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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 12, 2026 has been entered.
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 1-13 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.
Claims 1 and 13 each recite “a cutting insert receptacle disposed between the lower portion and the upper portion, the cutting insert receptacle comprising an upper clamping jaw disposed in the upper portion and a lower clamping disposed in the lower portion” in Lines 4-7 and 6-9, respectively. The clause appears to present a conflict. The first half of the clause requires the cutting insert receptacle to be between the upper portion and the lower portion. Yet, the second half of the clause requires the receptacle to have respective jaws in the upper and lower portions. As such, it is unclear how the receptacle is between the portions while also being within the portions. Appropriate correction required.
Claim 1 recites “a first side of the imaginary first axis” in Line 20 and “an opposite second side of the imaginary first axis” in Line 21. The claim already sets forth antecedent basis for these limitations in Lines 17 and 19, respectively. As such, it is unclear whether the recitations in Lines 20-21 are different features or not. Claim 13 is rejected on the same grounds for the same language recited in Lines 23-28. Appropriate correction required.
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
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.
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 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaufmann et al. (US Pub. No. 2013/0236256 A1), or alternatively, under 35 U.S.C. 103 as being unpatentable over Kaufmann et al. (US Pub. No. 2013/0236256 A1).
(Claims 1, 10 and 11) Kaufmann et al. (“Kaufmann”) discloses a grooving tool holder (10) that includes: a lower portion (a portion below slot 34); an upper portion (a portion above slot 34) pivotable relative to the lower portion (Fig. 1); and a cutting insert receptacle (64) disposed between the lower portion and the upper portion (Fig. 7). The cutting insert receptacle (64) includes an upper clamping jaw (16) disposed in the upper portion and a lower clamping jaw (12) disposed in the lower portion (Figs. 1, 2, 7). The tool holder further includes a first fastener-mating hole disposed in the upper portion, a second fastener-mating hole disposed in the lower portion in alignment with the first fastener-mating hole (Fig. 7; ¶ 0052). In a top view of the upper portion of the grooving tool holder, an imaginary first axis extends longitudinally along the grooving tool holder through a center of the first fastener-mating hole (Figs. 1, 2, 7). In the top view of the upper portion of the grooving tool holder, the upper portion includes first and second portions disposed on opposite sides of the first axis (Fig. 1). The first portion is the entirety of the upper portion disposed on a first side of the imaginary axis (Fig. 1). The second portion is the entirety of the upper portion disposed on an opposite second side of the imaginary first axis (Fig. 1). The first portion is disposed entirely on a first side of the imaginary first axis, and the second portion is disposed entirely on an opposite side of the imaginary first axis (Fig. 1). The first portion has a different shape or different dimension than the second portion (Fig. 1). It is worth noting here that that the upper portion as well as the first and second portions are not claimed with any specificity, merely that the entirety of each is disposed on respective sides of the first axis. The claim require the entirety of the upper portion on each side of the imaginary axis to be either a first or second portion, but the claim fails to set forth specific boundaries for the upper portion. As such, the portions may be arbitrarily identified. That said the first and second portions include different shapes or different dimensions (as arbitrarily selected on each side of the first axis). The upper portion includes a total three-dimensional mass (inherent). The first portion includes a first three-dimensional mass (inherent), and the second portion includes a second three-dimensional mass (inherent). Due to the arbitrary nature of the first and second portions (i.e., a part of a whole), the first mass and the second mass are within 20%, 10% or 5% of one another. That is, two portions may be identified that have masses satisfying the claimed relationship.
In the event Applicant traverses the anticipation rejection, the material (distribution) of the upper clamping jaw is a result effective variable because it impacts the clamping jaw integrity, tool balance and clamping action. Because Applicant failed to adequately traverse the well-known assertion by examiner, the official notice well-known assertion is taken as admitted prior art.1 Due to the fastening hole being a weak point in the clamping portion, one having ordinary skill in the art would have found it obvious to provide the tool holder disclosed in Kaufmann with portions within the claimed range in order to optimize tool integrity and clamping action. See 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.”). As a further alternative rationale, 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. See In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the tool holder disclosed in Kaufmann with the relative portions within the claimed range as 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.
(Claim 2) A web portion (Fig. 2) disposed between the lower portion (a portion below slot 34) and the upper portion (a portion above slot 34), the upper portion pivotable relative to the lower portion via the web portion (Figs. 1, 2, 7).
(Claim 3) A separating slit (34) is disposed between the lower portion (a portion below slot 34) and the upper portion (a portion above slot 34), the separating slit (34) disposed from the web portion to the cutting insert receptacle (Fig. 2).
(Claim 4) A fastener (18) extends into the first and second fastener-mating holes (Fig. 7).
(Claim 5) The fastener (18) is threadedly attached to the second fastener-mating hole (Fig. 7; ¶ 0052).
(Claim 6) The upper clamping jaw is configured to move towards the lower clamping jaw as the fastener is rotated in a first direction within the first and second fastener-mating holes, and the upper clamping jaw is configured to move away from the lower clamping jaw as the fastener is rotated in a second direction within the first and second fastener-mating holes (Figs. 1, 2, 7; ¶ 0052).
(Claim 7) A cutting insert (14) is disposed between and against the upper clamping jaw and the lower clamping jaw (Figs. 1, 2).
(Claim 8) The upper clamping jaw and an upper surface of the cutting insert each comprise a separate respective mating V-shape (¶ 0075; Figs. 3-7).
(Claim 9) A shank (Figs. 1, 2) extends longitudinally along the grooving tool holder. The shank, as best understood, is capable of clamping the grooving tool holder to a machine (¶ 0055; Figs. 1, 2).
(Claim 12) The lower portion includes a first elongate member (22) extending longitudinally from the lower portion, the upper portion includes a second elongate member (20) extending longitudinally from the upper portion, and the cutting insert receptacle is disposed between the first and second elongate members (Figs. 1, 2, 7).
(Claim 13) Kaufmann discloses a grooving tool holder (10) that includes: a lower portion (a portion below slot 34); an upper portion (a portion above slot 34) pivotable relative to the lower portion (Fig. 1); and a cutting insert receptacle (64) disposed between the lower portion and the upper portion (Fig. 7). The cutting insert receptacle (64) includes an upper clamping jaw (16) disposed in the upper portion and a lower clamping jaw (12) disposed in the lower portion (Figs. 1, 2, 7). A web portion (Fig. 2) is disposed between the lower portion (a portion below slot 34) and the upper portion (a portion above slot 34). A separating slit (34) is disposed from the web portion to the cutting insert receptacle (Figs. 2, 7). The upper portion pivotable relative to the lower portion via the web portion (Figs. 1, 2, 7). The tool holder further includes a first fastener-mating hole disposed in the upper portion, a second fastener-mating hole disposed in the lower portion in alignment with the first fastener-mating hole (Fig. 7; ¶ 0052). In a top view of the upper portion of the grooving tool holder, an imaginary first axis extends longitudinally along the grooving tool holder through a center of the first fastener-mating hole (Figs. 1, 2, 7). The first and second fastener-mating holes are concentrically aligned around a second axis (Fig. 7). The first and second axis intersect perpendicularly (Figs. 1, 2, 7). In the top view of the upper portion of the grooving tool holder, the upper portion includes first and second portions disposed on opposite sides of the first axis (Fig. 1). The first portion is the entirety of the upper portion disposed on a first side of the imaginary axis (Fig. 1). The second portion is the entirety of the upper portion disposed on an opposite second side of the imaginary first axis (Fig. 1). The first portion is disposed entirely on a first side of the imaginary first axis, and the second portion is disposed entirely on an opposite side of the imaginary first axis (Fig. 1). The first portion has a different shape or different dimension than the second portion (Fig. 1). It is worth noting here that that the upper portion and the first and second portions are not claimed with any specificity, merely that the entirety of each is disposed on respective sides of the first axis. The claim require the entirety of the upper portion on each side of the imaginary axis to be either a first or second portion, but the claim fails to set forth specific boundaries for the upper portion. As such, the portions may be arbitrarily identified. That said the first and second portions include different shapes or different sizes (as arbitrarily selected on each side of the first axis). The upper portion includes a total three-dimensional mass (inherent). The first portion includes a first three-dimensional mass (inherent), and the second portion includes a second three-dimensional mass (inherent). Due to the arbitrary nature of the first and second portions (i.e., a part of a whole), the first mass and the second mass are within 20% of one another. That is, two portions may be identified that have masses satisfying the claimed relationship.
In the event Applicant traverses the anticipation rejection, the material (distribution) of the upper clamping jaw is a result effective variable because it impacts the clamping jaw integrity, tool balance and clamping action. Because Applicant failed to adequately traverse the well-known assertion by examiner, the official notice well-known assertion is taken as admitted prior art.2 Due to the fastening hole being a weak point in the clamping portion, one having ordinary skill in the art would have found it obvious to provide the tool holder disclosed in Kaufmann with portions within the claimed range in order to optimize tool integrity and clamping action. See 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.”). As a further alternative rationale, 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. See In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the tool holder disclosed in Kaufmann with the relative portions within the claimed range as 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.
Claims 1-7 and 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morgulis et al. (EP 2123378 A1), or alternatively, under 35 U.S.C. 103 as being unpatentable over Morgulis et al. (EP 2123378 A1).
(Claims 1, 10 and 11) Morgulis et al. (“Morgulis”) discloses a grooving tool holder (1) that includes: a lower portion (a portion below slot 23); an upper portion (a portion above slot 23) pivotable relative to the lower portion (¶ 0020; Fig. 1); and a cutting insert receptacle (24) disposed between the lower portion and the upper portion (Figs. 1, 2). The cutting insert receptacle (24) includes an upper clamping jaw (22) disposed in the upper portion and a lower clamping jaw (20) disposed in the lower portion (Figs. 1, 2, 4). The tool holder further includes a first fastener-mating hole (26) disposed in the upper portion, a second fastener-mating hole disposed in the lower portion in alignment with the first fastener-mating hole (Fig. 2; ¶ 0021). In a top view of the upper portion of the grooving tool holder (Fig. 3), an imaginary first axis extends longitudinally along the grooving tool holder through a center of the first fastener-mating hole (annotated Fig. 3 below). In the top view of the upper portion of the grooving tool holder (Fig. 3), the upper portion includes first and second portions disposed on opposite sides of the first axis (annotated Fig. 3). The first portion is the entirety of the upper portion disposed on a first side of the imaginary axis (Fig. 3). The second portion is the entirety of the upper portion disposed on an opposite second side of the imaginary first axis (Fig. 3). The first portion is disposed entirely on a first side of the imaginary first axis, and the second portion is disposed entirely on an opposite side of the imaginary first axis (Fig. 3). The first portion has a different shape or different dimension than the second portion (Fig. 3). It is worth noting here that that the upper portion and the first and second portions are not claimed with any specificity, merely that the entirety of each is disposed on respective sides of the first axis. The claim require the entirety of the upper portion on each side of the imaginary axis to be either a first or second portion, but the claim fails to set forth specific boundaries for the upper portion. As such, the portions may be arbitrarily identified so long as the upper portion is viewed in the top view and includes the flexible clamp. That said the first and second portions include different shapes or different dimensions (as arbitrarily selected on each side of the first axis). The upper portion includes a total three-dimensional mass (inherent). The first portion includes a first three-dimensional mass (inherent), and the second portion includes a second three-dimensional mass (inherent). Due to the arbitrary nature of the first and second portions (i.e., a part of a whole), the first mass and the second mass are within 20%, 10% or 5% of one another. That is, two portions may be identified that have masses satisfying the claimed relationship.
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In the event Applicant traverses the anticipation rejection, the material (distribution) of the upper clamping jaw is a result effective variable because it impacts the clamping jaw integrity, tool balance and clamping action. Because Applicant failed to adequately traverse the well-known assertion by examiner, the official notice well-known assertion is taken as admitted prior art.3 Due to the fastening hole being a weak point in the clamping portion, one having ordinary skill in the art would have found it obvious to provide the tool holder disclosed in Morgulis with portions within the claimed range in order to optimize tool integrity and clamping action. See 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.”). As a further alternative rationale, 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. See In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the tool holder disclosed in Morgulis with the relative portions within the claimed range as 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.
(Claim 2) A web portion (Fig. 4; a portion rearward (in a direction away from insert pocket) slot) disposed between the lower portion and the upper portion, the upper portion pivotable relative to the lower portion via the web portion (¶ 0020; Fig. 4).
(Claim 3) A separating slit (23) is disposed between the lower portion and the upper portion, the separating slit (23) disposed from the web portion to the cutting insert receptacle (Figs. 1, 2, 4).
(Claim 4) A fastener (4) extends into the first and second fastener-mating holes (Figs. 1, 2).
(Claim 5) The fastener (4) is threadedly attached to the second fastener-mating hole (Figs. 1, 2; ¶ 0021).
(Claim 6) The upper clamping jaw is configured to move towards the lower clamping jaw as the fastener is rotated in a first direction within the first and second fastener-mating holes, and the upper clamping jaw is configured to move away from the lower clamping jaw as the fastener is rotated in a second direction within the first and second fastener-mating holes (¶ 0020; Figs. 1, 2).
(Claim 7) A cutting insert (3) is disposed between and against the upper clamping jaw and the lower clamping jaw (Figs. 1, 2).
(Claim 9) A shank (2) extends longitudinally along the grooving tool holder (Figs. 1-4). The shank, as best understood, is capable of clamping the grooving tool holder to a machine Figs. 1-4).
(Claim 12) The lower portion includes a first elongate member (20) extending longitudinally from the lower portion, the upper portion includes a second elongate member (22, 28) extending longitudinally from the upper portion, and the cutting insert receptacle is disposed between the first and second elongate members (Figs. 1, 2, 4).
(Claim 13) Morgulis discloses a grooving tool holder (1) that includes: a lower portion (a portion below slot 23); an upper portion (a portion above slot 23) pivotable relative to the lower portion (¶ 0020; Fig. 1); and a cutting insert receptacle (24) disposed between the lower portion and the upper portion (Figs. 1, 2, 4). The cutting insert receptacle (24) includes an upper clamping jaw (22) disposed in the upper portion and a lower clamping jaw (20) disposed in the lower portion (Figs. 1, 2, 4). A web portion (Fig. 4; a portion rearward (in a direction away from insert pocket) slot) is disposed between the lower portion and the upper portion (Fig. 4). A separating slit (23) is disposed from the web portion to the cutting insert receptacle (Figs. 1, 2, 4). The upper portion pivotable relative to the lower portion via the web portion (¶ 0020; Figs. 1, 2, 4). The tool holder further includes a first fastener-mating hole disposed in the upper portion, a second fastener-mating hole disposed in the lower portion in alignment with the first fastener-mating hole (26; ¶ 0021; Figs. 1, 2). In a top view of the upper portion of the grooving tool holder, an imaginary first axis extends longitudinally along the grooving tool holder through a center of the first fastener-mating hole (annotated Fig. 3 above). The first and second fastener-mating holes are concentrically aligned around a second axis (Fig. 2). The first and second axis intersect perpendicularly (annotated Fig. 3). In the top view of the upper portion of the grooving tool holder, the upper portion includes first and second portions disposed on opposite sides of the first axis (Fig. 3). The first portion is the entirety of the upper portion disposed on a first side of the imaginary axis (Fig. 3). The second portion is the entirety of the upper portion disposed on an opposite second side of the imaginary first axis (Fig. 3). The first portion is disposed entirely on a first side of the imaginary first axis, and the second portion is disposed entirely on an opposite side of the imaginary first axis (Fig. 3). The first portion has a different shape or different dimension than the second portion (Fig. 3). It is worth noting here that that the upper portion and the first and second portions are not claimed with any specificity, merely that the entirety of each is disposed on respective sides of the first axis. The claim require the entirety of the upper portion on each side of the imaginary axis to be either a first or second portion, but the claim fails to set forth specific boundaries for the upper portion. As such, the portions may be arbitrarily identified so long as the upper portion is viewed in the top view and includes the flexible clamp. That said the first and second portions include different shapes or different sizes (as arbitrarily selected on each side of the first axis). The upper portion includes a total three-dimensional mass (inherent). The first portion includes a first three-dimensional mass (inherent), and the second portion includes a second three-dimensional mass (inherent). Due to the arbitrary nature of the first and second portions (i.e., a part of a whole), the first mass and the second mass are within 20% of one another. That is, two portions may be identified that have masses satisfying the claimed relationship.
In the event Applicant traverses the anticipation rejection, the material (distribution) of the upper clamping jaw is a result effective variable because it impacts the clamping jaw integrity, tool balance and clamping action. Because Applicant failed to adequately traverse the well-known assertion by examiner, the official notice well-known assertion is taken as admitted prior art.4 Due to the fastening hole being a weak point in the clamping portion, one having ordinary skill in the art would have found it obvious to provide the tool holder disclosed in Morgulis with portions within the claimed range in order to optimize tool integrity and clamping action. See 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.”). As a further alternative rationale, 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. See In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the tool holder disclosed in Morgulis with the relative portions within the claimed range as 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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Morgulis et al. (EP 2123378 A1) in view of Barazni (US Patent No. 6,234,727 B1).
Morgulis does not explicitly disclose the upper clamping jaw and an upper surface of the cutting insert each comprise a separate respective mating V-shape.
The upper clamping jaw and an upper surface of the cutting insert each comprise a separate respective mating V-shape (Fig. 3B). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the seating surface and/or insert surfaces disclosed in Morgulis with a V-shape as taught by Kaufmann in order to secure the cutting insert against lateral deflection as is well-known in the art, the fact of which examiner takes official notice and/or as “obvious to try” choosing from a finite number of solutions with the predictable result of securing the insert within the pocket. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Response to Arguments
Applicant's arguments filed August 12, 2026 have been fully considered but they are not persuasive. Applicant argues that the first portion and the second portion are not arbitrarily selected to read upon the claimed mass range relationship. In contrast, Applicant contends that the disposition of each portion being the entirety of the upper portion on respective sides of the first axis sets forth non-arbitrary boundaries. Consequently, Applicant argues that the prior art fails to explicitly disclose the first and second portions having respective three-dimensional masses of differing shapes or dimensions that fall within the claimed mass relationship to one another. Turning to the obviousness rejection, Applicant argues that rationale would not lead one of ordinary skill to the mass relationship relative to the first axis. Furthermore, that optimization rationale is improper because the prior art does not specifically recognize mass comparison percentage relative to the imaginary axis as claimed. Moreover, Applicant argues that the obviousness rejections fail to identify teaching within the prior art that would have led one of ordinary skill to provide the claimed percentage. Examiner disagrees.
The first and second portions5 are not well-defined with particular boundaries. As stated in the rejection above, the entirety of each portion is merely recited as being on a respective side of the first axis. The new limitation only requires each of the first portion and the second portion to be the entirety of the upper portion on a respective side of the first axis. The claim still lacks recitation of specific boundaries for the upper portion. Because the upper portion may be set arbitrarily, the prior art of record reads upon the claimed invention.
The result-effective variable relates to the distribution of material in the upper clamping jaw, which naturally takes account for the fastening hole in said upper jaw. Therefore, the amount of mass on either side of the mounting hole would be a consideration that would lead one of ordinary skill to optimize the distribution with regard to the first axis. In particular, the upper portion must have adequate mass on either side thereof in order to ensure strength, balance and performance. The result-effective variable is the amount and distribution of material in the upper clamping jaw. Furthermore, the optimization rationale need not explicitly teach the limitation as being a result-effective variable. Yet, it is worth noting that the prior art of record discloses that the distribution of material in the clamping portion is a question of optimal design. The lack of explicit disclosure it is relative distribution of arbitrary portions on either side of an axis intersecting the center of a hole does not obviate the rejection. Thus, the optimization of said result-effective variable would lead one having ordinary skill to modify the prior art references such that each reads upon the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Henry et al. (US Pub. No. 2012/0230780 A1) (Fig. 2; ¶¶ 0019-0020) (disclosing a ratio between relative widths of the upper portion in a top view thereof); Breisch (US Pub. No. 2014/0064862 A1) (Fig. 4); Andoh (US Pub. No. 2020/0180040 A1) (Fig. 3A); GB 1493354 A; and KR 101241637 B1.
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
1 While Applicant failed to adequately argue against the well-known assertion, the following references support the assertion that the amount of material involved in the upper clamping portion is a result-effective variable: Barazani (US Patent No. 6,234,727 B1) (Col. 5, Lines 20-24) (disclosing that the amount of material is a question of optimal design taking into consideration the strength and clamping forces required); Pano (US Patent No. 4,992,008) (Col. 5, Lines 33-35) (disclosing that a dimension of the upper clamping jaw impacts strength); and Hecht et al. (US Pub. No. 2023/0121524 A1) (¶¶ 0084-0085, 0099-0100).
2 While Applicant failed to adequately argue against the well-known assertion, the following references support the assertion that the amount of material involved in the upper clamping portion is a result-effective variable: Barazani (US Patent No. 6,234,727 B1) (Col. 5, Lines 20-24) (disclosing that the amount of material is a question of optimal design taking into consideration the strength and clamping forces required); Pano (US Patent No. 4,992,008) (Col. 5, Lines 33-35) (disclosing that a dimension of the upper clamping jaw impacts strength); and Hecht et al. (US Pub. No. 2023/0121524 A1) (¶¶ 0084-0085, 0099-0100).
3 While Applicant failed to adequately argue against the well-known assertion, the following references support the assertion that the amount of material involved in the upper clamping portion is a result-effective variable: Barazani (US Patent No. 6,234,727 B1) (Col. 5, Lines 20-24) (disclosing that the amount of material is a question of optimal design taking into consideration the strength and clamping forces required); Pano (US Patent No. 4,992,008) (Col. 5, Lines 33-35) (disclosing that a dimension of the upper clamping jaw impacts strength); and Hecht et al. (US Pub. No. 2023/0121524 A1) (¶¶ 0084-0085, 0099-0100).
4 While Applicant failed to adequately argue against the well-known assertion, the following references support the assertion that the amount of material involved in the upper clamping portion is a result-effective variable: Barazani (US Patent No. 6,234,727 B1) (Col. 5, Lines 20-24) (disclosing that the amount of material is a question of optimal design taking into consideration the strength and clamping forces required); Pano (US Patent No. 4,992,008) (Col. 5, Lines 33-35) (disclosing that a dimension of the upper clamping jaw impacts strength); and Hecht et al. (US Pub. No. 2023/0121524 A1) (¶¶ 0084-0085, 0099-0100).
5 A portion is merely a part of a whole. See https://www.dictionary.com/browse/portion (last visited March 11, 2026).
