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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 4, 2025 has been entered.
Claim Objections
Claim 1 objected to because of the following informalities: for limitations that all run back to a subject at the beginning of a clause, it would be clearer to indent each further than the subject. For example, reciting “a first mounting seat wall surface” and then a new line indented further than the subject, which shows clearly that each limitation runs back to that subject. Appropriate correction is required.
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 and 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 “seats being configured for removably mounting” in Line 5. It is unclear whether the recitation to “seats” in Line 5 is the insert mounting seats previously recited or if they are different seats. Appropriate correction required.
Claim 1 recites “a first mounting seat wall surface that extends toward the holder rotation direction from the mounting seat bottom surface” in Lines 10-11. The metes and bounds of extending toward a direction as opposed in a direction are unclear. It is unclear where the direction is located radially with regard to the insert mounting seats. Appropriate correction is required.
Claim 1 recites “an inner peripheral side” in Line 13 and “toward the inner peripheral side in a radial direction” in Line 19-20. There is the issue of referring to “toward the inner peripheral side” as if it is a physical feature. It is unclear whether the inner peripheral side and the outer peripheral side are physical features or relative positional directions relative to a given feature. For example, the first mounting seat wall surface is claimed as facing an outer peripheral side and “on the inner peripheral side of the holder main body of the inclined face” are recited. Appropriate clarification required.
Claim 1 recites “on the inner peripheral side of the holder main body of the first mounting seat wall surface” in Line 17. It is unclear whether this is each first mounting wall surface or a respective one thereof. Appropriate correction required.
Claim 1 recites “an inclined face is formed in a range from an end edge of the first mounting seat wall surface on a tip side of the indexable cutting tool holder in an axial direction to 2 mm or less toward the inner peripheral side in a radial direction” in Lines 18-20. It is unclear what is required by this limitation. In particular, it is unclear how the 2 mm or less is measured. Appropriate correction required.
Claim 1 recites “toward a base side in the axial direction as the holder tip inner peripheral surface extends toward the inner peripheral side of the holder main body” in Lines 29-31. The scope of what is considered the base side is unclear. It is also unclear how the base side relates to the previously recited posterior end side. Appropriate correction required.
Claim 1 recites “in a range of 0° or less than 20°” in Line 32. This is not a range. It is two options between zero degrees or less than 20 degrees. Appropriate correction required.
Claim 1 recites the limitation “the inclined face Q” in Line 35. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 1 recites the limitation “the tip side P” in Line 36. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 1 recites “a ratio h/L is 0.1 or more and 0.45 or less, h being in interval in millimeters between an intersection of the holder tip inner peripheral surface and the inclined face Q and an end edge of the inclined face on the tip side P in the axial direction in the cross section in the axial direction along the axis, and L being a length in millimeters of the end edge of the first mounting seat wall surface on a side that the mounting seat bottom surface faces” in Lines 34-38. The inclusion of “Q” and “P” are vague as to whether they impact the terms that precede them or another term further back in each limitation. The metes and bounds of “a length . . . of the end edge of the first mounting seat wall surface on a side that the mounting seat bottom surface faces” are not clearly delineated. That is, it is unclear what “on a side that the mounting seat bottom surface faces” requires – it is unclear the side a physical feature or a reference with a position of another feature. Appropriate correction required.
Claim 1 recites “the holder tip outer peripheral surface being flat or retracted toward the base end side in the axial direction as the holder tip outer peripheral surface being extended toward the inner peripheral side of the holder main body, and an inclination angle of the holder tip outer peripheral surface with respect to the plane perpendicular to the axis in the cross section along the axis being in a range of 0° or less than 20°” in Lines 40-44. Again, it is unclear whether the inner peripheral side is a reference direction or regarded as a physical feature. Furthermore, the range is not a range. It is two options between zero degrees or less than 20 degrees. Appropriate correction required.
Claim 1 recites “on the tip side in the axial direction” in Lines 46 and 46-47, respectively. It is unclear whether the axial direction is one direction or if this is meant to encompass both axial directions. Additionally, it is unclear whether the tip side is meant to be a relative direction/position or if the tip side is a physical feature. Appropriate clarification required.
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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al. (US Patent No. 4,954,021) in view of Engstrom (US Pub. No. 2011/0081209 A1) and Choi et al. (US Pub. No. 2015/0336187 A1), or in the alternative, Tsujimura et al. (US Patent No. 4,954,021) in view of Engstrom (US Pub. No. 2011/0081209 A1), as evidenced by Deguchi (US Patent No. 10,384,275 B2), and Choi et al. (US Pub. No. 2015/0336187 A1).
(Claim 1) Tsujimura et al. (“Tsujimura”) discloses an indexable cutting tool holder that includes a holder main body (12) to be capable of being rotated (counterclockwise in Fig. 1) in a holder rotation direction around an axis (O) and insert mounting seats (22) formed on an outer peripheral portion of a tip part of the holder main body (Figs. 1, 2). The insert mounting seats being configured for removably mounting a respective cutting insert (30), the cutting insert having a cutting edge (Figs. 1, 2). Each of the insert mounting seats includes a mounting seat bottom surface that faces the holder rotation direction and is configured for a seating surface of the cutting insert to be seated on (via seat member 26), a first mounting seat wall surface (in which leader line 22 points to in Fig. 2) that extends toward the holder rotation direction from the mounting seat bottom surface (Fig. 1), faces an outer peripheral side of the holder main body (Figs. 1, 2), and is configured for a first side surface of the cutting insert to be abutted on (Figs. 1, 2). The first side surface faces an inner peripheral side of the holder main body (Figs. 1, 2 – faces toward the axis). On the inner peripheral side of the holder main body of the first mounting seat wall surface, an inclined face is formed in a range from an end edge of the first mounting seat wall surface on a tip side of the indexable cutting tool holder in the axial direction to 2 mm or less in the inner peripheral side in a radial direction with respect to the axis from the end edge of the first mounting seat wall surface (annotated Fig. 2 below). It is worth noting that the range merely requires that the inclined face be formed in it, but not limited to being formed only in that range. The inclined face includes the end edge of the first mounting seat wall surface (annotated Figs. 1, 2 below), and the inclined face being retracted toward the posterior end side in the axial direction as the inclined face being extended toward the axis of the holder main body (annotated Fig. 2). Tsujimura discloses an inclination angle of the inclined face with respect to a plane perpendicular to the axis in a cross section along the axis (Fig. 2).
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Yet, the inclination angle is a result-effective variable because the angle impacts tool integrity (amount of material radially inside the first mounting seat wall) balanced against clearance (space between workpiece and inclined face). Because Applicant failed to traverse the assertion that it is well-known that the inclination angle is a result-effective variable, it is taken as Applicant admitted prior art (AAPA). See MPEP § 2144.03 C. Thus, at a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the cutting tool holder disclosed in Tsujimura with an inclined face inclination angle within the claimed range in order to optimize the tool integrity and clearance of the holder as a function of the operational parameters (e.g., work material, speed, feed rate, feed angle, etc.). See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here 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.”).
The modified Tujimura cutting tool holder does not explicitly disclose a first relief portion as claimed.
Engstrom discloses a cutting tool holder (1; Fig. 1) that includes a first relief portion (12) formed in a corner portion where a first mounting seat wall surface (10) and a mounting seat bottom surface (9) intersect with each other and retracted with respect to the first mounting seat wall surface and the mounting seat bottom surface (Figs. 1, 4, 6, 7). At a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the cutting tool holder disclosed in Tsujimura with a first relief portion as taught by Engstrom in order to provide clearance for a seating corner of a seating member placed in the insert mounting seat (¶ 0031).
On the inner peripheral side of the holder main body of the inclined face, a holder tip inner peripheral surface is formed to intersect with the inclined face (Tsujimura annotated Fig. 2 above). The holder tip inner peripheral surface being flat, and an inclination angle of the holder tip inner peripheral surface with respect to the plane perpendicular to the axis in the cross section along the axis being in a range of 0° or less than 20° (Tsujimura being perpendicular or 0 degrees in Fig. 2). Tsujimura discloses a h/L ratio, h being in interval between an intersection of the holder tip inner peripheral surface and the inclined face and an end edge of the inclined face on the tip side in the axial direction in the cross section in the axial direction along the axis, and L, as best understood, being a length of the end edge of the first mounting seat wall surface on a side, as best understood, that the mounting seat bottom surface faces (Figs. 1, 2, 5-7, 11, 12). Yet, Tsujimura does not explicitly disclose a ratio of h/L being within the claimed range. Nevertheless, the ratio is a result-effective variable because the h or height of the wall support relative to the length thereof impacts tool integrity at the first mounting seat wall. Because Applicant failed to adequately traverse the official notice, the well-known fact assertion is taken as AAPA. To be specific, Applicant failed to adequately traverse the assertion of official notice because Applicant’s argument was directed toward the modification of the h/L ratio or that one of ordinary skill would not attribute any significance to the ratio. Yet, official notice was not used as a basis for modifying the h/L ratio. Official notice was taken of the fact that the ratio is a result-effective variable by impacting insert tool body integrity. As such, the traversal of official notice is inadequate. In the alternative, the Deguchi reference evidences that amount of material (including the dimensions of said wall) of a given insert support wall impacts tool integrity. See (Col. 9, Lines 32-35). Thus, at a time prior to effective filing it would have been obvious to one having ordinary skill in the art to provide the cutting tool holder disclosed in Tsujimura with a h/L ratio within the claimed range in order to optimize the tool integrity of the holder as a function of the operational parameters (e.g., work material, speed, feed rate, feed angle, etc.). See Smith, 88 U.S. at 118-19 (a change in form, proportions, or degree "will not sustain a patent"); In re Aller, 220 F.2d at 456 (“[W]here 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.”).
Tsujimura discloses on the outer peripheral side of the holder main body of the inclined face, a holder tip outer peripheral surface is disposed (where leader line of detail 16 in Fig. 2 contacts the holder main body). The holder tip outer peripheral surface being, as best understood, retracted toward the base end side in the axial direction as the holder tip outer peripheral surface being extended toward the inner peripheral side of the holder main body, and an inclination angle of the holder tip outer peripheral surface with respect to the plane perpendicular to the axis in the cross section along the axis being in a range of 0° or less than 20° (Fig. 2 showing a zero-degree orientation). Yet, the holder tip outer peripheral surface is not explicitly disclosed as being formed between the end edge of the inclined face on the tip side in the axial direction and the end edge of the first mounting seat wall surface on the tip side in the axial direction.
Choi et al. (“Choi”) suggests a holder tip outer peripheral surface as being formed between the end edge of the inclined face (ring radially inside the surface in which the leader line of detail 210 contacts in Fig. 10) on the tip side in the axial direction and the end edge of the first mounting seat wall surface on the tip side in the axial direction (Fig. 10 – where leader line for detail 210 contacts the tool holder body). At a time prior to effective filing one having ordinary skill in the art would have found it obvious to modify the cutting tool holder of Tsujimura with the location of the tip outer peripheral surface relative to the inclined face as suggested by Choi in order to increase the amount of material of the first mounting seat wall while providing sufficient clearance at the inclined face as is well-known in the art (because Applicant failed to traverse the assertion that it is well-known in the art, it is taken as AAPA, see MPEP § 2144.03 C) and/or as mere design choice and/or as simple substitution or obvious to try leading to the predictable result of a wall support with sufficient material of the holder body for ensuring mounting seat (tool) integrity. 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 3) The inclined face has a conical surface shape formed around the axis (Tsujimura Figs. 1, 2 – an interrupted conical surface in the same manner as Applicant’s own disclosure in Fig. 2).
Response to Arguments
Applicant's arguments filed September 4, 2025 have been fully considered but they are not persuasive. Applicant argues that the inclusion of reference characters is not meant to designate distinct claim limitations. In addition, Applicant alleges that the recitation of “in the axial direction” is only provided in the context of “toward the base side.” Turning to the prior art rejection, Applicant argues that the Choi reference lacks disclosure of the advantages, disclosed in the present application, of the claimed structure. As such, one of ordinary skill would not have been motivated to combine the suggestion in Choi with the Tsujimura cutting tool holder. Applicant then argues that the Deguchi reference fails to disclose “the idea of evaluating the shape of the first mounting seat wall surface two-dimensionally using two variables.” (Applicant Remarks at Page 10). Examiner disagrees.
Reference characters must be within parentheses within a claim. As it stands, the alleged reference characters are not within parentheses and, as such, create a lack of clarity within the claims. As for the axial direction, the recitations are not limited to the context of “toward the base side.” Thus, the indefiniteness rejections stand.
In response to applicant's argument that the Choi reference lacks explicit disclosure of the advantages, disclosed in the present application, of the claimed structure, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As such, in response to the argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988), In re Jones, 958 F.2d 347 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In this case, there are two rationales for modifying the Tsujimura cutting tool holder with the structure suggested in Choi. These rationales have not been challenged other than they are not the benefits recognized by Applicant in the present application.
Relative to the Deguchi reference, it is not relied upon for teaching two variables as claimed. The Deguchi reference instead is relied upon as an evidentiary reference that one of ordinary skill would understand that the amount of material (i.e., the dimensions of said wall) impact insert support and tool integrity. The actual dimension in Deguchi is not relied upon.
Conclusion
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/RYAN RUFO/Primary Examiner, Art Unit 3722