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 .
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) 1-7,42,44,45,46 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Canadian document (CA 2959838).
Canadian document ‘838 discloses a bit comprising:
a unitary body portion comprising a washer portion (32) adjacent a distal end of the
unitary body portion, the washer portion integrally formed as part of the unitary body portion; the unitary body portion axially and radially extending to a transition adjacent an
outer diameter of the washer portion (see Figs. 1,3,5,7,9,11,13); and
a generally cylindrical shank (20) depending from a bottom of the body portion.
Re claim 2, a tapered portion (see marked up Figure below) adjacent a rear annular flange of the washer portion, the tapered portion adapted to contact a countersink (see where member 52 is pointing in Fig. 8) at a forward end of a bore of a bit holder to radially align the bit with the bore of the bit holder (this is the case since the claim is directed to a bit and a holder is not positively claimed, one can choose a holder to meet this limitation).
Re claim 3, the tapered portion comprising a first angle that is adapted to be
complementary to a second angle of the countersink of the bore of the bit holder (see where member 52 is pointing in Fig. 8) (this is the case since the claim is directed to a bit and a holder is not positively claimed; one can choose a holder to meet this limitation).
Re claim 4, further comprising: a transition radius (see marked up Figure below) of the washer portion extending from the rear annular flange to the tapered portion.
Re claim 5, further comprising: a transition radius (see marked up Figure below) of the tapered portion extending from a shoulder at a distal end of the tapered portion to a forward end of the shank.
Re claim 6, a rear annular flange of the washer portion adapted to form a close coupling with an annular surface at a forward end of a bit holder (see Fig. 8) (this is the case since the claim is directed to a bit and a holder is not positively claimed, one can choose a holder to meet this limitation).
Re claim 7, further comprising: a generally cylindrical hollow retainer (46) disposed circumferentially about the shank (20).
Re claim 42, a diameter of the washer portion being at least a diameter of a front face of a bit holder at a forward end of the bit holder (see Figs. 3, 5,79,11,13, this is the case since the claim is directed to a bit and a holder is not positively claimed, one can choose a holder to meet this limitation).
Re claim 44,further comprising: at least one of an angular body portion and a radial body portion of the unitary body portion extending axially and radially outward, a distal end of the at least one of the angular body portion and the radial body portion adjacent to an outer diameter of the washer portion (see Figs. 3, 5,79,11,13).
Re claim 45, further comprising: an annular flange at a distal end of the washer portion including a diameter that is at least a diameter of a front face of a bit holder at a forward end of the bit holder (see Figs. 3, 5,7, 9,11,13, this is the case since the claim is directed to a bit and a holder is not positively claimed, one can choose a holder to meet this limitation).
Re claim 46, Canadian document discloses a bit comprising: a unitary bit body comprising a body portion and a washer portion adjacent a distal end of the body portion (see Figs. 3,5,7,9,11,13), the washer portion (32) integrally formed as part of the unitary bit body; the body portion axially and radially extending to a transition adjacent an outer diameter of the washer portion; and a generally cylindrical shank (20) depending from a bottom of the unitary bit body.
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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 (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 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) 8,9,18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document (CA 2959838) in view of Levankovsky (US 20050082899).
Canadian document discloses a first slot (48) extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer.
Canadian document ‘838 discloses the invention substantially as claimed. However, Canadian document ‘838 is silent about including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot.
Levankovsky teaches a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 6). It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Canadian document to include a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the insertion of the bit into the holder.
Re claim 9, the first angled portion and the second angled portion forming a
dual corner break of the retainer adjacent the axial distal end of the retainer (see Fig 6 of Levankovsky).
Re claim 18, the retainer further comprising: a gap profile (48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky) of the retainer defined by the first radial end surface and the second radial end surface of the first slot.
Re claim 19, at least one of the first radial end surface and the second radial end
surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky)
Re claim 20, the gap profile of the first slot being at least one of linear,
parallel, serpentine, arcuate, angular, and zig-zagged (48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky as applied to claim 8 above, and further in view of German document (DE 10142438).
Canadian document ‘838 (as modified above) discloses the invention substantially as claimed. However, Canadian document ‘838 (as modified above) is silent about including a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer. German document ‘438 teaches a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (where 33 is pointing in Figs. 1,2). It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to
further modify Canadian document ‘838 (as modified above) to include a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer as taught by German document ‘438 since such a modification facilitates the insertion of the bit into the bit holder.
Claim(s) 11-13,15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian document ‘838 in view of Levankovsky ‘899 as applied to claim 8 above, and further in view of Beach et al. (US 4850649).
Canadian document ‘838 (as modified above) discloses the invention substantially as claimed. However, Canadian document (as modified above) is silent about including
a notch opposite the axial forward end of the retainer, the notch extending inwardly from
the axial distal end of the retainer. Beach et al. teaches a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer (see Figs. 3,5,6).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Canadian document ‘838 (as modified above) to include a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the bit into the bit holder.
Re claim 12, the retainer further comprising: a second slot (upper portion of slot 112 in Fig 6 of Beach et al) axially extending from the notch (the lower portion of 112 in Fig. 6 of Beach et al.) through the sidewall of the retainer to a second slot termination, the second slot disposed approximately 180 degrees from the first slot.
Re claim 13, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Canadian document ‘838 (as modified above) to include at least one tab disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least
one tab adapted to engage a flange on the shank of the bit as taught by Beach et al. (see Figs. 2 to 7) to prevent the retainer from being removed from the shank.
Re claim 15, wherein the notch is arcuate (112, Fig. 6 of Beach et al.).
Re claim 16, further comprising: an angular notch (112, Fig. 6 of Beach et al.) extending from the axial distal end of the retainer approximately 180 degrees from the first slot of the retainer (112, Fig. 6 of Beach et al.).
Re claim 17, the retainer further comprising: a first angled side of the angular notch extending from a first location at the axial distal end of the retainer to a vertex of the angular notch axially inward from the axial distal end of the retainer; and a second angled side of the angular notch adjacent the first angled side, the second angled side extending from a second location at the axial distal end of the retainer to the vertex, the first location spaced from the second location at the axial distal end of the retainer (112, Fig. 7 of Beach et al.).
Claim(s) 21-28,43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mouthaan (US 20050173966) in view of Canadian document (CA 2959838).
Mouthaan discloses a bit and bit holder combination (see Figs. 3,6) comprising a bit holder comprising a bit holder body portion comprising a front face at a forward end of the bit holder; a generally cylindrical hollow bit holder shank axially depending from a
bottom of the bit holder body portion (see Figs. 3,6); and a bore axially extending from the front face of the bit holder body portion to a distal end of the bit holder shank; and
a bit comprising:
a unitary bit body portion comprising a washer portion adjacent a distal
end of the unitary body portion, the washer portion integrally formed as part of the unitary body portion; and a generally cylindrical bit shank depending from a bottom of the body portion, the bit shank disposed within the bore of the bit holder adjacent the front face of the bit holder (see Figs. 3,6). Mouthaan discloses the invention substantially as claimed. However, Mouthaan lacks the unitary body portion axially and radially extending to a transition adjacent an outer diameter of the washer portion.
Canadian document ‘838 teaches a bit comprising: a unitary bit body portion comprising a washer portion adjacent a distal end of the unitary body portion, the washer portion integrally formed as part of the unitary body portion; the unitary body portion axially and radially extending to a transition adjacent an outer diameter of the washer portion; and
a generally cylindrical bit shank depending from a bottom of the body portion, the bit shank disposed within the bore of the bit holder adjacent the front face of the bit holder (see Figs. 1,3,5,7,9,11,13).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mouthaan by substituting the bit as taught by Canadian document ‘838 for the bit disclosed by Mouthaan since such a modification facilitates cut material movement.
Re claim 22, further comprising: a tapered portion adjacent a rear annular flange of the washer portion (see marked up Figure above).
Re claim 23, the tapered portion comprising a first angle that is complementary to a second angle of the countersink of the bore of the bit holder (see where member 52 is pointing in Figure 8 of Canadian document).
Re claim 24, the tapered portion contacting the countersink (see where member 52 is pointing in Figure 8 of Canadian document) of the bore of the bit holder to radially align the bit with the bore of the bit holder.
Re claim 25, further comprising: a transition radius (see marked up Figure above) extending from the rear annular flange to the tapered portion.
Re claim 26, further comprising: a transition radius (see marked up Figure above) extending from a shoulder at a distal end of the tapered portion to a forward end of the bit shank (20).
Re claim 27, further comprising: a rear annular flange of the washer portion forming a close coupling with an annular surface at a forward end of the bit holder (see Figs. 3,6 of Mouthaan or Figs.1,3,5,7,9,11,13 of Canadian document).
Re claim 28, further comprising: a generally cylindrical hollow retainer (112, Fig. 3 of Mouthaan or 46 Fig. 9 of Canadian document) disposed circumferentially about the bit shank.
Re claim 43, a diameter of the washer portion being at least a diameter of the front face of the bit holder (see Figs. 3,6 of Mouthaan or Figs. 1,3,5,7,9,11,13 of Canadian document).
Claim(s) 29,30,39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mouthaan ‘966 in view of Canadian document ‘838 as applied to claim 28 above, and further in view of Levankovsky (US 20050082899).
Mouthaan (as modified above) discloses a retainer further comprising:
a first slot (see Fig. 3 of Mouthaan or 48 of Fig. 9 of Canadian document) extending through a sidewall of the retainer from an axial forward end of the retainer to an axial distal end of the retainer. However, Mouthaan (as modified above) is silent about including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot. Levankovsky teaches a retainer
including a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot (see Fig. 6). It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Mouthaan (as modified above) to include a first angled portion extending from the axial distal end to a first radial end surface of the first slot; and a second angled portion extending from the axial distal end to a second radial end surface of the first slot as taught by Levankovsky since such a modification facilitates the insertion of the bit into the holder.
Re claim 30, the first angled portion and the second angled portion forming a
dual corner break of the retainer adjacent the axial distal end of the retainer (see Fig 6 of Levankovsky).
Re claim 39, the retainer further comprising: a gap profile (Fig. 3 of Mouthaan; 48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky) of the retainer defined by the first radial end surface and the second radial end surface of the first slot.
Re claim 40, at least one of the first radial end surface and the second radial end
surface of the first slot being at least one of linear, parallel, serpentine, arcuate, angular, and zig-zagged (Fig. 3 of Mouthaan; 48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky).
Re claim 41, the gap profile of the first slot being at least one of linear,
parallel, serpentine, arcuate, angular, and zig-zagged (Fig. 3 of Mouthaan; 48, see Fig 9 of Canadian document or Fig. 6 of Levankovsky).
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mouthaan in view of Canadian document and Levankovsky as applied to claim 29 above, and further in view of German document (DE 10142438).
Mouthaan (as modified above) discloses the invention substantially as claimed. However, Mouthaan (as modified above) is silent about further comprising:
a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an
outer surface of the retainer. German document ‘438 teaches a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer (where 33 is pointing in Figs. 1,2). It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to
further modify Mouthaan (as modified above) to include a chamfer adjacent the axial distal end of the retainer, the chamfer extending to an outer surface of the retainer as taught by German document ‘438 since such a modification facilitates the insertion of the bit into the bit holder.
Claim(s) 32,33,34,36,37,38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mouthaan in view of Canadian document ‘838 and Levankovsky ‘899 as applied to claim 29 above, and further in view of Beach et al. (US 4850649).
Mouthaan (as modified above) discloses the invention substantially as claimed. However, Mouthaan (as modified above) is silent about including a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer. Beach et al. teaches a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer (see Figs. 3,5,6).
It would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Mouthaan (as modified above) to include a notch opposite the axial forward end of the retainer, the notch extending inwardly from the axial distal end of the retainer as taught by Beach et al. since such a modification facilitates the insertion of the bit into the bit holder.
Re claim 33, the retainer further comprising: a second slot (upper portion of slot 112 in Fig 6 of Beach et al) axially extending from the notch (the lower portion of 112 in Fig. 6 of Beach et al.) through the sidewall of the retainer to a second slot termination, the second slot disposed approximately 180 degrees from the first slot.
Re claim 34, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Mouthaan (as modified above) to include at least one tab disposed on the sidewall of the retainer, the at least one tab extending axially and radially inwardly, the at least
one tab adapted to engage a flange on the shank of the bit as taught by Beach et al. (see Figs. 2 to 7) to prevent the retainer from being removed from the shank.
Re claim 36, wherein the notch is arcuate (112, Fig. 6 of Beach et al.).
Re claim 37, further comprising: an angular notch (112, Fig. 6 of Beach et al.) extending from the axial distal end of the retainer approximately 180 degrees from the first slot of the retainer (112, Fig. 6 of Beach et al.).
Re claim 38, the retainer further comprising: a first angled side of the angular notch extending from a first location at the axial distal end of the retainer to a vertex of the angular notch axially inward from the axial distal end of the retainer; and a second angled side of the angular notch adjacent the first angled side, the second angled side extending from a second location at the axial distal end of the retainer to the vertex, the first location spaced from the second location at the axial distal end of the retainer (112, Fig. 6 of Beach et al.).
Allowable Subject Matter
Claims 14,35 are 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.
Response to Arguments
Applicant's arguments filed 8/27/2026 have been fully considered but they are not persuasive. Applicant argues that Canadian document ‘838 fails to teach washer portion integrally formed with the unitary bit body”. Applicant repeatedly points to member (50) of Canadian document as the “washer portion”. It should be noted that the examiner explicitly pointed out that member (32) is considered as the “washer portion” that is integrally formed with the unitary body. There is no claimed language preventing such interpretation. For example in WO document ‘765 member 26, 112 (called shoulder) is no different than member 74 in the instant application being called a washer. US Patent ‘588 member 24,424 (called major flare diameter portion) is no different than member 412 in the instant application being called a washer.
US Patent ‘888 member 26 (called annular shoulder) is no different than member 412 in the instant application being called a washer.
US Patent ‘379 member 105 (called flange) is no different than member 412 in the instant application being called a washer.
US Patent ‘966 member 115 (called enlarged diameter portion) is no different than member 412 in the instant application being called a washer.
US Patent ‘393 member 54 (called front annular flange) is no different than member 74 in the instant application being called a washer.
Applicant argues that Mouthaan ‘966 fails to teach washer portion integrally formed with the unitary bit body”. Applicant repeatedly points to members (28,30) of Mouthaan as the “washer portion”. It should be noted that the examiner explicitly pointed out that member (115) is considered as the “washer portion” that is integrally formed with the unitary body. There is no claimed language preventing such interpretation. For example in WO document ‘765 member 26, 112 (called shoulder) is no different than member 74 in the instant application being called a washer. US Patent ‘588 member 24,424 (called major flare diameter portion) is no different than member 412 in the instant application being called a washer.
US Patent ‘888 member 26 (called annular shoulder) is no different than member 412 in the instant application being called a washer.
US Patent ‘379 member 105 (called flange) is no different than member 412 in the instant application being called a washer.
US Patent ‘966 member 115 (called enlarged diameter portion) is no different than member 412 in the instant application being called a washer.
US Patent ‘393 member 54 (called front annular flange) is no different than member 74 in the instant application being called a washer.
Conclusion
THIS ACTION IS MADE FINAL. 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 SUNIL SINGH whose telephone number is (571)272-7051. The examiner can normally be reached M-Th 8-3, F 9-8 and 2nd Sat 11-7.
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, Amber Anderson can be reached at 571 270 5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIL SINGH/Primary Examiner, Art Unit 3678
SS
9/9/2026
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