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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(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 1-11 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in lines 13-14 “the head portion has a cutting edge with at least two interconnected portions”. However, it is unclear how exactly these at least two portions are being interconnected. Interconnected to each other? Each interconnected to the cutting edge? Further clarification is needed.
Claim 1 recites in lines 15-16 “a first portion of the at least two interconnected portions is arranged at a predetermined angle to a second portion of the at least two interconnected portions”. However, it is unclear where exactly this “predetermined angle” is being taken from. How is this angle “predetermined”? How is this angle defined? Further clarification is needed.
Claim 8 recites in line 5 that “the first portion is arranged at a first predefined angle to the second portion”. However, since claim 1 already sets forth that the first portion is arranged at a first predetermined angle to the second angle, it is unclear if the first predetermined angle of claim 1, the same as the first predetermined angle of claim 8, or not. Further clarification is needed.
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.
Claim(s) 1, 8, 10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 10 2019 218 421 (hereafter—DE’421--).
In regards to claim 1, DE’421 discloses a drill (100), having a longitudinal central axis (210) and comprising: a clamping portion (110) configured for a rotationally fixed connection to a tool holder; a shaft portion (130); a cutting portion (portion that has cutting edges 214 and 216) that forms a head portion (200) on an end of the drill facing away from the clamping portion; and a centering portion (250) arranged on the head portion, wherein the clamping portion (110) is connected via the shaft portion (130) to the cutting portion (portion that has cutting edges 214 and 216); wherein the head portion (200) has a cutting edge (214 or 216) with at least two interconnected portions (see annotated Figure 3 below), wherein a first portion (158; 203) of the at least two interconnected portions is arranged at a predefined angle (θ1 as annotated in Figure 3 below) to a second portion (see annotated Figure 3 below) of the at least two interconnected portions, wherein the first portion has a first diameter (D1 as annotated in Figure 3 below) and the second portion has a second diameter (D2 as annotated in Figure 3 below), the second diameter (106) is being smaller than the first diameter (D1), and wherein the first portion is arranged facing the clamping portion (in the same way as presented by Applicant), and the second portion is arranged facing the centering portion (in the same way as presented by Applicant).
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In regards to claim 8, DE’421 discloses the drill according to claim 1, DE’421 also discloses that the cutting edge (214 or 216) comprises the first portion (see annotated Figure 3 above), the second portion (see annotated Figure 3 above) and a third portion (see annotated Figure 3 above) of the at least two interconnected portions, and wherein the first portion (see annotated Figure 3 above) is arranged at a first predefined angle (θ1 as in annotated Figure 3 above) to the second portion and the third portion is arranged at a second predefined angle (θ2 as in annotated Figure 3 above) to the second portion.
In regards to claim 10, DE’421 discloses the drill according to claim 1, DE’421 also discloses that a maximum outer diameter of the head portion is greater than an outer diameter of the shaft portion (130) (see Figure 1).
In regards to claim 11, DE’421 discloses the drill according to claim 1, DE’421 also discloses that the drill is a wood drill (see abstract of Machine Translation provided by Applicant).
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.
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2019 218 421 (hereafter—DE’421--) as applied to claim 1 above.
In regards to claim 2, DE’421 discloses the drill according to claim 1, DE’421 also discloses cutting portion (portion that has cutting edges 214 and 216) comprises a first material and the head portion (200) comprises a second material.
Although, there is a suggestion in DE’421 that the cutting portion and head portion materials are different (see annotation on Machine Translation attached) this is not explicitly disclosed.
Nevertheless, it would have been obvious to a person having ordinary skill in the art, at the time Applicant’s invention was filed to have the cutting portion’s first material be different than the head portion’s second material be different, since it has been held that the selection of a known material is based on its suitability for its intended use. See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
In regards to claim 3, DE’421 as modified discloses the drill according to claim 2, DE’421 as modified also discloses that the second material comprises high-speed steel, high-strength carbon steel, and/or carbide (see annotation on Machine Translation attached).
In regards to claim 4, DE’421 discloses the drill according to claim 1, DE’421 also discloses the head portion (200) is fixed to the cutting portion, but DE’421 is silent as to how the head portion is fixed to the cutting portion. However, the recitation that the head portion (150) is fixed to the cutting portion (140) via a weld joint, is considered to be a product by process limitation. In product-by-process claims, "once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference." MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the "patentability of a product does not depend on its method of production." In re Thorpe, 227 USPQ 964,966 (Fed. Cir.1985).
In regards to claim 5, DE’421 discloses the drill according to claim 1, DE’421 also discloses a predefined circumferential distance (in the same way as presented by Applicant) is formed defined between an outer circumference (in the same way as presented by Applicant) of the centering portion (250) and an outer circumference (in the same way as presented by Applicant) of the head portion (200), and a ratio of a maximum outer diameter (in the same way as presented by Applicant) of the head portion (200) to the predefined circumferential distance (in the same way as presented by Applicant).
However, DE’421 fails to disclose that the ratio is smaller than 3.5.
Nevertheless, it would have been obvious to one having ordinary skill in the art at the time of the invention was filed to provide the ratio of the maximum outer diameter to the predetermined circumferential distance as desired, such as smaller than 3.5, since it has been held that discovering an optimum value of a result effective variable (variable that will depend on the type of material being machined and size of workpiece being machined) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In regards to claim 6, DE’421 as discloses the drill according to claim 1, DE’421 also discloses that the first portion has a height (B) defined perpendicular to the longitudinal central axis (210), the height being in a range of from 1 mm to 10 mm.
However, DE’421 fails to disclose that the range 1.5 mm to 4 mm
Nevertheless, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, since the claimed ranges of 1.5 mm to 4mm which lie inside the range of DE’421 of 1 mm to 10 mm, it would have been obvious to one having ordinary skill in the art at the time the applicant’s invention was filed to have the range be 1.5 mm to 4 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routing skill in the art. In re Aller, 105 USPQ 233
In regards to claim 7, DE’421 as discloses the drill according to claim 1, DE’421 also discloses that the head portion (200) has a maximum outer diameter (Rkx2).
However, DE’421 fails to disclose that the value of the outer diameter is of at least 17 mm.
Nevertheless, it would have been obvious to one having ordinary skill in the art at the time of the invention was filed to provide the value of the outer diameter as desired, such as of at least 17 mm, since it has been held that discovering an optimum value of a result effective variable (variable that will depend on the size of workpiece being machined) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2019 218 421 (hereafter—DE’421--) as applied to claim 1 above in view of Wang US 2020/0094331.
In regards to claim 9, DE’421 discloses the drill according to claim 1, DE’421 also discloses that the cutting edge (214 or 216) comprises a first step (280), which is arranged between the first and second portions (see Figure 7), and a second step (282), which is arranged between the first and third portions (see Figure 7), wherein and the first step (280) has a first length (H) aligned along the longitudinal central axis (210) and the second step (Figure 7) has a second length (H) aligned along the longitudinal central axis (210).
However, DE’421 fails to explicitly disclose that the first length is being smaller than the second length.
Wand teaches in Figure 3 a cutting edge comprising a first step, which is arranged between first and second portions (see Figure 3), and a second step, which is arranged between first and third portions (see Figure 3), wherein and the first step has a first length (l1) aligned along a longitudinal central axis and the second step (Figure 3) has a second length (l2) aligned along the longitudinal central axis. Wand teaches in paragraph [0069] that the lengths can be designed according to the required type and property of drilling.
Thus, it would have been obvious to a person of ordinary skill in the art to try having the first length be smaller than the second length based on the teachings of Wang depending on the required type and property of drilling, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp (i.e. other known options such as having the same length or the first length being larger than the second length).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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