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 .
Response to Arguments
Applicant's arguments and amendments filed 03/11/2026 have been fully considered and are persuasive as applied to the rejections in the prior OA. However, a new grounds of rejection under 35 USC §112(b) is presented below.
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 1-10 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.
The term “not smooth” is indefinite when applied to the physical structure of “the transition between the cutting front.” The broadest reasonable interpretation of the claim term “not smooth” is taken to be narrowly drawn to the concept of mathematical smoothness. Despite the implied narrowness this is seen as the only reasonable interpretation of the claim term in view of the disclosure, as no special definition is given, and the plain meaning, if adopted, would be entirely nonsensical. Further, it can be seen that each of the disclosed embodiments of the invention have a sharp angle at the “transition between the cutting front” and the “flanks” such that the left side and right side derivatives will not be equal at the transition and thus the cutting front is not smooth at said transition. It is also noted that a working knowledge of basic differential calculus is assumed of one of ordinary skill in the art.
The question then naturally arises as to how a term so precisely defined can be indefinite. The answer to this is that a real-life structure or method to produce a structure can never actually possess a continuous function and so mathematical descriptions will always be approximates of the physical structure. Of course, this isn’t a problem, per se, there are myriad patents claiming mathematical structures which are technically impossible to achieve physically, e.g. that two items are parallel, or a precise angle, but in these cases there is a basic way to measure or assess the property visually or otherwise. In the case of smoothness no such relevant standard or understanding exists. The cutting fronts are already so small to as to look visually sharp even when radiused. Further, there will always be some amount of radius to the corner as the laser beam itself has a thickness.
As such, even after review of Applicant’s specification, and the relevant patent literature to ascertain the understanding of one of ordinary skill in the art, the Examiner was unable to determine the metes and bounds of how sharp a transition must be to be considered “not smooth.”
Prior Art
No indication of allowable subject matter is made, despite there only being a rejection under 35 USC §112(b), as the rejection under 35 USC §112(b) relates to the heart of alleged distinction of the invention over the prior art.
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 WOODY A LEE JR whose telephone number is (571)272-1051. The examiner can normally be reached Monday - Friday 0800-1630.
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/WOODY A LEE JR/Primary Examiner, Art Unit 3761