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 .
Election/Restrictions
Applicant’s election without traverse of Species iv (A fourth species of the hole saw in which the hole saw has the sidewall (16) without openings of Figure 7 and further has the teeth of Figure 10 on the cutting end of the sidewall (16)) in the reply filed on 7/8/2026 is acknowledged.
In Applicant’s election without traverse of Species iv, Applicant advised that each of claims 1-20 reads on Species iv. This; however, isn’t entirely correct. Although claims 10-15 read on Species iv, claims 1-9 and 16-20 do not. This will now be explained.
First, with respect to claim 1, please be advised that claim 1 sets forth therein, “a second tooth, the second tooth extending radially inward from the outer surface of the sidewall, the second tool comprising: a second width, wherein the second width is greater than the first width; a first edge extending beyond the inner surface of the sidewall; and a second edge opposing the first edge, the entire second edge flush with the outer surface of the sidewall.” Elected Species iv (which has the teeth of Figure 10 on the cutting end of the sidewall (16) thereof) does not comprise a tooth with this structure, i.e. a second tooth like that set forth in claim 1. Figure 10 (which corresponds to elected Species iv) as filed on 7/29/2024 does not show the hole saw as comprising a second tooth with the structure that is set forth in claim 1. More specifically, note how there aren’t any teeth shown in Figure 10 as having both a first edge that extends beyond the inner surface of the sidewall, and a second edge opposing the first edge, wherein the entire second edge is flush with the outer surface of the sidewall. Furthermore, paragraphs [0038-0040] of the specification, which discuss the configuration of the teeth of Figure 10, do not disclose a second tooth with the structure that is set forth in claim 1. There isn’t even any discussion in the specification in paragraphs [0038-0040] thereof (or elsewhere for that matter) with respect to elected Species iv and a first edge and a second edge of a tooth thereof. Next, please be advised that paragraph [0032], which discusses the configuration of the teeth of Figure 5, discloses, “Overhang teeth 46 tooth 20 has a radially outer surface that is flush (e.g., +/- 0.001” flush) with outside surface 26.” It is only with respect to Figure 5 is “flush” ever disclosed, and the discussion of “flush” doesn’t actually even extend to a second edge of a second tooth like what is claimed. Paragraph [0032] is discussing a radially outer surface of overhang teeth (46) tooth (20) being flush with an outside surface (26), but a radially outer surface isn’t an edge. An edge rather, is a line segment where two faces meet. In the Restriction Requirement mailed on 5/11/2026, elected Species iv was identified as having the teeth of Figure 10 on the cutting end of the sidewall (16) thereof not the teeth of Figure 5 on the cutting end of the sidewall thereof. Based on the foregoing, claim 1 does not read on elected Species iv. Be advised that each of claims 2-8 depends either directly or indirectly on claim 1. Thus, none of claims 1-9 reads on elected Species iv.
Next, with respect to claim 16, please be advised that claim 16 sets forth therein, “a second tooth, the second tooth extending radially outward relative to the outer surface of the sidewall, the second tooth comprising: a third edge extending beyond the inner surface of the sidewall; a fourth edge opposing the third edge, the fourth edge extending beyond the outer surface of the sidewall.”
Noting this, the hole saw of elected Species iv does not comprise a second tooth like that set forth in claim 16. Rather, it is non-elected Species ii (which has the teeth of Figure 6 on the cutting end of the sidewall (16) thereof) that comprises a second tooth like that which is set forth in claim 16. Examiner directs attention to Figure 6 and to reference character 42 that is disposed on the left. (Please note that Figure 6 shows another tooth with reference character 42 that is disposed to the right of the one that Examiner is discussing now). The set tooth (42) that is disposed on the left and that is pointed to with reference character 42 has the structure of extending radially outward relative to the outer surface of the sidewall, a third edge extending beyond the inner surface of the sidewall, and a fourth edge opposing the third edge, the fourth edge extending beyond the outer surface of the sidewall. On the other hand, elected Species iv (which has the teeth of Figure 10 on the cutting end of the sidewall (16) thereof) does not comprise a tooth with this structure, i.e. a second tooth like that set forth in claim 16. This is evident in Figure 10. Thus, claim 16 does not read on elected Species iv. Please be advised that each of claims 17-20 depends either directly or indirectly on claim 16. Thus, none of claims 16-20 reads on elected Species iv either.
Claims 1-9 and 16-20 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. Election was made without traverse in the reply filed on 7/8/2026.
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 10, 11, 12, 13, 14, 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 5, 6, and 5, respectively, of U.S. Patent No. 12,076,797 (hereinafter U.S. '797). Although the claims at issue are not identical, they are not patentably distinct from each other.
For double patenting to exist between the rejected claim and a claim of U.S. '797, it must be determined that the rejected claim is not patentably distinct from the claim of U.S. '797. In order to make this determination, it first must be determined whether there are any differences between the rejected claim and the claim of U.S. '797, and if so, whether those differences render the claims patentably distinct.
All of the limitations of present claim 10 are found in claim 1 of U.S. '797. Noting this, please be advised that claim 1 of U.S. '797 includes additional claims elements that are not found in present claim 10. However, similar to how the presence of additional structure or elements in a prior art reference does not change the fact that the reference teaches the limitations of a claim in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103, the presence of those additional claims elements in claim 1 of U.S. '797 does not change the fact that claim 1 of U.S. '797 teaches elements of present claim 10. Based on the foregoing, while claim 1 of U.S. '797 includes additional claims elements not found in present claim 1, the presence of those additional claims elements does not change the fact that claim 1 of U.S. '797 teaches the elements of present claim 10, and does not render the claims patentably distinct.
With respect to present claim 10, another difference is that present claim 10 uses the broader term “a first end” of the sidewall, while claim 1 of U.S. '797 use the more specific term, “a cutting end” of the sidewall. Noting this, “a sidewall extending axially from a base to a cutting end of the sidewall opposite the base” as set forth in claim 1 of U.S. '797 reads on, “a sidewall extending axially from a base to a first end of the sidewall opposite the base” of present claim 10.
This difference does not render claim 1 of U.S. '797 and present claim 10 patentably distinct.
Another difference is that present claim 10 sets forth the hole saw as comprising “a cylindrical body” comprising the aforesaid sidewall. However, claim 1 of U.S. '797 does not specifically set forth therein the hole saw as comprising “a cylindrical body.” However, it is inherent that the sidewall and the corresponding teeth of claim 1 of U.S. '797 form a cylindrical body. At the very least, this can be determined by the fact that the sidewall is set forth in claim 1 of U.S. '797 as having “a thickness extending between an inner sidewall diameter and an outer sidewall diameter.” The sidewall of claim 1 of U.S. '797 is inherent shaped a cylinder, because if it wasn’t, there wouldn’t be an inner sidewall diameter and an outer sidewall diameter. Another difference is that present claim 10 sets forth the sidewall as comprising, “an inner surface defining an inner sidewall diameter; an outer surface; and a thickness defined between the inner surface and the outer surface.” Claim 1 of U.S. '797; however, sets forth, “the sidewall having a thickness extending between an inner sidewall diameter and an outer sidewall diameter.” It is inherent that the sidewall of claim 1 of U.S. '797 has an inner surface and outer surface. As a 3D object having a thickness that is shaped as a cylindrical body, it must by its very nature have an inner surface and outer surface. In the case of the sidewall of claim 1 of U.S. '797, the inner sidewall diameter that it is set forth as having must correspond to an inner surface/sidewall, while the outer sidewall diameter that it is set forth as having must correspond to an outer surface/sidewall. Therefore, these differences do not render claim 1 of U.S. '797 and present claim 10 patentably distinct.
Another difference is that present claim 10 sets forth the hole saw as comprising “second teeth.” In contrast, claim 1 of U.S. '797 sets forth the hole saw as comprising, “overhang teeth.” “Second teeth” is a broader term used by Applicant in present claim 10 as compared to the more specific “overhang teeth.” What’s more is that claim 1 of U.S. '797 also sets forth, “first teeth,” meaning that the “overhang teeth” are the second teeth of the hole saw of claim 1 of U.S. '797. One last difference is that present claim 10 sets forth, “each of the second teeth extending radially inward over the inner surface of the sidewall and having an inward angle relative to the inner surface of the sidewall such that the second teeth define an inner kerf diameter, wherein the inner kerf diameter is less than the inner side wall diameter” (emphasis added). In contrast, claim 1 of U.S. '797 sets forth, “the overhang cutting teeth extend radially inward from the sidewall to form an inner kerf diameter that is less than the inner sidewall diameter.” Although claim 1 of U.S. '797 does not specifically set forth the overhang/second teeth as having an inward angle relative to the inner surface of the sidewall, it is inherent that the overhang/second teeth are configured as such. This is because by extending radially inward from the sidewall to form an inner kerf diameter, the each overhang/second tooth has established an inward angle relative to the inner sidewall/surface of the sidewall. Based on the foregoing, these differences do not render claim 1 of U.S. '797 and present claim 10 patentably distinct.
All of the limitations of present claim 11 are found in claim 1 of U.S. '797. Noting this, please be advised that present claim 11 sets forth therein, “each of the second teeth have a first width in a radial direction that is greater than the thickness of the sidewall.” Noting this, as can be seen in claim 1 of U.S. '797, “the first cutting teeth having a width that is same as the thickness of the sidewall; and overhang cutting teeth that are wider than the first cutting teeth.” Noting once again that the overhang teeth of claim 1 of U.S. '797 correspond to the “second teeth” of present claim 11, because the first cutting teeth of claim 1 of U.S. '797 have a width that is same as the thickness of the sidewall, and because the overhang/second cutting teeth of claim 1 of U.S. '797 are wider than the first cutting teeth, this means that the overhang/second cutting teeth of claim 1 of U.S. '797 have a width, e.g. a first width in a radial direction, that is greater than the thickness of the sidewall. Therefore, the difference(s) between claim 1 of U.S. '797 and present claim 11 do not render these claims patentably distinct.
All of the limitations of present claim 12 are found in claim 1 of U.S. '797. Noting this, please be advised that present claim 12 sets forth therein, “each of the first teeth further comprise a second width defined in the radial direction, wherein the second width of each of the first teeth is less than the first width of the second teeth.” Noting this, as can be seen in claim 1 of U.S. '797, “the first cutting teeth having a width that is same as the thickness of the sidewall; and overhang cutting teeth that are wider than the first cutting teeth.” Noting once again that the overhang teeth of claim 1 of U.S. '797 correspond to the “second teeth” of present claim 11, it is explicitly recited that the overhang/second cutting teeth of claim 1 of U.S. '797 are wider than the first cutting teeth. This means that the each of the first teeth comprises a width, e.g. a second width defined in a radial direction, wherein the second width of each of the first teeth is less than the first width of the overhang/second cutting teeth of claim 1 of U.S. '797. Therefore, the difference(s) between claim 1 of U.S. '797 and present claim 12 do not render these claims patentably distinct.
All of the limitations of present claim 13 are found in claim 5 of U.S. '797. Noting this, present claim 13 uses the broader term of “third teeth,” whereas claim 5 of U.S. '797 uses the more specific term of, “outward set cutting teeth.” The outward set cutting teeth of claim 5 of U.S. '797 are in fact the third type of teeth of the hole saw of claim 5 of U.S. '797, noting that in claim 1 of U.S. '797, on which claim 5 directly depends, the hole saw was set forth therein as comprising first teeth and overhang cutting teeth, which overhang cutting teeth as explained above, are themselves the second teeth of the hole saw. Having said that, present claim 13 sets forth therein, “each of the third teeth extend radially outward relative to the outer surface of the sidewall to defined an outward overhang.” Noting this, claim 5 of U.S. '797 sets forth, “wherein the overhang cutting teeth and the outward set cutting teeth create a kerf that extends radially from the inner kerf diameter to an outer kerf diameter, wherein the outer kerf diameter is greater than the outer sidewall diameter.” In order for the outward set/third cutting teeth to be able to extend radially so as create outer kerf diameter is greater than the outer sidewall diameter, the outward set/third cutting teeth of claim 5 of U.S. '797 must inherently extend radially outward relative to the outer surface of the sidewall to define an outward overhang. Based on the foregoing, the difference(s) between claim 1 of U.S. '797 and present claim 13 do not render these claims patentably distinct.
Regarding present claim 14, it sets forth therein, “the outward overhang is between 0.001 inches and 0.011 inches.” In claim 6 of U.S. '797, the outward set/third cutting teeth are set forth as “extend[ing] 0.015 inches or less from the outer sidewall diameter.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the outward set/third cutting teeth of claim 6 of U.S. '797 to have an overhang “between 0.001 inches and 0.011 inches,” 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, the outward set/third cutting teeth of claim 6 of U.S. '797 would not operate differently within the claimed range, since the outward set/third cutting teeth of claim 6 of U.S. '797 would still be angled outward relative to the sidewall so as to be set to the outside. Applicant has not demonstrated the criticality of the claimed range, as opposed to other ranges, such as other ranges having at least a slightly greater or lesser upper limit than 0.011 inches, for example, and/or a slightly greater or lesser lower limit than 0.001 inches, for example.
All of the limitations of present claim 15 are found in claim 5 of U.S. '797. Noting this, present claim 13 sets forth therein, “each of the third teeth have a third width defined in the radial direction, wherein the third width is greater than the thickness of the sidewall.” Next, it is noted that claim 5 of U.S. '797 sets forth, “wherein the overhang cutting teeth and the outward set cutting teeth create a kerf that extends radially from the inner kerf diameter to an outer kerf diameter, wherein the outer kerf diameter is greater than the outer sidewall diameter.” In order for the outward set/third cutting teeth to be able to extend radially so as create outer kerf diameter is greater than the outer sidewall diameter, than the outward set/third cutting teeth of claim 5 of U.S. '797 must inherently have a width, e.g. a third width in the radial direction, that is greater than the thickness of the sidewall. Based on the foregoing, the difference(s) between claim 1 of U.S. '797 and present claim 15 do not render these claims patentably distinct.
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)(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 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beach (U.S. PG Pub. No. 2019/0091775 A1).
Please note that Beach was cited by Applicant on the IDS filed on 7/29/2024.
Claim 10: Figure 1 of Beach shows a sidewall (114), which can be incorporated into a hole saw [paragraph 0013]. Figure 1 also shows the sidewall (114) extending axially from a base (140) to a first end (101) of the sidewall (114) that is disposed opposite the base (140). Next, as can be seen within Figure 4 of Beach, the sidewall (114) has a thickness extending between opposing surfaces (412, 414), including an inner surface (414) and an outer surface (412) [paragraph 0052]. Thus, when the sidewall (114) is rolled into a cylinder so as to be used as a hole saw blade, its (114) thickness is defined between the inner surface (414) and the outer surface (412). Be advised that the inner surface (414) defines an inner sidewall diameter. Also, when the sidewall (114) is rolled into a cylinder, it (114) forms the sidewall (114) of a cylindrical body. Based on the foregoing, Beach discloses a hole saw comprising the sidewall (114) extending axially from the base (140) to the first end (101) of the sidewall (114) that is disposed opposite the base (140), the sidewall (114) comprising the inner surface (414) defining the inner sidewall diameter, the outer surface (412), and the thickness defined between the inner surface (414) and the outer surface (412).
Next, Beach discloses a cap located at the end of the body opposite the cutting edge (101)/ first end (101) for attachment of the body to a driving device such as a drill [paragraph 0017]. It is noted that the end of the body opposite the first end (101) is the base (140). As such, disclosure is provided on an end cap coupled to the base (140) of the sidewall (114). Please be advised that the endcap includes threads, holes, or other structure to allow the sidewall (114) to be drivingly connected to the drill [paragraph 0017]. Please further be advised that the endcap is an element of the hole saw of Beach.
Aside from the sidewall (114) and the endcap, the hole saw of Beach is further shown in Figure 4 as comprising a repeating pattern of saw teeth (102-112) [paragraph 0019]. Among the repeating pattern of saw teeth (102-112) are first teeth (106, 112) arranged (see Figure 1) on the sidewall (114) at the first end (101).
Also among the repeating pattern of saw teeth (102-112) are second teeth (104), one of which can be seen in Figure 4 of Beach. The second teeth (104) are arranged at the first end (101). Also, each of the second teeth (104) extends radially inward over the inner surface (414) of the sidewall (114) and has an inward angle relative to the inner surface of the sidewall (114) such that the second teeth (104) define an inner kerf diameter that is less than the inner sidewall diameter (see Figure 4).
Claim 11: Each of the second teeth (104) have a first width in a radial direction, the first width being greater than the thickness of the sidewall (114). The first width of an exemplary one of the second teeth (104) is shown below in annotated Figure 4.
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Claim 12: Each of the first teeth (106, 112) further comprises a second width defined in a radial direction, wherein the second width of each of the first teeth (106, 112) is less than the first width of the second teeth (104). The first width of an exemplary one of the second teeth (104) is shown below in annotated Figure 4. Also, the second width of exemplary first teeth (106, 112) is shown below in annotated Figure 4.
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Claim 13: The hole saw of Beach further comprises third teeth (102), an exemplary one (102) of which can be seen in Figure 4. Please be advised that each of the third teeth (102) extend radially outward relative to the outer surface (412) of the sidewall (114) to define, for example, an outward overhang.
Claim 14: The outer overhang of the third teeth (102) is preferably 0.007 inches [paragraph 0046], which is “between 0.001 inches and 0.011 inches” in accordance with claim 14.
Claim 15: Each of the third teeth (102) have a third width in a radial direction, the third width being greater than the thickness of the sidewall (114). The third width of an exemplary one of the third teeth (102) is shown below in annotated Figure 4.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Figures 1-4 of Cochran (U.S. Patent No. 3,610,768 A) show a tool comprising a cylindrical body (12) extending axially from a base to a first end of a sidewall, the tool comprising first teeth (20) (as broadly claimed) arranged on the sidewall at a first end, and further comprising second teeth (13, 14) at the first end, each of the second teeth (13, 14) extending radially inward over the inner surface of the sidewall and having an inward angle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
Examiner interviews are available via telephone 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) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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