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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant's election with traverse of Invention I, claims 1-11 in the reply filed on 11 March 2026 is acknowledged. The traversal is on the ground(s) that there would be no burden on the Examiner to examine the non-elected inventions. This is not found persuasive because the restriction requirement was made under 37 CFR 1.475(a), Requirement for Unity of Invention, which does not have a burden requirement as a basis for restriction. It is noted however that claims 12-17, which require the boring bar of elected claim 1, will be considered for rejoinder should claim 1 be found to be allowable during examination.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 March 2026.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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.
Regarding claim 8, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Rouch et al. (US 5,170,103) in view of Redmond et al. (US 5,913,955).
Regarding claim 1, Rouch et al. discloses a boring bar 12 (figure 12) for a non-rotating boring tool, the boring bar comprising: an elongated body 12 configured for attachment to a support structure 14 of a metal cutting machine 10, the elongated body having a rear end (left side in figure 12) and an opposite front end 17, the front end being arranged to carry a tool part 18 provided with a cutting element 20; and at least two electrically controlled vibration actuators 464/465 for active vibration damping of the boring bar, each of the at least two actuators including a moveably arranged damping mass 448 and being configured, by movement of the damping mass, to generate vibratory forces in parallel or at least substantially in parallel with a working axis 30 of the actuator that is perpendicular to a centre axis 13 of the damping mass, wherein each of the at least two actuators is a single-axis actuator having one single working axis 30, wherein the at least two actuators are arranged in a longitudinal series in the elongated body with the centre axis of the damping mass of each one of these actuators coinciding or substantially coinciding with a longitudinal axis of the elongated body (see figure 12 and column 11, line 50, to column 12, line 59).
Rouch et al. does not disclose wherein the at least two actuators are arranged with their working axes angularly offset from each other. Redmond et al. teaches that it is beneficial to use two vibration damping actuators C1/C2 with their working axes offset from each other in a boring bar for the purpose of reducing chatter during a cutting operation (see figure 13, also see column 13, line 35, to column 14, line 24, and column 15, lines 7-43). Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the actuators of Rouch et al. to have offset working axes as taught by Redmond et al. in order to reduce chatter and improve the quality of the cutting operation.
Regarding claim 2, the modified invention of Rouch et al. discloses wherein said at least two actuators C1/C2 are n in number, wherein n≥2 (n=2 in this instance), and are so arranged in the elongated body that each of the n actuators has its working axis oriented at an angle of 180°/n to another one of these n actuators (actuators C1 and C2 are 90 degrees apart (180/2), see figure 13 of Redmond et al.) wherein the n actuators have their respective working axes evenly angularly distributed (being 90 degrees apart from each other), and wherein the working axis of each one of these n actuators has an individual angular orientation that is different from the angular orientations of the working axes of the other ones of the n actuators (as seen in figure 13 of Redmond et al.).
Regarding claim 3, the modified invention of Rouch et al. discloses wherein each couple of adjacent actuators C1/C2 are arranged such that their working axes are oriented at an angle of 180°/n to each other (being 90 degrees apart from each other, see figure 13 of Redmond et al.).
Regarding claim 4, the modified invention of Rouch et al. discloses wherein the elongated body 12 includes an elongated main part configured for attachment to a support structure 14 of a metal cutting machine 10, the main part having a rear end and an opposite front end, a front part having a rear end facing the front end of the main part and an opposite front end, the front end of the front part being arranged to carry said tool part, and at least one damping module arranged between the front end of the main part and the rear end of the front part and accommodating one or more of said at least two actuators 464/465 (modified with actuators C1 and C2), and wherein the front part of the elongated body is connected to the main part thereof via the at least one damping module, wherein the at least one damping module constitutes a length section of the elongated body (see annotated figure below).
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Regarding claim 5, the modified invention of Rouch et al. discloses wherein the at least one damping module has the same cross-sectional outer peripheral shape as the main part and/or the front part (as seen in the annotated figure above).
Regarding claim 6, the modified invention of Rouch et al. discloses wherein the main part and/or the front part and/or the at least one damping module are cylindrical (member 12 is a cylinder).
Regarding claim 7, the modified invention of Rouch et al. discloses wherein an external periphery of the main part and an external periphery of the at least one damping module are flush or substantially flush with each other (as seen in the annotated figure above).
Regarding claim 10, the modified invention of Rouch et al. discloses wherein said at least two actuators are accommodated in the same damping module.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 6-8, and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 8-13 of U.S. Patent No. 12,521,796. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations of each other.
Claim correlation:
Application claim number
Patent claim number(s)
1
1, 4-5
4
8
6
9
7
10
8
11
10
12
11
13
Claims 1 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 8-9, and 11-14 of copending Application No. 18/013210 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations of each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim correlation:
Application claim number
Application claim number(s)
1
1, 8-9, 11-12
4
1
5
2
6
3
7
4
8
6
9
13-14
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 9 April 2026
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