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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the teeth of the cutting edges recited in claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the specification lacks recitation of a cutting surface with detail numbers referencing such features in the drawings.
Appropriate correction is required.
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 2, 3, 12, 14 and 15 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 2 recites “the first and second cutting surfaces are co-axial.” The limitation contains new matter because there is no support in the specification at the time of filing for cutting surfaces being co-axial. Appropriate correction required.
Claim 3 recites “the first cutting surface comprises teeth . . . the second cutting surface comprises teeth . . . .” The limitations contain new matter because each lacks support in the specification at the time of filing. The specification does not support a cutting surface having teeth. Appropriate correction required.
Claim 12 recites “a series of gears forming a first arm . . . .” The series of gears forming the first arm is new matter. Appropriate correction required.
Claim 12 recites “the second arm comprises gears of the series of gears. . . .” Yet, the series of gears is recited as forming the first arm. It is new matter that the first arm is included in the second arm. 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 2, 3, 9, 11, 12, 14 and 15 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 2 recites “each of the first and second rotary cutters defines an axis of rotation, wherein the first and second cutting edges are co-axial.” It is unclear whether each rotary cutter defines one axis of rotation or if there is a respective axis or rotation associated with each cutting edge. It is also unclear if the first and second cutting surfaces are co-axial relative to the axis of rotation or otherwise considered co-axial. Appropriate correction required.
Claim 3 recites “the first cutting surface comprises teeth” in Line 3, and recites “the second cutting surface comprises teeth” in Lines 4-5. It is unclear what is meant by the cutting surface having teeth. It is unclear how the surface has teeth. Appropriate correction required.
Claim 9 recites “the second arm comprises a series of gears.” This limitation already has antecedent basis in claim 1. As such, it is unclear if this recitation is the same as, or different than, the previous recitation in claim 1. Appropriate correction required.
Claim 9 recites “the other gears of the series of gears.” This limitation lacks proper antecedent basis. Appropriate correction required.
Claim 11 recites “the angle ranges between 75° and 105°.” It is unclear what is meant by the angle “ranges” between the extremities. In particular, it is unclear if the angle somehow changes or is merely within the range of the extremities. Appropriate correction required.
Claim 12 recites “the first arm is an extension arm that increases a distance between the spindle and the cutter in a direction of the spindle longitudinal axis . . . .” It is unclear whether the first arm is configured to somehow increase a distance as claimed or if it merely is an extension having a length such that the cutter is spaced apart from the spindle. Furthermore, the recitation of “in a direction of the spindle axis” is ambiguous as to whether the direction is parallel to the spindle axis, the spindle axis defines a direction or the direction is toward the spindle axis. Appropriate correction required.
Claim 12 recites “the second arm comprises gears of the series of gears. . . .” Yet, the series of gears is recited as forming the first arm. It is unclear if the series of gears in the second arm is the first arm or is a different series from the first arm. Appropriate correction required.
Claim 14 recites “the gears of the first arm” in Lines 1-2. This limitation lacks proper antecedent basis. 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 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (KR 100804811 B1) in view of DE 202004002888 U, or in the alternative, 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 cutter (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 cutter 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 cutter (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 cutter (Figs. 3a-4). The cutter includes a first rotary cutter provided with a cutting surface capable of cutting as the machine tool head is moved in a first direction; and a second rotary cutter provided with a second cutting surface capable of cutting as the machine tool head is moved in a second direction (Figs. 2-4; Translation Pages 4-8).
In the alternative, if the presence of a cutter in Kang is traversed, 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). 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 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 takes official notice.
The first and second rotary cutters are co-axial (Kang Fig. 2; Miao Fig. 1). The second arm includes a series of gears and the first rotary cutter and the second rotary cutter 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). While Kang discloses the tools rotating together (Fig. 2), the reference does not explicitly disclose that the cutters are keyed to one another such that the first and second rotary cutters rotate together.
DE 202004002888 U1 (‘888) discloses first and second rotary cutters are keyed to one another 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 International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(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 cutting surfaces, as best understood, are co-axial (Kang Fig. 2, Translation Pages 4-8).
(Claim 3) In modified Kang device, the first and second cutting surfaces are rotated about the axis of rotation in a common direction (Kang Fig. 2, Translation Pages 4-8). As best understood, the first cutting surface comprises teeth (edges) configured for cutting as the machine tool head is moved in the first direction, and/or the second cutting surface comprises teeth (edges) configured for cutting as the machine tool head is moved in the second direction. In the event that Applicant means that the cutting edges are on cutting teeth or cutting inserts, and because the well-known assertion1 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.
(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 arm (114) includes, as best understood, a series of gears, 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, as best understood, ranges 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 cutter (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 cutter 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 cutting operation and a second cutting operation and with the machine tool head remaining within the cavity between the cutting operations (Figs. 1-4); and a drive train (120) configured to connect the cutter to an actuator (Figs. 3a-4). Kang discloses 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 cutter (Figs. 3a-4). The gear train includes a series of gears forming a first arm (within 112) and a second arm (within 114). The first arm gears are arranged to transfer drive between the spindle and the second arm, and the second arm includes gears of the series of gear arranged to transfer drive between the first arm and the cutter (Figs. 3a-4). As best understood, the first arm is an extension arm that increases a distance between the spindle and the cutter in a 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 (Figs. 2-4). The second arm longitudinal axis is at an angle of 75° and 105° to the first arm longitudinal axis (Figs. 2-4).
In the alternative, if the presence of a cutter in Kang is traversed, Miao et al. (“Miao”) discloses a machine tool head (Fig. 1) having a milling cutter (9; Fig. 1). 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 cutter 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 takes official notice.
The first and second rotary cutters are co-axial (Kang Fig. 2; Miao Fig. 1). While Kang discloses the tools rotating together (Fig. 2), the reference does not explicitly disclose that the cutters are keyed to one another such that the first and second rotary cutters rotate together.
DE 202004002888 U1 (‘888) discloses first and second rotary cutters are keyed to one another 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 International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(Claim 14) The gears of the first arm (112) have an axis of rotation that is substantially 90° to the spindle longitudinal axis (Figs. 3a-4).
(Claim 15) The series of gears, each have an axis of rotation parallel to one another (Figs. 3a-4).
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.2 Applicant argues that the Kang reference fails to disclose first and second rotary cutters keyed to a common gear. In addition, relative to claim 12, Applicant alleges that the Kang references lacks disclosure of the intended use environment (i.e., a specific workpiece). Examiner disagrees.
Applicant fails to address the combination of references. In response to applicant's arguments against the references individually, 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). The combination of references read upon the limitation requiring a key linking to a common gear. Kang has the common gear and the German teaching references discloses a key linking rotation. Thus, the prior art of record reads upon the claimed invention.
In response to applicant's argument that Kang lacks a disclosure of the claimed workpiece, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Because the Kang device is capable of working in the claimed environment, the prior art reads upon the claimed invention.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 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).
2 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.