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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the wall surface and the contact surface have a trapezoidal shapes.” This is new matter. The written description sets forth a “substantially trapezoidal” shape. The drawings fail to support a trapezoidal shape, especially in the case of the wall of the insert mounting seat. In addition, the wall surface or contact surface having plural trapezoidal shapes is new matter. Appropriate correction required.
Claim 1 recites “an inner surface of the main body chip discharge flute” in Line 30. This is new matter because the specification, at the time of filing, fails to provide support for an inner wall of the chip flute defining the projection portion. Examiner suggests removing the term “inner” from the limitation. Appropriate correction required.
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 and 6 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 “an insert chip discharge groove open toward a tip flank of the cutting insert” in Lines 8-9. The metes and bounds of “open toward a tip flank” are not clearly delineated such that one of ordinary skill would understand the scope of the limitation. That is, it is unclear what constitutes “open toward a tip flank.” Examiner suggests referring to the axis as “rotation axis” and removal of the “open toward a tip flank of the cutting insert” language. Appropriate correction required.
Claim 1 recites the limitation “a drill rotation direction toward which the indexable drill rotates when drilling” in Lines 20-21. The phrase creates a lack of clarity by suggesting the drill rotation direction is something other than mere rotation of the drill about its rotation axis. In addition, the term “when” creates a lack of clarity as to the drilling direction if the “when” condition does not occur. Examiner suggests deletion of the “toward which the indexable drill rotates when drilling” language. Appropriate correction required.
Claim 1 recites “an inner surface of the main body chip discharge flute” in Lines 28-29. It is unclear whether there is an outer surface of the chip discharge flute as suggested by the existence of an inner wall. The scope of “inner surface” of the flute is unclear as to what makes it an inner wall. Examiner suggests removing the term “inner.” Appropriate correction required.
Claim 1 recites to both a tip surface of the drill body in which the mounting seat is formed and a tip surface of the projection wall portion. It is unclear if these surfaces are the same or if they differ. If the surfaces differ, it is not clear how the drill body has a tip surface that is not actually at the tip of the body. Appropriate correction required.
Claim 1 recites “the wall surface and the contact surface have trapezoidal shapes and a width of each of the trapezoidal shapes along the axis is gradually widened” in Lines 32-33. It is unclear what constitutes a trapezoidal shape given the recess in the wall surface is larger at one end than the other, which changes the shape of the wall surface. It is unclear if the respective surfaces have a trapezoidal shape or if the plural recitation shapes means that each surface may have more than one trapezoidal shape. Appropriate correction required.
Claim 1 recites “widths along the axis is gradually widened from an inner peripheral side to an outer peripheral side of the cutting portion” in Lines 33-34. The width dimension is not clear as to how it is to be measured and unclear as to how it is widened from one side to the other. Appropriate clarification required.
Claim 1 recites “a recess is formed along a line where the bottom surface and the wall surface intersect with each other” in Lines 35-36. The surfaces don’t intersect due to the recess. As such, the metes and bounds of the limitation are unclear as to the scope. Appropriate correction required.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 2006-167871 A) in view of Kuch (CH 492503 A) and Jaeger (US Pub. No. 2012/0003056 A1).
Nakamura discloses an indexable drill (1-3; Fig. 1) includes a drill main body (2) that has an axis, a cutting portion formed at a front end of the drill main body, a shank portion (1) formed at a rear end of the drill main body, and an insert mounting seat (seat for mounting insert 3) formed in a tip surface of the cutting portion (Fig. 1); and a cutting insert (3) detachably mounted on the insert mounting seat (Fig. 1). The cutting portion of the drill main body has a main body chip discharge flute formed on an outer periphery of the cutting portion (Figs. 1, 2). The cutting insert has an insert chip discharge groove open toward a tip flank of the cutting insert and communicating with the main body chip discharge flute (Fig. 2). A cutting edge (4) is formed in an intersecting ridgeline portion between a wall surface of the insert chip discharge groove and the tip flank (Figs. 1, 2). The insert mounting seat has a bottom surface (6) formed at a bottom of the insert mounting seat, a wall surface (wall extending up to surface detail 7 leader line touches at top of Fig. 2b) extending from the bottom surface and contacting the cutting insert (Fig. 2), and a screw hole open on the bottom surface (Fig. 2b). The cutting insert has a seating surface formed at a bottom of the cutting insert and is seated on the bottom surface of the insert mounting seat (Figs. 2a, 2c), a contact surface (9) contacting the wall surface in a drill rotation direction (Figs. 2a-2c), a projection portion (8b) formed on a drill tip side of the contact surface of the contact surface from the contact surface (Fig. 2a), and a mounting hole (Figs. 2, 4) penetrating the seating surface from the tip flank (Figs. 2, 4). A clamp screw (11) is inserted into the mounting hole is screwed into the screw hole so that the cutting insert is mounted on the insert mounting seat (Figs. 1, 2, 4). The cutting portion has a projection wall portion, which is defined by the wall surface of the insert mounting seat, an outer peripheral surface of the tip portion, and, as best understood, an inner surface of the main body chip discharge flute (Fig. 2). A tip surface of the projection wall portion (7) that is partially covered by the projection portion of the cutting insert and partially exposed in a front view of the drill (Fig. 2, in particular 2c shows the partial exposure of the projection portion).
Nakamura does not explicitly disclose a trapezoidal shape of the wall or contact surface that has a width that gradually increases from an inner periphery toward an outer periphery. Yet, a change in shape has been held to be an obvious modification. See In re Dailey, 357 F.2d 669 (CCPA 1966) (holding that the configuration of the claimed device was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed device was significant). Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the wall surface and the contact surface as trapezoidal. Id.
Kuch discloses each of the wall surface (13) and the contact surface (14) has a gradually greater width in a radial outward direction (Fig. 2). In addition, the wall and contact surfaces each have similar shapes. At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Nakamura with a gradual wall surface width and corresponding shape to the contact surface as that of the wall surface as suggested in Kuch as obvious to try or in order to increase the drive surfaces at the area with the greatest forces acting thereon. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including: "obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and combining prior art elements according to known methods to yield predictable results).
Nakamura does not explicitly disclose the recess as claimed.
Jaeger discloses in an insert mounting seat, a recess (32, 46) formed along a line where the bottom surface and the wall surface (26) intersect with each other, and the recess (32, 46) has an inner recess opening on the inner surface of the main body chip discharge flute, and an outer recess formed connected to the inner recess and opening on the outer peripheral surface of the drill main body. and an inner diameter of the outer recess is larger than an inner diameter of the inner opening recess (Fig. 2). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Nakamura with a recess as suggested in Jaeger in order to provide clearance for the corners of the cutting insert and the mounting surface, which assists with fit and manufacturing of the components, as is well-known in the art, the fact of which examiner takes official notice.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al. (JP 2005-014165 A) in view of Nakamura (JP 2006-167871 A) and Kuch (CH 492503 A) and Jaeger (US Pub. No. 2012/0003056 A1).
(Claim 1) Okumura et al. (“Okumura”) discloses an indexable drill (A; Fig. 1) includes a drill main body (4) that has an axis, a cutting portion formed at a tip end of the drill main body, a shank portion formed at a rear end opposite to the tip end of the drill main body, and an insert mounting seat formed in a tip surface of the cutting portion (Fig. 1); and a cutting insert (3) detachably mounted on the insert mounting seat (Fig. 1). The cutting portion of the drill main body has a main body chip discharge flute (21) open on an outer periphery of the cutting portion (Fig, 1). The cutting insert has an insert chip discharge groove (20) open toward a tip flank of the cutting insert and communicating with the main body chip discharge flute (Figs. 1-3). A cutting edge (1) is formed in an intersecting ridgeline portion between a wall surface of the insert chip discharge groove and the tip flank (Figs. 1, 2). The insert mounting seat has a bottom surface (11) formed at a bottom of the insert mounting seat (Figs. 4, 5), a wall surface (12) extending from the bottom surface to come into contact with the cutting insert (Figs. 1, 4), and a screw hole (14) open on the bottom surface (Fig. 5). The cutting insert has a seating surface (6) formed at a bottom of the cutting insert and is seated on the bottom surface of the insert mounting seat while facing toward the rear end side of the drill main body (Fig. 1), a contact surface (7) contacting the wall surface in a drill rotation direction (Figs. 1-5), a projection portion (5) formed on a drill tip side of the contact surface and projecting from the contact surface (Fig. 3), and a mounting hole (13) penetrating the seating surface from the tip flank (Figs. 1-3), and a clamp screw (9) inserted into the mounting hole is screwed into the screw hole so that the cutting insert is mounted on the insert mounting seat (Fig. 1). The cutting portion has a projection wall portion, which defined by the wall surface of the insert mounting seat, an outer peripheral surface of the cutting portion, and an inner surface of the main body chip discharge flute (annotated Fig. 4). It is not explicitly disclosed whether, in a front view of the drill, a tip surface (surface in which upper detail 7 leader line in Fig. 2b contacts and step portion thereto having coolant outlet) of the projection wall portion (7) is partially covered by the projection portion of the cutting insert, and is partially exposed (Fig. 2).
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Nakamura discloses, a projection wall portion (7) that is partially covered by the projection portion of the cutting insert and partially exposed in a front view of the drill (Fig. 2). Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Okumura with a tip surface partially exposed and partially covered as suggested by Nakamura in order to provide additional support on the drill body as is well-known in the art the fact of which examiner takes official notice thereof and/or decrease manufacturing cost of the drill head, which is usually made of a harder, more costly material than the drill body as is well-known in the art the fact of which examiner takes official notice thereof. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including use of known technique to improve similar devices in the same way); and In re Gazda, 219 F.2d 449 (CCPA 1955) (holding the reversal of working parts to be an obvious modification).
Okumura discloses a trapezoidal shape of the wall (Fig. 4) that has a width that gradually increases from an inner periphery toward an outer periphery. Yet, Okumura does not explicitly disclose each of the wall surface and the contact surface gradually becoming grater in width with matching shapes.
Kuch discloses each of the wall surface (13) and the contact surface (14) has a gradually greater width in a radial outward direction (Fig. 2). In addition, the wall and contact surfaces each have similar shapes. At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Okumura with a gradual wall surface width and corresponding shape to the contact surface as that of the wall surface as suggested in Kuch as obvious to try or in order to increase the drive surfaces at the area with the greatest forces acting thereon. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including: "obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and combining prior art elements according to known methods to yield predictable results).
Okumura does not explicitly disclose the recess as claimed.
Jaeger discloses in an insert mounting seat, a recess (32, 46) formed along a line where the bottom surface and the wall surface (26) intersect with each other, and the recess (32, 46) has an inner recess opening on the inner surface of the main body chip discharge flute, and an outer recess formed connected to the inner recess and opening on the outer peripheral surface of the drill main body. and an inner diameter of the outer recess is larger than an inner diameter of the inner opening recess (Fig. 2). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Okumura with a recess as suggested in Jaeger in order to provide clearance for the corners of the cutting insert and the mounting surface, which assists with fit and manufacturing of the components, as is well-known in the art, the fact of which examiner takes official notice.
(Claim 2) The projection portion (Okumura 5) has a side surface adjacent to the tip flank facing toward a direction opposite to the drill rotation direction (Okumura Figs. 1-3).
(Claim 3) The seating surface of the cutting insert has a shaft portion (Okumura 2) formed around the axis (Okumura Fig. 2), and the other (of the seating surface or the mounting seat) has a hole portion formed around the axis into which the shaft portion is fitted (Okumura Figs. 1, 4, 5). The hole portion is open to the main body chip discharge flute or the insert chip discharge groove (Okumura Figs. 1, 4, 5).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al. (JP 2005-014165 A) in view of Nakamura (JP 2006-167871 A) and Kuch (CH 492503 A) and Jaeger (US Pub. No. 2012/0003056 A1) further in view of Son et al. (US Patent No. 10,099,298 B2).
Okumura does not explicitly disclose the intersecting ridgeline portion between the wall surface and an inner surface of the main body chip discharge flute being chamfered.
Son et al. (“Son”) discloses an intersecting ridgeline portion between the wall surface and an inner surface of the main body chip discharge flute being chamfered (Figs. 1, 10). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the drill disclosed in Okumura with a chamfered intersecting ridgeline portion between the wall surface and an inner surface as suggested by Son in order to provide clearance between parts to assist with fit and manufacturing of the components.
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered but they are not persuasive. Applicant argues that the trapezoidal shapes are shown as identified in the annotated Figure 21 on Page 6 of the arguments. Applicant also alleges that the indefiniteness rejection, relative to the tip surface of the body and the tip surface of the projection wall portion, is erroneous because the claim scope is clear. Turning to the prior art rejection, Applicant argues that the prior art fails to disclose the recess having differing diameters as claimed. Sdditionally, Applicant contends that the Kuch reference fails to disclose trapezoidal shapes. Examiner disagrees.
As indicated in the interview, examiner pointed out that surface 6b in Figure 21 has a cutout in it due to the recess. The recess cutout results in the surface 6b not being of trapezoidal shape. With regard to the indefiniteness rejection of respective tip surfaces, the rejection has been maintained due to the lack of clarity concerning the recitation of a tip surface within a tip surface. The argument that “the tip surface belongs to all of the projection wall portion, the mounting seat, and the drill body” appears to back up examiner’s concerns. (Applicant Remarks at Page 6).
The requirement of a differing diameters is met by the prior art under two interpretations. First, the inner recess is of smaller diameter than the outer recess with respect to the width of the recess.1 Second, the recess portion is identified as details 32 and 46 in Jaeger, and recess portion 46 is of smaller diameter than that of recess 32 at its radially outer extent. Thus, the prior art reads upon the claimed invention.
With regard to the Kuch reference, it is not relied upon for the trapezoidal shape. The Kuch reference is added merely to show that the gradual width increase exists in the prior art. However, it would appear this is unnecessary due to the recitation that the width gradually changes in a direction along the axis. By a trapezoid’s shape, regardless of orientation, the width would change in the manner claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See, e.g., Naruge et al. (JP 2016-193461 A); and Harif (US Patent No. 9,156,095 B2).
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 RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
1 See https://www.dictionary.com/browse/diameter (last visited January 28, 2026).