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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 8, 2026 has been entered.
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 Cong (CN 108994352 A) in view of Buell et al. (US Patent No. 2,630,038) or Ehsterzon et al. (RU 2146577 C1).
Cong discloses a method (Translation Pages 2-5) for machining a workpiece (2) with a tool (1). The workpiece is driven in rotation about an axis of rotation (Translation Pages 2, 4; Fig. 4). The tool has at least one cutting edge that is brought into cutting engagement with the workpiece via radial feed (Figs. 1, 3, 4), into a cutting position at a cutting depth (Fig. 4; Translation at Pages 2-5), in a cutting operation (Translation at Pages 2-5). In the cutting operation, the tool is moved at the cutting depth in a feed direction parallel to the axis of rotation at a constant feed rate to form a first surface structure (Fig. 4; Translation Pages 2, 4; S3). In a surface machining operation (S4), following the cutting operation, the cutting edge remains at1 (i.e., near) the cutting depth of the cutting operation and the workpiece or the tool is moved in the feed direction parallel to the axis of rotation over the first surface structure, at the feed rate of the cutting operation, to form a second surface structure (Translation Pages 2-5; S4; Fig. 4). Yet, the Cong reference does not explicitly disclose the cutting depth being unchanged from the cutting operation in the surface machining operation.
Buell et al. discloses a method, in a three cut cycle, in which the cutting edge remains at the same depth for the first two cuts (Col. 6, Lines 71-75).2 At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Cong to perform the semi-finishing operation (S4) at the cutting depth, unchanged from the cutting depth of the cutting operation (S3) as suggested by Buell et al. as obvious to try – choosing from a finite number of solutions (i.e., same or different) – leading to the predictable result of material removal of roughened surface while not requiring radial infeed. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Ehsterzon et al. discloses a method in which the cutting edge remains at the same depth for the first two cuts (Figs. 1-44). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Cong to perform the semi-finishing operation (S4) at the cutting depth, unchanged from the cutting depth of the cutting operation (S3) as suggested by Ehsterzon et al. in order to “reducing or completely eliminating the negative effect of asymmetric reactive loads on the cutting tool from the material of the workpiece” (translation) and/or as obvious to try – choosing from a finite number of solutions (i.e., same or different) – leading to the predictable result of material removal of roughened surface while not requiring radial infeed. See KSR, 550 U.S. at 418.
Response to Arguments
Applicant's arguments filed May 8, 2026 have been fully considered but they are not persuasive. Applicant argues that the Cong reference fails to meet the limitation of the cutting edge remaining unchanged at the cutting depth in the surface machining operation (i.e., second pass). Due to the disclosure in Cong of three cutting passes, Applicant alleges that the reference goes against the claimed invention of forming a finished second surface structure. Applicant also contends that the reference teaches away from the claimed invention. Examiner disagrees.
In view of the argument against the modification of Cong in isolation, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a finished second surface structure) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Furthermore, the lack of an explicit teaching is not evidence of teaching away. Thus, the rejection is proper and maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Holt (US Pub. No. 2013/0218319 A1) (Figs. 1-11).
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
1 See https://www.merriam-webster.com/dictionary/at (defining “at” as “used as a function word to indicate presence or occurrence in, on, or near”).
2 As recognized by Applicant, the Cong reference also includes a three cut cycle.
