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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the inner surface of the breaker and the breaker groove recited in claim 2 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed March 10, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the drawings identification of, and the written description disclosure of, surface 341 as also being surface 341a.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claim 2 is 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 2 recites “the breaker being a recessed groove comprising the one of the flanks and an inner surface of the breaker” in Lines 3-4. This recitation contains new matter. The limitation lacks support in the disclosure at the time of filing for the groove including one of the flanks and an inner surface of the breaker. The disclosure states, “a recessed groove that is disposed to adjust an angle formed by 2 surfaces (inner surface of the breaker341 and later mentioned flank 351) . . . .” 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 1-6, 8 and 9 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 “a pair of surfaces opposing each other in a rotation direction of the body” in Lines 3-4. The recitation of “in a rotating direction” adds vagueness to the limitation. While the body, and therefore the rotation direction thereof, is intended use only, it is unclear how the surfaces oppose each other in said direction. A direction only goes one way. Appropriate correction required.
Claim 1 recites “a pair of surfaces opposing each other in a direction toward a rotational center axis of the body” in Lines 5-6. The recitation of “in a direction toward a rotational center axis of the body” adds vagueness to the limitation. While the body, and therefore a direction toward a rotation axis thereof, is intended use only, it is unclear how the surfaces face each other in said direction. A direction only goes one way and the surfaces face opposite to each other. Appropriate correction required.
Claim 1 recites “framing the one of the first constraining surfaces” in Line 10. It is unclear what features “frame” the first constraining surface. In this context, one would expect a frame or framing of the surface to be an enclosed border. Yet, the limitation only includes a first pair of opposing sides. Appropriate correction required.
Claim 2 recites the limitation "the one of the first pair of opposing sides" in Lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 2 recites “a beaker is disposed between the one of the cutting edges and the one of the first pair of opposing sides of the one of the first constraining surfaces, the breaker being a recessed groove comprising the one of the flanks and an inner surface of the breaker” in Lines 2-4. The scope of the breaker groove is unclear. It appears, relative to the disclosure of the figures, the term breaker is being employed in place of rake face, which is in conflict with the normally understand meanings of the terms within the industry. The claim further adds vagueness as the groove is disclosed as including surface that are on opposite sides of a cutting edge. It is unclear how this configuration exists. It is unclear what constitutes an inner surface of the breaker. Appropriate correction required.
Claim 3 recites “a second pair of opposing sides of the one of the first constraining surfaces, the second pair of opposing sides respectively extending along the second constraining surfaces and framing the one of the first constraining surfaces” in Lines 3-4. It is unclear what is meant by the second pair respectively extending because the pair is singular. Furthermore, it is unclear how the second pair extends along the second constraining surfaces. Specifically, the second pair is previously disclosed as being of the one of the first constraining surfaces. Additionally, it is unclear how the opposing sides extend along both second constraining surfaces. Once more, it is unclear what is meant by the pair of second sides framing the one of the first constraining surfaces. Appropriate correction required.
Claim 3 recites the limitation "the one of the first pair of opposing sides" in Line 4. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 3 recites “an angle formed by the first side and the second side” in Line 9. It is unclear how the angle is formed because it is unclear how the first and second sides are formed. Appropriate correction required.
Claim 4 recites “shapes of the pair of first constraining surface are the same as each other” in Line 2. It is unclear what is required by shapes of the pair of surfaces being the same as each other. Moreover, recitation to the pair instead of each of the pair creates confusion. Similar language is employed in Line 3 and is rejected on the same grounds. Appropriate correction required.
Claim 6 recites “a second pair of opposing sides of the one of the first constraining surfaces, the second pair of opposing sides respectively extending along the second constraining surfaces and framing the one of the first constraining surfaces” in Lines 3-4. It is unclear what is meant by the second pair respectively extending because the pair is singular. Furthermore, it is unclear how the second pair extends along the second constraining surfaces. Specifically, the second pair is previously disclosed as being of the one of the first constraining surfaces. Additionally, it is unclear how the opposing sides extend along both second constraining surfaces. Once more, it is unclear what is meant by the pair of second sides framing the one of the first constraining surfaces. Appropriate correction required.
Claim 9 recites the limitation “an axis that faces the rotating direction of the body of the cutting tool” in Lines 2-3. The boundary of between an axis that faces in an intended direction and does not face in said direction is unclear. Appropriate correction required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Satran et al. (US Patent No. 8,202,026 B2).
(Claim 1) Satran et al. (“Satran”) discloses a cutting insert (10) which is capable of being mounted on a body of a cutting tool (via 18). The cutting insert includes first constraining surfaces (40), which are a pair of surfaces opposing each other, as best understood, in a rotating direction of the body (mirror symmetry about P2 – Col. 3, Lines 59-65; Figs. 1, 2), and one of which is constrained by the body (while this sounds in positive claim language, the claim is only to the cutting insert and this limitation is interpreted as intended use). The cutting insert further includes second constraining surfaces (48), which are a pair of surfaces opposing each other (as best understood, Fig. 3; Col. 4, Lines 4-6) in a direction toward a rotational center axis of the body (intended use, but due to the tangential nature of the mounting arrangement, the insert is capable of being mounted such that the second constraining surfaces oppose each other in the radial direction of a cutter body), and one of which is constrained by the body (again, intended use). The cutting insert has cutting edges (32, 34, 36) disposed respectively along a first pair of opposing sides of one of the first constraining surfaces, first pair of opposing sides from the one of the second constraining surfaces to an other of the second constraining surfaces and, as best understood, framing the first constraining surface (Fig. 3). Flanks (46) which are disposed at positions adjacent to the cutting edges respectively, wherein an angle (Fig. 5 internal angle between 40 and 46) formed by one of the first constraining surface and one flank, which are adjacent to each other across one of the cutting edges, is larger than 90°.
(Claim 2) A breaker (as best understood 52) is disposed between the one of the cutting edges and the one of the first pair of opposing sides of the one of the first constraining surfaces, the breaker being a recessed groove comprising the one of the flanks and an inner surface of the breaker (as best understood) of the breaker and the flank, which are adjacent to each other across the cutting edge is 90°or less (Fig. 5; γ; Col. 5, Lines 45-47).
(Claim 3) As best understood, the cutting insert comprises a second pair of opposing sides of the one of the first constraining surfaces, the second pair of opposing sides respectively extending along the second constraining surfaces and framing the one of the first constraining surfaces, of the sides framing the first constraining surface, a side on the second constraining surface side is a first side, and a side on the cutting edge side thereof is a second side, an angle formed by the first side and the second side is an angle that is different from 90° (Fig. 3 showing at least the cutting edges cambered such that an angle between a short side edge 34 and a part of the main edge 32 would be different such that at least one of said angle between said sides would not be 90 degrees).
(Claim 4) Shapes of the two first constraining surfaces (40) are the same as each other, and shapes of the two second constraining surfaces (48) are the same as each other (Figs. 1, 2; mirror symmetry about P2 – Col. 3, Lines 59-65; Fig. 3 symmetry about B – Col. 4, Lines 4-6).
(Claim 5) A shape of the cutting insert has 180-degree rotational symmetry about a central axis that is perpendicular to the pair of second constraining surfaces and passes through the center of each of the pair of second constraining surfaces (Fig. 3 symmetry about B – Col. 4, Lines 4-6).
(Claim 6) As best understood, the cutting insert comprises a second pair of opposing sides of the one of the first constraining surfaces, the second pair of opposing sides respectively extending along the second constraining surfaces and framing the one of the first constraining surfaces (Figs. 1-3). A margin (46), which is a portion that contacts with an inner side surface of a hole during machining, is formed linearly along the side of the second constraining surface on the first constraining surface side (Figs. 1-4).
(Claim 8) A cutting tool is equipped with the cutting insert (Col. 4, Lines 54-58; Col. 5, Lines 57-59).
(Claim 9) As best understood, a shape of the cutting insert has 180-degree rotational symmetry about an axis that faces the rotating direction of the body of the cutting tool and passes through the center of each of the pair of first constraining surfaces (Figs. 1, 3).
Response to Arguments
Applicant's arguments filed March 10, 2026 have been fully considered but they are not persuasive. Applicant argues that the prior art of record fails to disclose an angle exceeding 90 degrees as recited in claim 1. Examiner disagrees. Due to a typographical error, Applicant believed that the identification of flank as detail 56 would lead to the prior art not reading on the claimed angle. Yet, Figure 5 was correctly identified and the surfaces of 46 and 40 clearly show the angle as claimed. Thus, the prior art reads upon the claimed angle.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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