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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
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 10-12 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.
Claims 10 and 11 each recite “wherein the fitting body defines at least one drill bushing passage.” It is not necessarily clear if the “at least one drill bushing passage” is the same as or includes the “plurality of drill bushing passages” recited in claim 1, of if claims 10 and 11 refer to different drill bushing passages. Furthermore, depending on the above, “at least one drill bushing passage” conflicts with the establishment of a “plurality of drill bushing passages” in claim 1.
Claim 12 depends from claim 11.
Claim Rejections - 35 USC § 102 and 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1, 4, 8, 10-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bui (U.S. Patent 9,108,250).
Claim 1: Bui discloses a drill guide (300 – see especially Figs. 3 and 25-26) for removing a standoff fastened to a structure by a plurality of fasteners (intended use, see below), the drill guide comprising: a fitting body (generally 302) having a bottom portion and a top portion spaced apart along a height (bottom and top portions evident in Figs 25-26), the fitting body defining a standoff receptacle opening through the bottom portion of the fitting body (any of the openings 304, 306, 308, and 310 combined with space 400 could serve as a “standoff receptacle”), the fitting body configured to operably couple to the standoff such that at least a portion of the standoff is received in the standoff receptacle such that the fitting body has a keyed position in relation to the standoff (this would be dependent upon the shape/dimensions of the standoff, but the guide 300 could be capable of this function), wherein the bottom portion of the fitting body defines a flange fitting (the wall enclosing space 400) around the standoff receptacle, the standoff receptacle comprises a flange chamber (400) defined by the flange fitting, and the standoff receptacle further comprises an upper chamber (any of the holes 304, 306, 308, and 310) above the flange chamber, wherein the fitting body defines a plurality of drill bushing passages (e.g. two other of the holes 304, 306, 308, and 310); and
a plurality of drill bushings (any two or more of 500, 2402, 2404, and 2406) secured to the fitting body, each drill bushing being received in a respective drill bushing passage (Fig. 25) and defining a drill bit passage extending along a respective drilling axis (Fig. 26), each drill bushing being positioned and arranged on the fitting body to be directly above a respective one of the fasteners when the fitting body is in the keyed position in relation to the standoff such that the drill bushing is configured to guide a drill bit inserted into the drill bit passage along the drilling axis for drilling out the fastener (again, this would be dependent on the structure of the non-positively recited standoff and the fastening arrangement thereof, but the guide 300 would be capable of the fasteners were arranged directly beneath the drill bushings), wherein each said drilling axis crosses through the flange chamber and is located entirely outside of the upper chamber (if the upper chamber and the drill bushing openings comprise distinct openings of the four shown); wherein the upper chamber has a first width (each of the holes 304, 306, 308, and 310 is stepped and has multiple widths, where the “first width” may be taken a wider among them) and each of the plurality of drill bushing passages has a second width (a narrower width of the widths), wherein the first width is greater than the second width.
It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As discussed above, limitations pertaining to the use of the jig to interact with and remove a standoff and/or its fasteners are interpreted as intended use, noting that the guide 300 would generally be capable of these functions depending on the specific nature of the standoff structure.
It is also noted that a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Alternatively to the above, the upper chamber does not necessarily have a first width and each of the plurality of drill bushing passages has a second width (i.e. of a same or corresponding portion the respective holes), wherein the first width is greater than the second width. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Bui to have different widths as claimed since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777(Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, Bui would not necessarily operate differently with the claimed widths since it would still be capable of guiding a drill at the requisite locations in conjunction with the various bushings. Further, Applicant has not disclosed any criticality for the claimed range in the instant disclosure.
Claim 4: The flange chamber is configured to provide headspace above the flange for chip clearance when the fitting body is operably coupled to the standoff (This is dependent on the flange).
Claim 8: The upper chamber opens through the top portion of the fitting body (Fig. 26).
Claim 10: The fitting body defines at least one drill bushing passage (one or more of the holes 304, 306, 308, and 310 as discussed for claim 1) beside the upper chamber and above the flange chamber.
Claim 11: The fitting body defines at least one drill bushing passage (one or more of the holes 304, 306, 308, and 310 as discussed for claim 1), each drill bushing passage extending heightwise and opening through the top portion and the bottom portion of the drill guide body (Fig. 26).
Claim 12: Each drill bushing is mounted in a respective one of the drill bushing passages (Fig. 25).
Claim 13: The flange chamber (400) has a width, the upper chamber is narrower than the flange chamber (evident in Fig. 26) and located centrally along the width of the flange chamber (if the width is taken diagonally, for example, then each hole is centered thereon); the plurality of bushings comprises a first bushing (any of 500, 2402, 2404, and 2406) and a second bushing (another of 500, 2402, 2404, and 2406); the first bushing, the upper chamber, and the second bushing being spaced apart widthwise (Fig. 25); and the upper chamber being located between the first bushing and the second bushing along the width of the flange chamber (for example, if the opening associated with 2404 is the upper chamber and 2402 and 2406 are the first and second bushings, then they are spaced apart widthwise along the diagonal).
Claim 15: The lower portion of the fitting body comprises at least one stabilizing foot extending outward (broadly the lower extensions of the walls may be considered “feet” extending downwardly outward of the fitting body) to provide a stable base for supporting the fitting body on the structure when the fitting body is in the keyed position (noting that “stable” is not particularly defined, the guide 300 generally sits flatly on the workpiece 200 and would presumably be “stable” in the sense that it would not substantially wobble, for example).
Claim 15 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Bui in view of Reed (U.S. PGPub 2022/0176500).
In a more specific interpretation, the lower portion of the fitting body of Bui does not necessarily possess a “stabilizing foot” extending outward, e.g. distinct from the flange portion/wall. However, Reed teaches a similar drill guide (86) having stabilizing feet (corners defined by channels 82) that rest upon the workpiece (paragraph 47). It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have included feet as taught by Reed since they provide a route for the drill chips to move away from the bottom of the drill fixture (Id.). Again, noting that “stable” is not particularly defined, the feet generally sit flatly on the workpiece and would presumably be “stable” in the sense that the guide would not substantially wobble, for example.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive. Applicant’s arguments essentially rely on amendments to the claims and state the following (italicized):
However, Bui discloses a universal jig plate where all openings (304, 306, 308, 310) are identical. Bui describes a "structure 302" with a "plurality of openings 304, 306, 308, and 310" that are formed based on a uniform pattern (Bui, Col. 4, Lines 62-65). These openings are uniform in diameter to accept interchangeable bushing assemblies (500).
Because the openings in Bui are identical in size, Bui cannot satisfy the structural inequality recited in amended Claim 1. If "Hole A" in Bui is the "upper chamber" and "Hole B" is the "drill bushing passage," the width of the upper chamber is equal to the width of the drill bushing passage. Bui does not disclose a fitting body where the upper chamber (first width) is greater than the drill bushing passage (second width).
Applicant quotes Bui as allegedly discussing "structure 302" and "plurality of openings 304, 306, 308, and 310" in column 4, lines 62-65. However, this section of Bui pertains to structure 114 and opening 120. Even then, nowhere in this passage does Bui discuss a “uniform pattern” where the openings are “uniform in diameter” or “all openings…are identical”. In fact, the words “uniform” and “identical” do not even appear in the entirety of the disclosure of Bui. Thus, Applicant’s arguments appear to be based on a false premise.
This distinction is not merely dimensional; it reflects the specific function of the claimed invention, which keys onto a standoff arm (a large structural element) to locate fasteners (smaller elements). Bui, by contrast, is a generic grid designed to be universally adjustable, lacking the specific "keyed" sizing hierarchy of the present invention.
Nowhere does Applicant’s disclosure discuss the difference in width between the upper chamber and the drill bushing passages, and the difference itself is only depicted in the drawings. While the upper chamber may presumably be wider if the standoff diameter is larger than the fasteners to be drilled, there is nothing to suggest this must or always be the case, or that the difference in width otherwise solves any kind of problem or serves any purpose.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726