Detailed Action1
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 1-5 and 9 have priority date of 05/28/2025. Claims 6-7 have the priority date of 04/24/2024. Claims 8 and 10-12 have 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.
Claim 8 is 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 8 recites 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 a lateral force on the plunger via the detent spring.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2025/0196233 (“Proulx”).
Regarding claim 1, Proulx teaches an arbor for a hole saw (fig. 1, ¶ [0062]), comprising: a shank (46) comprising a drill connection end (41), a threaded end (42b) with a chamber opening, and an internal chamber (46a/46b) (figs. 1-3, ¶ [0065]); a spring (47) situated within the internal chamber (figs. 1-3, ¶ [0065]); and a plunger (30 & 43) configured to slide through the chamber opening and within the chamber (figs. 1-4, ¶ [0066]); and wherein when the plunger is not under pressure, the spring extends, ejecting a portion of 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.
Claim 1 also recites a detent spring and ball bearing, wherein when the plunger is under pressure, the plunger causes the ball bearing to compress the detent spring, thereby allowing the plunger to compress the spring within the internal chamber. Proulx teaches a detent spring 53 that forces a protrusion 58 into the internal channel to engage with the portion 43 of the plunger so that in order to keep compressing spring 47 the portion 43 of plunger must compress the detent spring by retracting protrusion 58 (figs. 3-4, ¶ [0068]-[0069]).
While the protrusion 58 is not a ball, Proulx teaches that it is known to use a ball biased by a spring for a similar function (see elements 680 & 684 of fig. 8B & ¶ [0100]). Thus, it would be predictable and obvious to replace protrusion 58 with a ball.
While the above modification teaches the ball engaging the plunger, Proulx fails to explicitly teach the plunger comprising the detent spring and ball. However, mere reversal of parts is obvious (see MPEP 2144.04(VI)(A)). In this case, the detent spring and ball are connected to an outer cylindrical sleeve of the arbor so that the ball is biased inward into the internal chamber to engage with a surface of portion 43 of the plunger. Merely reversing this, i.e. providing the detent spring and ball connected to portion 43 of the plunger so that the ball is biased outward toward the cylindrical sleeve of the arbor and configured to contact a surface/protrusion of the cylindrical sleeve defining the internal chamber, is obvious because the reversal will provide the same function as the original (i.e. for a portion of the plunger, i.e. the biased ball, to engage a protrusion/surface of the cylindrical sleeve that allows passage of the plunger upon retraction of the biased ball).
Claim 2 recites the plunger further comprises a drill bit receiving slot. The plunger, which is interpreted as comprising elements 30 & 43 comprises a drill bit receiving slot 43a configured to receive and secure a drill bit 30 (fig. 3, ¶ [0066]).
Claim 3 recites the plunger further comprises a flat edge to engage with a roll pin. The examiner notes that the roll pin is not a positively recited element, thus the broadest reasonable interpretation of this claim includes the plunger comprising a flat edge that is capable of engaging with a roll pin.
Proulx teaches that the drill bit can be secured to the drill bit carrier via a set screw that engages a cut-out portion of the shank of the drill bit having a flat surface (fig. 6B, ¶ [0097]). Since the drill bit is releasable (see ¶ [0097]), the drill bit and set screw are capable of being removed so that a roll pin is capable of being inserted into the set screw hole to engage with the flat surface of the drill bit (wherein the plunger is interpreted as including the drill bit).
Regarding claim 4, Proulx further teaches a lock ring (48) (figs. 3-4, ¶ [0070]-[0071], wherein ring 48 locks the plunger in the retracted position).
Claim 5 recites the lock ring comprises one or more hole saw coupling protrusions (72) (fig. 2-3, ¶ [0072]).
Claims 6, 8, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 6,375,396 (“Fangmann”) in view of USPGPub No. 2011/0006097 (“Ferrier”).
Regarding claim 6, Fangmann teaches an arbor (12) for a hole saw (figs. 1-2, col. 1 lines48-55), comprising: a shank comprising an internal chamber (18) (fig. 2); a spring (26) situated within the internal chamber (fig. 2, col. 1 lines 56-59); a plunger (16) configured to slide through a chamber opening and within the internal chamber (figs. 1-2, col. 2 lines 1-9 & 20-26), the plunger comprising a flat edge (44) along a portion of its length (figs. 3-5, col. 2 lines 10-12); wherein when the plunger is under pressure, the plunger compresses the spring within the internal chamber (fig. 2, col. 2 lines 1-9); and wherein when the plunger is not under pressure, the spring extends, ejecting at least a portion of the plunger from within the internal chamber (fig. 2, col. 2 lines 19-26).
Fangmann fails to explicitly teach a roll pin configured to pass through the shank and internal chamber, the roll pin configured to abut the flat edge of the plunger to prevent rotation of the plunger and the roll pin configured to selectively engage an end protrusion to prevent the plunger from fully exiting the internal chamber. However, this would have been obvious in view of Ferrier.
Ferrier is also directed to a tool having a first generally cylindrical component 16 rotationally fixed within the internal chamber of another component 14 (figs. 1-4, ¶ [0024]). Roll pin 34 extends through component 14 and the internal chamber and abuts a flat face 30 of component 16 to prevent rotation of component 16 but allow the component to slide within the chamber (figs. 1 & 3-4, ¶ [0026]). Component 16 also has a protrusion 32 to prevent component 16 from exiting the chamber (fig. 1, ¶ [0026]).
In this case, each of Fangmann and Ferrier teach a tool having a first generally cylindrical component within the internal chamber of another component, wherein the component can slide in the chamber but is prevented from rotating. While Fangmann teaches using a set screw 50, Ferrier teaches a known alternative way as detailed above. Thus, it would be obvious to substitute the set screw of Fangmann with a roll pin configured to extend through the shank and internal chamber so that the roll pin abuts against the flat face 44 of the plunger of Fangmann, and wherein the plunger has a protrusion/shoulder at the end thereof configured to engage the roll pin to prevent the plunger 16 from exiting the arbor.
Claim 8 recites the plunger comprises an indentation to receive a ball bearing, the ball bearing applying lateral force on the plunger via a detent spring. The plunger can be interpreted as including cutter 14 (since elements 16 and 14 are coupled), which comprises notch 36 (fig. 2, col. 1 lines 64-67). This notch can be interpreted as the indentation, which is structurally capable of receiving a ball bearing that applies a lateral force thereto by inserting the ball bearing and a detent spring within opening 32 and fixing them therein via a cap or set screw.
Claim 10 recites the plunger comprises one or more notches. Flat surface 44 is part of a notch, especially with the end protrusion detailed in the rejection to claim 6 above. Notch 36 can also be interpreted as the one or more notches since the plunger can be interpreted as including cutter 14 (since elements 16 and 14 are coupled).
Claim 12 recites a release pin configured to selectively engage with the one or more notches of the plunger. The plunger is interpreted as including cutting portion 14 (since this is coupled to component 16). Portion 14 of the plunger comprises a notch 36 that pin 34 engages (see fig. 2). Screw 34 can be interpreted as a pin since it is a cylindrical component used for fastening. In addition, this pin 34 can release element 14 from the rest of arbor when loosened.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,062,748 (“Kishida”).
Regarding claim 6, Kishida teaches an arbor for a hole saw (col. 1 lines 6-11), comprising: a shank (1) comprising an internal chamber (fig. 1); a spring (7) situated within the internal chamber (fig. 1, col. 2 lines 53-55); a plunger (4 & 15) configured to slide through a chamber opening and within the internal chamber (figs. 1, 3, & 5, col. 3-4 lines 53-2), the plunger comprising a flat edge along a portion of its length (figs. 3 & 5, wherein depressions 8 of disc 5 have flat edges since the depressions form a generally rectangular shape); 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 at least a portion of the plunger from within the internal chamber (fig. 5, col. 3-4 lines 53-2). Assuming arguendo that it is unclear if the depressions 8 have flat edges, this would be an obvious design choice (see MPEP 2144.04(IV)(B)).
Kishida further teaches a … pin (9) configured to pass through the shank and internal chamber (fig. 1, col. 2 lines 56-61, wherein pin 9 passes through a portion of the shank and partially through the internal chamber), the … pin configured to abut the flat edge of the plunger (fig. 1, i.e. edges of the depressions 8 of disc 5) to prevent rotation of the plunger and the roll pin configured to selectively engage an end protrusion to prevent the plunger from fully exiting the internal chamber (fig. 1, col. 2 lines 56-61, wherein the end protrusion is the top of disc 5).
Kishida fails to explicitly teach the pin being a roll pin. However, the examiner is taking Official Notice that roll pins are a well-known type of pin for securing parts together or engaging parts of an assembly. In addition, since roll pins are hollow and configured to contract when inserted into a hole that is slightly smaller than the diameter of the pin, it would be predictable to fix a roll pin in the bore of Kishida that comprises pin 9. Thus, it would be obvious to substitute the pin 9 of Kishida with a roll pin.
Regarding claim 7, 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).
Allowable Subject Matter
Claims 9 and 11 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.
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.”
