallel than perpendicular to the longitudinal axis, i.e. are more parallel than at an angle to the longitudinal axis
(claim 42) wherein the first and second surfaces are contiguous with one another and smoothly blend into one another
(claim 45) wherein the first surface forms a cone and the second surface forms a truncated cone (paragraph 42 of the application states that the portion of a sphere of the first surface forms a cone, therefore the truncated hemispherical surface of the first surface of the reference can be interpreted as a cone)
(claim 74) wherein the device includes an end face comprising the first surface and the second surface immediately extends from the end face and wherein the second surface is a side face of the device
(claim 84) wherein the truncated cone has an outer profile that had tangents that are all the same length of the longitudinal axis, i.e. the surface of the truncated cone is linear and angled relative to the longitudinal axis
(claim 85) wherein the extrapolated outer profile includes a third surface immediately proximate the second surface that forms a cylinder
(claim 46) wherein the first and second surfaces form a compound curve
(claim 75) wherein the device includes an end face comprising the first surface and the second surface immediately extends from the end face and wherein the second surface is a side face of the device
(claim 86) wherein the extrapolated outer profiled includes a third surface immediately proximate the second surface that forms a cylinder
(claim 95) wherein the entire second surface is obliquely angled relative to the longitudinal axis
(claim 47) wherein the extrapolated outer profile includes a third surface proximal to the second surface having tangents parallel to the longitudinal axis and different than those of the second surface
(claim 48) wherein the second and third surfaces are contiguous with one another and smoothly blend into one another
(claim 49) wherein the first, second, and third surfaces form a compound cone
(claim 100) wherein the second surface and the third surface extend linearly and uniformly over the entirety of the surfaces
(claim 41) a relief portion
(claim 41) wherein a cutting edge of the first and second flute blades extend smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 97) wherein the third surface establishes the relief portion
(claim 43) a sharp distal tip
(claim 54) wherein the device is configured to drill a hole substantially cylindrical in shape adjacent to the surface of a mastoid bone (the third surface is capable of performing this function)
(claim 89) wherein the device is fully capable of being used as a mastoid bone start drill
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Claims 98, 99, and 101 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by a fourth interpretation of Hollander (U.S. Patent 6,106,292) (this interpretation is similar to the first interpretation except for the first surface being separated from the second surface and the third surface being positioned between the first surface and the second surface, i.e. the second surface is now called the third surface and the third surface is now called the second surface).
Hollander discloses a device (for example see Figures 7-9; the embodiment of the figures is disclosed as being similar to those shown in Figures 1-5 except for the outer shaped of the bit and the length of two of the blades (column 3 lines 55-62)) comprising:
(claim 41) a cutting head including
(claim 41) a proximal end
(claim 41) a distal end
(claim 41) a longitudinal axis running from the proximal end to the distal end
(claim 41) a first flute blade positioned along the longitudinal axis (a first element 24; for example see Figure 5; for example see column 3 lines 8-17)
(claim 41) a second flute blade positioned along the longitudinal axis (a second element 24)
(claim 44) wherein the first and second flute blades are positioned in a helical arrangement along the longitudinal axis
(claim 41) an extrapolated outer profile established by rotation of the first and second flute blades about the longitudinal axis thereof (the outline of the device in cross-section as best shown in Figure 9 help visualize this)
(claim 41) the extrapolated outer profile includes a first surface having tangents more perpendicular than parallel to the longitudinal axis, i.e. are at an angle more than parallel to the longitudinal axis
(claim 41) the extrapolated outer profile includes a second surface having tangents more parallel than perpendicular to the longitudinal axis, i.e. are more parallel than at an angle to the longitudinal axis
(claim 98) wherein the second surface is made up of only a linear surface parallel to the longitudinal axis
(claim 98) wherein the first surface is spaced away from the second surface
(claim 99) wherein the extrapolated outer profile includes a third surface positioned between the first surface and the second surface
(claim 99) wherein the third surface having tangents more parallel than perpendicular to the longitudinal axis, i.e. the surface has more angled portions relative to the longitudinal axis than parallel portions relative to the longitudinal axis
(claim 41) a relief portion
(claim 41) wherein a cutting edge of the first and second flute blades extend smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 101) wherein the relief portion is adjacent the second surface
(claim 101) wherein cutting edges of the second surface end at the relief portion
(claim 101) wherein the relief portion establishes a cylindrical second of the device
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Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 51 and 54 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation and/or the second interpretation and/or the third interpretation and/or the fourth interpretation of Hollander (U.S. Patent 6,106,292) in view of Moon (U.S. Publication 2012/0323243).
Hollander discloses the invention as claimed (see above) except for the stop surface extending on a plate substantially normal to the longitudinal axis of the drill bit. Moon teaches a device comprising a drill bit including a cutting head (30), a relief portion (11), and a stop surface (lower surface of element 12), wherein the stop surface extends outwardly on a plane substantially normal to a longitudinal axis of the device (for example see Figure 1). It would have been an obvious matter of design choice to one skill in the art at the time the invention was made to provide the device of Hollander wherein the stop surface extends outward on a plane substantially normal to the longitudinal axis in view of Moon, since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purpose of providing a stop surface on a drill bit. In re Dailey and Eiler, 149 USPQ 47 (1966).
Claim 52 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation and/or the second interpretation and/or the third interpretation and/or the fourth interpretation of Hollander (U.S. Patent 6,106,292) in view of Moon (U.S. Publication 2012/0323243).
The device of Hollander as modified by Moon discloses the invention as claimed (see above) except for the stop surface being about 4 mm to about 6 mm from the distal end of the device (as shown in Figures 7-9 of Hollander, the length of the entire drill bit is disclosed as about 20 mm to 25 mm, but the length from the stop surface to the distal tip is not provided). It would have been obvious to one having ordinary skill in the art at the time the invention wad made to provide the device of Hollander as modified by Moon wherein the stop surface is about 4 mm to about 6 mm from the distal end, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 58 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation of Hollander (U.S. Patent 6,106,292).
The device of Hollander discloses the invention as claimed (see above) wherein the flute blades include a leading surface and at least one trailing surface extending from the leading surface at an angle (for example see Figure 5). It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the device of Hollander wherein the trailing surface extends from the leading surface at an angle of at least about 280 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routing skill in the art. In re Aller, 105 USPQ 233.
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Claims 60, 64, 65, 67, 71, 94, and 103 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the second interpretation of Hollander (U.S. Patent 6,106,292) in view of Kumar (U.S. Publication 2002/0028422).
Hollander discloses a device (for example see Figures 7-9; the embodiment of the figures is disclosed as being similar to those shown in Figures 1-5 except for the outer shape of the bit and the length of two of the blades (column 3 lines 55-62)) comprising:
(claim 60) a cutting head including
(claim 60) a proximal end
(claim 60) a distal end
(claim 60) a longitudinal axis running from the proximal end to the distal end
(claim 60) a first flute blade positioned along the longitudinal axis (a first element 24; for example see Figure 5; for example see column 3 lines 8-17)
(claim 60) a second flute blade positioned along the longitudinal axis (a second element 24)
(claim 65) wherein the first and second flute blades are positioned in a helical arrangement along the longitudinal axis
(claim 60) an extrapolated outer profile established by rotation of the first and second flute blades about the longitudinal axis thereof (the outline of the device in cross-section as best shown in Figure 9 helps visualize this)
(claim 60) the extrapolated outer profile includes a first surface having tangents more perpendicular than parallel to the longitudinal axis, i.e. are at an angle more than parallel to the longitudinal axis
(claim 71) wherein the first surface includes a substantially conical shape with a tangent more perpendicular than parallel to the longitudinal axis
(claim 60) the extrapolated outer profile includes a second surface having a substantially linear tangential shape positioned proximal the first surface
(claim 60) wherein the extrapolated outer profile includes a third surface proximal to the second surface having a substantially linear tangential shape proximal the second surface
(claim 60) a relief portion positioned between the cutting head and a stop surface
(claim 60) wherein a cutting edge of the first and second flute blade extend smoothly from the distal end of the cutting head into the relief portion (for example see Figure 8)
(claim 64) a sharp distal tip
(claim 67) wherein the device is capable of drilling a hole with a substantially cylindrical shape adjacent to the surface of a mastoid bone
(claim 94) wherein the device is capable of being used as a mastoid start drill bit
Hollander fails to disclose the device further comprising a countersink drill bit. Kumar teaches a device comprising a starting drill bit (for example see Figure 3), wherein the device further comprises a countersink drill bit (see Figure 8) having an extrapolated surface substantially similar to the extrapolated surface of the start bit in order to counterbore a hole created by the starting drill bit (for example see paragraph 122). It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the device of Hollander further comprising a countersink drill bit in view of Kumar in order to counterbore a hole created by the starting drill bit.
The device of Hollander as modified by Kuman discloses a device wherein the countersink drill bit is capable of drilling a hole in a mastoid bone wherein the substantially cylindrical shape left by the starting drill bit provides a guide for the countersink drill bit.
Regarding claim 103:
The device of Hollander as modified by Kumar discloses the invention as claimed except for the device widening away from the relief portion, i.e. a stop surface, at a location within the range of about 4 mm to about 6 mm from the distal end of the countersink. It would have been obvious to one having ordinary skill in the art at the time the invention was provide the device of Hollander as modified by Moon wherein the device widens way from the relief portion, i.e. a stop surface, at a location within the range of about 4 mm to about 6 mm from the distal end, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 76, 77, 81 and 82 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation and/or the second interpretation and/or the third interpretation of Hollander (U.S. Patent 6,106,292).
The device of Hollander discloses the invention as claimed (see above) except for stop surface being less than or equal to 6 mm from the distal end of the device and except for the stop surface being less than or equal to 4.1 mm (as shown in Figures 7-9 of Hollander, the length of the entire drill bit is disclosed as about 20 mm to 25mm, but length from the stop surface to the distal tip is not provided). It would have been obvious to one having ordinary skill in the art at the time the invention was provide the device of Hollander wherein the stop surface is less than or equal to 6 mm from the distal end and wherein the stop surface is less than or equal to 4.1 mm from the distal end, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 102 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation and/or the second interpretation and/or the third interpretation and/or the fourth interpretation of Hollander (U.S. Patent 6,106,292).
The device of Hollander discloses the invention as claimed except for the device widening away from the relief portion, i.e. a stop surface, at a location within the range of about 4 mm to about 6 mm from the distal end of the countersink. It would have been obvious to one having ordinary skill in the art at the time the invention was provide the device of Hollander wherein the device widens way from the relief portion, i.e. a stop surface, at a location within the range of about 4 mm to about 6 mm from the distal end, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 107-108 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over by the first interpretation and/or the second interpretation and/or the third interpretation and/or the fourth interpretation of Hollander (U.S. Patent 6,106,292).
The device of Hollander discloses the invention as claimed except for a narrowest portion of the truncated cone falling within a range of 2 mm to 3mm or less than 2.5 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was provide the device of Hollander wherein the narrowest portion of the truncated cone falls within a range of 2 mm to 3mm or less than 2.5 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claims 93, 96, and 105 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.
Response to Arguments
Applicant's arguments filed July 1st, 2026 have been fully considered but they are not persuasive. The applicant’s argument regarding priority is moot in view of the amendments. The applicant’s argument regarding the specification objection is moot in view of the amendments. The applicant’s arguments regarding the drawing objections from the last office action are moot in view of the amendments. The applicant’s argument that the examiner cannot use multiple embodiments to anticipate the claim limitations is not persuasive. The examiner is not using multiple embodiments for the anticipation of the claim limitations. As discussed in the office action, column 3 lines 55-62 of the reference states that the embodiment shown in Figures 7-9 is the same as the embodiment shown in Figures 1-5 except for the outer shape of the bit and the length of two of the blades. Therefore, reference Figures 1-5 for the portions of the device that are similar between the embodiments is not using two different embodiments. The applicant’s argument that the device is not capable of being used to drill a mastoid bone or to be used as a mastoid start drill bit is not persuasive. The reference is fully capable of cutting bone and is fully capable of being used as a starting drill bit on a mastoid bone. The applicant’s argument that the limitations of claim 91 are not disclosed in the reference is not persuasive. As clearly shown in the reference, the extrapolated outer surface of the device includes portions that both extends further away from the longitudinal axis, i.e. is slanted relative to the longitudinal axis, and extends parallel with the longitudinal axis along a length of the longitudinal axis from the most distal portion to a beginning of the relief portion. The applicant’s arguments that the 103 rejections in view of Hollander are not proper in view of the above arguments is not persuasive. The 103 rejections in view of Hollander meet the requirements for an obviousness rejection under 35 U.S.C. 103 and are deemed proper for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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