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 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 1-10, 13 and 19 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 1 recites “angle values lie in an angle range of +/- 5° with respect to the golden angle.” The claim limitation is not described within the specification in a manner that one of ordinary skill would understand that Applicant/inventor had possession of the invention at the time of filing. Appropriate correction required.
Claim 1 recites “when measured along a direction perpendicular to the direction of rotation, the direction perpendicular to the direction of rotation having at least one of an axial component and a radial component with respect to the axis of rotation” in Lines 12-14. This recitation contains new matter. The claim lacks support in the specification at the time of filing for the recitation. 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 1-10, 13 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 1 recites the limitation “said corresponding cutting edge” in Line 11. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 1 recites the limitation “each of said reference points is defined as a midpoint of said corresponding cutting edge when measured along a direction perpendicular to the direction of rotation” in Lines 10-12. The term “when” creates a vagueness as to claim scope. In particular, it is unclear whether the reference points being defined as midpoints is even a required limitation if the “when” condition does not occur. It is also unclear if being measured along a direction requires being measured in said direction. Appropriate correction required.
Claim 1 recites “the direction perpendicular to the direction of rotation having at least one of an axial component and a radial component with respect to the axis of rotation” in Lines 12-14. The direction perpendicular to the direction of rotation is unclear. It is unclear how a direction is considered perpendicular to another direction, which is, in essence, an arc. Picking a point along the direction is not tantamount to being perpendicular to a direction as a whole. Furthermore, the recitation that the direction may have either or both of a radial component appears to conflict with the measurement of the reference point. Depending on the direction, the location of the midpoint would change, which leads to a further lack of scope clarity. Furthermore, it is unclear whether the direction perpendicular to the direction of rotation is respective to each cutting edge or whether it is but one direction (i.e., a course from an origin). Appropriate correction required.
Claim 1 recites “said reference points being spaced apart from one another in the direction perpendicular to the axis of rotation” in Lines 15-16. Again, it is unclear whether the direction perpendicular to the direction of rotation is respective to each cutting edge or whether it is but one direction (i.e., a course from an origin). Furthermore, it is unclear, if the direction perpendicular were purely radial, how the reference points would be considered spaced apart from one another in said direction. Appropriate correction required.
Claim 1 recites the limitation “said reference points of the cutting edges of said plurality of cutting bodies that are directly adjacent” in Lines 16-17. The metes and bounds of “directly adjacent” are not clearly delineated. The term “adjacent” may be defined as “not distant: nearby.” See https://www.merriam-webster.com/dictionary/adjacent (last visited October 2, 2025) (last visited October 2, 2025). As such, the boundary between what is considered immediately not distant or close and what is not is unclear. Appropriate correction required.
Claim 1 recites “a golden angle and an opposite angle” in Line 23. While the angular relationships of the golden angle and the opposite angle are defined in relation to one another (and the round angle), the manner in which a golden angle and the opposite angle are measured is unclear. Appropriate correction required.
Claim 1 recites the limitation “angle values lie in an angle range of +/-5° with respect to the golden angle” in Lines 25-26. It is unclear what angle values are being referenced here. Appropriate correction required.
Claim 1 recites “angular spacings of each pair of directly adjacent reference points being an integer multiple of a respective one of said angle values” in Lines 27-28. It is unclear how the angle values are defined such that one of ordinary skill could determine whether the angular spacing of adjacent points are integer multiples thereof. Also, it is unclear how the integer multiple is applied to a spacing of a single pair and one other angle value. Appropriate correction required.
Claim 3 recites “all angular spacings between directly adjacent reference points are equal to one another.” It is unclear whether there are multiple spacings between the directly adjacent reference points that are all equal or if each angular spacing of a respective pair is equal. Appropriate correction required.
Claim 7 recites “said cutting edges . . . directly adjacent . . . overlap.” The metes and bounds of “directly adjacent” are not clearly delineated. The manner in which the cutting edges overlap is unclear. Appropriate correction required.
Claim 9 recites the limitation “said reference points which are directly adjacent” in Line 2. The metes and bounds of “directly adjacent” are not clearly delineated. Appropriate correction required.
Claim 9 recites “said radially adjacent reference points from the axis of rotation.” There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 10 recites “said axial spacing is from 1% to 100% of the greatest axial width of said cutting edges; and, said radial range spacing is from 1% to 100% of the greatest radial width of said cutting edges.” There is insufficient antecedent basis for “the greatest . . . width.” It is also unclear what the greatest axial/radial width references in the claimed invention. Specifically, it is unclear whether the greatest width applies to each respective cutting edge, among all cutting edges or of all cutting edges together. Appropriate correction required.
Claim 13 recites “said axial [or radial range] spacings of between reference points that are directly adjacent . . . are of equal size.” The metes and bounds of this limitation are unclear as the scope of directly adjacent is unclear. It is unclear if there is a respective relationship between each reference point axial spacing or if there is multiple spacings of all reference points. The relationship of the spacing between how many reference points intended is unclear. Appropriate correction required.
Claim 19 recites “said axial spacing is from 8% to 55% of a greatest axial width; and, said radial range spacing is from 8% to 55% of a greatest radial width.” It is unclear what the greatest axial/radial width references in the claimed invention. In particular, does the greatest width, which does not have proper antecedent basis, apply to a given cutting edge or all cutting edges together. 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 1-10, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Freund et al. (US Pub. No. 2014/0234038 A1).
(Claims 1-4) Freund et al. (“Freund”) discloses a machining tool (10) for machining materials. The machining tool capable of being driven in rotation about an axis of rotation (20). The machining tool includes a main body (12) with the axis of rotation runs through said main body; and a plurality of cutting bodies (14) each having a cutting edge (¶ 0044) and being arranged on said main body (Figs. 2-6). The machining tool being configured such that, during operation, said plurality of cutting bodies rotate in a direction of rotation which runs around the axis of rotation (¶ 0044; Figs. 2-6). Each of said cutting edges having, as best understood, exactly one reference point, wherein each of said reference points is defined as a midpoint of said corresponding cutting edge, as best understood, when measured along a direction perpendicular to the direction of rotation, the direction of perpendicular to the direction of rotation having at least one of an axial component and a radial component with respect to the axis of rotation; said reference points being spaced apart from one another in the direction perpendicular to the direction of rotation (Figs. 2-6). The reference points of the cutting edges of said plurality of cutting bodies that are, as best understood, directly adjacent in an order of positions along the direction perpendicular to the direction of rotation being arranged such that each paor of directly adjacent ones of said reference points has an angular spacing between one another with respect to the axis of rotation (Figs. 2-6). Each of said angular spacings, as best understood, being integer multiples of angle values (Figs. 2-6). That is, the reference points are not described with any particularity due to the lack of clarity concerning the direction perpendicular to the rotation direction and may be arbitrarily set to meet the claimed spacing. While the angle values, golden angle, opposite angle, and round angle are not clearly understood, the Freund reference does not explicitly disclose such angles values. Yet, as best understood, the angular relationships relate to the arrangement of the cutting bodies about the circumference of the cutter. The angular arrangement ratio of the cutting bodies is a result-effective variable because, as is well-known in the art, the arrangement of the cutting bodies impacts resonance and vibration, because Applicant failed to adequately traverse the well-known assertion, the fact is considered admitted prior art.1 See MPEP Section 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 machining tool disclosed in Freund with angles satisfying the claimed angular ratio relationship in order to optimize the cutting tool cutting performance to reduce vibration/resonance. See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claim 5) The reference points are spaced apart from one another in at least one with respect to the direction of the axis of rotation and a radial direction with respect to the axis of rotation (Figs. 2-6).
(Claim 6) The main body has a circumferential surface with respect to the axis of rotation; said main body is delimited by an end surface in an axial direction with respect to the axis of rotation; and, said plurality of cutting bodies are arranged on at least one of said circumferential surface and said end surface (Figs. 2-6).
(Claim 7) As best understood, the cutting edges having said reference points which are directly adjacent in the order of positions along the direction perpendicular to the direction of rotation overlap one another at least partially in the direction perpendicular to the direction of rotation (Figs. 2-6).
(Claim 8) As best understood, each of the cutting edges has an axial width measured in an axial direction with respect to the axis of rotation and/or a radial width measured in a radial direction with respect to the axis of rotation (Figs. 2-6).
(Claim 9) The reference points which are directly adjacent in the order of positions along the direction perpendicular to the direction of rotation are arranged with an axial spacing, measured in the direction of the axis of rotation, to one another (Figs. 2-6).
(Claims 10 and 19) As best understood, at least one of: said axial spacing is from 1% to 100% of a greatest axial width; and, said radial range spacing is from 1% to 100% of a greatest radial width (Figs. 2-6).
(Claim 13) As best understood, all axial spacings between reference points that are directly adjacent in the order of positions along the direction perpendicular to the direction of rotation are of equal size; and/or all radial range spacings between reference points that are directly adjacent in the order of positions along the direction perpendicular to the direction of rotation are of equal size (Figs. 2-6).
Response to Arguments
Applicant's arguments filed January 5, 2026 have been fully considered but they are not persuasive. Applicant argues that the phrase “directly adjacent” has been amended to clearly define the scope of the limitation. Turning to the prior art rejection, Applicant traverses the obviousness rejection on the ground that the prior art of record fails to explicitly address the golden angle limitation or any specific angular spacings. Examiner disagrees.
The phrase “directly adjacent” remains indefinite. It is unclear what Applicant believes the addition of “an order of positions along the direction perpendicular to the direction of rotation” further adds such that one of ordinary skill would understand the claim scope. The requirement of “an order of positions,” without more, is a superfluous limitation because any arrangement of cutting bodies would be of some order of positions. Moreover, setting forth the order in a direction that is not clearly delineated does not further define what “directly adjacent” means. Thus, the rejection under 35 USC 112(b) has been maintained.
The optimization rationale establishes a prima facie case of obviousness. The rejection establishes that a variable is result-effective. The rationale sets forth rationale for optimizing that result-effective variable. Applicant has not proved criticality to rebut the rejection. Thus, the rejection has been maintained.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
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.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 Applicant mentions that the official notice of the fact that the arrangement of cutting elements influence resonance and vibration, but only in an assertion that that fact does not provide indication about angle values being in the range of 5 degrees of the golden angle. Applicant does not traverse the well-known fact assertion itself.