DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a product, classified in B23B51/02.
II. Claim 13, drawn to a method, classified in B24B1/00.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product of Invention I can be made by a process that does not include grinding or more than one grinding step. For example, multiple grinding steps can be used. Or, the manufacturing process does not have to include grinding and can instead use molding, sintering, additive manufacturing, and/or other subtractive machining techniques.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Group I would require a search in at least B23B51/02, along with a unique text search. Group II would require a search in at least B24B1/00, along with a unique text search.
(B) Potential for divergent prosecution between method steps and apparatus structures.
During a telephone conversation with Clinton Wimbish on July 7, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claim 13 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Claim Objections
Claim 1 is objected to because of an informality: there is no transition phrase (e.g. “comprising”) between the preamble and body. Claim 8 is objected to because of an informality: the period before “in particular” should be removed. Claims 10-11 are objected to because of an informality: “the top region” should be changed to “the tip region”. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
While original claims are generally viewed as part of the written description, “issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.” See MPEP 2163(1)(A). In addition, “The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.” See MPEP 2163(I). In this case, as detailed below, claim 1 is not described with sufficient particularity and/or contradict the originally filed specification and drawings, thus one of skill in the art would not recognize that the applicant had possession of claim 1 at the time of filing.
Claim 1 recites edge free surface. Applicant’s originally filed drawings and specification teach the edge free surfaces 10 having outer edges that delimit and form an outer perimeter of surfaces 10. For example, cutting surface/edge 6 and edge L form an outer perimeter of the edge free surfaces 10 (see originally filed figures 1-2). Further, Applicant’s originally filed disclosure contemplates the edge free surfaces comprising these edges since the only way that claim 3 can be supported is if the edge free surfaces include at least the cutting surface/edge since the cutting surfaces/edges are within the tip region. Thus, Applicant’s originally filed disclosure does not teach the edge free surface being completely edge free.
For purposes of examination, the edge free surfaces will be interpreted as the surface being edge-free except for the outer edges/boundary of the surface (i.e. the entire surface flows smoothly within the outer boundary of the surface without any abrupt changes in direction that form ridges/edges/corners).
Claims 2-12 are rejected for depending from claim 1.
The following is a quotation of 35 U.S.C. 112:
(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 1-12 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 applicant regards as the invention.
Claim 1 recites a cutting corner arranged on a radius. It is unclear how the corner can be arranged on a radius. For purposes of examination, this limitation will be interpreted as the cutting corner being a distance from the axis of rotation.
Claim 1 also recites starting from a drill tip and over the entire radial extent thereof, the at least three main cutting surfaces converge on the drill tip. It is confusing how the cutting surfaces can converge on the drill tip when starting at the drill tip. It is also unclear what “thereof” is referring to. For purposes of examination, this limitation will be interpreted as: starting from respective cutting corners the at least three main cutting surfaces converge on a drill tip.
Claim 4 recites the three edge-free surfaces are designed in the manner of tetrahedron surfaces of a degenerated tetrahedron, which is designed to twist within itself about the axis of rotation. It is unclear if the entirety of the edge-free surfaces have to be designed based on a degenerated tetrahedron, or if only a portion of them have to. Applicant’s originally filed specification suggest that it is only the portions of the edge-free surfaces within the tip region that form the degenerated tetrahedron—not the entirety of the edge free surfaces as suggested by this claim. It is also unclear what “designed to twist within itself” means. For purposes of examination, this limitation will be interpreted as: respective portions of the three edge-free surfaces located in a tip region of the drill form a degenerated tetrahedron, which is a structure formed by twisting a base of a tetrahedron about the axis of rotation while a tip of the tetrahedron is fixed.
Claim 5 recites a respective main cutting surface. it is unclear if this is referring to one of the already introduced main cutting surfaces, or is introducing another main cutting surface.
Claim 6 recites the respective main cutting surface. There is insufficient antecedent basis for this respective surface.
Claims 6 and 12 recite the central inner region is greater than ¼ or 1/3 of the radius (r). This limitation is confusing. For purposes of examination, this limitation will be interpreted as: a radius of the central inner region is greater than ¼ or 1/3 of the radius (r).
Claim 8 recites in particular … . It is unclear if the limitation after “in particular” is a required limitation or optional. For purposes of examination this limitation will be treated as optional.
The rest of the claims are rejected for depending from claim 1.
Rejections under 35 USC 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-7, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2010/0054884 (“Masuda”).
Regarding claim 1, Masuda teaches a drill (1) (fig. 1, ¶ [0020]), which extends along an axis of rotation (fig. 1) and comprises at least three main cutting surfaces (5) which, starting from a cutting corner arranged on a radius (r), each extend in the direction of the axis of rotation, wherein, starting from a drill tip and over the entire radial extent thereof, the at least three main cutting surfaces converge on the drill tip (figs. 2-3, ¶ [0020] & [0022], wherein as illustrated in fig. 3 each cutting edge 5 extends from a point/tip in the center of the drill to the outer circumference). The examiner notes that the “cutting corner arranged on a radius” can be interpreted as any of corners 1-3 illustrated in annotated fig. 3 of Masuda, below.
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Claim 1 also recites each cutting surface adjoins a respective edge-free surface, which comprises a clearance surface and in each case transitions into a respective flute. The edge-free surface can be interpreted as either surface 6 or 7 since each of surfaces 6 & 7 adjoin a cutting edge 5 and also transition into a respective flute 4 (figs. 2-3). The Masuda specification refers to surface 6 as a flank, which one of skill in the art of drills understands to be a slanted surface behind a cutting edge to provide clearance. Since surface 7 is behind surface 6 and is also adjoined to a front of cutting edge 5, one of skill in the art appreciates that surface 7 is also a relieved area with respect to cutting edge 5.
Regarding claim 2, Masuda teaches the main cutting surfaces converge on the drill tip without the presence of transverse cutting surfaces. When interpreting the drill tip as the singular point at the middle of the drill as illustrated in figure 3, each cutting edge 5 is adjoined with the drill tip so that there are no transverse cutting surfaces.
Claim 5 recites a respective main cutting surface extends in a curved manner into the drill tip. When interpreting the drill tip as chisel edge 8, the cutting surfaces 5 extend in a curved manner into the drill tip 8 (fig. 3, ¶ [0022], wherein each segment 51 & 52 of cutting edge 5 is curved).
Claim 6 recites a central inner region of the respective main cutting surface continuously extends in a curved manner into the drill tip, wherein the central inner region is greater than 1/4 of the radius (r). Since each segment 51 & 52 of cutting edge 5 is curved, the entirety of the cutting edge 5 is curved—including the central inner region as defined by claim 6.
Claim 7 recites the respective main cutting surface is curved in only one direction. Since the entirely of cutting edge 5 is convex (fig. 3, ¶ [0022]), it is curved in only one direction.
Claim 12 recites the central inner region is greater than 1/3 of the radius (r). Since each segment 51 & 52 of cutting edge 5 is curved, the entirety of the cutting edge 5 is curved—including the central inner region as defined by claim 12.
Rejections under 35 USC 1031
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 3 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda as applied to claim 1 above.
Claim 3 recites a tip region of the drill is formed only by the edge-free surfaces, wherein the tip region extends from the drill tip as far as an axial length (A), which corresponds to at least 1/4 of the radius (r). As illustrated in annotated fig. 3 of Masuda provided in the rejection to claim 1, above, Corner 3 can be interpreted as the “cutting corner arranged on a radius”. In addition, when surfaces 6 are interpreted as the edge free surface, there is a tip region illustrated below wherein an axial distance from the point on the axis of rotation to the plane illustrated below contains only the edge-free surfaces 6.
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While it is unclear what the axial length is of chisel edge 8 is (i.e. axial distance from the point on the axis of rotation to Corner 3), one of skill in the art appreciates that the chisel edge of a drill can have varying lengths. In addition, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Merely increasing the axial length of the chisel edge so that the tip region extending from the point on the axis of rotation to the plane illustrated above is ¼ the radius/distance from the point on the axis of rotation to Corner 3 would not create a device that would perform differently from the drill of Masuda because the distance to Corner 3 is relatively small—thus, the axial length of the chisel edge 8 will still be a suitable size to perform its function of centering the drill bit during drilling.
Claim 10 recites the top region extends from the drill tip as far as the axial length (A), which corresponds to 1/3 of the radius (r). While it is unclear what the axial length is of chisel edge 8 is (i.e. axial distance from the point on the axis of rotation to Corner 3), one of skill in the art appreciates that the chisel edge of a drill can have varying lengths. In addition, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Merely increasing the axial length of the chisel edge 8 so that the tip region extending from the point on the axis of rotation to the plane illustrated in the rejection to claim 3 is 1/3 the radius/distance from the point on the axis of rotation to Corner 3 would not create a device that would perform differently from the drill of Masuda because the distance to Corner 3 is relatively small—thus, the axial length of the chisel edge 8 will still be a suitable and not overly large size to perform its function of centering the drill bit during drilling.
Claim 11 recites the top region extends from the drill tip as far as the axial length (A), which corresponds to 1/2 of the radius (r). While it is unclear what the axial length is of chisel edge 8 is (i.e. axial distance from the point on the axis of rotation to Corner 3), one of skill in the art appreciates that the chisel edge of a drill can have varying lengths. In addition, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Merely increasing the axial length of the chisel edge 8 so that the tip region extending from the point on the axis of rotation to the plane illustrated in the rejection to claim 3 is 1/2 the radius/distance from the point on the axis of rotation to Corner 3 would not create a device that would perform differently from the drill of Masuda because the distance to Corner 3 is relatively small—thus, the axial length of the chisel edge 8 will still be a suitable and not overly large size to perform its function of centering the drill bit during drilling.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda as applied to claim 1, above, and further in view of USPGPub No. 2017/0326653 (“Guter”).
Regarding claims 8 and 9, Masuda fails to explicitly teach the drill is designed as a monolithic drill, and the drill is made of carbide. However, this would have been obvious in view of Guter.
Guter is also directed to twist drills (fig. 1, ¶ [0002]). Guter teaches that it is known for twist drills to be one-piece, i.e. monolithic, and to be formed out of carbide (¶ [0004] & [0031]). One of skill in the art appreciates that carbide has high hardness and good heat resistance. One of skill in the art also appreciates that one-piece constructions can eliminate the weak points that can form between seams of modular constructions. Thus, for these benefits it would be obvious to form the drill of Masuda as a one-piece construction out of carbide.
In the alternative, claims 3 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda as applied to claim 1, above, and further in view of USPGPub No. 2003/0002941 (“Borschert”).
Claim 3 recites a tip region of the drill is formed only by the edge-free surfaces, wherein the tip region extends from the drill tip as far as an axial length (A), which corresponds to at least 1/4 of the radius (r).
Borschert is also directed to a drill bit having flutes and a tip (fig. 2, ¶ [0053]). Borschert teaches a prior art drill bit has ridges/edges between surfaces 7, 10 & 16, which can cause undesirably high mechanical loads during drilling (fig. 1, ¶ [0054]). Borschert teaches an embodiment that uses a continuous grinding process so that areas 7A, 7B & 10, which include clearance faces/flanks, make smooth transitions into each other without any sharp bends or ridges (fig. 2, ¶ [0053] & [0055]).
In this case, each of Masuda and Borschert are directed to a twist drill having a tip with cutting edges, and a clearance face extending from the cutting edge toward a flute. While Masuda teaches clearance surface 6 immediately behind cutting edge 5, and then a surface 7 immediately behind surface 6 and extending between a flute and surface 6 (wherein there is a edge/ridge between surface 6 & 7), Borschert teaches that surfaces 6 & 7 can have a smooth transition via continuous grinding, and that a smooth transition can prevent undesirably high mechanical loads during drilling. Thus, it would be obvious to provide a smooth transition between surfaces 6 & 7 of Masuda.
Given the above modification, the combination of surfaces 6 & 7 can be interpreted as the edge-free surface since there is no sharp bends or edges within the outer perimeter. Further, as detailed below, there is a tip region wherein an axial distance from the point on the axis of rotation to the plane illustrated below contains only the edge-free surfaces 6/7.
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When comparing figures 2 and 3 of Masuda one of skill in the art will reasonably infer that the axial distance between the point on the axis of rotation and the plane illustrated above is greater than 1/4 of the radial distance between the point on the axis of rotation and Corner 3.
Alternatively, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. The examiner is also taking Official Notice that it is well known for cutting edges to extend from a drill tip at different angles with respect to a longitudinal direction. Thus, it is prima facie obvious to change the angle of the cutting edges so that the axial length of the cutting edges are such that the axial distance between the point on the axis of rotation and the plane illustrated above is greater than 1/4 of the radial distance between the point on the axis of rotation and Corner 1 or Corner 2. Further this modification will still allow the drill of Masuda to be used as intended because the cutting edges will still be able to cut a workpiece when extending at different angles with respect to the longitudinal axis.
Claim 10 recites the top region extends from the drill tip as far as the axial length (A), which corresponds to 1/3 of the radius (r). When comparing figures 2 and 3 of Masuda one of skill in the art will reasonably infer that the axial distance between the point on the axis of rotation and the plane illustrated in the rejection to claim 3 immediately above is greater than 1/3 of the radial distance between the point on the axis of rotation and Corner 3.
Alternatively, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. The examiner is also taking Official Notice that it is well known for cutting edges to extend from a drill tip at different angles with respect to a longitudinal direction. Thus, it is prima facie obvious to change the angle of the cutting edges so that the axial length of the cutting edges are such that the axial distance between the point on the axis of rotation and the plane illustrated in the rejection to claim 3 above is greater than 1/3 of the radial distance between the point on the axis of rotation and Corner 1 or Corner 2. Further this modification will still allow the drill of Masuda to be used as intended because the cutting edges will still be able to cut a workpiece when extending at different angles with respect to the longitudinal axis.
Claim 11 recites the top region extends from the drill tip as far as the axial length (A), which corresponds to 1/2 of the radius (r). When comparing figures 2 and 3 of Masuda one of skill in the art will reasonably infer that the axial distance between the point on the axis of rotation and the plane illustrated in the rejection to claim 3 immediately above is greater than 1/2 of the radial distance between the point on the axis of rotation and Corner 3.
In addition, MPEP 2144.04(IV)(A) states that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. The examiner is also taking Official Notice that it is well known for cutting edges to extend from a drill tip at different angles with respect to a longitudinal direction. Thus, it is prima facie obvious to change the angle of the cutting edges so that the axial length of the cutting edges are such that axial distance between the point on the axis of rotation and the plane illustrated in the rejection to claim 3 is greater than 1/2 of the radial distance between the point on the axis of rotation and Corner 1 or Corner 2. Further, this modification will still allow the drill of Masuda to be used as intended because the cutting edges will still be able to cut a workpiece when extending at different angles with respect to the longitudinal axis.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and to the knowledge of one of skill in the art.
USPGPub No. 2021/0283696 teaches that the angle of the cutting edges can vary with respect to the rotational axis (see fig. 3 & ¶ [0033]).
USPGPub No. 2021/0138561 teaches that the angle of the cutting edges can vary with respect to the rotational axis (see fig. 1F & ¶ [0046]).
DE-102017201684-A1 teaches that the angle of the chisel tip can vary (and thus so can the axial length) (see fig. 3 & ¶ [0017]-[0019] of the machine translation submitted herewith).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights