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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 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.
Claims 1, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hlocky (US 3,816,018).
As to claim 1, Hlocky teaches a body of a hole machining tool (Abstract: “A boring bit comprising a hollow body”), comprising: a main body part formed in a cylindrical shape (Col 2 lines 26-29: “the boring bit of the present invention comprises an elongated substantially cylindrical body 1 having a longitudinal axis of rotation about the center line 0”); and a guide part (rotatable guide rollers 14 and 15 having axles 14a, 15a, see Figs 1-3.) provided on a peripheral part of the main body part (see Figs 1-3. The guide rollers 14 and 15 are on a periphery of the body 1), wherein the guide part has a holding groove formed in the main body part (as illustrated in Figs 2 and 3, the rollers 14 and 15 are located in grooves (unlabeled) in the body 1.) and a rolling element accommodated so as to be rollable in the holding groove (rollers 14, 15 are located in the holding groove).
As to claim 4, Hlocky teaches the body according to claim 1, wherein the rolling element is formed in a cylindrical shape and held within the holding groove so as to be rollable about a central axis that extends in the same direction as a rotational axis of the main body part (Col 3 lines 29-33: “The rollers 14 and 15 having circumferential wall extending beyond the circumference of the body and are mounted on pivot axles 14a and 15a which are arranged parallel to the central longitudinal axis of the body 1”).
As to claim 6, Hlocky teaches a hole machining tool (Hlocky Col 3 lines 37- Col 4 line 1: “The boring bit of the present invention is eminently suitable for use in drills or boring tools used to form precise holes in solid material such as metal. The position of the blades, the location of the lubricating passages and the position of the guide rollers permits the boring of long and accurate holes with a virtual absence of skew, unwanted vibrational forces and the creation of undesirable heat.”), comprising: the body according to claim 1 (see the rejection of claim 1 above); and a cutting insert mounted on the body (cutting blades 10, 11).
Claims 7 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weitao et al. (NL 2036677).
As to claim 7, Weitao teaches a guide pad (the combination of roller cover plate 10 and rollers 7 or balls 12 is the guide pad) attached on a peripheral part of a body of a hole machining tool (the BTA deep hole drill has a base 3 on which the cover plate 10 is located at the periphery, see Fig 1), the guide pad comprising: a base part (cover plate 10) having a holding groove (the hole through the cover plate which accommodates the rollers 7 or balls 12 is a holding groove); and a rolling element accommodated so as to be rollable within the holding groove (Paragraph [34]: “the roller 7 is mounted in the roller 7 mounting recess through a roller cover plate 10”).
As to claim 10, Weitao teaches the guide pad according to claim 7, wherein the rolling element (roller 7) is formed in a cylindrical shape and held within the holding groove so as to be rollable about a same central axis (Paragraph [31]: “an axis of the roller 7 is parallel to the drill bit, the roller 7 may rotate around an axis thereof.”).
As to claim 11, Weitao teaches the guide pad according to claim 7, wherein the rolling element is formed in a spherical shape (paragraph [31]: “the ball 12 may rotate universally, and the ball 12 and the roller 7 are configured to come into contact with a hole wall is a rolling manner.”).
As to claim 12, Weitao teaches the guide pad according to claim 7, wherein: the base part (cover plate 10) is fixed on the body with a fastening member (screws 14. See Paragraph [34]: “The roller cover plate 10 and the ball cover plate 14 are fixed on the side wall of the drill bit with screws.”); and the rolling element is prevented from falling off from the holding groove by using the fastening member (this is an intended use of the fastening member. Since the screws hold the roller cover plate 10 fixed to the side wall of the drill bit, the screws are reasonably broadly interpreted as preventing the rolling element from falling off.).
As to claim 13, Weitao teaches a hole machining tool (drill bit), comprising: the guide pad according to claim 7 (see the rejection of claim 7 above); a body on which the guide pad is attached (the body of the BTA deep hole drill as illustrated holds the rollers 7 and cover plate 10); and a cutting insert mounted on the body (first blade 4, second blade 5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hlocky (US 3,816,018).
As to claim 2, Hlocky teaches the body according to claim 1, but does teach the rolling element is replaceable.
The limitation “replaceable” or ‘capable of being replaced’ is functional language. See MPEP § 2114. “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Here, the device of Hlocky is capable of being used in such a way that replaces the rollers 14 and 15. An artisan would have understood at the time the invention was effectively filed that replacing the rollers would have been achieved by simply removing the axles 14a, 15a. There is nothing of record in Hlocky that indicates the rollers 14, 15 or axles 14a, 15a are permanent.
As to claim 3, Hlocky teaches the body according to claim 1, wherein: the holding groove extends along a rotational axis of the main body part (Col 3 lines 29-33: “The rollers 14 and 15 having circumferential wall extending beyond the circumference of the body and are mounted on pivot axles 14a and 15a which are arranged parallel to the central longitudinal axis of the body 1”). Hlocky does not teach a plurality of the rolling elements are aligned and accommodated in the holding groove.
Rather, Hlocky teaches a single roller 14, 15 in each groove.
However, the difference between a single roller and a plurality of rollers in the same groove is not a patentable distinction. See MPEP § 2144.04 VI B Duplication of Parts: “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” In this case, duplicating a single roller to arrive at a plurality of rollers in the same groove does not appear to produce any new or unexpected results. Thus there is a prima facie case of obviousness for the duplication of a single roller into a plurality of rollers as claimed.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Weitao et al. (NL 2036677).
As to claim 8, Weitao teaches the guide pad according to claim 7, but does not teach the rolling element is replaceable.
The limitation “replaceable” or ‘capable of being replaced’ is functional language. See MPEP § 2114. “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Here, the device of Weitao is capable of being used in such a way that replaces the rollers 7. An artisan would have understood at the time the invention was effectively filed that replacing the rollers would have been achieved by simply removing the screws 14 and cover 10. There is nothing of record in Weitao that indicates the screws 14 or cover 10 are permanent.
As to claim 9, Weitao teaches the guide pad according to claim 7, wherein a plurality of the rolling elements are aligned in a single line (as shown for example in Fig 2, Weitao teaches a single roller 7. Weitao further teaches at Fig 6 a plurality of rollers 7 in a line). Weitao does not teach the plurality of rollers 7 (as shown in Fig 6) are accommodated in the holding groove.
Examiner’s interpretation of “the holding groove” is a single holding groove. As there appears to be two covers 10, Examiner fairly interprets Fig 6 to illustrate two holding grooves.
However, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have combined the two holding grooves shown in Fig 6 into a single holding groove. See MPEP § 2144.04 V B Making Integral: “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” In this case, choosing to combine two adjacent and aligned grooves (as shown in Weitao Fig 6) into a single groove would have amounted to prima facie obvious engineering choice at the time the invention was effectively filed.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hlocky as applied to claim 1 above, and further in view of Weitao.
As to claim 5, Hlocky teaches the body according to claim 1, but does not teach the rolling element is formed in a spherical shape.
Rather, the rollers 14, 15 of Hlocky are cylindrical, not spherical. However, in the field of deep hole drills, and more specifically among teachings of using bearing at the periphery of drill bits, it was known at the time the invention was effectively filed to have swapped cylindrical bearings for spherical bearings. See Weitao which teaches cylindrical rollers and spherical balls are interchangeable and usable together: [Abstract]: “a circumferential side wall of the drill bit is provided with several rollers and/or several balls.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have formed the rolling element of Hlocky into a sphere rather than a cylinder.
Such a person would have been motivated to do so in order to achieve the benefits of balls over rollers as a “universal” rotation as described by Weitao: [Abstract]: “an axis of the roller is parallel to the drill bit, the roller may rotate around an axis thereof, the ball may rotate universally, and the ball and the roller are configured to come into contact with a hole wall in a rolling manner.”
Other Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Scheer (US 5425604 A) teaches several cartridges for roller balls arranged at the periphery of a drill bit.
Skvortsov (SU 1731461 A1) teaches rollers at the periphery of a drill bit held by a plate latch 5.
Liang (CN 116967788 A) teaches a BTA drill having both pads 4 and rollers 3.
JP S62208804 A teaches a drill bit having rollers 2.
Yao (CN 112809047 A) teaches a deep hole drill having rollers 51. The rollers are explicitly taught to be captured in the body by a necking or welding process and therefore are not removable, unlike the teachings of Hlocky or Weitao.
Deng (CN 112756667 A) teaches a deep hole processing drill having roller balls at a periphery thereof. See Fig 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 15 September 2026
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