Detailed Action1
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to a product, classified in B23B51/0473.
II. Claims 17-20, drawn to a method, classified in B23B39/00 and/or B23B51/0453.
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product of claim 1 can be used in a method that does not include placing a drill bit against a surface, applying pressure to the drill bit. For example, no drill bit is required for the product.
Restriction for examination purposes as indicated is proper because all these 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 at least the following reason(s) apply:
(A) Group I would require a search in at least B23B51/0473, along with a unique text search. Group II would require a search in at least B23B39/00 and/or B23B51/0453, along with a unique text search.
(B) Potential for divergent prosecution between method steps and apparatus structures.
During a telephone conversation with Robert Gurr (Reg. No. 65202) on September 29, 2026 a provisional election was made to prosecute the invention of Group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.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 cancellation 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.
Priority
Claims 1-7 and 11-13 are given a priority date of 04/24/2024. Claims 8-10 and 14-16 are given the priority date of 10/29/2024.
Rejections under 35 USC 112
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 7 and 13 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.
Claims 7 and 13 each recite the plunger comprises an indentation to receive a ball bearing, the ball bearing applying lateral force on the plunger via a detent spring. It is unclear if the ball bearing and detent spring are required elements or if the plunger is merely capable of having a ball bearing apply a lateral force thereon via a detent spring. For purposes of examination, the latter interpretation will be used. If Applicant intends for the claim to require the ball bearing and detent spring the examiner recommends amending the claim to recite something similar to: the arbor further comprising the ball bearing and a detent spring, the ball bearing applying lateral force on the plunger via the detent spring. If Applicant does not intend for the claim to require the ball bearing and detent spring, the examiner recommends amending the claim to recite something similar to: the arbor configured to receive the ball bearing and a detent spring so that the ball bearing applies lateral force on the plunger via the detent spring.
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 and 4-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by USPGPub No. 2025/0196233 (“Proulx”).
Regarding claim 1, Proulx teaches an arbor for a hole saw (col. 1 lines 48-55), comprising: a shank (46) comprising a drill connection end (41), a threaded end (42) with a chamber opening (fig. 2), and an internal chamber (46a/46b) (figs. 1-3, ¶ [0065]); a spring (26) situated within the internal chamber (fig. 2, col. 1 lines 56-59); and a plunger (30/43) configured to slide through the chamber opening and within the chamber (figs. 3-4, ¶ [0066], [0069] & [0078]-[0086]); wherein when the plunger is under pressure, the plunger compresses the spring within the internal chamber (figs. 4A-4C, ¶ [0078]-[0083], wherein upward pressure is capable of forcing the plunger up and compressing the spring); and wherein when the plunger is not under pressure, the spring extends, ejecting the plunger from within the internal chamber (figs. 4D-4E, ¶ [0086]). The examiner notes that the provisional application of Proulx filed on December 18, 2023 supports all the teachings of Proulx used to reject the claims.
Regarding claim 2, Proulx further teaches the plunger further comprises a drill bit receiving slot (43a) (fig. 3, ¶ [0066]).
Claim 4 recites a positioning ring. Ring 48 can be interpreted as the positioning ring since it is ring-shaped and helps position elements 72 in hole saw aperture, and, position elements 53/55 (figs. 1-3).
Claim 5 recites a lock ring. Ring 48 can be interpreted as a lock ring since it helps lock hole saw in place via elements 72, and helps lock the plunger in the retracted position by housing elements 53/55 (fig. 3, ¶ [0070]-[0072] & [0086]).
Regarding claim 6, Proulx further teaches the lock ring comprises one or more hole saw coupling protrusions (72) (fig. 3, ¶ [0072]).
Rejections under 35 USC 1032
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 obvious3 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 1, 3, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 6,375,396 (“Fangmann”) in view of USPGPub No. 2022/0297205 (“Sanogo”).
Regarding claim 1, Fangmann teaches an arbor (12) for a hole saw (col. 1 lines 48-55), comprising: a shank comprising a drill connection end (20), an … end (22) with a chamber opening (fig. 2), and an internal chamber (18); a spring (26) situated within the internal chamber (fig. 2, col. 1 lines 56-59); and a plunger (16) configured to slide through the chamber opening and within the chamber (fig. 2, col. 2 lines 1-9 & 20-26); wherein when the plunger is under pressure, the plunger compresses the spring within the internal chamber (fig. 2, col. 2 lines 1-9 & 20-26); and wherein when the plunger is not under pressure, the spring extends, ejecting the plunger from within the internal chamber (fig. 2, col. 2 lines 20-26).
Fangmann fails to explicitly teach the end of the shank with a chamber opening being a threaded end. However, this is obvious in view of Sanogo.
Sanogo is also directed to a hole cutter (¶ [0002]). Sanogo teaches attaching the hole cutter 330 to an arbor 310 via a threaded connection (figs. 3A-3C, ¶ [0044]).
In this case, each of Fangmann and Sanogo is directed to a hole cutter attached to an arbor. While Fangmann connects the arbor and hole saw via a set screw, one of skill in the art appreciates that there are many ways to fastener components together. Sanogo teaches another known method to attach a hole cutter to an arbor, i.e. via threads at the end of the arbor. Thus, it would be obvious to provide threads at the end of the arbor to attach the hole cutter to the arbor. The set screw can be substituted with the threads (see MPEP 2143(I)(B) or MPEP 2144.06(II)) or combining the threads with the set screw (see MPEP 2144.06(I)).
Claim 3 recites the plunger further comprises a flat edge to engage with a roll pin to prevent rotation of the plunger within the internal chamber. The plunger 16 comprises a flat edge 44 that is capable of engaging with a roll pin to prevent rotation of the plunger when a roll pin is inserted through opening 48 (fig. 2). The examiner notes that the roll pin is not a positively recited element and thus does not need to be explicitly taught by Fangmann.
Claim 7 recites the plunger comprises an indentation to receive a ball bearing, the ball bearing applying lateral force on the plunger via a detent spring. As illustrated in figs. 3-5, the plunger 16 comprises an indentation that includes flat surface 44. Further, when removing set screw 50, for example to remove/replace the plunger, opening 48 is capable of receiving a ball bearing and detent spring therein, and fixed therein with a set screw or cap so that the ball bearing applies lateral force on the plunger 16 via the detent spring (see fig. 2 of Fangmann).
Claim 8 recites the plunger comprises one or more notches. The notch can be interpreted as the indentation/depression comprising surface 44 (see figs. 3-5). In addition, the plunger can be interpreted as also including cutter 14 (since elements 16 and 14 are coupled), which comprises notch 36 (fig. 2, col. 1 lines 64-67).
Claim 10 recites a release pin configured to selectively engage with the one or more notches of the plunger. Screws 34 & 50 can be interpreted as pins since they are cylindrical components used for fastening. These pins 34 & 50 engage respective notches (see fig. 2) and can release elements 14 & 16 when loosened.
Claims 1, 2, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,062,748 (“Kishida”) in view of Sanogo.
Regarding claim 1, Kishida teaches an arbor for a hole saw (col. 1 lines 6-11), comprising: a shank (1) comprising a drill connection end (2), an … end (3) with a chamber opening (fig. 1), and an internal chamber (fig. 1); a spring (7) situated within the internal chamber (fig. 1, col. 2 lines 53-55); and a plunger (4 & 15) configured to slide through the chamber opening and within the chamber (fig. 1, 3 & 5, cols. 3-4 lines 25-2); wherein when the plunger is under pressure, the plunger compresses the spring within the internal chamber (fig. 3, col. 3 lines 25-53); and wherein when the plunger is not under pressure, the spring extends, ejecting the plunger from within the internal chamber (fig. 5, col. 3-4 lines 53-2).
Kishida fails to explicitly teach the end of the shank with a chamber opening being a threaded end. However, this is obvious in view of Sanogo.
Sanogo is also directed to a hole cutter (¶ [0002]). Sanogo teaches attached the hole cutter 330 to an arbor 310 via a threaded connection (figs. 3A-3C, ¶ [0044]).
In this case, each of Kishida and Sanogo is directed to a hole cutter attached to an arbor. While Kishida connects the arbor and hole saw via a set screw 21, one of skill in the art appreciates that there are many ways to fastener components together. Sanogo teaches another known method to attach a hole cutter to an arbor, i.e. via threads at the end of the arbor. Thus, it would be obvious to provide threads at the end of the arbor to attach the hole cutter to the arbor. The set screw can be substituted with the threads (see MPEP 2143(I)(B) or MPEP 2144.06(II)) or combining the threads with the set screw (see MPEP 2144.06(I)).
Regarding claim 2, Kishida further teaches the plunger further comprises a drill bit receiving slot (fig. 1, col. 3 lines 3-17, i.e. slot of sleeve 15).
Claim 8 recites the plunger comprises one or more notches. The notches can be interpreted as the depressions 8 in disc 5 (see fig. 1, col. 2 lines 56-61).
Claim 10 recites a release pin configured to selectively engage with the one or more notches of the plunger. Kishida teaches a pin 9 configured to engage the notches, wherein when the disc 5 is moved away from the pin 9 it is released so that it can rotate (figs. 1, 3 & 5, col. 2 lines 56-61).
Allowable Subject Matter
Claims 11-12 and 14-16 are allowed. Claim 13 would be allowed if rewritten to overcome the rejection under 35 U.S.C. 112(b). Proulx is considered the closest prior art. Proulx fails to teach both a positioning ring and a lock ring abutting the positioning ring, and a locking nut to secure the lock ring in position on the shank. Proulx also fails to teach the roll pin as claimed and configured to abut the flat edge of the plunger to prevent rotation of the plunger and selectively engage an end protrusion to prevent the plunger from fully exiting the internal channel. Contrarily, Proulx teaches the plunger configured to rotate with respect to the arbor via projections 52 engaging a helical channel in the arbor.
Claim 9 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.
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 Sunil Singh (571-272-3460). 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 3722
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 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”.
3 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.”
