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 12, 14, 15 and 19 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 12 recites “the first arm is configured as an extension configured to increase the distance between the spindle and the cutter in the direction of the spindle longitudinal axis” Lines 21-22. It is new matter that the extension is configured to increase the distance between the spindle and the cutter. Appropriate correction required.
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 12, 14, 15 and 19 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 12 recites “the first arm is configured as an extension configured to increase the distance between the spindle and the cutter in the direction of the spindle longitudinal axis” Lines 21-22. It is unclear whether the extension merely represents a distance between the spindle and the cutter as is disclosed or if the extension is meant to somehow increase the distance between the spindle and the cutter as the language suggests. 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 1-3, 7-12, 14, 15, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (KR 100804811 B1) in view of Miao et al. (CN 103406795 A), or alternatively, over Kang et al. (KR 100804811 B1) in view of Miao et al. (CN 103406795 A) and DE 202004002888 U.
(Claim 1) Kang et al. (“Kang”) discloses a machine tool head (100) that includes a tool (190; Fig. 2) capable of machining internal surfaces of a cavity defined by a monobloc caliper for a disc brake assembly (Figs. 2-4); and a drive train (120) configured to connect the rotary tool to an actuator (Figs. 3a-4). The drive train having a spindle (1212) configured to connect the drive train to the actuator (Figs. 3a-4). The spindle defines a spindle longitudinal axis about which the spindle is configured to rotate (Figs. 3a-4). The drive train further includes a gear train (122, 123, 124) configured to connect the spindle to the tool (Figs. 3a-4). The gear train includes a first arm (within 112) and a second arm (within 114). The first arm is configured to provide a driven connection between the spindle and the second arm, and the second arm is configured to provide a driven connection between the first arm and the tool (Figs. 3a-4). The tool includes a first rotary tool capable of machining as the machine tool head is moved in a first direction; and a second rotary tool capable of cutting as the machine tool head is moved in a second direction (Figs. 2-4; Translation Pages 4-8). The second arm includes a series of gears and the first rotary tool and the second rotary tool are fixed to a common gear (133) of the series of gears such that the first rotary cutter rotates with the second rotary cutter (Fig. 2). Kang does not explicitly disclose the tool as a cutter having cutting edges on the first and second tools; and the cutters directly connected via a key to a common drive gear.
Miao et al. (“Miao”) discloses a machine tool head (Fig. 1) having a milling cutter (9) that includes a first cutting edge capable of cutting as the machine tool head is moved in a first direction; and a second cutting edge capable of cutting as the machine tool head is moved in a second direction (Fig. 1, also cutting edges are inherent on milling cutters). Miao also discloses each of the first and second cutters are keyed directly to a common drive gear (7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with a milling cutter having cutting edges as suggested by Miao in order to perform a material removal operation (i.e., shaping operation) on a workpiece as is well-known in the milling art, the fact of which examiner previously took official notice.1 Furthermore, at a time prior to filing it would have been obvious to provide the machine head disclosed in Kang with the keyed drive relationship between the common gear and the cutters as suggested by Miao as mere application of a known technique to a known device for the predictable result of linking rotation of the opposed tools. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
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It is worth noting that the disclosure of Miao (see Transation) states that the connection between the driven gear shaft (2) and the connection plate (1). This noteworthy because the depiction of the key is the same for the cutters.
In the alternative to the keys of Miao, DE 202004002888 U1 (‘888) discloses first and second rotary cutters directly keyed to the common drive gear such that the first and second rotary cutters rotate together (33; Fig. 1; Translation Page 3). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with a keyed connection linking rotation between the tools as suggested by ‘888 as mere application of a known technique to a known device for the predictable result of linking rotation of the opposed tools. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness). It is worth noting that the claim only requires that each cutter is directly keyed to a common gear. Both cutters are directly keyed to the common gear via the one key.
(Claim 2) In the modified Kang device, each of the first and second rotary cutters defines an axis of rotation, and wherein the first and second rotary cutters are co-axial (Kang Fig. 2, Translation Pages 4-8).
(Claim 3) In modified Kang device, the first and second rotary cutters are rotated about the axis of rotation in a common direction (Kang Fig. 2, Translation Pages 4-8). The first rotary cutter includes a first series of teeth configured for cutting as the machine tool head is moved in the first direction, and/or the second cutting surface includes a second series of teeth configured for cutting as the machine tool head is moved in the second direction (Miao Fig. 1). In the event that Applicant means that the cutting edges are on cutting teeth or cutting inserts, and because the well-known assertion2 was not traversed, the well-known assertion is taken as admitted prior art. See MPEP § 2144.03 C. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with cutting inserts as is well-known in the art for the purpose of replacement upon wear. Each tooth of the first series of teeth has a cutting tip that forms the first cutting edge, and the second series of teeth has a cutting tip that forms the second cutting edge.
(Claim 7) The first arm (112) defines a first arm longitudinal axis, and the first arm longitudinal axis is substantially parallel to the spindle longitudinal axis (Figs. 3a-4).
(Claim 8) The first arm (112) includes at least one gear having an axis of rotation extending substantially 90° to the spindle longitudinal axis (Figs. 3a-4).
(Claim 9) The second series of gears of the second arm (114), each gear having an axis of rotation parallel to that of, as best understood, the other gears of the series of gears (Figs. 3a-4).
(Claim 10) The first arm (112) defines a first arm longitudinal axis, and the second arm (114) defines a second arm longitudinal axis (Figs. 2-4). The second arm longitudinal axis is at an angle of between 30° and 150° to the first arm longitudinal axis (Figs. 2-4).
(Claim 11) The angle is between 75° and 105° to the first arm longitudinal axis (Figs. 2-4).
(Claim 12) Kang discloses a machine tool head (100) that includes a tool (190; Fig. 2) capable of machining internal surfaces of a cavity defined by a monobloc caliper for a disc brake assembly, the cavity including a main chamber and a bearing chamber that opens onto and is accessible from the main chamber, (Figs. 2-4); the tool is capable of machining two bearing support surfaces provided on the same face within the bearing chamber without re-orientation of the machine tool head between a first processing operation and a second processing operation and with the machine tool head remaining within the cavity between the cutting operations (Figs. 1-4). Kang discloses a drive train (120) configured to connect the rotary tool to an actuator (Figs. 3a-4). The drive train having a spindle (1212) configured to connect the drive train to the actuator (Figs. 3a-4). The spindle defines a spindle longitudinal axis about which the spindle is configured to rotate (Figs. 3a-4). The drive train further includes a gear train (122, 123, 124) configured to connect the spindle to the tool (Figs. 3a-4). The gear train includes a series of gears forming a first arm (within 112) and a second series of gears forming a second arm (within 114). The first series of gears are arranged to transfer a driven connection between the spindle and the second arm, and the second series of gears are arranged to provide a driven connection between the first arm and the tool (Figs. 3a-4). The tool includes a first rotary tool capable of machining as the machine tool head is moved in a first direction; and a second rotary tool capable of cutting as the machine tool head is moved in a second direction (Figs. 2-4; Translation Pages 4-8). The second arm includes a series of gears and the first rotary tool and the second rotary tool are fixed to a common gear (133) of the series of gears such that the first rotary cutter rotates with the second rotary cutter (Fig. 2). As best understood, the first arm is configured as an extension configured to increase that the distance in the direction of the spindle longitudinal axis (Figs. 3a-4). The first arm (112) defines a first arm longitudinal axis that is substantially parallel to the spindle longitudinal axis, and the second arm (114) defines a second arm longitudinal axis that is at an angle to the first arm longitudinal axis; the angle is between of 75° and 105° (Figs. 2-4). Kang does not explicitly disclose the tool as a cutter having cutting edges on the first and second tools; and the cutters directly connected via a key to a common drive gear.
Miao et al. (“Miao”) discloses a machine tool head (Fig. 1) having a milling cutter (9) that includes a first cutting edge capable of cutting as the machine tool head is moved in a first direction; and a second cutting edge capable of cutting as the machine tool head is moved in a second direction (Fig. 1, also cutting edges are inherent on milling cutters). Miao also discloses each of the first and second cutters are keyed directly to a common drive gear (7, 8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with a milling cutter having cutting edges as suggested by Miao in order to perform a material removal operation (i.e., shaping operation) on a workpiece as is well-known in the milling art, the fact of which examiner previously took official notice.3 Furthermore, at a time prior to filing it would have been obvious to provide the machine head disclosed in Kang with the keyed drive relationship between the common gear and the cutters as suggested by Miao as mere application of a known technique to a known device for the predictable result of linking rotation of the opposed tools. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
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It is worth noting that the disclosure of Miao (see Transation) states that the connection between the driven gear shaft (2) and the connection plate (1). This noteworthy because the depiction of the key is the same for the cutters.
In the alternative to the keys of Miao, DE 202004002888 U1 (‘888) discloses first and second rotary cutters directly keyed to the common drive gear such that the first and second rotary cutters rotate together (33; Fig. 1; Translation Page 3). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with a keyed connection linking rotation between the tools as suggested by ‘888 as mere application of a known technique to a known device for the predictable result of linking rotation of the opposed tools. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness). It is worth noting that the claim only requires that each cutter is directly keyed to a common gear. Both cutters are directly keyed to the common gear via the one key.
(Claim 14) The gears of the first arm (Kang 112) have an axis of rotation that is substantially 90° to the spindle longitudinal axis (Kang Figs. 3a-4).
(Claim 15) The series of gears, each have an axis of rotation parallel to one another (Kang Figs. 3a-4).
(Claim 19) Each gear of the second series of gears has an axis of rotation parallel to the axis of rotation of the first series of gears (Kang Figs. 3a-4).
(Claim 20) Kang discloses a machine tool head (100) that includes a tool (190; Fig. 2) capable of machining internal surfaces of a cavity defined by a monobloc caliper for a disc brake assembly (Figs. 2-4); and a drive train (120) configured to connect the rotary tool to an actuator (Figs. 3a-4). The drive train having a spindle (1212) configured to connect the drive train to the actuator (Figs. 3a-4). The spindle defines a spindle longitudinal axis about which the spindle is configured to rotate (Figs. 3a-4). The drive train further includes a gear train (122, 123, 124) configured to connect the spindle to the tool (Figs. 3a-4). The gear train includes a first arm (within 112) and a second arm (within 114). The first arm is configured to provide a driven connection between the spindle and the second arm, and the second arm is configured to provide a driven connection between the first arm and the tool (Figs. 3a-4). The tool includes a first rotary tool capable of machining as the machine tool head is moved in a first direction; and a second rotary tool capable of cutting as the machine tool head is moved in a second direction (Figs. 2-4; Translation Pages 4-8). The first and second rotary tools are capable of rotating about a common axis of rotation (Figs. 2-4). The common axis of rotation is offset from the spindle longitudinal axis (Figs. 3a-4). Kang does not explicitly disclose the tool as a cutter having cutting edges on the first and second tools.
Miao et al. (“Miao”) discloses a machine tool head (Fig. 1) having a milling cutter (9) that includes a first cutting edge capable of cutting as the machine tool head is moved in a first direction; and a second cutting edge capable of cutting as the machine tool head is moved in a second direction (Fig. 1, also cutting edges are inherent on milling cutters). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the machine head disclosed in Kang with a milling cutter having cutting edges as suggested by Miao in order to perform a material removal operation (i.e., shaping operation) on a workpiece as is well-known in the milling art, the fact of which examiner previously took official notice.4
Response to Arguments
Applicant's arguments filed August 10, 2026 have been fully considered but they are not persuasive.5 Applicant argues that the rejection falls short of rationale for why one having ordinary skill would “eliminate the shaft-mediated tool drive and directly key both cutters to the claimed common gear.” (Applicant Remarks at Page 10). Relative to the Miao reference, Applicant argues that the cutters are directly connected to a drive shaft, not a gear. In addition, Applicant asserts that the DE 202004002888 U1 reference discloses a key between a gear and spindle (not a direct connection between tool and gear). Examiner disagrees.
The modification of Kang reads upon the claimed invention. The modification does not eliminate the drive shaft. The gear (Kang 133) and the shaft (Kang 131) are integral such that those features are designated as the common gear. That is, the gear 133 is wrapped about an integral shaft, which is the same structure in Applicant’s disclosed invention (Fig. 7 of current application). Thus, both rotary tools would be driven by the same drive gear.
Turning to the teaching references, Applicant argues against each reference individually. It must be recognized that 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 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). With regard to Miao, once more the drive gear is wrapped about a shaft in which the rotary cutting tools are inserted. This structure is similar to that disclosed in Applicant’s own application. The rotary cutters are individually, and directly, keyed to the drive gear. Thus, Miao provides a teaching of rotary cutting tools directly keyed to a drive gear. This configuration is well-known in the art (i.e., using a key to transfer rotary drive between driven components). Furthermore, the suggestion is provided to provide keys to transfer drive between the rotary gear (shaft portion in which tools are inserted) and the tools disclosed in Kang. Thus, the combination reads upon the claimed invention.
Turning to the DE 202004002888 U1 reference, Applicant once more fails to address the resulting modification and instead argues against the reference in isolation. Nevertheless, the prior art teaches the known configuration of keys for providing transfer of rotary motion between components. This suggestion would prompt one having ordinary skill in the art to modify Kang to transfer the rotation from the gearing to the cutters.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Auffret et al. (FR 3096913 A1).
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
1 Because the well-known assertion was not traversed, the well-known assertion is taken as admitted prior art. See MPEP § 2144.03 C.
2 Official notice was taken that cutting inserts with cutting edges are well-known in the art for replacement (re-using cutter body) after the cutting edges are worn. (Non-Final Rejection of September 19, 2025).
3 Because the well-known assertion was not traversed, the well-known assertion is taken as admitted prior art. See MPEP § 2144.03 C.
4 Because the well-known assertion was not traversed, the well-known assertion is taken as admitted prior art. See MPEP § 2144.03 C.
5 Applicant argues that “substantially” parallel or perpendicular relates to an approximation accounting for room from perfect. Yet, Applicant recites to a parallel relationship in other claims without the use of “substantially,” which means that parallel alone must be a strict, or perfect, requirement.
Prosecution Insights