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 .
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2001/0007628 Ninomiya et al. (‘Ninomiya hereafter), App 08/803232 Filed 02/20/1997
U.S. 3,418,549 H. C. Emerson et al. (‘Emerson hereafter), Filed 03/19/1962;
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 11 - 26 are currently being examined.
Claims 1 – 10 have been canceled.
Claims are 25 – 26 are objected to for allowable subject matter.
Drawings
The drawings are objected to because Specification 12/02/2024 Paragraph 0017, recites #M and is not shown in the drawings. 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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 25 & 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter) because Claim 25 is a method claim and is dependent on a product claim and requires: “A method for fastening a fastening element to a workpiece, comprising the following steps: providing a workpiece having a cover layer; providing a drill bit as recited in claim 11.”
Claim 25 is directed towards subject matter outside the four statutory categories (i.e. product, apparatus, method, and composition of matter) and is not directed to one statutory category.
Claim Rejections - 35 USC § 112(b)
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.
Claim 14 is unclear because it requires three different angles for the opening of the conical shape, i.e. “at least 60°. in particular at least 90°, in particular at least 120°.” Further, Claim 14 recites: “The drill bit as recited in claim 13 wherein an opening angle of the conical shape is at least 60°. in particular at least 90°, in particular at least 120°.” Claim 14 ends in a period after “at least 60°.” And “in particular at least 120°.”
Claims 25 & 26 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 25 requires: “A method for fastening a fastening element to a workpiece, comprising the following steps: providing a workpiece having a cover layer; providing a drill bit as recited in claim 11.” It is unclear which statutory class Claim 25 is classified to.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 requires: “The drill bit as recited in claim 11 wherein the enveloping circle diameter in the first shank section increases continuously counter to the drilling direction.”
Claim 11 from which Claim 12 depends recites: “wherein the shank has a first shank section adjoining the stop shoulder counter to the drilling direction and reaching up to the stop shoulder, the enveloping circle diameter, starting from the stop shoulder, increasing counter to the drilling direction in the first shank section.”
Claim 12 does not further limit the subject matter of the dependent claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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) 11 13, 22 - 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2001/0007628 Ninomiya et al. (‘Ninomiya hereafter).
Regarding Claim[s] 11, ‘Ninomiya discloses all the claim limitations including: A drill bit (‘Ninomiya, Fig 3, #2 (forming drill/ drill bit)) for hand-guided drilling of a blind hole with a blind hole diameter and a blind hole depth into a metal workpiece (“for hand-guided drilling of a blind hole with a blind hole diameter and a blind hole depth into a metal workpiece,” is a recitation of the intended use (see below)) (‘Ninomiya, Para 0006, recites: “forming drill for drilling an insertion hole,”),
comprising:
a shank (‘Ninomiya, Fig 3, near leader #2, shows the shank for the drill bit) defining a drilling direction and having an axis of rotation oriented in the drilling direction (‘Ninomiya, Figs 3, 5A & 9B, central axis is not shown, axis is in center of drill, drilling direction is not shown and is in a downward direction in Figs 3, 5A & 9B),
wherein the shank has a cutting edge at an end pointing in the drilling direction (30) (‘Ninomiya, Fig 3, #204 (hole end deburring bit/ first shank section), a deburring bit has a cutting edge) and has a stop shoulder (‘Ninomiya, Fig 3, #202 (bit/ stop shoulder)) at a distance from the cutting edge (‘Ninomiya, Fig 3, #202 is a distance from #203 (guide hole drilling bit/ cutting edge) defining the blind hole depth and measured counter to the drilling direction (‘Ninomiya, Fig 4, shows the depth of the blind hole from the bottom of #303 hole step portion, to the top of #4 (fastened member)),
wherein the cutting edge defines the blind hole diameter by rotation about the axis of rotation (‘Ninomiya, Fig 3, end of #203 (guide hole drilling bit/ cutting edge) and Fig 4 #303 (guide hole) shows the blind hole smallest diameter that is achieved by the rotation of the drill),
wherein the shank has an enveloping circle diameter changing along the axis of rotation and is larger at the stop shoulder than the blind hole diameter (‘Ninomiya, Fig 3, #204 (hole end deburring bit/ first shank section), is larger near #202 than it is near #203),
wherein the shank has a first shank section adjoining the stop shoulder counter to the drilling direction and reaching up to the stop shoulder, the enveloping circle diameter (‘Ninomiya, Fig 3),
starting from the stop shoulder,
increasing counter to the drilling direction in the first shank section (‘Ninomiya, Fig 3).
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. In a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCCPA 1963).
Regarding Claim[s] 12, ‘Ninomiya discloses all the claim limitations including: enveloping circle diameter in the first shank section increases continuously counter to the drilling direction (‘Ninomiya, Fig 3).
Regarding Claim[s] 13, ‘Ninomiya discloses all the claim limitations including: first section has a conical shape (‘Ninomiya, Fig 3, #204 (hole end deburring bit/ first shank section) shows a conical section).
Regarding Claim[s] 21, ‘Ninomiya discloses all the claim limitations including: the shank has a centering point at its end pointing in the drilling direction, the axis of rotation running through the centering point (‘Ninomiya, Fig 3, shows #203 (guide hole drilling bit), symmetrical, the shank near #2 is also symmetrical. The axis of rotation is through the center of the shank and through the center of #203.
Regarding Claim[s] 22, ‘Ninomiya discloses all the claim limitations including: the stop shoulder has a stop surface oriented perpendicular to the axis of rotation and pointing in the drilling direction.
Regarding Claim[s] 23 & 24, ‘Ninomiya discloses all the claim limitations including: the shank has, at an end pointing counter to the drilling direction, a fastening section for temporary fastening to a hand-held drilling machine, and an insertion end for temporary fastening to a hand-held drilling machine (‘Ninomiya, Para 0001, “The present invention relates to a taper implant, a screw-fastening structure using a taper implant with female threads, a forming drill for drilling an insertion hole for the taper implant, and a hammer for driving the taper implant.” Para 0006, “An object of the present invention is to provide a taper implant, a screw-fastening structure using a taper implant with female threads, a forming drill for drilling an insertion hole for the taper implant, and a hammer for driving the taper implant, each of which ensures good working efficiency.” Para 0095, “A driving hammer 7 is of hand-held type constructed such that the driving force of the driving hammer 7 is generated by a spring and, after completion of a driving stroke, air force is utilized as power to compress the spring.” Is capable of being temporary fastening to a hand-held drilling machine and is capable of having an insertion end for temporary fastening to a hand held drilling machine)
Claim Rejections - 35 USC § 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 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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 15 - 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2001/0007628 Ninomiya et al. (‘Ninomiya hereafter), and in view of U.S. 3,418,549 H. C. Emerson et al. (‘Emerson hereafter).
Regarding Claim[s] 15 & 16, ‘Ninomiya discloses all the claim limitations except is silent regarding: The drill bit as recited in claim 13 wherein an opening angle of the conical shape is at least 90°, and an opening angle of the conical shape is at least 120°.
However, ‘Emerson does teach: Col. 1, ln 11 – 15, “This invention relates generally to the art of metal removal as involved for example, in drilling and milling machine operations and more particularly to a combined numerical and torque control of a machine tool in a three axis system.” Col. 1, ln 15 – Col. 4, ln 39 discusses the variables considered to preform the optimum metal removal. The rake angle of the tool cutting point is just one of a list of variables under consideration in determining the optimal metal removal.
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Ninomiya with a conical shape conical shape is at least 90°, and conical shape is at least 120°. However, the Supreme Court has clarified that an "obvious to try" line of reasoning and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; may properly support an obviousness rejection. “Obvious to try” and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim[s] 17 - 20, ‘Ninomiya and ‘Emerson discloses all the claim limitations except is silent regarding: the first section extends along the axis of rotation over at least 0.5 mm, the first section extends along the axis of rotation over at least 1.0 mm, the first section extends along the axis of rotation over at least 1.5 mm, and the first section extends along the axis of rotation over at least 2.0 mm.
However, ‘Emerson does teach: Col. 1, ln 11 – 15, “This invention relates generally to the art of metal removal as involved for example, in drilling and milling machine operations and more particularly to a combined numerical and torque control of a machine tool in a three axis system.” Col. 1, ln 15 – Col. 4, ln 39 discusses the variables considered to perform the optimum metal removal. The length of the rake angle of the tool cutting point is just one of a list of variables under consideration in determining the optimal metal removal.
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Ninomiya with a length of the first section extending along the axis of rotation. However, the Supreme Court has clarified that an "obvious to try" line of reasoning and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; may properly support an obviousness rejection. “Obvious to try” and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Allowable Subject Matter
Claim 25 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 25 with the limitations of claim 11. Specifically, the prior art does not teach the combination of limitations wherein " providing a workpiece having a cover layer; drilling a blind hole through the cover layer into the workpiece via the drill bit, providing a fastening element having a sealing element; and wherein the sealing element is pressed against the hole in the cover layer.”
The closest prior art is as cited above (‘Ninomiya and ‘Emerson). ‘Ninomiya and ‘Emerson do not teach the cover layer, drilling through the cover layer into the workpiece and the sealing element pressed against the hole. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 26. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
10/11/2025