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
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 24, 2026.
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 (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.
Claim(s) 1-4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo (US 10105815).
Re Claim 1, Guo discloses a tool bit 102, 202…602 comprising: a shaft 106, 206…606 defining a bit axis A and having a first end and a second end (not labeled, see figures 1-14, specifically the embodiment of figures 1 and 2); and at least one work-hardening section 103, 203…603 adjacent the second end (see the embodiment of Figs. 2 and 3), the at least one work-hardening section having a profile that either is cylindrical or is a portion of a sphere (See figures 1-5), the at least one work-hardening section defining a smooth working surface (Col. 3, Line 39-Col. 4, Line 38, Figs. 1-14).
Re Claim 2, Guo discloses the profile is cylindrical (See figures 4 and 5).
Re Claim 3, Guo discloses the profile is the portion of the sphere (See figures 1-3).
Re Claim 4, Guo discloses the portion of the sphere extends for more than 180 degrees (See figures 1-3).
Re Claim 7, Guo discloses the shaft 106 defines a first diameter, and the at least one work-hardening-section 103 defines a second diameter that is greater than the first diameter (See figures 1-3).
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.
Claim(s) 5, 6 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo (US 10105815).
Re Claims 5 and 6, Guo does not explicitly disclose the at least one work-hardening section further comprises first and second frustoconical sections that are oppositely oriented from each other and the first and second frustoconical sections are symmetric. Guo discloses the at least work-hardening section 503 comprises a frustoconical section (Col. 5, Line 55-Col. 6, Line 5, Figs. 11 and 12). Guo further discloses the work-hardening section may be of any tool geometry suitable to accommodate the geometry of the workpiece (Col. 7, Lines 13-18). It would have been obvious to one of ordinary skill in the art to modify the invention of Guo by providing a tool bit having at least one work-hardening section comprising first and second frustoconical sections that are oppositely oriented from each other and the first and second frustoconical sections are symmetric as claimed, as a mere modification of shape is a matter of choice when predictable results are achieved. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Re Claims 8 and 9, Guo does not explicitly disclose the at least one work-hardening section includes, relative to the first end, a first, distal work-hardening section and second, proximal work-hardening section that are both cylindrical; the first work-hardening section defines a first diameter and the second work-hardening section defines a second diameter that is greater than the first diameter. Guo does however disclose the work-hardening section may be of any tool geometry suitable to accommodate the geometry of the workpiece (Col. 7, Lines 13-18). It would have been obvious to one of ordinary skill in the art to modify the invention of Guo by providing a tool bit having at least one work-hardening section including relative to the first end, a first, distal work-hardening section and second, proximal work-hardening section that are both cylindrical; the first work-hardening section defines a first diameter and the second work-hardening section defines a second diameter that is greater than the first diameter as claimed, as a mere modification of shape is a matter of choice when predictable results are achieved. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Re Claims 10 and 11, Guo does not explicitly disclose the at least one work-hardening section includes, relative to the first end, a first, distal work-hardening section and second, proximal work-hardening section that are both portions of a sphere; or the first work-hardening section defines a first diameter and the second work-hardening section defines a second diameter that is greater than the first diameter.
Guo does however disclose the work-hardening section may be of any tool geometry suitable to accommodate the geometry of the workpiece (Col. 7, Lines 13-18). It would have been obvious to one of ordinary skill in the art to modify the invention of Guo by providing a tool bit having at least one work-hardening section including relative to the first end, a first, distal work-hardening section and second, proximal work-hardening section that are both portions of a sphere; the first work-hardening section defines a first diameter and the second work-hardening section defines a second diameter that is greater than the first diameter as claimed, as a mere modification of shape is a matter of choice when predictable results are achieved. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Van Essen et al. (US 2020/0055166 A1) discloses a tool bit for impact machining yet lacks the structural elements of the claimed tool bit of the instant application.
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/BAYAN SALONE/Primary Examiner, Art Unit 3726
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