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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “ridge portions and groove portions which are disposed alternately and are both depressed so as to continuously incline downward away from the top face from a corner R side” in Lines 8-9. This recitation contains new matter because there is lack of support for the limitation of the groove portion continuously declining away from the top face. Appropriate correction 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Paya (US Patent No. 5,577,867) in view of Zitzlaff et al. (US Pub. No. 2010/0278599 A1) as evidenced by Bhagath (US Patent No. 7,604,441 B2).
(Claim 1) Paya teaches a cutting tool (Figs. 1-6) comprising: a peripheral side face (11); a top face (10); a cutting edge (12) that is formed at least on a ridge line of a corner connecting two linear ridge lines (Figs. 2-3), where the peripheral side face and the top face cross (Figs. 2-3); and a fan shaped rake portion having radial portions including ridge portions (parts of 15) and groove portions (space between ridge portions, Figs. 2-3), which are disposed alternately and are both depressed so as to continuously incline downward away from the top face from a corner side (Fig. 4 – the ridge portions are merely portions of ridges, and Figure 4 shows that a part of said ridges continuously incline in the manner claimed), where the crossing line with the top face (10) appears in a wave form (via transition from the ridge portion to groove portion and then from the groove portion to another ridge portion), toward a pivot portion (including 18, shown in the annotated figure below) which is a center of the radial portions of the fan-shaped rake portion (Fig. 2); wherein each of the ridge portions (parts of 15) continuously extends to and is connected to (note: connected does not require direct connection) the pivot portion (shown in the annotated figure below), wherein the pivot portion is an intersection at which a center line of each of the ridge portions intersects (where the intersection point is 18 and the center line of each ridge portion 15 extends to that point and intersects similar to Figure 5 of the present invention where the center line of each ridge extends out from the ridge to the intersection point), and wherein the pivot portion is located at the lowest portion (Fig. 4 at 30) of each of the ridge portions relative to the top face (Fig. 4). The pivot portion is a portion, not a pivot point or axis. The pivot portion as identified in the annotated figure below, includes the lowest position of each of the ridge portions. In an alternative interpretation, the term “at” means “used as a function to indicate presence or occurrence in, on, or near.” https://www.merriam-webster.com/dictionary/at (last visited October 5, 2026). As such, the point (18) may be considered “at” or “near” the lowest position of the ridge portions. Paya does not explicitly disclose a flat top face constituting part of an upper surface that is depressed except for the top face.
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Zitzlaff et al. (“Zitzlaff”) teaches is a flat top face (27) constituting a part of an upper surface that is depressed except for the top face (Fig. 7). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Paya to utilize the flat top surface of Zitzlaff as a land in order to strengthen the cutting edge (Bhagath Col 3, Line 67 – Col. 4, Line 1).
(Claim 2) Paya discloses the width of the groove portion being wider than the width of the ridge portion (15) at a boundary with the top face (10; Figs. 2-3). It is worth noting that the portions may be arbitrarily identified as they are merely parts of a whole.
(Claim 3) Paya discloses the groove portion is disposed so that the width gradually decreases from the boundary with the top face, which appears at a crossing line, to the pivot portion (Fig. 2). Paya does not explicitly disclose the ridge portion is disposed so that the width is constant from the boundary with the top face, which appears as the crossing line, to the pivot portion.
Zitzlaff teaches the ridge portion (13,17,21) is disposed so that the width is constant from the boundary (30) with the top face, which appears as the crossing line 10, to the pivot portion. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Paya as previously modified to change the shape of the ridges of Paya to that of the reinforcing ribs of Zitzlaff in order to reinforce and stabilize the cutting edge and/or as simple substitution of one known element for another leading to the predictable result of creating runoff portions for chips and debris during the cutting process. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting the rationale of simple substitution of one known element to another to obtain predictable results to support a finding of obviousness).
(Claim 4) Paya discloses the number of ridges L is an integer that satisfies 4r + 1 ≤ L ≤ 10r + 2, where r denotes a radius of curvature of the corner. Paya teaches the corner radius can vary between 0.2-2.4 mm; if the number of ridges is 5 (Fig. 3) and the corner radius is 0.5 mm, the equation is satisfied.
(Claim 5) Paya discloses the number L is an odd number (Fig 3).
(Claim 6) Paya discloses the pivot portion is disposed on an opposite side of the corner with respect to the center of curvature (shown in the annotated figure below).
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(Claim 7) Paya discloses an inclined surface disposed to continue to the rake portion (Fig. 4); and a raised portion (13) which extends along a bi-sector of the two linear ridge lines, and is raised from the inclined surface (Fig 4).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Paya (US Patent No. 5,577,867) in view of Zitzlaff et al. (US Pub. No. 2010/0278599 A1) as evidenced by Bhagath (US Patent No. 7,604,441 B2) further in view of Cercau (US 5057124 A).
Paya does not explicitly disclose the rake portion is formed by a sintered body which contains at least 80% diamond by volume.
Cercau teaches the rake portion is formed by a sintered body which contains at least 80% diamond by volume (Col. 3, Lines 42-49). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Paya to utilize the material composition of the cutter as disclosed by Cercau in order to reduce the risk of breakage from thermal stress and reduce the mass of the material (Col. 1, Lines 67-68; Col. 2, Lines 1-2).
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive. Applicant argues that the ridge portions do not reach the pivot portion, which Applicant alleges, is limited to a point (18). Due to this misunderstanding of the designation of the pivot portion in the previous Action, Applicant contends that the Paya reference lacks ridge portions that continuously incline downward as claimed; ridge portions connected to the pivot portion; and the pivot portion located at the lowest position of each of the ridge portions. Examiner disagrees.
The ridge portions reach the pivot portion. The rejection does not limit the pivot portion as point/axis identified as Detail 18. The pivot portion is identified as a portion that merely includes that point. Furthermore, the claim does not require the ridge portion to be directly connected to a point. As indicated above, the connection need not be direct. Nevertheless, the ridge portion and the pivot portion meet at the lowest point (Fig. 4 at 30) of the ridge portion (which is a portion that includes a ridge). Furthermore, it is worth noting that a ridge portion need not even be of a ridge on the surface of the insert, but a portion that defines a ridge. As it stands, the claim is broader than Applicant likely intends, and the prior art of record reads thereupon.
Conclusion
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.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
