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 .
Response to Amendment
1. Amendments filed 9/26/2025 have been entered, wherein claims 11 and 17 are pending. Accordingly, claims 11 and 17 have been examined herein. The previous 35 USC 112(b) rejections have been withdrawn due to Applicant’s amendments. This action is Final.
Claim Objections
2. Claims 11 and 17 is objected to because of the following informalities:
Claim 11, line 21, “for precision surface on surfacing of said workpiece” should read “for precision [[surface on]] surfacing of said workpiece” for improved clarity and grammar
Claim 17, 7th line from bottom, “said honing apparatus to to machine said workpiece” should read “said honing apparatus to [[to]] machine said workpiece” to delete extra word and provide increased clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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 11 and 17 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. Specifically, the disclosure fails to provide written description for “wherein said centering section is precision ground” in claim 11 and “precision grinding said centering section” in claim 17. The specification only provides that the honing apparatus is enabled to precision surface (nano precision ground) [0041], which is directed towards the honing tool precision grinding the workpiece, wherein the honing apparatus is for producing a precision surface on a workpiece [008]. Overall, the disclosure fails to comply with the written description requirement regarding the identified phrases.
Claim Rejections - 35 USC § 103
4. 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 11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Matsunaga (WO 2013114527) (see previously attached translation) in view of Cloutier (US PGPUB 20130309950) and further in view of Kasonde et al. (US PGPUB 20140186132), hereinafter Kasonde.
Regarding claim 11, Matsunaga teaches a honing apparatus (figs. 1-2), comprising:
a shank (fig. 1);
a first zone positioned substantially proximate to a distal end of said shank (see annotated fig. 1 below, the first zone is positioned substantially proximate to a distal end of said shank);
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a second zone positioned at a substantial center of said shank (see annotated fig. 1 above, the second zone is positioned at a substantial center of the shank), wherein said first zone has a diamond grit and said second zone has a diamond grit (Matsunaga teaches abrasive grains 29 made of diamond are held on the surfaces of the grinding portions (second paragraph from bottom on page 4 of the attached translation));
a third zone positioned adjacent to said second zone (see annotated fig. 1 above, the third zone is positioned adjacent to said second zone), wherein said third zone has a diamond grit (Matsunaga teaches abrasive grains 29 made of diamond are held on the surfaces of the grinding portions (second paragraph from bottom on page 4 of the attached translation)); and
a centering section (fig. 1, tapered guide part 30) positioned at said distal end of said shank (fig. 1), wherein said shank connects to the honing apparatus via an adapter (the shank connects to a “honing device” (interpreted as honing apparatus) via a chuck 26 (interpreted as adapter) (page 4 of the attached translation, fourth paragraph from bottom),
wherein each of said first zone, said second zone and said third zone comprises a first tapered section, a flat section extending from said first tapered section, and a second tapered section extending from said flat section (see annotated fig. 1 below, each of the first, second and third zones include a first tapered section, a flat section extending from said first tapered section, and a second tapered section extending from said flat section),
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wherein said first zone and said second zone are spaced apart at a distance from one another (see annotated fig. 1 above, the first zone and the second zone are spaced apart at a distance from one another), wherein said second zone is positioned adjoining said third zone (see annotated fig. 1 above, the second zone is positioned adjoining the third zone),
wherein said shank axially advances towards an area on a workpiece to be precision surfaced (fig. 1, workpiece 70; Matsunaga teaches when the honing tool is used, the honing unit is fed and moved through the circular hole formed in the work while the honing tool is rotated. The inner peripheral surface of the hole is ground (page 6 of the attached translation, first paragraph)), while rotating relative to said workpiece to be precision surfaced (fig. 1, workpiece 70; Matsunaga teaches when the honing tool is used, the honing unit is fed and moved through the circular hole formed in the work while the honing tool is rotated. The inner peripheral surface of the hole is ground (page 6 of the attached translation, first paragraph)), wherein said centering section has a diameter less than said workpiece (fig. 1, the diameter of the centering section at the most distal end is less than a diameter of the hole) such that said workpiece comes in contact with said first tapered section of said first zone to center and align an axis of said shank with said workpiece followed by said second zone and said third zone (fig. 1 and 2, last paragraph on page 4 of the attached translation. Matsunaga teaches the grinding portions 128 to 628 from the most distal end to the most proximal end are formed such that the outer diameters of the maximum diameter portion increase in order from the distal end side toward the proximal end side. Therefore, the workpiece comes into contact with each of the first tapered sections of each of the zones of the shank to center and align an axis of said shank with said workpiece. Specifically, because the diameters of the zones increase from distal to proximal side, the workpiece comes into contact with said first tapered section of said first zone to center and align an axis of said shank with said workpiece followed by said second zone and said third zone), wherein said first zone, said second zone and said third zone remove a stock of material from said workpiece for precision surfacing of said workpiece (page 6 of attached translation, first paragraph),
wherein said shank has a single-piece construction without separate sleeves or adjustable components (figs. 1-2, wherein the honing apparatus of figs. 1-2 of Matsunaga includes a shank which has a single piece construction without separate sleeves or adjustable components, wherein Matsunaga teaches since the tool is composed only of the shaft body 22 without providing a plurality of parts, the number of parts can be reduced (page 7 of the previously attached translation, second paragraph)),
and wherein said honing apparatus is a diametrically non-adjustable honing apparatus (The honing apparatus of figs. 1-2 of Matsunaga is not diametrically adjustable).
The embodiment of figs. 1 and 2 of Matsunaga does not explicitly teach
wherein said first zone has a diamond grit that is rougher than a diamond grit of said second zone
wherein said third zone has a diamond which is finer than the diamond grit of said second zone;
wherein the shank reciprocates relative to the workpiece as the shank axially advances,
wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece,
wherein said centering section is precision ground to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Matsunaga additionally teaches the particle size of the abrasive grains 29 in at least one cutting portion on the base end side is made smaller than the particle size of the abrasive grains 29 in other cutting portions on the distal end side. In this way, effective finish grinding is performed by the cutting portion on the base end side (second to last paragraph on page 9 of the attached translation). Overall, Matsunaga additionally teaches using smaller particle size grit on cutting portions closer to the base end side in order to provide an effective finish grinding.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Matsunaga to incorporate the additional teachings of Matsunaga to provide wherein said first zone has a diamond grit that is rougher than a diamond grit of said second zone, wherein said third zone has a diamond which is finer than the diamond grit of said second zone.
Specifically, it would have been obvious to modify the grit of the tool such that the particle size of the grit on cutting portions closer to the base end side is smaller (finer), wherein the first zone has a grit that is rougher than the grit of the second zone and wherein the third zone has a grit that is finer than the grit of the second zone. Doing so would provide an effective finish grinding (as taught by Matsunaga). Additionally, doing so would promote a higher surface finishing of the workpiece by using the finest grinding particles on the last grinding section.
Matsunaga, as modified, does not explicitly teach wherein the shank reciprocates relative to the workpiece as the shank axially advances,
wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece,
wherein said centering section is precision ground to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Cloutier teaches a bore finishing tool including a shank (fig. 1). Additionally, Cloutier teaches spindle 22 will rotate tool 20 while reciprocatingly stroking tool 20 relative to the workpiece, as denoted by arrow S, in the well-known manner. Additionally, Cloutier teaches tool 20 is representative of a honing tool having a coating of abrasive particles attached to surface 28 and operable for honing a workpiece bore surface as the tool and workpiece are relatively rotated and reciprocated [0027]. Overall, Cloutier teaches rotating and reciprocating a honing tool with respect to the workpiece in order to process the workpiece.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Matsunaga, as modified, to incorporate the teachings of Cloutier to provide wherein the shank reciprocates and rotates relative to the workpiece as the shank axially advances. Doing so would aid in removing grinding debris from the working surface. Additionally, doing so would promote a finer surface finish by conducting multiple passes with the tool through the tool reciprocation.
Matsunaga, as modified, does not explicitly teach
wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece,
wherein said centering section is precision ground to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Kasonde teaches methods for making machining tools (drill tips), wherein the machining tool may be reconditioned from time to time by grinding the tip, which would require the removal of super hard material. Commercially viable drill bits may need to be reground two to four times, with about 200 microns (.2 mm) removed from the surface each time [0005]. Additionally, Kasonde teaches the profile of the precursor construction may be within about 0.3 millimeters (300 microns) of the corresponding profile of the tip. This aspect is likely to reduce substantially the amount of super hard material that will need to be removed when manufacturing the tip [0021]. Overall, Kasonde teaches wherein the machining tool is precision ground to provide micron-level accuracy.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Matsunaga, as modified, to incorporate the teachings of Kasonde to provide wherein said centering section is precision ground to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
Specifically, it would have been obvious to manufacture the tool of Matsunaga (including the centering section) via grinding with micron level accuracy to the desired dimension, wherein the precision ground tool of Matsunaga is capable of aligning with a starting diameter of said workpiece to provide micron level centering accuracy. Doing so would promote quality of the tool and workpiece by promoting accurate and precise tolerances.
Matsunaga, as modified, does not explicitly teach
wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Matsunaga, as modified, to have wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Matsunaga, as modified, would not operate differently with the claimed grit and removal dimensions since the tool would continue to be capable of honing the workpiece. Further, it appears the applicant places no criticality on the dimensions claimed, indicating simply that the grit size on each of the first zone, second zone and third zone is selected based on the material and material hardness of workpiece and the surface finish to be produced [0040 of instant specification].
Regarding claim 17, Matsunaga teaches a method of providing a diametrically non-adjustable (The honing apparatus of figs. 1-2 of Matsunaga is not diametrically adjustable) honing apparatus (figs. 1-2), said method comprising the steps of:
providing a shank (fig. 1);
providing a first zone positioned substantially proximate to a distal end of said shank (see annotated fig. 1 below, the first zone is positioned substantially proximate to a distal end of said shank);
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providing a second zone positioned at a substantial center of said shank (see annotated fig. 1 above, the second zone is positioned at a substantial center of said shank), said first zone having a diamond grit and said second zone having a diamond grit (Matsunaga teaches abrasive grains 29 made of diamond are held on the surfaces of the grinding portions (second paragraph from bottom on page 4 of the attached translation));
providing a third zone positioned adjacent to said second zone (see annotated fig. 1 above, the third zone is positioned adjacent to said second zone), said third zone having a diamond grit (Matsunaga teaches abrasive grains 29 made of diamond are held on the surfaces of the grinding portions (second paragraph from bottom on page 4 of the attached translation));
providing a first tapered section, a flat section extending from said first tapered section, and a second tapered section extending from said flat section, at each of said first zone, said second zone and said third zone (see annotated fig. 1 below. Each of said first zone, said second zone and said third zone are provided with a first tapered section, a flat section extending from said first tapered section, and a second tapered section extending from said flat section);
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positioning said first zone and said second zone spaced apart at a distance from one another (see annotated fig. 1 above, the first zone and the second zone are spaced apart at a distance from one another), and positioning said second zone adjoining said third zone (see annotated fig. 1 above, the second zone is positioned adjoining the third zone);
providing a centering section (fig. 1, tapered guide part 30) positioned at said distal end of said shank (fig. 1), said centering section having a diameter less than a workpiece (fig. 1, the diameter of the centering section at the most distal end is less than a diameter of the hole) such that said workpiece comes in contact with said first tapered section of said first zone to center and align an axis of said shank with said workpiece (fig. 1 and 2, last paragraph on page 4 of the attached translation. Matsunaga teaches the grinding portions 128 to 628 from the most distal end to the most proximal end are formed such that the outer diameters of the maximum diameter portion increase in order from the distal end side toward the proximal end side. Therefore, the workpiece comes into contact with each of the first tapered sections of each of the zones of the shank to center and align an axis of said shank with said workpiece. Specifically, because the diameters of the zones increase from distal to proximal side, the workpiece comes into contact with said first tapered section of said first zone to center and align an axis of said shank with said workpiece);
connecting said shank to the honing apparatus via an adapter (the shank connects to a “honing device” (interpreted as honing apparatus) via a chuck 26 (interpreted as adapter) (page 4 of the attached translation, fourth paragraph from bottom);
manufacturing said shank as a single-piece without separate sleeves or adjustable components (figs. 1-2, wherein the honing apparatus of figs. 1-2 of Matsunaga includes a shank which has a single piece construction without separate sleeves or adjustable components, wherein Matsunaga teaches since the tool is composed only of the shaft body 22 without providing a plurality of parts, the number of parts can be reduced (page 7 of the previously attached translation, second paragraph));
pre-conditioning said honing apparatus to to machine said workpiece (fig. 1 of Matsunaga, the tool is selected to cooperate accordingly with the desired workpiece, wherein this is interpreted as “pre-conditioning” said honing apparatus to machine said workpiece, wherein because the tool corresponds to the workpiece in fig. 1, the tool is “pre-conditioned” to machine said workpiece);
axially advancing said shank towards an area on said workpiece to be precision finished (fig. 1, workpiece 70; Matsunaga teaches when the honing tool is used, the honing unit is fed and moved through the circular hole formed in the work while the honing tool is rotated. The inner peripheral surface of the hole is ground (page 6 of the attached translation, first paragraph)), while rotating relative to said workpiece (fig. 1, workpiece 70; Matsunaga teaches when the honing tool is used, the honing unit is fed and moved through the circular hole formed in the work while the honing tool is rotated. The inner peripheral surface of the hole is ground (page 6 of the attached translation, first paragraph));
centering and aligning said workpiece with said first tapered section of said first zone followed by said second zone and said third zone (fig. 1 and 2, last paragraph on page 4 of the attached translation. Matsunaga teaches the grinding portions 128 to 628 from the most distal end to the most proximal end are formed such that the outer diameters of the maximum diameter portion increase in order from the distal end side toward the proximal end side. Therefore, the workpiece comes into contact with each of the first tapered sections of each of the zones of the shank to center and align an axis of said shank with said workpiece. Specifically, because the diameters of the zones increase from distal to proximal side, the workpiece comes into contact with said first tapered section of said first zone to center and align an axis of said shank with said workpiece followed by said second zone and said third zone); and
removing a stock of material using said first zone, said second zone and said third zone from said workpiece for precision surfacing of said workpiece (page 6 of attached translation, first paragraph).
The embodiment of figs. 1 and 2 of Matsunaga does not explicitly teach
said first zone having a diamond grit that is rougher than a diamond grit of said second zone
said third zone having a diamond grit which is finer than the diamond grit of said second zone;
wherein the shank reciprocates relative to the workpiece as the shank axially advances,
precision grinding said centering section to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Matsunaga additionally teaches the particle size of the abrasive grains 29 in at least one cutting portion on the base end side is made smaller than the particle size of the abrasive grains 29 in other cutting portions on the distal end side. In this way, effective finish grinding is performed by the cutting portion on the base end side (second to last paragraph on page 9 of the attached translation). Overall, Matsunaga additionally teaches using smaller particle size grit on cutting portions closer to the base end side in order to provide an effective finish grinding.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Matsunaga to incorporate the additional teachings of Matsunaga to provide wherein said first zone has a diamond grit that is rougher than a diamond grit of said second zone, wherein said third zone has a diamond which is finer than the diamond grit of said second zone.
Specifically, it would have been obvious to modify the grit of the tool such that the particle size of the grit on cutting portions closer to the base end side is smaller (finer), wherein the first zone has a grit that is rougher than the grit of the second zone and wherein the third zone has a grit that is finer than the grit of the second zone. Doing so would provide an effective finish grinding (as taught by Matsunaga). Additionally, doing so would promote a higher surface finishing of the workpiece by using the finest grinding particles on the last grinding section.
Matsunaga, as modified, does not explicitly teach
wherein the shank reciprocates relative to the workpiece as the shank axially advances,
precision grinding said centering section to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Cloutier teaches a bore finishing tool including a shank (fig. 1). Additionally, Cloutier teaches spindle 22 will rotate tool 20 while reciprocatingly stroking tool 20 relative to the workpiece, as denoted by arrow S, in the well-known manner. Additionally, Cloutier teaches tool 20 is representative of a honing tool having a coating of abrasive particles attached to surface 28 and operable for honing a workpiece bore surface as the tool and workpiece are relatively rotated and reciprocated [0027]. Overall, Cloutier teaches rotating and reciprocating a honing tool with respect to the workpiece in order to process the workpiece.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Matsunaga, as modified, to incorporate the teachings of Cloutier to provide wherein the shank reciprocates and rotates relative to the workpiece as the shank axially advances. Doing so would aid in removing grinding debris from the working surface. Additionally, doing so would promote a finer surface finish by conducting multiple passes with the tool through the tool reciprocation.
Matsunaga, as modified, does not explicitly teach
precision grinding said centering section to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
However, Kasonde teaches methods for making machining tools (drill tips), wherein the machining tool may be reconditioned from time to time by grinding the tip, which would require the removal of super hard material. Commercially viable drill bits may need to be reground two to four times, with about 200 microns (.2 mm) removed from the surface each time [0005]. Additionally, Kasonde teaches the profile of the precursor construction may be within about 0.3 millimeters (300 microns) of the corresponding profile of the tip. This aspect is likely to reduce substantially the amount of super hard material that will need to be removed when manufacturing the tip [0021]. Overall, Kasonde teaches wherein the machining tool is precision ground to provide micron-level accuracy.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Matsunaga, as modified, to incorporate the teachings of Kasonde to provide precision grinding said centering section to align with a starting diameter of said workpiece to provide micron-level centering accuracy.
Specifically, it would have been obvious to manufacture the tool of Matsunaga (including the centering section) via grinding with micron level accuracy to the desired dimension, wherein the precision ground tool of Matsunaga is capable of aligning with a starting diameter of said workpiece to provide micron level centering accuracy. Doing so would promote quality of the tool and workpiece by promoting accurate and precise tolerances.
Response to Arguments
5. Applicant's arguments filed 9/26/2025 have been fully considered but they are not persuasive.
Applicant submits that the prior art fails to teach the amended language for the following reasons:
Fundamental Structural Differences
Applicant submits the claims now explicitly recite the shank is “a monolithic single-piece construction without separate sleeves or adjustable components”, wherein Matsunaga teaches an adjustable sleeve system. Applicant argues Matsunaga’s design shows structural elements that appear inconsistent with a truly fixed tool, particularly regarding the “guide part” (page 7 of Applicant’s remarks). The examiner respectfully disagrees.
As previously provided in the response to arguments in the rejection mailed 7/10/2025, the relied upon embodiment of Matsunaga (figs. 1-2) is a non-adjustable honing tool. Although Matsunaga teaches other embodiments of adjustable honing tools, the honing tool of figs. 1-2 is non-adjustable. On page 7 of the previously attached translation of Matsunaga, second paragraph, Matsunaga teaches since the tool is composed only of the shaft body 22 without providing a plurality of parts, the number of parts can be reduced. Overall, the relied upon embodiment of Matsunaga teaches a non-adjustable honing tool and teaches the amended language of “single-piece construction” as particularly claimed. See above rejection for more details.
Custom Manufacturing and Pre-Conditioning Process
Applicant argues the amended language requires the apparatus to be “pre-conditioned”, which involves determining customer specifications and custom manufacturing the tool accordingly. This eliminates the need for field adjustment (page 8 of Applicant’s remarks). The examiner respectfully disagrees.
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., determining customer specifications and custom manufacturing the tool accordingly) 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, 26 USPQ2d 1057 (Fed. Cir. 1993).
That is, the language of claim 17 generally recites preconditioning said honing apparatus to machine said workpiece. Matsunaga, as modified, teaches pre-conditioning said honing apparatus to machine said workpiece (fig. 1 of Matsunaga, the tool is selected to cooperate accordingly with the desired workpiece, wherein this is interpreted as “pre-conditioning” said honing apparatus to machine said workpiece, wherein because the tool corresponds to the workpiece in fig. 1, the tool is “pre-conditioned” to machine said workpiece). Overall, Matsunaga, as modified, teaches the claim language under Broadest Reasonable Interpretation (BRI). See above rejection for more details.
Precision Centering Function
Applicant argues the amended language requires “micron level centering accuracy” which is achieved through precision grinding and that Matsunaga’s progressive engagement approach is different (page 8 of Applicant’s remarks).
However, Matsunaga alone was not relied upon to teach the amended language. Rather, Matsunaga, as modified, incorporates the teachings of Kasonde who teaches methods for making machining tools (drill tips), wherein the machining tool may be reconditioned from time to time by grinding the tip, which would require the removal of super hard material. Commercially viable drill bits may need to be reground two to four times, with about 200 microns (.2 mm) removed from the surface each time [0005]. Additionally, Kasonde teaches the profile of the precursor construction may be within about 0.3 millimeters (300 microns) of the corresponding profile of the tip. This aspect is likely to reduce substantially the amount of super hard material that will need to be removed when manufacturing the tip [0021]. Kasonde teaches wherein the machining tool is precision ground to provide micron-level accuracy.
Overall, Matsunaga was further modified to incorporate the teachings of Kasonde to teach the amended language. Additionally, the phrase “precision grinding said centering section” has been rejected under 35 USC 112(a) as detailed above. See above rejection for more details.
Unexpected Results and Technical Advantages
Applicant argues the instant invention produces unexpected results including single pass precision finishing through the grit progressions, elimination of operator skill requirements due to non-adjustability and extended tool life through the different zones (page 10 of Applicant’s remarks). The examiner respectfully disagrees.
Matsunaga, as modified, teaches the structure as claimed and is capable of single pass precision finishing through grit progressions (as additionally taught by Matsunaga), elimination of operator skill requirements through non-adjustability (wherein the relied upon embodiment of Matsunaga is non-adjustable), and extended tool life through the different zone (see different zones of Matsunaga). Overall, Matsunaga, as modified, teaches the claimed invention including the structural recitations and Matsunaga, as modified, is capable of performing and achieving the argued unexpected results. See above rejection for more details.
Teaching away from claimed invention
Applicant argues Cloutier’s adjustability directly contradicts the instant diametrically nonadjustable approach and that Matsunaga does not teach the custom pre-conditioning process. Applicant also argues the guide part 30 of Matsunaga cannot function as a guide and also expand the honing tool. The examiner respectfully disagrees.
Cloutier was only relied upon to teach rotating and reciprocating the tool and was not relied upon to teach non-adjustability. Rather, Matsunaga’s relied upon embodiment teaches non adjustability. As detailed in the above response to arguments, Matsunaga, as modified, teaches the preconditioning step as claimed. Additionally, because Matsunaga is a nonadjustable tool, the guide part 30 does not expand the honing tool. See above rejection for more details.
Applicant argues the claimed grit sizes achieve unexpected results such as completion in a single pass. The examiner respectfully disagrees. Matsunaga, as modified, teaches multiple zones with different grinding grits which is capable of completion in a single pass. See above rejection for more details.
Applicant argues Cloutier’s teaching of adjustability contradicts the non-adjustable nature of the claimed invention (page 11 of Applicant’s remarks). However, as noted above, Cloutier was not relied upon to teach a non-adjustable nature. Rather, Matsunaga was relied upon to teach a non-adjustable nature as claimed. See above rejection for more details.
Applicant argues the claimed invention achieves unexpected results by enabling the three zone system to achieve precision finishing that traditional tools cannot achieve in a single pass. Additionally, Applicant argues the prior art does not disclose the specific grit size ranges recited in the claims. Applicant argues the reliance on Gardner v. TEC Systems is misplaced because the grit sizes as claimed are specifically selected based on workpiece material and hardness. Applicant also argues neither Matsunaga nor Cloutier provides motivation to combine their teachings to achieve the specific three zone system as recited which allows for single pass processing (pages 12 and 13 of Applicant’s remarks). The examiner respectfully disagrees.
As noted in the above response to arguments, Matsunaga, as modified, teaches the claimed structure and is capable of performing the alleged unexpected results which includes processing in a single pass. Matsunaga was relied upon to teach the different zones. Regarding the claimed grit sizes, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Matsunaga, as modified, to have wherein said first zone has the diamond grit which removes the stock of material of about 0.1 millimeter from said workpiece, wherein said second zone has the diamond grit which removes the stock of material of about 0.02 millimeter from said workpiece, and said third zone has the diamond grit which removes the stock of material of about 0.0006-0.0013 millimeter from said workpiece since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Matsunaga, as modified, would not operate differently with the claimed grit and removal dimensions since the tool would continue to be capable of honing the workpiece. Further, it appears the applicant places no criticality on the dimensions claimed, indicating simply that the grit size on each of the first zone, second zone and third zone is selected based on the material and material hardness of workpiece and the surface finish to be produced [0040 of instant specification]. Applicant’s statement that the Gardner rationale is misplaced due to the grit sizes being selected according to the workpiece material and hardness does not provide adequate criticality or unexpected results and the burden is on the Applicant to establish results are unexpected and significant (MPEP 716.02). As provided in the above response to arguments, Matsunaga was relied upon to teach the different zones, wherein Matsunaga, as modified, is capable of single pass operations. See above rejections for more details.
Conclusion
6. 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.
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/MICHAEL A GUMP/Examiner, Art Unit 3723