Detailed Action1
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 3, 2025 has been entered.
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.
Claim Objections
Claim 1 is objected to because of an informality: “the first end” should be changed to “the front end” in the sixth to last line. Appropriate correction is required.
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.
Claims 1-2, 4-10, and 15 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 applicant regards as the invention.
Claim 1 recites the first cutting blade comprises a cutting edge designed straight-lined at least in sections, which is oriented parallel to the surface line, which creates enveloping of the tool shaft. There is insufficient antecedent basis for “the surface line”. In addition, this limitation is awkwardly written (e.g. with back to back clauses beginning with “which”) so as to be confusing. For example, is it the cutting edge or surface line that creates the enveloping? For purposes of examination, this limitation will be interpreted as: the first cutting blade comprising a cutting edge having a straight-lined section, the cutting edge being oriented parallel to a surface line that creates enveloping of the tool shaft.
Claims 2, 4-10, and 15 are rejected for depending from claim 1.
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 1-2, 4, 6-10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2006058840-A1 (“Klaus”) in view of Chamfer, Wikipedia, screenshot taken on October 25, 2019, available at https://en.wikipedia.org/wiki/Chamfer (“NPL”) and USPGPub No. 2020/0230724 (“Nakayama”).
Claim 1 recites a tool for creating back tapers at an internal or external toothing of a gear, wherein the tool rotating during use about a tool axis of rotation. Klaus teaches a cutting tool that is capable of rotating during use about a tool axis (fig. 1, page 1, wherein all references to the Klaus specification refer to the machine translation submitted herewith). While Klaus doesn’t teach to create back tapers at toothing of a gear, the cutting tool of Klaus merely has to be capable of this intended use. In this case, since the cutting tool of Klaus has cutting blades that extend radially outward from an outer circumferential surface, and, have cutting edges 4 extending in the axial direction (figs. 1 & 4, page 2), the cutting tool is capable of forming back tapers at toothing of a gear.
Klaus further teaches the tool comprising a tool shaft (fig. 2, i.e. cylindrical portion of head 1 that includes recesses 2 and, optionally, the larger diameter cylindrical portion adjacent thereto) extending along the tool axis of rotation from a front end (7) to a fastening end (i.e. end opposite of front end 7) (fig. 2), a fastening section for fastening the tool to a tool drive of a machine tool, the fastening section extending outwardly from the fastening end of the tool shaft (fig. 1, page 1, wherein a clamping section extends from the fastening end of the tool shaft to fasten the tool to a machine tool), a first cutting blade (figs. 1-4, i.e. blade 3 at front end of the tool shaft), which is arranged at a first fastening position provided at the circumference of the tool shaft (figs. 1-4), wherein the first cutting blade comprises a cutting edge (4), which is oriented parallel to the surface line, which creates enveloping of the tool shaft (figs. 1-4, pages 2-3, wherein, since the cutting edges are parallel to each other and aligned in the axial direction, the cutting edges 4 are also parallel to a line on the outer circumferential surface of the tool shaft that at least partially overlaps the outer circumferential surface when rotated around the rotation axis, i.e. surface line which creates enveloping of the tool shaft), and a second cutting blade (figs. 1-4, i.e. rear blade 3 aligned with the front blade), which is arranged at a second fastening position provided at the circumference of the tool shaft (figs. 1-4), wherein the first cutting blade and the second cutting blade are aligned in a longitudinal direction of the tool shaft, and wherein the second cutting blade is arranged spaced apart from the first cutting blade in the longitudinal direction of the tool shaft (figs. 1 & 4, pages 2-3).
Klaus fails to explicitly teach the diameter of the tool shaft measured in a plane oriented normal to the tool axis of rotation increases starting from a first diameter at the first end, in a direction directed towards the fastening end. However, this is obvious in view of NPL.
NPL teaches that chamfers are frequently used in machining in place of sharp corners to reduce the likelihood of injury and to prevent damage to the edges or to other components (pages 1-3, wherein all references to NPL refer to the document submitted with the Office action mailed on January 28, 2025).
In this case, Klaus teaches a tool shaft having an outer edge at the front end. One of skill in the art appreciates that it is well known to utilize rounded or chamfered edges instead of right angled edges. NPL teaches one of skill in the art that it is well known to use chamfers instead of sharp corners, and using chamfers can prevent injury and can prevent damage to the corners or other components that contact the corners. Thus, it would be obvious to provide a chamfer at the front edge of the tool shaft to reduce the chance of injury prior to attaching fastening component 8, or to prevent damage to the corners or other components that contact the corners (for example by the fastening portion 8 being clamped to the front end of the tool shaft). Given this modification, the front end of the tool shaft has a first diameter (i.e. at the front end of the chamfer) that increases in a direction toward the fastening end.
Klaus fails to explicitly teach the cutting edge designed straight-lined at least in sections. However, this would have been obvious in view of Nakayama.
Nakayama is also directed to a gear machining tool that comprises a cylindrical tool body with cutting inserts thereon (fig. 1, para. [0033]). The inserts having a triangular cutting blade with a top axially extending edge 3Ae that is straight (figs. 1B & 2A-2C, para. [0037]).
In this case, each of Klaus and Nakayama teach a gear machining tool that comprises a cylindrical tool body with cutting inserts thereon, wherein the inserts having a triangular cutting blade with a top edge that it extends generally axially. While the Klaus cutting edge 4 appears relatively straight, it is ambiguous if it is completely straight or is slightly curved. Nakayama teaches that the axially extending top edge can be straight. Thus, it would be obvious and predictable for the cutting edge 4 of Klaus to function as intended if it were straight.
Regarding claim 2, Klaus further teaches a distance of the first fastening position of the first cutting blade to the front side of the tool shaft is smaller than a distance of the first fastening position to the fastening end of the tool shaft (figs. 1-4).
Regarding claim 4, Klaus further teaches the second cutting blade is arranged spaced apart from the first cutting blade in the longitudinal direction of the tool shaft in a direction towards the fastening section (figs. 1-4).
Regarding claim 6, Klaus further teaches the first fastening position and/or the second fastening position is formed by a recess (2) and the cutting blade arranged in the first fastening position and/or the second fastening position is formed on a removeable cutting insert (3), which is held in the recess with a holding section (figs. 1-4, pages 2-3, the holding section including the portion of insert with fastener opening 5), while the cutting blade of the cutting insert projects in a radial direction beyond the circumference of the tool shaft (figs. 1 & 4, the cutting blade being interpreted as the defined triangular tip that extends from the tool shaft).
Claim 7 recites the diameter of the tool shaft continuously increases starting from the first fastening position in the direction towards- the fastening end. As detailed in the rejection to claim 1, above, the front end of the tool shaft was modified to have a chamfered edge. Since the first cutting insert is located at the front end (see fig. 4 of Klaus), the first fastening position can also be interpreted as the front end. Thus, due to the chamfered edge, the diameter of the tool shaft continuously increases starting from the first fastening position (which is at the front end of the chamfer) in the direction towards the fastening end.
Claim 8 recites the diameter of the tool shaft continuously increases starting from the front end of the tool shaft in the direction towards the fastening end of the tool shaft. This limitation is met due to the chamfered edge at the front end of the tool shaft.
Claim 9 recites the tool shaft is shaped at least in sections in the manner of a cone or a truncated cone. Due to the chamfered edge, the front edge section of the tool shaft is shaped as a truncated cone.
Claim 10 recites the tool shaft is manufactured as a one-piece construction. Klaus illustrates the tool shaft being a one-piece construction with no seams (see figs. 1-4).
Claim 15 recites the first cutting blade adjoins the front end of the tool shaft (see figs. 1-4 of Klaus, wherein face 7 is the front end of the tool shaft).
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2012/0207553 (“Sjoo”) in view of NPL.
Claim 1 recites a tool for creating back tapers at an internal or external toothing of a gear, wherein the tool rotating during use about a tool axis of rotation. Sjoo teaches a cutting tool that is capable of rotating during use about a tool axis (fig. 1, paras. [0048] & [0049]). While Sjoo doesn’t teach to create back tapers at toothing of a gear, the cutting tool of Sjoo merely has to be capable of this intended use. In this case, since the cutting tool of Sjoo has cutting blades that extend radially outward from an outer circumferential surface and have cutting edges 33 extending in the axial direction (figs. 4-7 & 13, para. [0064]), the cutting tool is capable of forming back tapers at toothing of a gear.
Sjoo further teaches a tool shaft (1) extending along the tool axis of rotation from a front end (4) to a fastening end (i.e. location where cylindrical surface of tool shaft decreases in diameter) (see figs. 4 & 5), a fastening section for fastening the tool to a tool drive of a machine tool (figs. 4-5, wherein the fastening section is interpreted as the pin 5 and the portion of the tool between pin 5 and tool shaft 1 because this middle portion provides a shoulder that contacts the tool spindle as illustrated in figs. 1-2), the fastening section extending outwardly from the fastening end of the tool shaft (figs. 4-5), a first cutting blade (2), which is arranged at a first fastening position provided at the circumference of the tool shaft (figs. 4-7, the position being the location of the forward most cutting blade 2, i.e. blade closest to front end), wherein the first cutting blade comprises a cutting edge (33) designed straight-lined at least in sections, which is oriented parallel to the surface line (figs. 6 & 13, para. [0064]), which creates enveloping of the tool shaft (wherein, since the cutting edges 33 are parallel to each other and perpendicular to the symmetry line S, the cutting edges 4 are also parallel to a line on the outer circumferential surface of the tool shaft that at least partially overlaps the outer circumferential surface when rotated around the rotation axis, i.e. surface line which creates enveloping of the tool shaft), and a second cutting blade (i.e. the rearmost blade 2 that is longitudinally aligned with the first cutting blade) (see fig. 4), which is arranged at a second fastening position provided at the circumference of the tool shaft (i.e. position of the rearmost blade 2 that is longitudinally aligned with the first cutting blade), wherein the first cutting blade and the second cutting blade are aligned in a longitudinal direction of the tool shaft, and wherein the second cutting blade is arranged spaced apart from the first cutting blade in the longitudinal direction of the tool shaft (fig. 4, wherein the first and second cutting blades were chosen so that they are aligned but spaced in the longitudinal direction).
Sjoo fails to explicitly teach the diameter of the tool shaft measured in a plane oriented normal to the tool axis of rotation increases starting from a first diameter at the first end, in a direction directed towards the fastening end. However, this is obvious in view of NPL.
NPL teaches that chamfers are frequently used in machining in place of sharp corners to reduce the likelihood of injury and to prevent damage to the edges or to other components (pages 1-3, wherein all references to NPL refer to the document submitted with the Office action mailed on January 28, 2025).
In this case, Sjoo teaches a tool shaft having an outer edge at the front end. One of skill in the art appreciates that it is well known to utilize rounded or chamfered edges instead of right angled edges. NPL teaches one of skill in the art that it is well known to use chamfers instead of sharp corners, and using chamfers can prevent injury and can prevent damage to the corners or other components that contact the corners. Thus, it would be obvious to provide a chamfer at the front edge of the tool shaft to reduce the chance of injury and/or to prevent damage to the front edge or other components that contact the front edge.
Regarding claim 2, Sjoo further teaches a distance of the first fastening position of the first cutting blade to the front side of the tool shaft is smaller than a distance of the first fastening position to the fastening end of the tool shaft (fig. 4).
Regarding claim 4, Sjoo further teaches the second cutting blade is arranged spaced apart from the first cutting blade in the longitudinal direction of the tool shaft in a direction towards the fastening section (figs. 4, wherein the first and second cutting blades were chosen so that they are aligned but spaced in the longitudinal direction).
Regarding claim 5, Sjoo et al. fail to explicitly teach the second cutting blade directly adjoins the fastening end of the tool shaft. MPEP 2144.04(VI)(C) states that the particular placement of an element is an obvious matter of design choice if shifting the position of the element would not modify operation of the device. In this case, shifting the all cutting inserts 130 rearward on the tool shaft so that the second cutting blade (i.e. the most rearward cutting blade) adjoins the end of the tool shaft (i.e. end of cylindrical portion 1) would not change operation of the device because all the cutting inserts will still be spaced the same distance from each other and all positioned on the tool shaft.
Regarding claim 6, Klaus further teaches the first fastening position and/or the second fastening position is formed by a recess (8) and the cutting blade arranged in the first fastening position and/or the second fastening position is formed on a removeable cutting insert (2), which is held in the recess with a holding section (i.e. holding section including hole 30) (figs. 1-13, paras. [0051]-[0055] & [0062]), while the cutting blade of the cutting insert projects in a radial direction beyond the circumference of the tool shaft (figs. 4-7, the cutting blade being interpreted as edges cutting 25 & 33 that extend from the tool shaft).
Claim 7 recites the diameter of the tool shaft continuously increases starting from the first fastening position in the direction towards- the fastening end. MPEP 2144.04(VI)(C) states that the particular placement of an element is an obvious matter of design choice if shifting the position of the element would not modify operation of the device. In this case, shifting the all cutting inserts 130 forward on the tool shaft so that the first cutting blade (i.e. the most forward cutting blade) adjoins the front end of the tool shaft would not change operation of the device because all the cutting inserts will still be spaced the same distance from each other and all positioned on the tool shaft.
Given this modification, since the first cutting insert is located at the front end, the first fastening position can also be interpreted as the front end. Thus, due to the chamfered edge at the front end, the diameter of the tool shaft continuously increases starting from the first fastening position in the direction towards the fastening end.
Claim 8 recites the diameter of the tool shaft continuously increases starting from the front end of the tool shaft in the direction towards the fastening end of the tool shaft. This limitation is met due to the chamfered edge at the front end of the tool shaft.
Claim 9 recites the tool shaft is shaped at least in sections in the manner of a cone or a truncated cone. Due to the chamfered edge, the front edge section of the tool shaft is shaped as a truncated cone.
Claim 10 recites the tool shaft is manufactured as a one-piece construction. Sjoo illustrates the tool shaft being a one-piece construction with no seams (see figs. 4-5).
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sjoo in view of NPL and USPGPub No. 2020/0023445 (“Schieke”).
Regarding claim 1, Sjoo in view of NPL teach all the limitations of claim 1 as detailed above. Assuming arguendo that the fastening section does not extend outward from the tool shaft, this would have been obvious in view of Schieke.
Schieke is also directed to a gear machining tool that comprises a cylindrical tool shaft 4 with cutting inserts 9/10 thereon (fig. 1a, paras. [0001], [0048]-[0050]). Schieke teaches a fastening section 3 to extend from the tool shaft 4 (fig. 1a, paras. [0048]-[0050]).
In this case, each of Sjoo and Schieke are directed to a gear machining tool comprising a cylindrical tool shaft 4 with cutting inserts 9/10 thereon and a fastening section/pin. While Sjoo teaches a middle section between the fastening pin 5 and tool shaft 1 (see fig. 4 of Sjoo), Schieke teaches that the fastening pin can extend directly from a cylindrical tool shaft. Further, since the tool shaft 1 of Sjoo has a diameter greater than the fastening pin 5 (see figs. 4 & 5 of Sjoo), the fastening end of the tool shaft 1 can predictably provide a shoulder that can abut the tool spindle as illustrated in figs. 1-2 of Sjoo. Thus, it would be obvious to remove the middle section between the tool shaft 1 and fastening section 5 of Sjoo so the fastening section 5 extends directly from tool shaft 1.
Claims 2 and 4-10 are rejected for the same reasons as the previous rejections over Sjoo et al., above.
Response to Arguments
Applicant's arguments filed October 3, 2025 (“the remarks”) have been fully considered. The examiner agrees that amended claim 1 overcomes the previous 103 rejections. Thus, the previous 103 rejections are withdrawn.
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.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
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.”