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 .
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 1-8, 10-12 and 17 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.
Claims 1 and 17 each recite “each of the teeth has a central portion thereof with a convexly curved outer contour, which at a first end of the convexly curved outer contour transitions directly or via a first concave transition outer contour into the convexly curved outer contour of a first adjacent tooth” in Lines 6-9, respectively. It is unclear how the portion is considered central if the ends thereof transition directly into other teeth or into a transition that transitions into another tooth. That is, the metes and bounds of “central” portion are unclear in this context. Appropriate correction required.
Claims 1 and 17 each recite the limitation “the direct connecting line between the first end and the second end.” There is insufficient antecedent basis for this limitation in the claim. Appropriate correction 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 1-8, 10-12 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zimmerman (US Pub. No. 2018/0036813 A1), or alternatively, are rejected under 35 U.S.C. 103 as being unpatentable over Zimmerman (US Pub. No. 2018/0036813 A1) in view of Sobczyk (US Pub. No. 2019/0054554 A1).
(Claims 1 and 17) Zimmerman discloses a power skiving tool that includes a shank (inherent - ¶ 0034) that extends along a longitudinal axis of the tool, and a cutting head (2) that is arranged at an end face of the shank (Figs. 21, 22). The cutting head includes at least one circumferentially arranged tooth (24; ¶¶ 0034, 0046-0049). In a cross-section orthogonal to the longitudinal axis, each of the teeth has a central portion thereof with a convexly curved outer contour (Figs. 7, 11, 21), which at a first end of the convexly curved outer contour transitions either directly or via a first concave transition outer contour into the convexly curved outer contour of a first adjacent tooth of the plurality of teeth and at a second end of the convexly curved contour opposite the first end transitions either directly or via a second concave transition contour into the convexly curved contour of a second adjacent tooth of the plurality of teeth (Figs. 7, 11, 21, with a particular example in annotated Fig. 21). That is, the claim requires a central portion of each tooth to have the claimed outer contour. A portion of a tooth may be any part of the whole. Figure 21 below sets forth an example of how the teeth could have a portion that reads upon the claimed limitations. While Figure 21 has been used as an example, this interpretation applies equally to that embodiment in Figure 7. A width of each tooth of the plurality of teeth, measured in the cross-section as a distance between the first end and the second end, is greater than a height of the at least one tooth (7, 24) measured in the cross-section orthogonal to the width and centrally between the first end and the second end as a distance between the outer contour and, as best understood, the direct connectling line between the first end and the second end (24; Fig. 21; ¶¶ 0034, 0046-0049). The convexly curved contour is rounded without corners (e.g., annotated Fig. 21). Each of all of the plurality of circumferentially arranged teeth (7, 24) have the claimed dimension (i.e., due to the arbitrary nature of the portion, each tooth may have a portion that meets the claimed limitations). The plurality of circumferentially arranged teeth are the only teeth on the cutting head. The convexly curved (rounded) contour has a shape that is partially circular, oval or elliptical (annotated Fig. 21).
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In the event Applicant traverses the inherency of a drive shaft with the cutting head at an end face thereof, Switzer discloses such an arrangement (Figs. 1, 2 - showing a power skiving tool 2 having a shank (4) that extends along a longitudinal axis (A) of the tool, and a cutting head (6) that is arranged at an end face of the shank). At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the cutting head disclosed in Zimmerman with a shank as taught by Switzer in order to connect the tool head to the spindle (Switzer ¶ 0013).
(Claims 2 and 3) Because the portion is arbitrary, the portion may be set such that the width of each tooth of the plurality of teeth is more than two or three times the height of the respective tooth (Zimmerman Figs. 7, 21).
(Claim 4) A first tangent in said cross-section and being tangential to the convexly curved contour at the first end of the convexly rounded outer contour and a second tangent lying in said cross-section and being tangential to the convexly curved outer contour at the second end of the convexly rounded contour intersect at an angle α, where α is from 60° to 140°. That is, the end points, while not defined with particularity may have a tangent to those end points oriented to fall within the range claimed (Zimmerman annotated Fig. 21).
(Claim 5) Each of the first concave transition outer contour and the second concave transition outer contour is a radius when viewed in said cross-section (Zimmerman annotated Fig. 21).
(Claim 6) The plurality of teeth are identical (Zimmerman Fig. 7).
(Claim 7). Each of the plurality of teeth (Zimmerman 24) includes a rake face at an end of the cutting head that is facing away from the shank (Zimmerman Fig. 21; ¶ 0006). Zimmerman discloses the front end surface of the cutting head includes a rake surface and may be disposed as a cone surface inclined at an angle other than 90 with respect to the longitudinal axis (Zimmerman ¶¶ 0006, 0008, 0046, 0049; Fig. 20).
(Claim 8) The rake faces of all the teeth of the plurality of teeth are arranged in a common conical surface that is rotationally symmetrical to the longitudinal axis (Zimmerman ¶¶ 0006, 0008, 0046, 0049; Fig. 20; Clm. 1).
(Claim 10) Each of the plurality of teeth (Zimmerman 24) include a circumferentially arranged flank oriented skew to the longitudinal axis (Zimmerman Fig. 22; ¶ 0034).
(Claim 11) The plurality of teeth (Zimmerman 24) is not explicitly disclosed as being more than twelve teeth. Yet, at a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the cutting head disclosed in Zimmerman with a plurality of widened teeth within the claimed range as mere duplication of working parts. See In re Harza, 274 F.2d 669 (CCPA 1960) (holding that mere duplication of parts has no patentable significance unless a new and unexpected result is produced).
(Claim 12) Zimmerman does not explicitly disclose the materials of the cutting head.
Switzer discloses the shank is made of steel (¶ 0020; clm. 4) and the teeth of the cutting head are made of carbide (¶¶ 0021-0022; clms. 5, 6). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the shank in steel and the cutting head in carbide as taught by Switzer in order to reduce the cost of the tool as compared to a tool entirely made of carbide (¶ 0022).
Response to Arguments
Applicant's arguments filed May 22, 2026 have been fully considered but they are not persuasive. Applicant argues that the Zimmerman disclosure fails to disclose every cutting tooth as claimed. Examiner disagrees.
The Zimmermann reference reads upon the claimed invention because the claim falls short of the scope suggested in Applicant argument. 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). Specifically, the claim requires a plurality of cutting teeth with the dimensional requirements. The claims do not require each tooth to have a given shape. Instead, the limitation merely requires a central portion of a tooth to have an outer contour.1 The claim limitations fail to describe each tooth outer (circumferential) contour in the manner disclosed. As such, Zimmermann reads upon the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Bolesky (US Patent No. 1,482,110).
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 Examiner provided caution in the interview dated January 13, 2026 that the limitation of “a portion” of a tooth changed the scope dramatically.
Prosecution Insights