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;
U.S. 716,441 G. W. Latham (‘Latham hereafter), Filed 06/12/1902;
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 11 – 16 & 18 - 28 are currently being examined.
Claims 1 – 10 & 17 have been canceled.
Claims are 25 – 26 are allowable.
Claim 28 is objected to for allowable subject matter.
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(s) 11 - 13, 22 - 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over
is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2001/0007628 Ninomiya et al. (‘Ninomiya hereafter), and in view of U.S. 2018/0369924 Higashi et al. (‘Higashi 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),
Except ‘Ninomiya is silent regarding: wherein the first shank section extends along the axis of rotation over at least 0.5 mm.
However, ‘Higashi does teach: Para 0114, “A four-blade (torsion angle of 45°) cutting blade was formed on cutting structure forming portion 30 of obtained cutting tool material 1, and a thread groove was formed in attaching structure forming portion 20 so as to be fastened to a screw of superhard shank 5 having a diameter of 7.5 mm and a length of 75 mm, to thereby obtain a rotary cutting tool. As to the rotary cutting tool thus obtained, vibrations and breakage during the rotary cutting operation were evaluated. The result is shown in Table 1.”
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 at least 0.5 mm of the first shank section as taught by ‘Higashi in order to have a size of the first shank section capable of being chucked. Further, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim[s] 12, ‘Ninomiya and ‘Higashi disclose 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 and ‘Higashi disclose 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 and ‘Higashi disclose 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 and ‘Higashi disclose 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 and ‘Higashi disclose 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 15, 16 & 18 - 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] 18 - 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 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.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over
is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2001/0007628 Ninomiya et al. (‘Ninomiya hereafter), and in view of U.S. 2018/0369924 Higashi et al. (‘Higashi hereafter), and in further view of U.S. 716,441 G. W. Latham (‘Latham hereafter).
Regarding Claim[s] 27, ‘Ninomiya and ‘Emerson discloses all the claim limitations except is silent regarding: shank has two helical grooves extending through the stop shoulder and delimited by the cutting edge and by a further cutting edge.
However, ‘Latham does teach Figs 1 & 2 the shank is the system of #b (stop) and #e (shank) has two helical grooves extending through the top shoulder and delimited by the cutting edge and by a further cutting edge as shown in Figs 1 & 2. Ln 34 – 56, “Referring specifically to the drawings #a represents the bit or drill, and #b a stop at the end of the same for limiting the depth of the hole to be drilled. The stop is integral with the bit. Two spiral grooves or flutes #c, one on each side of the bit, extend from the point di of the same up to the end and through the stop #b, forming two cutting edges and a clearing space for the waste or cuttings. The number of flutes is not necessarily limited to two, although that number will generally be employed; but the bits, if desired ,maybe formed with more or less flutes. The shank of the bit is indicated at #e. For a short distance from the point #d the bit has the same diameter and then begins to increase in diameter up to its end, as indicated at #f. By reason of this taper I am enabled to drill a tapering hole. The length or thickness of the bit or any of the dimensions thereof are not limited to any given size, as it is apparent that the size of the bits may be varied in size to suit the character of the work to be done by them.
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 two grooves in the stop shoulder as taught by ‘Latham in order to limit the depth of the hole (‘Latham, ln 34 – 37).
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.
Claim 28 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 28 with the limitations of claim 11 Specifically, the prior art does not teach the combination of limitations wherein " first shank section has a conical shape with an opening angle of 140° and extends along the axis of rotation over 2.5 mm.”
The closest prior art is as cited above (‘Ninomiya, ‘Emerson and ‘Latham). ‘Ninomiya, ‘Emerson and ‘Latham do not teach the first shank section having a conical shape, an opening of 140o and extending along the axis of rotation over 2.5 mm [0.098 inches].
Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. 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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
05/04/2026
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