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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/27/2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 5-6 “wherein the base body formed of…” should be read –wherein the base body is formed of…--. Appropriate correction is required.
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 1-3, 6, 20, 24-26 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.
Claims 1 and 24, in the amendment, the language “its” is unclear whether the “its” refers to the disk-shaped cutting tool or something else since this claim body recites many parts.
Claims 1 and 24, in the amendment, the language “as far as the geometric properties are concerned the disc nit being flat…up to 10%” is unclear and has many issue.
First, the phrase “as far as” has many means (see a dictionary definition). Therefore, the reader may be unsure about the meaning of the language of the claim, and additionally the scope of the claim is often unclear. Avoiding the confusion and making the claim more clearer, the phrase “as far as” should be suggested to replace for “such that…” or “such that the geometric of …is not flat” or any equivalent language.
Second, “the disc” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether it refers a new disc or inherently refers to previously introduced the disk-shaped cutting tool, and
Third, the language “up to 10%” is unclear since it is not defined a lower limit. If an art having an impact additionally supporting the widening of the cutting gap 0% (not change), it meets this limitation, right (since it states “up to 10%”)?
Similarly the last amendment, the language “as far as”…”up to 5%” are unclear. See the discussions above. Claim 24 has the same issue.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claims 1 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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 1-3, 6, 20, 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Paolo (EP 3222388) and as evidenced by Mc Kenna (US 3271911).
Regarding claim 1, as best understood, Paolo shows a disk-shaped cutting tool (Figure 10 and see Para. 1 “cutting”), for cutting of a stationary clamped workpiece with radial advance of the disk-shaped cutting tool with respect to an axis of rotation whereby the clamped workpiece is elongated orthogonally to a radial advance direction (this is intended use statement and this tool is able to be performed it), the disk-shaped cutting tool comprising:
a base body (a layer 200, Figure 10) having a pair of flanks (202-203) and an outer circumferential region (where the cutting edge is shown at the reference “200”, Figure 10), wherein the base body is formed of a composite material (see the title “composite” including resin and abrasive grains (see Para. 56 “abrasive grains … resin”), the base body extending from the outer circumferential region toward a radial center of the base body (see Figure 10), and the abrasive grains providing a cutting edge on an outer circumferential surface of the base body (see the peripheral edge formed all layers in Figure 10);
a grinding and/or polishing agent (see the abrading layers 202-203, see Para. 61 discusses the grain size of the layer 202 is substantially smaller than 30 mesh that is for polishing or grinding) layered in an axial direction on at least one flank of the pair of flanks of the base body (see Figure 10),
the grinding and/or polishing agent thickening the at least one flank and producing one or more gradations on the at least one flank between layers of the grinding and/or polishing agent and the base body (see Figure 10); and
an axial fastening opening (260, Figure 10) positioned at the radial center, wherein the disk-shaped cutting tool is formed for rotating the base body, cutting of the workpiece at the outer circumferential region, and grinding and/or polishing of the workpiece at the at least one flank (this blade having all structures to perform this function);
wherein the abrasive grains are non-uniformly distributed in the base body (see the grains, at the zoom-in in Figure 11, are non-uniformly distributed), and wherein the cutting of the workpiece at the outer circumferential region defines a cutting gap (at least gap as the thickness of the peripheral edge);
wherein the non-uniform distribution of the abrasive grains causes an axial deflection in the base body within the cutting gap in the axial direction such that the grinding and/or polishing agent contact a surface of the workpiece defined by the cutting gap (see the abstract “resilient yielding material” and see Paras. 18-19, Para. 14 discusses “lacking in any kind of flexibility” that leads to transmission of annoying vibrations that are damaging and fatiguing to the upper limbs of the user and Para. 35 “flexible”, all that means this invention is made the blade to be slightly flexible),
wherein the disk-shaped cutting tool with a combination of geometric and kinematic properties (Figure 10) is leading to a defined deflection, “as far as the geometric properties are concerned the disc not being flat” (see the Figure 10, the blade 20 is not flat).
However, Paolo does not discuss whether the widening of the cutting gap up to 10% of the width of the cutting tool or not and flexural capable of axial deflection of up to 5% of a width of the disk-shaped cutting tool in both axial directions or not.
As the applicant had not pointed out why the range up to 10% and the range up to 5% above should be criticality.
Therefore, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make the flexible cutting tool (blade) to be between the claimed ranges (for widening of the cutting gap up to 10% of the width of the cutting tool and flexural capable of axial deflection of up to 5% of a width of the disk-shaped cutting tool in both axial directions) because discovering an optimum value above would have been a mere design consideration based on how much material to be removed. Such a modification would have involved only routine skill in the art to accommodate the aforementioned requirement depending on the characteristics of the machines. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art depending on the workpiece or particle sizes to be cut or grinded. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp.
Also, these are known results effective variables. If a manufacturer wished to design a cutting tool (blade) having greatly flexible, it removes much material of a workpiece during cutting, may not be smooth cut, and it requires more power to run the blade, and
if the manufacturer wished to design the cutting tool (blade) having slightly flexible, it will remove less material of the workpiece during cutting, may be smooth or fine cut, and it requires less power to run the blade. Both blade designs can prevent to transmission of annoying vibrations that are damaging the blade and fatiguing to the upper limbs of the user as discussed above.
Given the reasons above, almost any number of ranges would be considered obvious.
Regarding claim 2, Paolo shows that the disk-shaped cutting tool has a defined flexibility and a defined impact (as it is written, it is unclear how much it can be flexed and impacted, therefore, see the discussion above and this cutting tool can be slightly flexibility in some degrees during operating).
Regarding claim 3, Paolo shows that the at least one flank is thickened extending axially away from the base body in comparison to a material thickness in a radially outer peripheral region (see Figure 10).
Regarding claim 6, Paolo shows that the disk-shaped cutting tool comprises at least one wear indicator (as this written, it is unclear what type of the wear indicator, therefore, the abrasive materials of the layers 202-203 are also considered as a wear indicator while it is shown the worn).
Regarding claim 20, Paolo shows that the grinding and/or polishing agents is formed of fine grains having a smaller grain size than the abrasive grains (see Para. 59 “The abrasive material of the layer of abrasive material 21 has a grain size …between 120 and 12 mesh” and Para. 61 “the grain size of the abrasive material of a front surface layer, …30 and 12 mesh”).
Regarding claim 24, as best understood, Paolo shows all of the limitations as stated in claim 1 and other dependent claims above.
Regarding claim 25, Paolo shows that the grinding and/or polishing agent also grinds and/or polishes the workpiece at the flank in the radial advance direction (the blade 20 in Figure 10 is able to perform it since has all claimed structures. See MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent").
Regarding claim 26, Paolo shows all of limitations as stated in claim 20 above.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new art, Paolo above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 7/14/2026
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