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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/09/2025 has been entered.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 208162783 (hereafter—CN’783--).
A Machine Translation of CN’783 has been provided and will be referenced herein. Refer to the Machine Translation for details.
In regards to claim 1, CN’783 discloses (in Figures 1-2) a skiving tool (1), capable of being designed as a disposable tool and as a reversible tool and used for skiving machine (note that in the Machine Translation it discloses a skiving tool 1, that is double sided), comprising a cylindrical disk (refer to the disk shape of tool 1 from which tooth extend radially therefrom, as in Figure 2) having a first front side (top surface), and a second front side (bottom surface) opposite the first front side across a center plane (in the same was as presented by Applicant’s Figure 3), the center plane normal to a longitudinal axis (taken axially along 3) of the cylindrical disk (of 1), wherein a distance from the first front side (top surface) to the second front side (bottom surface) defines a width of the skiving tool (1); a toothing (2) formed on a circumference of the cylindrical disk, the toothing comprising a plurality of teeth (see toothing formed on the skiving tool’s disk circumference, having teeth), wherein in a side view of the skiving tool (1), the plurality of teeth (2) have a profile that is normal to the center plane (note that the profile of the teeth 2 as in Figures 2 and cross-sectional view Figure 1, is straight and parallel to each of a plane defined by the top and bottom surface), wherein the profile is symmetrical with respect to the center plane and symmetrical with respect to a center of each tooth of the plurality of teeth (note that the provided Machine Translation disclosure sets forth that the double-edge/sided cutter has tooth cutters 2, each having the same tooth shape, so as to machine using one side, and in the event the chosen side becomes blunt, you can change to the other side to continue processing, as a result of that, in a side view of the tool shown in Figure 1, the tooth profile would be symmetrical with the center plane and symmetrical with respect to the center of each tooth of the plurality of teeth); wherein each tooth (2) of the plurality of teeth comprise a first front surfaces (in the same way as presented by Applicant on Figure 1) assigned to the first front side (top side), and the first front surfaces are each delimited by a first cutting edge (in the same way as presented by Applicant), wherein each tooth of the plurality of teeth comprises a second front surface (in the same way as presented by Applicant on Figure 1) assigned to the second front side (bottom surface), and the second front surface is delimited by a second cutting edge (in the same way as presented by Applicant), and wherein each tooth of the plurality of teeth further comprises a tooth head, distal to the longitudinal axis and extending from each first front surface to each second front surface, (see teeth on Figures 1 and 2), and a distance from each first front surface of each second front surface of each tooth head defines a tooth head width (in the same way as presented by Applicant); wherein the toothing further comprises a plurality of chipping surfaces (refer to flank surfaces of each tooth as in Figure 2, the flank surfaces in the same way as presented by Applicant) extending from each first cutting edge to each second cutting edge between each tooth head (in the same way as presented by Applicant’s Figure 1), and wherein each chipping surface of the plurality of chipping surfaces is formed by a conical surface cut (in the same way as presented by Applicant, note that the shape of the tooth is conical and thus the chipping surfaces are also conical. The cutting edges 10A are formed in a substantially frusto-conical shape as in Figure 2) from the first front side (top surface) to the second front side (bottom surface); and a coupling device (refer to central opening 3, as in Figures 1 and 2 for example, where a spindle is intended to be disposed into) for coupling the skiving tool (1) to a tool spindle of a skiving machine, wherein the coupling device comprises: a cylindrical through-opening (central opening on 3) concentric with the cylindrical disk (in the same way as presented by Applicant) and extending from the first front side to the second front side (as in Figure 1), and defining an inner circumferential surface of the skiving tool (central opening on 3); the tool being capable of wherein when the first cutting edges have reached a limit condition after a certain number of skiving processed gear wheel blanks in which the first cutting edges are work out by wear to such an extent that they no longer achieve a proper skiving result, the skiving tool is configured to be reversed with respect to the tool spindle (as in Machine Translation, when processing, you can choose one side to process. When this surface is blunt, you can change the other side to continue processing), wherein the coupling device is capable of enabling coupling of the skiving tool (1) to a tool spindle in a first position such that, during use, the first cutting edges (on top surface) of the first front surfaces (in the same way as presented by Applicant on Figure 1) are capable of coming into engagement with the gear wheel to be processed, and wherein the coupling device (3) is also capable enabling coupling of the skiving tool (1) to the tool spindle in a second position by decoupling and turning the skiving tool (1) with respect to the first position such that, during use, the second cutting edges (on bottom surface) of the second front surfaces are capable of coming into engagement with the gear wheel to be processed, and the tool being capable of wherein when the second cutting edges have reached a limit condition after a certain number of skiving processed gear wheel blanks in which the second cutting edges are worn out by wear to such an extent that they no longer achieve a proper skiving result, the skiving tool is configured to be disposed of (as in Machine Translation, when processing, you can choose one side to process. When this surface is blunt, you can change the other unused side to continue processing. In the event all edges are blunt and unsuable, the tool can be disposed of).
In regards to claim 2, CN’783 discloses the skiving tool according to claim 1, CN’783 also discloses that the toothing of the skiving tool (1) is a straight toothing with a symmetrical profile (see Figure 2 and refer to the Machine Translation for details which sets forth that the double-edge/sided cutter has tooth cutters 2, each having the same tooth shape, so as to machine using one side, and in the event the chosen side becomes blunt, you can change to the other side to continue processing, as a result of that, in a side view of the tool shown in Figure 1, the tooth profile would be symmetrical in profile).
In regards to claim 7, CN’783 discloses the skiving tool according to claim 1, CN’783 also discloses that the coupling device (3) further comprises a first mouth region (opening) recessed from to the first front side (top surface) and concentric with the through-opening (refer to the opening on upper side); and a second mouth region (opening) recessed from the second front side (bottom surface), wherein the second mouth region is symmetrical to and opposite to the first mouth region across the center plane (as in Figure 1, in the same way as presented by Applicant in Figures 1 and 2, since the skiving tool is cylindrical and has both first surface and second surface, disposed parallel to each other, then the first and second mouth regions are symmetrical to and opposite to each other across the center plane).
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(s) 1-2, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. US 2014/0234043 (hereafter--Nakahara--) in view of Poppe GB 190914793 (hereafter—Poppe--).
In regards to claim 1, Nakahara discloses (in Figures 1-15B) a skiving tool (10), capable of being designed as a disposable tool and as a reversible tool and used for skiving machine, comprising a cylindrical disk (refer to the disk shape of tool 10 from which tooth extend radially therefrom) having a first front side (11), and a second front side (12) opposite the first front side (11) across a center plane (CP annotated Figure 7A below) (in the same was as presented by Applicant’s Figure 3, see annotated Figure 7A of Nakahara below), the center plane (CP annotated Figure 7A below) normal to a longitudinal axis (X(P1)) of the cylindrical disk (10), wherein a distance from the first front side (11) to the second front side (12) defines a width (W annotated Figure 7A below) of the skiving tool; a toothing formed on a circumference of the cylindrical disk (10), the toothing comprising a plurality of teeth (see toothing formed on the skiving tool’s disk circumference, having teeth), wherein each tooth of the plurality of teeth comprise a first front surfaces (in the same way as presented by Applicant on Figure 1) assigned to the first front side (11), and the first front surfaces are each delimited by a first cutting edge (10A on 11), wherein each tooth of the plurality of teeth comprises a second front surface (in the same way as presented by Applicant on Figure 1) assigned to the second front side (12), and the second front surface is delimited by a second cutting edge (10A on 12), and wherein each tooth of the plurality of teeth further comprises a tooth head, distal to the longitudinal axis and extending from each first front surface to each second front surface, (see teeth on at least Figures 1-5), and a distance from each first front surface of each second front surface of each tooth head defines a tooth head width (W-t annotated Figure 6 below); wherein the toothing further comprises a plurality of chipping surfaces (refer to flank surfaces of each tooth as in annotated Figure 5 below) extending from each first cutting edge to each second cutting edge between each tooth head (in the same way as presented by Applicant’s Figure 1), and wherein each chipping surface of the plurality of chipping surfaces is formed by a conical surface cut (in the same way as presented by Applicant, note that the shape of the tooth is conical and thus the chipping surfaces are also conical. The cutting edges 10A are formed in a substantially frusto-conical shape as in Figure 5) from the first front side (11) to the second front side (12); and a coupling device (refer to central opening on 10, as in Figure 13 for example, where spindle 13 is disposed into) for coupling the skiving tool (10) to a tool spindle (13) of a skiving machine (see Figures 1-6, 11A and 11B), wherein the coupling device comprises: a cylindrical through-opening (central opening on 10 where spindle 13 is disposed into, see Figure 13) concentric with the cylindrical disk (in the same way as presented by Applicant) and extending from the first front side to the second front side (as in Figure 13), and defining an inner circumferential surface of the skiving tool (central opening on 10 where spindle 13 is disposed into); wherein the coupling device is capable of enabling coupling of the skiving tool (10) to a tool spindle (13) in a first position (Figures 8A) such that, during use, the first cutting edges (10A on 11) of the first front surfaces (in the same way as presented by Applicant on Figure 1) are capable of coming into engagement with the gear wheel (1) to be processed (see Figures 8A and 14A), the tool being capable of wherein when the first cutting edges have reached a limit condition after a certain number of skiving processed gear wheel blanks in which the first cutting edges are work out by wear to such an extent that they no longer achieve a proper skiving result, the skiving tool is configured to be reversed with respect to the tool spindle, and wherein the coupling device (central opening on 10 where spindle 13 is disposed into) is also capable enabling coupling of the skiving tool (10) to the tool spindle (13) in a second position by decoupling and turning the skiving tool (10) with respect to the first position such that, during use, the second cutting edges (10A on 12) of the second front surfaces are capable of coming into engagement with the gear wheel to be processed (see Figures 9B and 15B) and the tool being capable of wherein when the second cutting edges have reached a limit condition after a certain number of skiving processed gear wheel blanks in which the second cutting edges are worn out by wear to such an extent that they no longer achieve a proper skiving result, the skiving tool is configured to be disposed of. Nakahara discloses in paragraph [0040], lines 12-14 that the shape of the tool can be either helical gear shape or a spur gear shape, depending on the type of gear being created (e.g. helical gear). Spur gears by definition are cylindrical gears with teeth that are straight and parallel to the axis of rotation.
Although there is a suggestion in Nakahara that, when the alternative of having the tool have a spur gear shape as set forth in paragraph [0040], line 14, in a side view the plurality of teeth have a profile that is normal to the center plane, the profile being symmetrical with respect to the center plane and symmetrical with respect to the center of each tooth of the plurality of teeth; this is not explicitly disclosed.
However, Poppe teaches that it is well known in the art of gear cutting, to have a spur gear cutting tool A, where in a side view, as in Figure 2, a plurality of teeth have a profile that is normal to the center plane, the profile being symmetrical with respect to a center plane and symmetrical with respect to a center of each tooth of the plurality of teeth. As shown in Figure 2, the teeth are straight with symmetrical profile normal to the center plane.
In view of this teaching of Poppe, it would have been obvious to a person having ordinary skill in the art, to have the tool of Nakahara have the shape of a spur gear where the plurality of teeth are straight and have a profile that is normal to the center plane, the profile being symmetrical with respect to the center plane and symmetrical with respect to the center of each tooth of the plurality of teeth, as this shape of spur gear cutters is known to those skilled in the art, and Nakahara has explicitly stated that the shape of the tool can be spur gear shaped, depending on the type of gear being created.
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In regards to claim 2, Nakahara as modified discloses the skiving tool according to claim 1, Nakahara as modified also discloses that the toothing of the skiving tool (10) is a straight toothing with a symmetrical profile (e.g., see paragraph [0040], line 14, where Nakahara discloses the tool 10 as having a spur gear shape and as taught by Poppe).
In regards to claim 7, Nakahara discloses the skiving tool according to claim 1, Nakahara also discloses that the coupling device further comprises a first mouth region (opening) recessed from to the first front side (11) and concentric with the through-opening (refer to the opening on side 11, where spindle 13 is disposed therein); and a second mouth region (opening) recessed from the second front side (12), wherein the second mouth region is symmetrical to and opposite to the first mouth region across the center plane (as in Figure 13, in the same way as presented by Applicant in Figures 1 and 2, since the skiving tool is cylindrical and has both first surface and second surface, disposed parallel to each other, then the first and second mouth regions are symmetrical to and opposite to each other across the center plane).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. US 2014/0234043 (hereafter--Nakahara--) in view of Poppe GB 190914793 (hereafter—Poppe--) as applied to claim 1 above, or in the alternative over Nakahara et al. US 2014/0234043 (hereafter--Nakahara--) in view of Poppe GB 190914793, and in further view of WO 2019/058872 (hereafter—WO’872--).
In regards to claims 3 and 4, Nakahara as modified discloses the skiving tool according to claim 1 and claim 3 respectively, Nakahara as modified also discloses that each tooth of the skiving tool (10) has tooth head width (i.e. taken as a width defined in a direction along a rotational axis of the tool, from the first front surface and the second front surface).
However, Nakahara as modified fails to disclose that the width is in the range of 2-20 mm (for claim 3) and 4-7 mm (for claim 4).
Nevertheless, since Nakaraha’s skiving tool discloses that the skiving tool has a toothing profile, where the toothing profile extends from the first front surface and the second front surface in order to define a width, it appears that the skiving tool of Nakahara would operate equally well with the width between the first front surface and the second front surface in the range of 2-20 mm. Further, Applicant has not disclosed that the claimed range solves any stated problem or is for any particular purpose, apart from being suitable for practice. Applicant simply indicates that in an embodiment suitable for practice the width B of the tooth heads of the skiving tool 1, is 2-20 mm and 4-7 mm, and in an example is 6 mm (see page 5, lines 13-16 and page 7, lines 12-13 of Applicant’s Specification as filed).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of Applicant’s claimed invention to have the width of Nakahara’s skiving tool head to be 2-20 mm or 4-7 mm because this feature appears to be an arbitrary design consideration which fails to patentably distinguish over Nakahara.
In the alternative, WO’872 teaches, as in Figure 2, that it is well known in the art of gear cutting, to have the size, which includes: width or thickness L, and diameter D of the gear cutter be appropriately selected according to the size of an opening of a workpiece to be formed. WO’872 teaches an example of this width or thickness L being 4mm or more and 16mm or less; and in an example, the width of thickness L, being 12mm. See page 7, lines 7-11 of the WO’872’s Machine Translation attached. Thus, values disclosed within the exemplary range of WO’872 overlap with the claimed ranges of 2-20mm and 4-7mm.
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of Applicant’s claimed invention to have the width of Nakahara’s skiving tool head’s toothing ranging 2-20 mm or 4-7 mm, since where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation and WO’872 teaches that the desired range will depend on the size of an opening of a workpiece being machined. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05, sections I and II-A.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 208162783 (hereafter—CN’783--) as applied to claim 1 above, or in the alternative over CN 208162783 (hereafter—CN’783--) as applied to claim 1 above, and in further view of WO 2019/058872 (hereafter—WO’872--).
In regards to claims 3 and 4, CN’783 discloses the skiving tool according to claim 1 and claim 3 respectively, CN’783 also discloses that each tooth of the skiving tool (1) has tooth head width (i.e. taken as a width defined in a direction along a rotational axis of the tool, from the first front surface and the second front surface).
However, CN’783 as modified fails to disclose that the width is in the range of 2-20 mm (for claim 3) and 4-7 mm (for claim 4).
Nevertheless, since CN’783’s skiving tool discloses that the skiving tool has a toothing profile, where the toothing profile extends from the first front surface and the second front surface in order to define a width, it appears that the skiving tool of CN’783 would operate equally well with the width between the first front surface and the second front surface in the range of 2-20 mm. Further, Applicant has not disclosed that the claimed range solves any stated problem or is for any particular purpose, apart from being suitable for practice. Applicant simply indicates that in an embodiment suitable for practice the width B of the tooth heads of the skiving tool 1, is 2-20 mm and 4-7 mm, and in an example is 6 mm (see page 5, lines 13-16 and page 7, lines 12-13 of Applicant’s Specification as filed).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of Applicant’s claimed invention to have the width of CN’783’s skiving tool head to be 2-20 mm or 4-7 mm because this feature appears to be an arbitrary design consideration which fails to patentably distinguish over CN’783.
In the alternative, WO’872 teaches, as in Figure 2, that it is well known in the art of gear cutting, to have the size, which includes: width or thickness L, and diameter D of the gear cutter be appropriately selected according to the size of an opening of a workpiece to be formed. WO’872 teaches an example of this width or thickness L being 4mm or more and 16mm or less; and in an example, the width of thickness L, being 12mm. See page 7, lines 7-11 of the WO’872’s Machine Translation attached. Thus, values disclosed within the exemplary range of WO’872 overlap with the claimed ranges of 2-20mm and 4-7mm.
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of Applicant’s claimed invention to have the width of CN’783’s skiving tool head’s toothing ranging 2-20 mm or 4-7 mm, since where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation and WO’872 teaches that the desired range will depend on the size of an opening of a workpiece being machined. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05, sections I and II-A.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. US 2014/0234043 (hereafter--Nakahara--) in view of Poppe GB 190914793 (hereafter—Poppe--) as applied to claim 7 above and in further view of GB 191025636 (hereafter—GB’636--).
In regards to claim 8, Nakahara discloses the skiving tool according to claim 7, Nakahara also discloses that through-opening of the coupling device has an inner surface (see Figure 3) extending from the first front side (11) to the second front side (12) for coupling the skiving tool (10) to the tool spindle (13) of the respective skiving machine (Figures 1-6, 11A and 11B).
However, Nakahara fails to disclose that there is a recess extending into the inner circumferential surface from the first front side to the second front side, the recess being semicircular when viewed from a side view of the first front surface and from a side view of the second front surface the recess configured to engage a tool spindle in a form-fitting and rotationally-fixed manner.
Nevertheless, GB’636 teaches that it is well known in the art of gear cutters, to have gear cutting tool (a) with a coupling device (a1) having a through-opening with an inner surface (see Figures 2 and 5) extending from a first front side (top surface) to a second front side (bottom surface) for coupling the tool (a) to a tool spindle. As in Figures 2 and 5, note that the inner circumferential surface has a recess (a2) extending into the inner circumferential surface from the first front side to the second front side, the recess being semicircular when viewed from a side view of the first front surface and from a side view of the second front surface (in the same way as presented by Applicant) the recess configured to engage a tool spindle in a form-fitting and rotationally-fixed manner. A person having ordinary skill in the art, would have recognized that recesses as taught by GB’636 prevent independent rotation of the tool and securely locks the tool to the shank.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to include a semicircular recess form element on the inner surface of the through-opening of the skiving tool of Nakahara, based on the teachings of GB’636, to prevent independent rotation of the skiving tool and securely lock the skiving tool to the shank.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 208162783 (hereafter—CN’783--) as applied to claim 1 above and in further view of GB 191025636 (hereafter—GB’636--).
In regards to claim 8, CN’783 discloses the skiving tool according to claim 7, CN’783 also discloses that the coupling device (3) comprises a recess (4) extending into the inner circumferential surface from the first front side to the second front side, the recess being squared shaped when viewed from a side view of the first front surface and from a side view of the second front surface (in the same way as presented by Applicant), the recess configured to engage a tool spindle of a skiving machine in a form-fitting and rotationally-fixed manner.
However, Nakahara fails to disclose that the shape of the recess is semicircular.
Nevertheless, GB’636 teaches that it is well known in the art of gear cutters, to have gear cutting tool (a) with a coupling device (a1) having a through-opening with an inner surface (see Figures 2 and 5) extending from a first front side (top surface) to a second front side (bottom surface) for coupling the tool (a) to a tool spindle. As in Figures 2 and 5, note that the inner circumferential surface has a recess (a2) extending into the inner circumferential surface from the first front side to the second front side, the recess being semicircular when viewed from a side view of the first front surface and from a side view of the second front surface (in the same way as presented by Applicant) the recess configured to engage a tool spindle in a form-fitting and rotationally-fixed manner. A person having ordinary skill in the art, would have recognized that recesses as taught by GB’636 prevent independent rotation of the tool and securely locks the tool to the shank/spindle.
Accordingly, it would have been obvious to substitute the shape of the recess of CN’783 with the shape of the recess of GB’636, since it is a simple substitution of one known shape of recess (square shaped) for another (semicircular shaped), in order to have a predictable result of preventing independent rotation between the tool and the spindle.
Alternatively, it would have been obvious to change the shape of the recess of CN’783 with the shape of the recess of GB’636, since applying a known technique (changing the shape of recesses) to a known device (gear cutter) ready for improvement yields predictable results of preventing independent rotation between the tool and spindle.
Alternatively, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to change the shape of the recess of CN’783, based on the teachings of GB’636, as absent persuasive evidence that the particular configuration of the claimed semicircular shaped recess is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container 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 container was significant.) MPEP 2144.04 section III-B.
Response to Arguments
Rejections not based on Prior Art
In view of Applicant's amendments, the previous 35 U.S.C. § 112 rejection of claims 1-4, 7 and 8 has been withdrawn.
Rejections based on Prior Art
Response to Arguments
Applicant’s arguments filed on 10/09/2025 with respect to claims 1-4, 7 and 8 have been carefully and fully considered, and are not persuasive.
Applicant argues on page 7 of the Remarks regarding the CN’783 reference, that CN’783 fails to disclose that “the skiving tool is configured to be reversed when the first cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived, and that the skiving tool is configured to be disposed of when the second cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived”. The Examiner disagrees.
In response to applicant's argument, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding the intended use limitations “configured to be reversed when the first cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived, and that the skiving tool is configured to be disposed of when the second cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The tool of CN’783 is a reversible double-edged tool with two sides of cutting edges and thus, it is configured to be reversed when the first cutting edges have reached a limit condition, this condition being a worn out or blunt cutting edge, which occurs naturally due to the number of processed gear wheel blanks that are skived or machined with that particular cutting edge. Once this particular cutting edge, is worn out or blunt, because this cutter is a reversible double-edged tool, the tool is reversed so as to use the other side cutting edge. Once this second side is also worn out so as to reach a wear limit condition, the tool then can be disposed of as it does not have any cutting edge left to be used. As such, the Examiner’s interpretation is not precluded.
Applicant argues on page 8-9 of the Remarks regarding the obviousness rejection over Nakahara in view of Poppe, that similar to CN’783, Nakahara fails to disclose that “the skiving tool is configured to be reversed when the first cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived, and that the skiving tool is configured to be disposed of when the second cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived”. The Examiner disagrees.
In response to applicant's argument, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding the intended use limitations “configured to be reversed when the first cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived, and that the skiving tool is configured to be disposed of when the second cutting edges have reached a limit condition corresponding to a certain number of processed gear wheel blanks skived” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The tool of Nakahara is a double-edged tool with two sides of cutting edges. Because of the double-edge cutting edges, Nakahara’s tool is indeed capable of being configured to be reversed when the first cutting edges have reached a limit condition, this condition being a worn out or blunt cutting edge, which occurs naturally due to the number of processed gear wheel blanks that are skived or machined with that particular cutting edge. Once this particular cutting edge, is worn out or blunt, because this cutter is a double-edged tool, and thus capable of being reversed, the tool can be reversed so as to use the other side cutting edge. Once this second side is also worn out so as to reach a wear limit condition, the tool then can be disposed of as it does not have any cutting edge left to be used. As such, the Examiner’s interpretation is not precluded.
Applicant argues on pages 8-9 regarding the Nakahara reference, that Nakahara fails to disclose “in a side view the plurality of teeth have a profile that is normal to the center plane, the profile being symmetrical with respect to the center plane and symmetrical with respect to each tooth of the plurality of teeth” because in Nakahara, “the teeth and blade portions 10A are angled or diagonal and do not have a symmetrical profile as recited in claim 1, the tool 10 is no reversible in the way recited in claim 1”. However, in response to applicant's arguments against the references individually, 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, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). First, in the rejection above, it was noted that Nakahara discloses in paragraph [0040], lines 12-14 that the shape of the tool can be either helical gear shape or a spur gear shape, depending on the type of gear being created (e.g. helical gear). Spur gears by definition are cylindrical gears with teeth that are straight and parallel to the axis of rotation. Second, teaching reference, Poppe teaches that it is well known in the art of gear cutting, to have a spur gear cutting tool A, where in a side view, as in Figure 2, a plurality of teeth have a profile that is normal to the center plane, the profile being symmetrical with respect to a center plane and symmetrical with respect to a center of each tooth of the plurality of teeth. As shown in Figure 2, the teeth are straight with symmetrical profile normal to the center plane.
Accordingly, in view of this teaching of Poppe, it would have been obvious to a person having ordinary skill in the art, to have the tool of Nakahara have the shape of a spur gear where the plurality of teeth are straight and have a profile that is normal to the center plane, the profile being symmetrical with respect to the center plane and symmetrical with respect to the center of each tooth of the plurality of teeth, as this shape of spur gear cutters is known to those skilled in the art, and Nakahara has explicitly stated that the shape of the tool can be spur gear shaped, depending on the type of gear being created. Accordingly, a prima facie case of obviousness has been properly established.
In response to applicant's argument on page 9 of the Remarks, that CN’783 and Poppe are nonanalogous art because “they pertain to gear cutting tools and not skiving tools” and “one skilled in the art would not consider a gear cutting tool when looking for a skiving tool”, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, skiving is a type of gear cutting machining/process where gear teeth are being machined via a gear cutting tool, and as such skiving does pertain to gear cutting tools which is in the field of the inventor’s endeavor. Thus, CN’783 and Poppe are indeed analogous art.
Conclusion
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722