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 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 84-112 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 84 recites “a cutting insert . . . and a cutting width CW thereof defines an extended-width cutting plane PC” It is unclear how the entire first extension would only line in the extended-width cutting plane. Applicant attempts to use the term “plane” in a manner inconsistent with its ordinary meaning. The disclosure descriptions in paragraphs 00211 and 00213 fail to rise to the point of providing a definition of the term. The description merely states that the extended-width cutting plane PC is defined to have the same width as the cutting edge width, but fails to set forth how the plane is defined such that it contains a width at all. By definition, a plane is a two-dimensional feature. Here, Applicant apparently intends the plane to be something more than is normally understood - either an imaginary shape or a pair of parallel planes (each tangent to a cutting edge extremity defining one end of the width) with a width between them defined by the cutting width. Appropriate correction required.
Claim 86 recites “the common cutting plane . . . relatively lower in the cutting plane such that when . . . .” There is insufficient basis for the limitation “the common cutting plane.” It is unclear if the common cutting plane is the same as the extended-width cutting plane or something different. Furthermore, it is unclear how one feature is considered lower in the cutting plane. The term “when” in the claim also creates ambiguity as to whether the limitation is required at all if the “when” trigger is not triggered. Appropriate correction required.
Claim 89 recites “an elongation direction” in Line 2. Claim 84 already sets forth antecedent basis for this limitation. As such, it is unclear whether this is the same limitation or a different limitation. Appropriate correction required.
Claim 90 recites “an extension thickness TE . . . and within the extended-width cutting plane PC” in Lines 3-4. It is unclear how the thickness is measured given that it is unclear how it is considered within the extended-width cutting plane. Appropriate correction required.
Claim 94 recites “a maximum height HE . . . and within the extended-width cutting plane PC” in Lines 3-4. It is unclear how the height is measured given that it is unclear how it is considered within the extended-width cutting plane. Appropriate correction required.
Claim 93 recites “an inner extension surface thereof” in Line 2. It is unclear what makes the surface an inner surface. Moreover, the scope of inner extension surface is unclear. It is unclear if the inner extension surface is the same surface of as the extension abutment surface or it is different. Appropriate correction required.
Claim 95 recites the limitation “the clamp abutment surface of the at least one clamp portion” in Lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Claim 84 recites to a first clamping portion, not at least one clamping portion. Appropriate correction required.
Claim 96 recites the limitation “body portion” in Line 2. It is unclear whether this refers back to the body portion or if this is meant to be a different body portion. Appropriate correction required.
Claim 100 recites “the clamp has first and second extension portions that art asymmetric to one another.” It is unclear if there is an additional first extension portion or if Applicant merely means to set forth a second extension portion in addition to the first already recited in claim 84. Appropriate correction required.
Claim 104 recites “the clamp comprises first and second clamp portions.” It is unclear if there is an additional first clamp portion or if Applicant merely means to set forth a second clamp portion in addition to the first already recited in claim 84. Appropriate correction required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 84 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nicholas (US Pub. No. 2007/0110526 A1).
Nicholas discloses a parting-off tool assembly (14) including: a blade holder (20); a parting-blade (16); and a clamp (20a). The blade holder includes: a holder attachment portion (openings in flange of 20 for attachment); and a blade-pocket (recess for blade). The parting blade is mounted to the blade-pocket (Figs. 1-3) and includes: opposing first and second blade sides and a peripheral blade edge connecting the first and second blade sides (Figs. 1-6); and at least a first insert pocket (30) being formed along the peripheral blade edge. The peripheral blade edge includes first and second blade sub-edges extending from different sides of the first insert pocket (Figs. 1-6). The clamp (20a) includes: a body portion (portion generally identified at 20a in Fig. 3) comprising a first body end (at the part where holder extends parallel to bolt axis in Fig. 3) and an intermediary sub-portion connected to the first body end (Fig. 3), the intermediary sub-portion comprising a clamp attachment portion (via holes for bolts 22); a first clamp portion extending from the first body end and including a clamp abutment surface (abutment contacting the peripheral edge, see Fig. 3); and at least a first extension portion extending from the first clamp portion and which is elongated along a common plane with the parting-blade (the extension portion could be any portion of the bade that extends along said common plane; it is worth noting that recitation to a portion only requires a part of a whole and may be arbitrarily set). The clamp attachment portion is fastened to the holder attachment portion (via bolt 22); the clamp abutment surface abuts the peripheral blade edge, thereby securing the parting-blade to the blade-pocket (Fig. 3). A cutting insert (18) is mounted to the first insert pocket and a cutting width CW thereof defines an extended-width cutting plane PC (Fig. 3); and the first extension portion has an elongation direction (Fig. 2). As best understood, an entirety of the first extension portion lying within the extended-width cutting plane PC (Fig. 3). As best understood, an extension thickness TE of the first extension portion, measured perpendicular to the elongation direction of the first extension portion, is less than the cutting width CW (Fig. 3). Again, this is merely claimed as a portion, which may be arbitrarily set. The claim fails to set forth the features that define the portion.
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive. Applicant argues that the indefiniteness rejection of the limitation “an extended-width cutting plane PC” is erroneous because Applicant is acting as its own lexicographer. Relative to the prior art of record, Applicant contends that examiner stated that the claimed invention defines over the Nicholas reference. Examiner disagrees.
As indicated in the rejection above, the specification fails to set forth an explicit definition for what constitutes the extended-width cutting plane. The description merely states that the extended-width cutting plane PC is defined to have the same width as the cutting edge width, but fails to set forth how the plane is defined such that it contains a width at all. By definition, a plane is a two-dimensional feature. Thus, the rejection has been maintained.
Relative to the prior art, examiner stated that the disclosed invention of the present application has noticeable differences than the Nicholas reference. If claimed to set forth those differences, the claimed invention would define over the Nicholas reference. However, Applicant has not set those differences forth in the claims. In fact, the reliance on various claimed portions was a concern expressed in the interview of January 14, 2026. Specifically, examiner stated that portions are parts of a whole and without more, may be arbitrarily designated. Examiner instead stated that reciting the structure with more particularity, for example, an arc-shaped body (Fig. 4C) with a clamp arm extending from the body with a first sub-arm and a second sub-arm. Furthermore, adding the limitations of the relationship of one sub-arm to another and/or the body would better define the claimed invention than body portion and clamp portion, and first extension portion. As the claim stands, the prior art reference of Nicholas still anticipates claim 48.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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