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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-4) in the reply filed on July 17, 2026 is acknowledged.
Claims 5-8 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: cutting accessory in claim 1; engagement member in claim 1; and second engagement member in claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 4 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 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 4 recites “a second engagement member” in Line 2. Yet, there isn’t recitation to a first engagement member. While there is recitation to an engagement member in claim 1, examiner suggests reciting to “a first” engagement member in claim 1 if using numerical designations to separate engagement members. Appropriate correction required.
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.
(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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyanaga (JP 04075813 A).
(Claim 1) Miyanaga discloses a cutting tool (9, 1-3) that includes: a cutting accessory (35, 65) defining an opening (Fig. 1) and a channel (11) formed on an inner surface of the cutting accessory; and an arbor assembly (1-3). The arbor assembly includes a shank (1, 2) having a first end (3) received in the opening of the cutting accessory (Figs. 4-7) and a second end (2) configured to be coupled to a power tool, a body (spring) movable relative to the shank, and an engagement member (7) movable with the body relative to the shank. The engagement member is configured to selectively engage the channel of the cutting accessory to releasably secure the cutting accessory to the shank (Figs. 1-7).
(Claim 2) The engagement member (7) is moved radially outward to engage (Fig. 5) the channel of the cutting accessory and is moved radially inward (Fig. 4) to disengage the channel of the cutting accessory.
(Claim 3) The body is movable axially along the shank (Figs. 4, 5). The engagement member (7) moves axially with the body relative to the shank (Figs. 4, 5).
Claims 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boske (US Patent No. 10,150,169 B2).
(Claim 1) Boske discloses a cutting tool (Figs. 3-7; 55, 3, 5) that includes: a cutting accessory (55) defining an opening (9) and a channel (59) formed on an inner surface of the cutting accessory; and an arbor assembly (5). The arbor assembly includes a shank having a first end (5b) received in the opening of the cutting accessory and a second end (5a) configured to be coupled to a power tool, a body (25) movable relative to the shank, and an engagement member (27) movable with the body relative to the shank. The engagement member (27) is configured to selectively engage the channel of the cutting accessory to releasably secure the cutting accessory to the shank (Fig. 4).
(Claim 2) The engagement member (27) is moved radially outward to engage the channel of the cutting accessory and is moved radially inward to disengage the channel of the cutting accessory (Fig. 4).
(Claim 4) The arbor assembly includes a second engagement member (51) that selectively engages a pilot bit (25) to releasably secure the pilot bit to the shank (Fig. 1; Col. 10, Lines 54-60).
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pamatmat (US Pub. No. 2014/0126973 A1).
(Claim 1) Pamatmat discloses a cutting tool (100, 200, 300, 400; 35, 65) that includes: a cutting accessory (35, 65) defining an opening (Figs. 5, 8; ¶¶ 0036, 0043, 0055-0056) and a channel (Fig. 8 - threads or interior of cup/saw) formed on an inner surface of the cutting accessory; and an arbor assembly (100, 200, 300, 400). The arbor assembly includes a shank (e.g., 2) having a first end received in the opening of the cutting accessory (e.g., Fig. 5) and a second end configured to be coupled to a power tool, a body (e.g., 23) movable relative to the shank, and an engagement member (11) movable with the body relative to the shank. The engagement member is configured to selectively engage the channel of the cutting accessory to releasably secure the cutting accessory to the shank (Figs. 5, 8).
(Claim 2) The engagement member is moved radially outward to engage the channel of the cutting accessory and is moved radially inward to disengage the channel of the cutting accessory (Figs. 3-5, 8-13).
(Claim 3) The body is movable axially along the shank, and the engagement member moves axially with the body relative to the shank (Figs. 3-5, 11-13).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miyanaga (JP 04075813 A) in view of Boske (US Patent No. 10,150,169 B2).
Miyanaga does not explicitly disclose a pilot bit or means to retain said pilot bit.
Boske discloses a known manner for adding a pilot bit to an arbor assembly, which includes a second engagement member (51) that selectively engages a pilot bit (25) to releasably secure the pilot bit to the shank (Fig. 1; Col. 10, Lines 54-60). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the arbor assembly discloses in Miyanaga with the pilot bit and second engagement member as suggested by Boske in order to add a centering pilot drill guide for the hole saw. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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