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 .
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, the following must be shown or the features must be canceled from the claim(s): the method of the workpiece and the tool being driven in rotation about an axis of rotation as recited in claim 1; the workpiece moved in a feed direction parallel to the axis of rotation as recited in claim 1; and the tool being fed in axially, in a direction parallel to the axis of rotation of the workpiece, with respect to the workpiece as recited in claim 3. No new matter should be entered.
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 § 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 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 “the workpiece and/or the tool are driven in rotation about an axis of rotation” in Line 2. It is ambiguous as to whether the tool and the workpiece are driven about the same axis or not in the case where both are driven in rotation. Appropriate correction required.
Claim 2 recites “the cutting edge remains at the cutting depth and is moved in the axial feed direction” in Lines 7-8. It is unclear if the axial feed direction is the feed direction parallel to the axis of rotation or not. Appropriate correction required.
Claim 3 recites “the tool is fed in a direction parallel to the axis of rotation into an axial cutting position at a cutting depth” in Lines 3-5. It is unclear how the cutting depth is determined. The recitation refers to axial movement parallel to the axis of rotation, but cutting depth is ambiguous as to longitudinal from a given point or radial from the outside of the material. Appropriate clarification required.
Claim Rejections - 35 USC § 102/ Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cong (CN 108994352 A), or in the alternative, under 35 U.S.C. 103 as being unpatentable over Cong (CN 108994352 A).
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 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). In the event that Applicant traverses the anticipation rejection, 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 of the cutting operation (S3) 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 reducing machining time (i.e., 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).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Cong (CN 108994352 A) in view of Johansson et al. (US Pub. No. 2020/0206825 A1).
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 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 in the cutting position at2 (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 half the feed rate of the cutting operation, to form a second surface structure (Translation Pages 2-5; S4; Fig. 4). Cong does not explicitly disclose a facing operation (i.e., feeding to a depth axially and feeding at that depth radially (perpendicular to the rotation axis of the workpiece). In the event that Applicant traverses the anticipation rejection, 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 of the cutting operation (S3) 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 reducing machining time (i.e., not requiring radial infeed). See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness).
Johansson et al. (“Johansson”) discloses that a tool may be used for both a longitudinal cutting operation and a facing operation (¶ 0220). 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 as a facing operation as suggested by Johansson in order to machine a recess in the face of a workpiece.
Response to Arguments
Applicant's arguments filed February 4, 2026 have been fully considered but they are not persuasive. Applicant argues that one having ordinary skill would understand the scope of the invention and therefore no drawings of the claimed subject matter are necessary. Applicant also argues that the Cong reference fails to meet the limitation of the cutting edge remaining in the cutting position at the cutting depth. Applicant then argues that the interpretation of the term “at” is inconsistent with the specification as a whole. Applicant contends, the Cong reference discloses a change of cutting depth from a rough-machining step to a semi-finishing step. Consequently, Applicant alleges that the Cong reference teaches away from the claimed invention. Furthermore, it is alleged that a modification of Cong to include a step of unchanged cutting depth on a pass would be unobvious. Examiner disagrees.
One having ordinary skill in the art would not understand the features/limitations identified in the object above. Claim 1 recites the tool and the workpiece drive in rotation about an axis of rotation, but then later in the claim requires the tool to be fed parallel to the axis of rotation. If both workpiece and tool rotate about the same axis of rotation, it is unclear how the tool is fed parallel to the axis of rotation during subsequent cutting operations. Thus, one having ordinary skill in the art would not understand the claimed limitations and demonstration in the Figures is necessary.
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., unchanged cutting depth) are not recited in the rejected claim(s). 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). As indicated in the rejection above, the Cong reference reads upon the claimed method. The Office has not made an overly broad interpretation of the term “at,” but merely used its plain meaning. Specifically, because the term “at” includes “near” in its definition, the cutting edge is considered at the cutting depth. Moreover, the claim does not require the cutting depth in each step to be equal relative to a reference feature. If Applicant desires a narrower meaning, then the claim may be amended to reflect a narrower scope. As such, the prior art reads upon the claims.
Turning to the obviousness rejection and 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. In conclusory fashion, Applicant alleges there are infinite number of solutions for the depth of cut. Yet, the rejection lists only two - changed depth or unchanged depth. 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 Ehsterzon et al. (RU 2146577 C1) (Figs. 1-44) (illustrating multiple passes at identical depths to form a shape); and Holt (US Pub. No. 2013/0218319 A1) (Figs. 1-11).
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.merriam-webster.com/dictionary/at (defining “at” as “used as a function word to indicate presence or occurrence in, on, or near”).
2 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”).