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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 August 2025 has been entered.
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.
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 1-17 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.
The claims filed 4 February 2025 included amendments which introduced new matter not found in the originally filed specification or adequately shown in the originally filed drawings. The claims filed 12 August 2025 retain the limitations of 4 February 2025.
At issue are the limitations pertaining to “a second opening” and any particular shape of the second surface. Also at issue is the limitation pertaining to the claimed flat surface being “perpendicular to an axis of the recess.”
As to “a second opening,” no “second opening” appears in the specification, and no “second opening” is expressly illustrated in the drawings. An artisan must only infer that an opening in a second surface exists by the teaching regarding a fastening means extending through the cutting tool. This is not a positive teaching of a second opening, nor the shape of that opening or even the shape or configuration of a second surface.
As to “perpendicular,” the limitation denotes a specific relationship angle between the “flat surface” and the “axis of the recess” which is not found in the originally filed specification, and not adequately illustrated in the drawings. The particular axis of the recess is unknown and therefore the relationship between the axis and the flat surface is also unknown.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Therefore, limitations pertaining to “a second surface,” “a second opening,” and “a flat surface…that is perpendicular to an axis of the recess” as found in claim 1 must be shown or the features canceled from the claims.
Similarly, the limitations of claims 4: “wherein the recess is not radially symmetrical” must be shown or the feature canceled from the claims.
Similarly, the limitations of claims 5: “the cross-sectional contour of the recess has a corner” must be shown or the feature canceled from the claims.
Similarly, the limitations of claims 6: “recess is formed at an angle < 90° to the tool reference plane” must be shown or the feature canceled from the claims.
No new matter should be entered.
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Applicant’s Fig. 3 is shown above. As can be seen, there is no second surface as there is no solid line indicating the shape of the surface. Instead, the drawing cuts off at the hashes apparently somewhere midway between the first and second surfaces leaving the second surface unillustrated.
Similarly, the surface of the recess is considered unillustrated for the same reason. There is no solid line indicating the shape of the surface.
Thus, as no second surface is illustrated, no second opening is illustrated.
Also, as no surface of a recess is illustrated, the axis of the recess can not be ascertained. Thus, it is unknowable whether the flat surface is perpendicular to the axis of the recess.
With regards to claim 4, the recess is illustrated in Figs 2, 4, and 5. None of the figures provides enough fidelity to positively show the recess is not radially symmetrical.
With regards to claim 5, the recess is illustrated in Figs 2, 4, and 5. None of the figures provides enough fidelity to positively show the recess has a corner.
With regards to claim 6, as the axis of the recess is unknown, the recess is not illustrated as being <90° to the tool reference plane.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-6, 8-9, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dufour (US 2010/0272526) in view of Todkar (US 2021/0046555).
As to claim 1, Dufour teaches a cutting tool having the following structure: a cutting tool (double-sided cutting insert 110 as shown in Figs 7A, 7B) in the form of an indexable insert ([0047]: “Because the insert is indexable, the insert could be removed (by removing a retention screw or the like) and then rotated in the insert pocket and re-secured, thereby positioning a new cutting edge so that it will contact the workpiece when the tool is used.”).
Dufour does not teach the claimed method for producing the cutting tool. Rather, Dufour teaches the insert is made by “typical manufacturing processes. See [0055]: “Typical manufacturing processes for making composite double-sided inserts include pressing two different carbide materials in a mold, followed by sintering and grinding the pressed insert, and a subsequent coating step that provides a hard metal coating over the cutting insert.”
However, indexable inserts were known at the time the invention was effectively filed to be made by additive manufacturing rather than by pressing. See Todkar [0058] which teaches “The drill inserts 10 of the invention may be fabricated by any suitable technique, such as carbide powder pressing, grinding or additive manufacturing to provide the plurality of cutting edge segments.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have made the indexable insert of Dufour by the additive manufacturing process of Todkar. See MPEP § 2143 C which describes the prima facie obviousness of the use of known technique to improve similar devices in the same way. In this case, Todkar teaches that additive manufacturing is a known alternative to carbide powder pressing, and thus an artisan would have recognized that the similar devices of Dufour and Todkar may both be manufactured by additive manufacturing.
Todkar does not teach the specifics of the additive manufacturing method as claimed: a) providing a starting material for use in an additive manufacturing method in several layers of material; and b) bonding each layer of material of the starting material to form of an indexable insert, wherein the layers of material are arranged in such a way…
Examiner previously took official notice and now treats as fact that additive manufacturing was well known at the time the invention was effectively filed to comprise the steps as claimed, including a) providing a starting material, providing several layers of material, and b) bonding each layer of material to form the desired device.
Thus, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the steps as claimed as they are well understood to be encompassed by Todkar’s teaching of “additive manufacturing.”
Dufour in view of Todkar teach the following structural limitations: a recess is created in the cutting tool (see below which shows Applicant’s Fig 3 (mirrored for completeness) compared to Dufour’s Fig 7B (flipped upside down to ease comparison). The recess in Dufour is has axis 112), the recess extending from a first opening (the top opening in the orientation shown below) to a second opening (the bottom opening in the orientation shown below), the first opening on a first side of the cutting tool (the top side), the second opening on a second side of the cutting tool (the bottom side), at least a first cutting element is provided on the first side of the cutting tool (Dufour has cutting edges illustrated at the top and bottom of the cutting tool), the recess provided in the cutting tool so that the cutting tool can be fastened to a tool base body by means of a fastening means (“fastening means” invokes 112(f). This limitation is interpreted in view of the specification to include a screw. Todkar teaches [0065]: “Further, the peripheral pocket 106 includes a threaded hole (not shown) for fastening the drill insert 10 with the drill body 102 using an insert screw 110.” Dufour teaches [0043]: “A screw may be inserted through center hole 15 of the double-sided cutting insert 10 and into a threaded bore (not shown) on a surface of the cutting insert pocket, thereby retaining the insert in the pocket.”) that extends through the recess (as appreciated by an artisan, the screw extends through the recess), in order to fasten the cutting tool with a tool reference plane parallel to a support plane of the tool base body (as labeled in the drawing below), the recess comprising a flat surface that faces the first opening (as shown in the Figure below, Dufour’s recess has a flat surface (labeled) that faces the top opening), that is spaced from the first opening (as illustrated), and that is perpendicular to an axis of the recess (as illustrated, the flat surface is horizontal and the recess axis is vertical), the cutting tool, including the cutting element, is an integral, one-piece additively-formed structure (as taught by Todkar, the entire cutting tool is formed by additive manufacturing and thus the cutting element is an integral one-piece structure).
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As to claim 2, Dufour in view of Todkar teaches the method according to claim 1, wherein the cutting tool is an indexable insert (Dufour [0047]: “Because the insert is indexable, the insert could be removed (by removing a retention screw or the like) and then rotated in the insert pocket and re-secured, thereby positioning a new cutting edge so that it will contact the workpiece when the tool is used.”).
As to claim 3, Dufour in view of Todkar teaches the method according to claim 1, wherein in at least one first sectional plane parallel to the tool reference plane and a second sectional plane parallel to the tool reference plane, the recess comprises differing cross-sectional contours (as shown in Fig 7B, Dufour teaches the side surface of the recess is slanted with respect to the bottom surface, thus creating different cross-sectional contours at different planes).
As to claim 4, Dufour in view of Todkar teaches the method according to claim 2, wherein the recess is not radially symmetrical in at least one sectional plane parallel to the tool reference plane (in this interpretation, the recess includes face 11 (shown in Dufour Fig 1A). Face 11 has a non-circular shape which is not radially symmetrical.).
As to claim 5, Dufour in view of Todkar teaches the method according to claim 3, wherein in at least one sectional plane parallel to the tool reference plane, the cross-sectional contour of the recess has a corner (in this interpretation, the recess includes face 11 (shown in Dufour Fig 1A). Face 11 has a non-circular shape which is has a corner.).
As to claim 6, Dufour in view of Todkar teaches the method according to claim 1, wherein the recess is formed at an angle <90° to the tool reference plane (as shown for example at Dufour Fig 7B, the sidewalls of the recess create an angle of less than 90 degrees to the bottom surface).
As to claim 8, Dufour in view of Todkar teaches the method according to claim 1, wherein a surface post-treatment does not take place at the recess (Todkar does not teach any particular surface post-treatment. Thus, an artisan practicing Dufour in view of Todkar would not necessarily perform a post-treatment at the recess).
As to claim 9, Dufour in view of Todkar teaches the method according to claim 8, wherein a polishing and/or grinding does not take place at the recess (Todkar’s teaching of grinding at [0058] is in the alternative with additive manufacturing, and according to the rejection of claim 1, the additive manufacturing method is chosen. Thus Todkar does not teach any particular method in which additive manufacturing is combined with grinding or polishing. Thus, an artisan practicing Dufour in view of Todkar would not necessarily perform a polishing or grinding at the recess).
As to claim 11, Dufour in view of Todkar teaches the method according to claim 1, wherein a surface with at least one channel is created (Dufour’s chip grooves 17 in the top surface shown in Fig 1A are considered the channel.).
As to claim 12, Dufour in view of Todkar teaches the method according to claim 1, but does not teach said providing a starting material for use in an additive manufacturing method in several layers of material comprises providing powdery or molten starting material.
However, Examiner previously took Official Notice and now treats as fact that additive manufacturing of metallic components was well known to start with powered or molten materials. Thus, a person having ordinary skill in the art at the time the invention was effectively filed would have found the limitation of providing a powdery or molten starting material to be prima facie obvious since both powder and molten material are well known and often used as starting materials in the metal additive manufacturing arts.
As to claim 13, Dufour in view of Todkar teaches the method according to claim 1, wherein said providing a starting material for use in an additive manufacturing method in several layers of material comprises providing the starting material from a group of hard metal, solid carbide, polycrystalline cubic boron nitride (CBN), polycrystalline diamond (PCD), or combinations thereof (Todkar [0058]: “The drill insert 10 may be made of any suitable material, such as tool steels, cemented carbides, and super hard material, such as cubic boron nitride (CBN), polycrystalline cubic boron nitride (PCBN), polycrystalline diamonds (PCD), tungsten carbide (WC), cermet, ceramic, and the like.”)
As to claim 14, Dufour in view of Todkar teaches the method according to claim 1, but does not teach the additive manufacturing method is a sinter-based and/or melt-based additive manufacturing method.
However, Examiner previously took Official Notice and not treats as fact that additive manufacturing of metallic components was well known to be performed with either sinter or melt-based methods. Thus, a person having ordinary skill in the art at the time the invention was effectively filed would have found the limitation of metal additive manufacturing by a sinter-based and/or a melt-based additive manufacturing method to be prima facie obvious since both sinter and melt-based are well known and often used methods in the metal additive manufacturing arts.
As to claim 15, Dufour in view of Todkar teaches the method according to claim 1, wherein said providing a starting material for use in an additive manufacturing method takes place in several of said layers of material (as explained above, the term “additive manufacturing” is well understood to encompass the layering of several layers of material).
As to claim 16, Dufour in view of Todkar teaches an indexable insert produced by a method according to claim 1 (this is a product by process limitation. Dufour teaches a double sided drill insert 110.).
As to claim 17, Dufour in view of Todkar teaches a tool comprising an indexable insert according to claim 16 (see Dufour’s tool holder 61 in Figs 4A-C.).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on the Arai reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Rather, the rejection relies on Dufour, which teaches an indexable insert having a recess which has a flat surface part of the recess as illustrated in Fig 7B.
Todkar is relied upon to obviate the manufacturing method of additive manufacture of an indexable insert as a method known to replace carbide pressing (which is the method of manufacture taught by Dufour).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh 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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 4 September 2025