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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-19, drawn to a mandrel.
Group II, claim(s) 20, drawn to a hole saw assembly.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and Group II lack unity of invention because even though the inventions of these groups require the technical feature of a mandrel as recited in claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of XXXX. See rejection of claim 1 below for details.
During a telephone message left by Charles Meeker on May 19, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 20 has been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: gripping arrangement in claim 1; quick-release pilot bit connection arrangement in claim 1; and biasing arrangement in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-19 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.
Claim 1 recites “the gripping arrangement having a normally expanded configuration” in Lines 9-10. The metes and bounds of “normally expanded configuration” are not clearly delineated. In particular, it is unclear what determines the normal state in this configuration (i.e., in relation to what standard). Appropriate correction required.
Claim 1 recites “the connection arrangement” in Line 14, and recites “the pilot bit connection arrangement” in Lines 15-16. Presumably, both of these recitations refer back to “a quick-release pilot bit connection arrangement. Yet, the different recitations leave room for ambiguity. The claims must refer to the features therein with consistency to avoid any ambiguity. Appropriate correction required.
Claim 1 recites “an unlocked mode permitting quick removal and quick insertion of the pilot bit” in Lines 16-17. The term “quick” is a relative term which renders the claim indefinite. The term “quick” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction required.
Claim 2-19 each recite “[a] mandrel according to claim” in Line 1, respectively. Antecedent basis for a mandrel has already been set forth in claim 1. This rejection can be obviated by starting the dependent claims with the term “the” in place of “a.” Appropriate correction required.
Claim 3 recites “a ball detent arrangement including a ball locatable in the ball detent of the hex shank for locking the shank against removal.” It is unclear which shank is being referenced by “the shank” because there is a hex shank and a drive shank in the claim. Appropriate correction required.
Claim 5 recites “an adjustable spacer . . . configured to facilitate use of the mandrel with hole saws of different base thicknesses.” The scope of being configured to make it easier to use the mandrel with various hole saw base thicknesses is unclear. That is, the standard to which the ease is compared is unknown. It is also unclear whether the hole saws of different base thicknesses are to be used at the same time or if the use of the mandrel is of one hole saw. Appropriate correction required.
Claim 7 recites “the spacer is configured to contact an underside of the hole saw base” in Lines 1-2. The claim uses “underside” in a manner inconsistent with how one of ordinary skill would understand the “underside” of the connecting surface of the hole saw. One ordinarily drills downward such that the underside would be the opposing side. That said, Applicant can obviate this rejection by not referring to a directional component of the given side (e.g., a first surface) or by setting forth downward and upward directions. Claim 12 has a similar issue with the recitation of “a topside of the hole saw base.” Appropriate correction required.
Claim 11 recites “each gripper is generally semi-circular” in Lines 1-2. The metes and bounds of a gripper being generally semi-circular are unclear. That is, the boundary between a gripper being considered generally semi-circular and not so considered is vague. Appropriate correction required.
Claim 16 recites “a pair of ramped surfaces in contact with corresponding ramped surfaces on an underside of the grippers” in Lines 2-3. It is unclear whether the pair of ramped surfaces is in contact with a plurality of ramped surfaces as suggested by the language in the claim or a corresponding ramped surface (i.e., singular surface) as disclosed. Furthermore, it is unclear whether the underside of the grippers is meant to be in singular form or if the underside of the grippers is respective (i.e., an underside of each gripper). Appropriate correction required.
Claim 16 recites “the ramped surfaces of the angle plate promotes movement of the grippers toward the contracted configuration.” The scope of “promotes” in this context is unclear. In particular, the boundary between “promotes” and “fails to promote” is vague.” Appropriate correction required.
Claim 19 recites “a pair of drive pins configured for engagement with a pair of drive pin apertures in a hole saw” in Liens 2-3. Yet, claim 1 already sets forth a drive pin, a drive pin aperture, and a hole saw. It is therefore unclear whether the recited features in claim 19 are in addition to those features or inclusive of said features in claim 1. Appropriate correction required.
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 1-10 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Pamatmat (US Pub. No. 2014/0126973 A1) in view of Ebert (EP 2502693 A1) or Ward (US Pub. No. 2018/0085833 A1) or Donnenmann et al. (EP 3181275 A1).
(Claim 1) Pamatmat discloses a hole saw mandrel (100, 200) for a hole saw (35) having a base with a central circular mounting aperture and a drive pin (Figs. 5, 8). The mandrel includes: a drive shank (2, 40) extending along a central axis of the mandrel for releasable engagement with a rotary tool; a mounting end opposite to the drive shank and configured for detachable connection with the mounting aperture of the hole saw and including a drive pin (20, 66) for engagement with the drive pin aperture of the hole saw (Figs. 5, 8); a gripping arrangement (including grippers 11 or 55) disposed at the mounting end and insertable through the mounting aperture for gripping the hole saw base (Figs. 3-5, 8), the gripping arrangement having a normally expanded configuration in which the gripping arrangement grips the base against movement along the central axis and is selectively movable to a contracted configuration in which the gripping arrangement is insertable into or removable from the mounting aperture (Figs. 3, 4, 7-9); and a recess (7) for a pilot bit received through a pilot bit aperture extending centrally through the gripping arrangement. Yet, Pamatmat does not explicitly disclose a quick-release pilot bit connection arrangement as claimed.
Ebert discloses a quick-release pilot bit connection arrangement (26) for coupling a quick-release pilot bit (3) to the mandrel (1), the connection arrangement is capable of receiving the pilot bit through a pilot bit aperture extending centrally through the gripping arrangement and the pilot bit connection arrangement including a pilot bit lock selector (34) for selecting between an unlocked mode permitting quick removal and quick insertion of the pilot bit and a locked mode in which the pilot bit is locked against removal from the pilot bit connection arrangement (Figs. 7, 8). At a time prior to filing it would have been obvious to one having ordinary skill to provide the mandrel disclosed in Pamatmat with a detent ball with cooperating sleeve quick-release as suggested by Ebert in order to secure and release the pilot bit independent of the hole saw via movement of the sleeve.
Ward discloses a quick-release pilot bit connection arrangement (86) for coupling a quick-release pilot bit (18) to the mandrel (22), the connection arrangement is capable of receiving the pilot bit through a pilot bit aperture extending centrally through the gripping arrangement and the pilot bit connection arrangement including a pilot bit lock selector (150) for selecting between an unlocked mode permitting quick removal and quick insertion of the pilot bit and a locked mode in which the pilot bit is locked against removal from the pilot bit connection arrangement (Figs. 4A-4C). At a time prior to filing it would have been obvious to one having ordinary skill to provide the mandrel disclosed in Pamatmat with a detent ball with cooperating sleeve quick-release as suggested by Ward in order to secure and release the pilot bit independent of the hole saw via movement of the sleeve.
Donnenmann et al. (“Donnenmann”) discloses a quick-release pilot bit connection arrangement (10) for coupling a quick-release pilot bit (3) to the mandrel (1), the connection arrangement is capable of receiving the pilot bit through a pilot bit aperture extending centrally through the gripping arrangement and the pilot bit connection arrangement including a pilot bit lock selector (7) for selecting between an unlocked mode permitting quick removal and quick insertion of the pilot bit and a locked mode in which the pilot bit is locked against removal from the pilot bit connection arrangement (Figs. 4-7). At a time prior to filing it would have been obvious to one having ordinary skill to provide the mandrel disclosed in Pamatmat with a detent ball with cooperating sleeve quick-release as suggested by Donnenmann in order to secure and release the pilot bit independent of the hole saw via movement of the sleeve.
(Claim 2) In Donnenmann, the lock selector includes a locking collar rotatable about the central axis between an unlocked position corresponding to the unlocked mode and a locked position corresponding to the locked mode (Fig. 6 showing the rotation).
(Claim 3) The pilot bit connection arrangement is configured for use with a ball-detent hex shank pilot bit and includes a ball detent arrangement including a ball locatable in the ball detent of the hex shank for locking the shank against removal (Donnenmann Figs. 4-7; Ebert Figs. 7, 8).
(Claim 4) The locking collar includes an internal abutment which, in the locked position, retains the ball in the ball detent of the hex shank (Donnenmann Figs. 4-7).
(Claim 5) Pamatmat discloses an adjustable spacer (Pamatmat 17) disposed at the mounting end and configured to facilitate use of the mandrel with hole saws of different base thicknesses.
(Claim 6) The spacer is being movable along the central axis relative to the gripping arrangement to accommodate various hole saw base thicknesses (Pamatmat Figs. 2-5).
(Claim 7) The spacer is configured to contact an underside of the hole saw base and to clamp the hole saw base between the spacer and a portion of the gripping arrangement (Pamatmat Fig. 5).
(Claim 8) The mandrel in Pamatmat includes a sliding collar (23) manually movable along the central axis for selectively moving the gripping arrangement to the contracted configuration (Figs. 3, 4).
(Claim 9) Movement of the sliding collar toward the drive shank actuates movement of the gripping arrangement to the contracted configuration (Pamatmat Figs. 3, 4).
(Claim 10) The gripping arrangement includes a pair of grippers (Pamatmat 11), each gripper includes a distal end protruding from the mounting end and having a catch (Pamatmat 13) for engaging the base of the hole saw (Pamatmat Fig. 5).
(Claim 12) The pair of catches (Pamatmat 13) is configured to contact a topside of the hole saw base and to clamp the hole saw base between the mounting end and the catches (Pamatmat Fig. 5).
(Claim 13) The grippers of the pair of grippers are spaced apart from each other in the expanded configuration and moved toward each other in the contracted configuration (Pamatmat Figs. 3, 4).
(Claim 14) The grippers are movable in a direction perpendicular to the central axis (Pamatmat Figs. 3, 4).
(Claim 15) Each gripper includes an outwardly-facing ramped surface (16) in contact with an inwardly-facing corresponding ramped surface (32) on the sliding collar; movement of the inwardly-facing ramped surface of the sliding collar toward the drive shank urges the outwardly-facing ramped surfaces of the grippers toward the central axis and into the contracted configuration (Pamatmat Figs. 3, 4).
(Claim 16) An angle plate (Pamatmat 22) having a pair of ramped surfaces in contact with corresponding ramped surfaces on an underside of the grippers and wherein contact between the ramped surfaces of the gripper undersides and the ramped surfaces of the angle plate promotes movement of the grippers toward the contracted configuration (Pamatmat Figs. 3, 4).
(Claim 17) The gripping arrangement includes a biasing arrangement (Pamatmat 22) urging the gripping arrangement toward the expanded configuration (Pamatmat Fig. 3).
(Claim 18) The biasing arrangement includes a pair of springs (22) positioned between the pair of grippers (Pamatmat Fig. 3).
(Claim 19) Pamatmat includes a pair of drive pins (20) configured for engagement with a pair of drive pin apertures in a hole saw, the pair of drive pins being located on opposite sides of the gripping arrangement (Fig. 2).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Pamatmat (US Pub. No. 2014/0126973 A1) in view of Ebert (EP 2502693 A1) or Ward (US Pub. No. 2018/0085833 A1) or Donnenmann et al. (EP 3181275 A1) further in view of Broekman (US Pub. No. 2019/0193173 A1).
As best understood, Pamatmat does not explicitly disclose the catch of each gripper being generally semi-circular; and in the contracted configuration, the pair of catches forms an approximately circular configuration.
Broekman discloses a catch (14) of each gripper (12, 13) is generally semi-circular (Fig. 3). In the contracted configuration, the pair of catches forms an approximately circular configuration (Figs. 3, 7). At a time prior to filing it would have been obvious to one having ordinary skill to provide the mandrel disclosed in Pamatmat with generally semi-circular catches as suggested by Broekman in order to increase the gripping contact between the catches and the hole saw aperture.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Ward (US Pub. No. 2021/0197296 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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, Singh Sunil 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.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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