DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 7, 2026 has been entered.
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.
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 3 and 9 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 3 recites “the first series of teeth form the first cutting edge and the second series of teeth form the second cutting edge” in Lines 6-7. The limitation 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 had possession of the invention at the time of filing. Both the cutting edges and the cutting teeth are identified as the same things in the Figures. Each callout of these features merely points to what appears to be cutting inserts. The difference between cutting edges and cutting teeth is not conveyed in a manner that one of ordinary skill would understand that the inventor had possession of the invention. Appropriate correction required.
Claim 9 recites “a second series of gears forming the second arm” in Line 2. This recitation contains new matter. Claim 1 already sets forth for a series of gears in the second arm. At the time of filing, the specification lacks support for two series of gears. 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 3, 9, 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 3 recites “the first series of teeth form the first cutting edge and the second series of teeth form the second cutting edge” in Lines 6-7. Both the cutting edges and the cutting teeth are identified as the same things in the Figures. Each callout of these features merely points to what appears to be cutting inserts. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999). The term “cutting teeth” is indefinite because the specification does not clearly redefine the term. Appropriate correction required.
Claim 9 recites “a second series of gears forming the second arm” in Line 2. It is unclear whether the second series of gears is the same series as recited in claim 1 or if it is a different/additional series. It is unclear how the second series, which apparently forms the second arm, could exist with the series that apparently does not form the second arm but is nevertheless still present. Appropriate correction required.
Claim 12 recites “the first arm is configured as an extension such that the distance between the spindle and the cutter along a direction parallel to the spindle axis is increased” Lines 22-23. It is unclear from what feature that the distance is increased relative to in the claimed device. The claim states that a distance is increased but fails to refer to a comparison feature/position. 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). As best understood, the first rotary cutter includes a first series of teeth (edges) 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 (edges) 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. As best understood, the first series of teeth form the first cutting edge and the second series of teeth form 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) As best understood, a second series of gears forms 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 such that the distance between the spindle and the cutter along a direction parallel to the spindle longitudinal axis is increased (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 April 7, 2026 have been fully considered but they are not persuasive.5 Applicant argues that claim 3 avoids scrutiny under 35 USC 112 because the specification refers to cutting edges with cutting teeth. Applicant argues that the Kang reference fails to disclose first and second rotary cutters keyed to a common gear. In fact, according to Applicant, the tools in Kang are not even driven by the same gear. In addition, Applicant asserts that the DE 202004002888 U1 reference discloses a key between a gear and spindle. Turning to The Miao reference, Applicant argues that the cutters are directly connected to a drive shaft, not a gear. Furthermore, Applicant once more contends that the mode of operation per claim 12 is not disclosed in Kang. Examiner disagrees.
As stated in the rejection above, the identification of cutting edges and cutting teeth appear to overlap. Furthermore, the mention to cutting tips further muddies the waters. The fact is that the claim scope isn’t clear and the specification lacks description of the differences between these features such that one of ordinary skill would understand that the inventor possessed the invention at the time of filing. Moreover, the teeth are not truly shown in the Figures. The drawings merely point to a cutting insert. Thus, the rejections have been maintained.
Applicant’s argument against Kang is unclear. The argument appears to point to features that are not in the drawings. It is unclear how Applicant arrives at the conclusion that the rotary tools are driven by a shaft and not a gear, despite clearly pointing out the drive gear 133. The gear 133 is wrapped about an integral shaft, but this 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.
A feature missing from Kang is the key. Applicant errs in believing the language employed requires more than one key having respective direct coupling requirements. As such, the tool spindle (to which both tools are part thereof) of the DE 202004002888 U1 reference being direction connected to the drive gear reads upon the claimed limitation.
Regarding 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).
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).
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 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