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 .
Statement re Text of U.S. Code
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
In the response filed 11/14/2025, Applicant elected, without traverse, Group I, drawn to either a “milling tool” or a “tool assembly” (including the milling tool), depending on the claim. At this time, no claims are withdrawn from further consideration, given that all of the claims directed to the non-elected invention have now been canceled.
Claim Rejections - 35 USC § 112
Claims 18-21 and 2-15 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.
In claim 18, lines 30-32, the claim recites “a plurality of alternating flutes and cutting portions; each cutting portion of the plurality of cutting portions comprises a cutting element recess”. However, it is unclear as claimed how many cutting element recesses are being recited, i.e., one cutting element recess (total) that is shared by each of the cutting portions, or one cutting element recess per cutting portion (and thus plural cutting element recesses). In the event that the latter is intended, Applicant may wish to consider adding the term –respective—between “a” and “cutting element recess” in the limitation “each cutting portion comprises a cutting element recess”.
In claim 18, lines 33-35, the claim now recites “a coolant sleeve having a cylindrical shape encircling a portion of the milling tool and configured to remain static to the milling tool when the milling tool is rotated”. However, the intended meaning of “configured to remain static to the milling tool when the milling tool is rotated” is unclear as claimed. For example, it is unclear as claimed whether the limitation “a coolant sleeve …configured to remain static to the milling tool when the milling tool is rotated” is intended to mean (i) when the milling tool is rotated, such rotation of the milling tool is relative to the coolant sleeve, i.e., when the milling tool rotates, the coolant sleeve does not, vs. (ii) the coolant sleeve is somehow fixed to the milling tool such that there is no relative motion between the coolant sleeve and milling tool during rotation of the milling tool, i.e., such that the coolant sleeve rotates with the milling tool.
In claim 8, in the limitation “each cutting element recess”, it is unclear as claimed whether such is intended to refer to the previously-recited “cutting element recess” (or possibly recesses, noting that as set forth in claim 18, it is unclear how many cutting element recesses are intended to be recited), or whether such is instead intended to be additional to the previously-recited “cutting element recess” (or recesses).
In claim 8, in the amended limitation “wherein the passageway plane is directed more in the forward direction than the central plane”, it is unclear as claimed whether the claim intends for the passageway plane to be directed “more in the forward direction than the central plane” is, or whether the claim intends for the passageway plane to be “more directed in the forward direction than” (in the direction of) “the central plane”. Either way, it is unclear how or in what regard a given (passageway) plane is to be considered to be “directed more in the forward direction”, i.e., directed from what/where more in the forward direction?
In claim 8, the claim now recites “wherein the passageway plane is directed more in the forward direction than the central plane as the passageway plane and the central plane extend in the forward direction such that the passageway plane forms an off-center angle β with the center plane”. However, noting that the claim now recites that both the passageway plane and the central plane “extend in” the forward direction, it is unclear how or in what regard the passageway plane is to be considered to form an off-center angle with the center plane, i.e., if the two planes “extend in” the same direction (as now claimed), it is unclear how or in what regard the planes can form an off-center angle β.
In claim 8, last line, the limitation “the center plane” lacks sufficient antecedent basis in the claim. While it is noted that a “central plane” was previously recited, no “center plane” was previously recited, and it is unclear which specific “center plane” is intended to be referenced by the recitation of “the center plane” (noting that there are a number of claim elements that are recited, and it is not inherent that there is only a single center plane, given that each claim element, or at least many of the claim elements, would have their own center plane(s)).
In claim 8, the claim now recites “wherein each cutting element recess has a centerpoint and a central plane containing the centerpoint”. However, it is unclear as claimed how many centerpoints and central planes are now being recited, i.e., one of each per cutting element recess, or one, total. That said, any subsequent recitations of “the centerpoint” or “the central plane” lack clear antecedent basis in the claim, as it is unclear whether plural centerpoints/central planes were previously recited, and if so, which specific one is intended to be referenced via the recitation of “the centerpoint” or “the central plane”.
In claim 12, the claim now recites “wherein the head coolant outlet is closer to the respective cutting element recess than any other adjacent surface of the respective cutting portion”. However, firstly, as noted above, it is unclear how many (and what configuration) of cutting element recess(es) is/are intended to be recited in claim 18, such that the recitation of “the respective cutting element recess” is unclear and lacks clear antecedent basis. Furthermore, noting that only one head coolant outlet was previously recited, the recitation that “the” head coolant outlet is closer to “the respective cutting element recess” than any other adjacent surface of “the respective cutting portion” is unclear. It is unclear as claimed what effect the term “respective” (plural occurrences) is intended to have on the scope of the claim, and it is unclear as set forth in claim 12 what configuration(s) of head coolant outlet relative to the cutting element recess(es) and cutting portion(s) is/are intended to be encompassed vs. excluded.
In claim 12, the claim recites “the head coolant outlet is closer to the respective cutting element recess than any other adjacent surface of the respective cutting portion”. However, it is unclear as claimed whether such is intended to mean that “the head coolant outlet is closer to the” (respective) “cutting element recess than” (to) “any other adjacent surface of the” (respective) “cutting portion”, vs. whether such is instead intended to mean that “the head coolant outlet is closer to the” (respective) “cutting element recess than any other adjacent surface of the” (respective) “cutting portion” (is)? Additionally, it is unclear as claimed to what the “any other adjacent surface of the respective cutting portion” is “adjacent”, i.e., adjacent to the head coolant outlet, adjacent to the cutting element recess, etc.
Claims 18-21 and 2-15 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.
In claim 18, lines 33-35, the claim now recites “a coolant sleeve having a cylindrical shape encircling a portion of the milling tool and configured to remain static to the milling tool when the milling tool is rotated”. However, as noted in a separate rejection of claim 18 under 35 USC 112(b), the intended meaning of “configured to remain static to the milling tool when the milling tool is rotated” is unclear as claimed. For example, it is unclear as claimed whether the limitation “a coolant sleeve …configured to remain static to the milling tool when the milling tool is rotated” is intended to mean (i) when the milling tool is rotated, such rotation of the milling tool is relative to the coolant sleeve, i.e., when the milling tool rotates, the coolant sleeve does not, vs. (ii) the coolant sleeve is somehow fixed to the milling tool such that there is no relative motion between the coolant sleeve and milling tool during rotation of the milling tool, i.e., such that the coolant sleeve rotates with the milling tool.
That said, in the event that interpretation (ii) is what is intended, the specification as originally filed does not appear to teach the features of claim 18 in a manner so as to demonstrate possession thereof.
It is noted that the milling tool is disclosed as element 100, and the coolant sleeve is disclosed as element 200. See, for example, at least Figure 1C and paragraph 0033-0034 of the specification as originally filed, for example. In particular, it is noted that the specification as filed does not appear to disclose (in a manner so as to demonstrate possession thereof) that the coolant sleeve 200 is fixed to the milling tool 100 such that there is no relative motion between the coolant sleeve and milling tool during rotation of the milling tool, as appears to be encompassed by the limitation “a coolant sleeve…configured to remain static to the milling tool when the milling tool is rotated”, as now set forth in claim 18.
The following paragraphs (0053-0055) of the specification teach that the connection arrangement 204 (which comprises plural screws 218) is configured to fasten the coolant sleeve 200 to a not-shown machine interface such that the coolant sleeve 200 (i.e., that is fastened to the not-shown machine interface) remains static relative to the rotating milling tool 100, as the milling tool 100 rotates relative to 200. In other words, the coolant sleeve 200 is not fixed “to” the milling tool 100 so as to be static “to” the milling tool, i.e., so as to rotate with the milling tool (as recited in or encompassed by claim 18), but rather, the coolant sleeve is (instead) fastened to a not-shown machine interface, and the milling tool 100 is rotated relative to the coolant sleeve 200.
[0053] Referring now to FIGS. 3A to 3F, the sleeve 200 has a basic cylindrical shape and comprises; a machine (upper) end 202 in turn comprising a connection arrangement 204; a lower end 206 opposite to the machine end 204; a sleeve external surface 208 connecting the machine end 204 and the lower end 206; a sleeve internal surface 210 connecting the machine end 202 and the lower end 206, and located closer than the sleeve external surface 208 to the shank portion 102; a sleeve coolant inlet 212 opening out to the sleeve external surface 208; a sleeve coolant outlet 214 opening out to the sleeve internal surface 210; a sleeve coolant passageway 216 (FIG. 3F) extending from the sleeve coolant inlet 212 to the sleeve coolant outlet 214.
[0054] The connection arrangement 204 comprises a circumferentially spaced plurality of screws 218 housed in recessed areas 220 and extending through screw holes 222 to fasten to a machine interface (not shown).
[0055] Due to the connection to the machine interface (not shown), the sleeve 200 remains static relative to the rotating milling tool 100.
Additionally, in claim 8, the claim now sets forth “the head coolant passageway defining a passageway plane, the passageway plane extending parallel to and adjacent to the head coolant outlet”. However, the specification as filed does not provide support for the passageway plane (PP) extending “parallel to” the head coolant outlet (134) as now claimed. It is noted that the specification as filed does not expressly teach that plane PP extends “parallel to” the head coolant outlet 134, but rather, used the ambiguous language “the linear portion 154 defining a passageway plane PP extending parallel adjacent to the head coolant outlet 134”. See, for example, paragraph [0068]. Note that such teachings do not provide support for the plane PP extending “parallel to” the head coolant outlet 134, as opposed to the plane PP extending parallel to something else, and also extending “adjacent to” the head coolant outlet 134. Furthermore, as can be seen in Figure 4C, the outlet 134 is in a plane that intersects the plane PP, rather than outlet 134 being parallel to plane PP as now claimed.
In claim 8, the claim now recites “wherein the passageway plane is directed more in the forward direction than the central plane as the passageway plane and the central plane extend in the forward direction such that the passageway plane forms an off-center angle β with the center plane”. However, as noted in a separate rejection of claim 8 under 35 USC 112(b) hereinabove, noting that the claim now recites that both the passageway plane and the central plane “extend in” the forward direction, it is unclear how or in what regard the passageway plane is to be considered to form an off-center angle with the center plane, i.e., if the two planes “extend in” the same direction (as now claimed), it is unclear how or in what regard the planes can form an off-center angle β. In any event, it does not teach that the two planes (i.e., the passageway plane PP and the center/central plane PC) both “extend in” the disclosed forward direction DF1, as now set forth in claim 8. See, for example, Figure 4C, noting that both PP and PC are at a non-zero angle with respect to the forward direction DF1, rather than extending “in” the direction DF1.
In claim 15, the claim now recites that “the milling tool comprises one or more cutting elements which are made of polycrystalline diamond or cubic boron nitride”. However, the specification as originally filed does not appear to provide support for the cutting elements of the milling tool of the present application being made of “cubic boron nitride” as now claimed. (It is noted that paragraph 0035 of the specification does provide support for the cutting elements 300 of the present milling tool 100 being made of polycrystalline diamond.) While it is noted that paragraph 004 of the specification as filed teaches that existing, i.e., not of the present invention, optical lens milling tools having cutting elements made of “PCD or CBN”, firstly, it is noted that the specification never expressly says that “CBN” stands for cubic boron nitride, and such is not inherent. Furthermore, the specification as filed does not expressly teach that the cutting elements of the milling tool of the present application (as opposed to existing optical lens milling tools/cutting elements that are not re tools of the present invention) are made of “cubic boron nitride”, nor is such inherent.
Claim Rejections - 35 USC § 102
Claims 18, 2, 5-8, 10, and 12-13, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0406379 to Aso (hereinafter, “Aso”).
Regarding claim 18, Aso teaches a tool assembly comprising: a milling tool (1); a “coolant sleeve” (50) having a cylindrical shape (see Figures 3, 6, and 7) encircling a portion of the milling tool (1) (see Figures 3, 6, and 7, for example, as well as at least Figure 2; see also paragraphs 0031, 0035-0037) and configured to remain “static to” the milling tool when the milling tool is rotated (see Figures 3, 6, 7, 1-2, and at least paragraphs 0031-0032, 0035-0037, 0039-0042, noting that mounting portion 11 of the milling tool 1 is attached to 50 so as to rotate with 50, and thus, the milling tool 1 is “static to”, i.e., relative to, 50 during rotation of 50 and 1 about axis O, given that during machining/rotation of 50 and 1, there is no relative rotation between 50 and 1; alternatively, note that 11 has a screw portion that is screwed into a screw-threaded opening within 50, and thus, alternatively, when the milling tool 1 is rotated relative to the coolant sleeve 50 in order to thread 11 into 50, the coolant sleeve 50 is configured to be capable of remaining static during rotation of 1/11 relative to 50, i.e., so that 11 threads into 50; see Figures 2-3, 6-7, and at least paragraphs 0035-0036, for example); and at least one cutting element (20) mounted to the milling tool (1) (see paragraphs 0031 and 0033-0040, as well as Figures 1, 3, 6, and 7).
Specifically regarding the details of the milling tool (1) recited in claim 18, Aso teaches the milling tool (1; note that the cutting operation with a rotary cutting tool 1 utilizing the cutting edges 21 to perform the cutting process can be considered a “milling” operation; see Figures 1-2 and at least paragraphs 0030-0031 and 0033, for example) comprising:
a shank portion (such as, for example, 11; see Figures 1-2 and paragraph 0032); and
a head portion (such as, for example, 12; see Figures 1-2 and paragraph 0032, for example) extending from the shank portion (11) (see Figures 1-2, for example);
a rotation axis (O; see at least paragraph 0031 and Figure 1) extends “along” the shank portion (11) (see Figure 1, for example) and defining:
a forward direction (towards the left along axis O in Figure 1) from the shank portion (11) towards the head portion (12);
a rearward direction (towards the right along axis O in Figure 1) opposite to the (aforedescribed) forward direction;
a radially-outward direction perpendicular to the forward and rearward directions and directed outwardly from the rotation axis (O) (see Figures 1-2 and 4-6, i.e., any direction that is perpendicular to O and that extends radially outward from O);
a radially-inward direction opposite to the (aforedescribed) radially outward-direction (i.e., any direction that extends perpendicular to O and radially inwardly towards O; see Figures 1-2 and 4-6);
a rotation direction (one of either of clockwise or counterclockwise re Figure 4 about O; see paragraph 0031); and
a counter-rotation direction (the other of either counterclockwise or clockwise re Figure 4 about axis O) opposite to the rotation direction (paragraph 0031);
the shank portion (11) comprising:
a shank rear end (the right end/half of shank 11 re Figure 1);
a shank forward end (the left end/half of shank 11 re Figure 1) located closer than the shank rear end to the head portion (12) (see Figure 1); and
a shank external surface (any external surface of shank 11; see Figures 1-2, for example);
the head portion (12) comprising:
a head external surface (such as 12c and/or 12a; see Figures 1-4 and paragraph 0039, for example);
a head “internal” (insofar as such is the case re present application head internal surface 130) surface (12b/G; see paragraph 0041 and Figures 2 and 6) located closer than the head external surface (12c and/or 12a) to the shank portion (11) (see Figures 2 and 6, for example); and
a head coolant inlet (Hb) opening out to the head “internal” surface (12b/G) (see Figures 2, 5, and 7, as well as at least paragraphs 0038-0039);
a head coolant outlet (Ha) opening out to the head external surface (12c and/or 12a; see Figures 7, 6, and 1, as well as paragraphs 0038, 0047, 0049-0050, noting that as broadly claimed, Ha opens out “to” 12c in that Ha opens adjacent the outer face 12c, and opens out “to” 12a in that Ha opens out towards 12a, for example);
a head coolant passageway (any of 31a, 31b, 31c, 31d; see Figures 6-8C) extending from the head coolant inlet (Hb) to the head coolant outlet (Ha) (see Figures 6-7 and paragraphs 0037-0039, for example);
the head external surface (12c and/or 12a) comprising:
a plurality of alternating flutes and cutting portions (see Figures 9-10 and 1-4 noting the fluted configuration of 12, and the plurality of cutting inserts 20 each provided to a respective mounting seat 120; see also paragraphs 0033-0034, for example);
each cutting portion of the plurality of cutting portions comprises a cutting element recess (in which mounting seat 120 is formed; alternatively, recess/hole 125; see Figures 9-10 and paragraphs 033-0034, for example);
wherein:
the head “internal” surface (12b/G) is formed with a peripherally extending head coolant obstruction arrangement comprising a head ridge (labeled in the annotated reproduction of Figure 6 below as “HR”) which extends rearward (i.e., towards the right re Figure 6) of an adjacent head portion (such as the adjacent head portion labeled in the annotated reproduction of Figure 6 below as “AHP”) of the head “internal” surface (12b/G), the adjacent head portion (AHP) being located radially inward (with respect to axis O) of the head ridge (HR) (see Figure 6 below) (note that HR is considered to be at least inherently capable of performing the function of obstructing coolant, given the ridge shape/configuration thereof).
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Regarding claim 2, the head ridge (HR) is shaped as an annular lip (see Figure 6 and Figure 2).
Regarding claim 5, at the shank (11) rear (right re Figure 2) end (portion and/or half), the shank external surface is formed with a peripherally extending shank coolant obstruction arrangement comprising a shank ridge (such as the screw thread forming a “shank ridge”, which is labeled in the annotated reproduction of Figure 2 below as “SR1”; see also paragraph 0035, considered by virtue of its ridge configuration to be inherently capable of obstructing coolant in some fashion) which extends radially (with respect to axis O) outward of an adjacent shank portion (11a) of the shank (11) external surface, the adjacent shank portion (11a) located forward of the shank ridge (SR1). See Figure 2, for example, as well as paragraph 0035).
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Regarding claim 6, the (aforedescribed) shank ridge (SR1) is shaped as an annular lip. See Figure 2 and paragraph 0035.
Regarding claim 7, the shank coolant obstruction arrangement comprises an additional shank ridge (labeled in the annotated reproduction of Figure 2 above as SR2) which extends radially outward (with respect to axis O) of the adjacent shank portion (11a) and is located forward of the adjacent shank portion (11a). See annotated Figure 2 above, as well as paragraph 0035.
Regarding claim 8¸ each cutting element recess (in which mounting seat 120 is formed; alternatively, recess/hole 125; see Figures 9-10 and paragraphs 0033-0034, for example) has a centerpoint and a central plane (such as the plane labeled in the annotated reproduction of Figure 6 below as P1 and which plane extends parallel to the mounting seat 120 on which the insert labeled below as 20A is located) containing the centerpoint; and the head coolant passageway (such as 31a) comprises a “linear portion” (such as 311; see Figure 6 and paragraphs 0047-0050, for example) extending to the head coolant outlet (Ha), the linear portion (311) “defining” (as broadly claimed) a passageway plane (such as, for example, the plane labeled in the annotated reproduction of Figure 6 below as “PP”), the passageway plane extending “parallel” to (insofar as such is the case in the present application) and adjacent to the head coolant outlet (Ha) (see Figure 6 below); wherein the passageway plane (PP) is “directed more in the forward direction” (towards the left re Figure 6) “than the central plane” (P1 labeled below) as the passageway plane (PP) and the central plane (P1) extend “in” the forward direction (as such is best understood in view of the above issues described with respect to 35 USC 112) such that the passageway plane (PP) forms an off-center angle β (labeled below) with the “center” plane (such as P1) (see below).
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Regarding claim 10, the head coolant outlet (Ha) is “elongated” (as broadly claimed; see Figure 7, for example). Alternatively re claim 10, it is noted that Ha/311 can be considered the claimed “head coolant outlet” (with 312 being considered the claimed head coolant passageway) and (311) is “elongated” in the length direction of 311, for example. See Figure 6, for example.
Regarding claim 12, as best understood in view of the above rejections based on 35 USC 112, the head coolant outlet (Ha, or alternatively, Ha+311) is closer to the (aforedescribed) “respective” (as such is best understood in view of the issues re 35 USC 112 described above) cutting element recess “than any other adjacent surface of the” respective (as such is best understood in view of the issues re 35 USC 112 described above) cutting portion” (cutting portion described above). See Figures 9 and 6-7, for example.
Regarding claim 13, in a side view of a cutting element (such as 20), the head coolant outlet (such as Ha, or alternatively, such as Ha+311) is directly adjacent to the cutting element (20). See Figure 6, for example.
Claim Rejections - 35 USC § 102/103
Claims 9 and 11, as best understood in view of the above rejections based on 35 USC 112, is rejected under 35 USC 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over, U.S. Patent Application Publication No. 2020/0406379 to Aso (hereinafter, “Aso”) as applied to at least claims 18, 8, and 10 above.
Aso teaches all aspects of the presently-claimed invention as were discussed in the above rejection(s) based thereon.
Regarding claim 9, it appears that the angle β is within the claimed range (between 5 and 40 degrees) as can be seen in the annotated reproduction of Figure 6 above.
In the alternative, Aso is silent as to the value of the off-center angle β, and thus does not expressly teach that such angle fulfills the condition: 5°<β<40°.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the claimed angle to be within the claimed range, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Aso would not operate differently with the claimed angle as compared to the angle shown above, particularly noting that the above-labeled angle β appears to be shown to be within the claimed range, and also noting that Aso expressly teaches that each element and its arrangement, shape, size, and the like, are not limited to those illustrated and may be changed (paragraph 0053; see also paragraph 0045). Further, applicant places no criticality on the range claimed, merely indicating that the angle “can” be claimed range (see paragraph 0031 of the present specification).
Regarding claim 11, the head coolant outlet (such as 311+Ha) is elongated in an elongation direction (such as in the length direction of 311, shown in Figure 6), a head coolant outlet height HO (labeled in the annotated reproduction of Figure 6 below) is measured parallel to an elongation direction (of 311; see Fig. 6), and the milling tool further comprises a cutting element (20) directly adjacent to the head coolant outlet (311+Ha), the cutting element (20) having a cutting element height HC (labeled in the annotated reproduction of Figure 6 below), measured parallel to an elongation direction (such as, for example, an elongation direction of 20 in the plane of Figure 6), fulfilling the condition: 0.1 HC<HO<HC, as can be seen in the annotated reproduction of Figure 6 below.
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In the alternative, Aso does not expressly teach what the values of HO and HC are, and does not expressly indicate 0.1 HC<HO<HC.
However, Aso teaches that “the flow passages 31a, 31b, 31c, and 31d in this embodiment may take any shape, size, or the like that may allow good flow of the coolant therein”. Furthermore, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Aso reference to have the lengths HO and HC within the claimed range, particularly given that the lengths appear to already be in the claimed range, and given the teachings in Aso of altering the dimensions of 31a-d to whatever size is desired to achieve good flow of coolant. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the dimensions HO and HC be within the claimed range as a matter of routine optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 103
Claim 14, as best understood in view of the above rejections based on 35 USC 112, is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0406379 to Aso (hereinafter, “Aso”) as applied to at least claim 18 above.
Aso teaches all aspects of the presently-claimed invention as were described in the above rejection(s) based thereon.
Additionally, regarding claim 14, it is noted that Aso teaches that in the shown embodiment, four cutting inserts 20 or “cutting portions” 20 and four insert mounting seats 120 are provided. See Figures 1, 4, 9, and 10, as well as paragraph 0034.
However, while Aso does teach that the number of cutting inserts/portions 20 and mounting seats 120 is not limited to the shown example, and may be changed “as appropriate” (see paragraph 0034), Aso does not expressly teach that there are at least eight cutting portions, as set forth in claim 14.
However, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Aso reference to have eight cutting inserts/portions and mounting seats, particularly given the teachings in Aso of the number of cutting inserts/portions and mounting seats (paragraph 0034). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the cutting tool taught by Aso be provided with eight cutting inserts/portions and eight mounting seats therefor as a matter of routing optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 15, as best understood in view of the above rejections based on 35 USC 112, is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0406379 to Aso (hereinafter, “Aso”) as applied to at least claim 18 above, and further in view of Applicant’s Admitted Prior Art (hereinafter, “AAPA”).
Aso teaches all aspects of the presently-claimed invention as were described in the above rejection(s) based thereon.
Regarding claim 15, it is noted that Aso teaches that the milling tool comprises one or more cutting elements (20) (see Figure 1 and paragraphs 0031 and 0033-0034, for example).
However, Aso is silent as to what material the cutting elements (20) are made of, and thus does not expressly teach that one or more of the cutting elements (20) are made of a polycrystalline diamond or cubic boron nitride.
However, in the Office Action mailed January 28, 2026, the Examiner took Official Notice that the use of superhard materials such as cubic boron nitride (CBN) is very well known and widely used in machining in order to achieve the well-known benefits of high wear resistance and durability. Note that this assertion (that the use of superhard materials such as cubic boron nitride (CBN) is very well known and widely used in machining in order to achieve the well-known benefits of high wear resistance and durability) is taken to be admitted prior art because Applicant did not previously traverse the Examiner’s assertion. See MPEP section 2144.03, section C, for example.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the cutting elements/inserts (20) taught by Aso out of a well-known superhard material such as CBN, as such is well known (per AAPA), for the purpose of achieving the well-known (per AAPA) benefits of high wear resistance and durability.
Comment Regarding Non-Indication of Allowable Subject Matter
A thorough search has been conducted re the elected invention/claims. That being said, though no art rejections are considered to presently apply to claims 3-4 and 19-21, no indication regarding the allowability of the subject matter of elected claims 3-4 and 19-21 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 USC 112(a), set forth above, particularly given that is unclear what changes to the claims might be necessary to overcome the above-described issues with respect to 35 USC 112(a).
Response to Arguments
Applicant's arguments filed April 9, 2026, have been fully considered but they are not persuasive.
Regarding the previous claim rejections under 35 USC 112(b) and 35 USC 112(a), Applicant indicates (on pages 8-9 of the 4/9/2026 response) that the claim amendments filed April 9, 2026 get around such (previous) rejections. However, attention is directed to the above rejections under 35 USC 112(b) and 35 USC 112(a) for any issues with respect thereto that either remain, or that were newly created via the amendment filed 4/9/2026.
Regarding the previous prior art rejection of claim 18 under 35 USC 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0406379 to Aso (hereinafter, “Aso”), Applicant has asserted (page 9 of the 4/9/2026 reply) that “Aso fails to disclose a tool assembly including, in part, ‘a coolant sleeve having a basic cylindrical shape encircling a portion of the milling tool and configured to remain static to the milling tool when the milling tool is rotated’ as recited in claim 18, as amended herein”. However, such is not persuasive. While it is noted that the amended limitation “a coolant sleeve having a cylindrical shape encircling a portion of the milling tool and configured to remain static to the milling tool when the milling tool is rotated” as set forth in now-independent claim 18 raises some new issues under 35 USC 112(b) and 35 USC 112(a) that are discussed in more detail above, it is noted that Aso teaches the aforedescribed limitation from claim 18. In particular, as discussed in the above rejection of claim 18 under 35 USC 102(a)(1) as being anticipated by Aso:
Regarding claim 18, Aso teaches a tool assembly comprising: a milling tool (1); a “coolant sleeve” (50) having a cylindrical shape (see Figures 3, 6, and 7) encircling a portion of the milling tool (1) (see Figures 3, 6, and 7, for example, as well as at least Figure 2; see also paragraphs 0031, 0035-0037) and configured to remain “static to” the milling tool when the milling tool is rotated (see Figures 3, 6, 7, 1-2, and at least paragraphs 0031-0032, 0035-0037, 0039-0042, noting that mounting portion 11 of the milling tool 1 is attached to 50 so as to rotate with 50, and thus, the milling tool 1 is “static to”, i.e., relative to, 50 during rotation of 50 and 1 about axis O, given that during machining/rotation of 50 and 1, there is no relative rotation between 50 and 1; alternatively, note that 11 has a screw portion that is screwed into a screw-threaded opening within 50, and thus, alternatively, when the milling tool 1 is rotated relative to the coolant sleeve 50 in order to thread 11 into 50, the coolant sleeve 50 is configured to be capable of remaining static during rotation of 1/11 relative to 50, i.e., so that 11 threads into 50; see Figures 2-3, 6-7, and at least paragraphs 0035-0036, for example); and at least one cutting element (20) mounted to the milling tool (1) (see paragraphs 0031 and 0033-0040, as well as Figures 1, 3, 6, and 7).
Regarding dependent claims 2 and 5-15, Applicant has also indicated that such claims are likewise patentable over Aso for the same reasoning discussed above. However, such is not persuasive, and attention is directed to the above response to that reasoning.
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 ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
May 14, 2026
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