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 .
DETAILED ACTION
This office action is in response to Applicant’s amendment filed 30 March 2026.
The indicated allowability of claims 3-4, 6-11, and 13-16 is withdrawn in view of the newly discovered reference(s) to Nordstrom. Rejections based on the newly cited reference(s) follow.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4, 6-7, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nordstrom (US 5,829,925).
Regarding claim 1, Nordstrom discloses a deburring tool 1, the deburring tool comprising: a shaft 2 extending along a shaft axis (rotation axis, not labeled), the shaft having a shaft distal end (bottom in figure 1) and a shaft proximal end (toward the top and out of view in figure 1); and a blade body 7 extending radially outward from the shaft distal end, the blade body having a cutting edge (angled V-shaped cutting edges on cutter 6 in figures 1-2) facing the shaft proximal end.
Regarding the intended use limitation “for deburring a distal end of a bushing formed within a metal tube” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding the intended use limitation “and configured to engage an external portion of the distal end of the bushing and remove material therealong”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 4, Nordstrom discloses wherein the cutting edge includes an external cutting edge (outer cutting edge on cutter 6 in figure 2).
Regarding the intended use limitation “configured to define an external cut surface on the distal end of the bushing”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 6, Nordstrom discloses wherein the cutting edge includes an internal cutting edge (inner cutting edge on cutter 6 in figure 2).
Regarding the intended use limitation “configured to define an internal cut surface on the distal end of the bushing”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 7, Nordstrom discloses wherein the cutting edge has a V-shape profile (as seen in figures 1-2).
Regarding claim 12, Nordstrom discloses a deburring tool 1 for use in a machining center (see background of the invention), the deburring tool comprising: a base (not shown but inherent for use with the disclosed machining center) configured to be received in a tool holder of the machining center; a shaft 2 extending from the base along a shaft axis (rotation axis, not shown) and including a shaft distal end (bottom in figure 1) distal to the base and a shaft proximal end (toward the top and out of view in figure 1) proximal to the base; and a blade body 7 extending radially outward from the shaft distal end, the blade body having a cutting edge (angled V-shaped cutting edges on cutter 6 in figures 1-2) with a V-shape profile including an internal cutting edge and an external cutting edge (as seen in figure 2).
Regarding the intended use limitation “for deburring a distal end of a bushing formed within a metal tube” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding the intended use limitation “the cutting edge configured to engage the distal end of the bushing and remove material along an external portion of the distal end to define an external cut surface”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
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 of this title, 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 5, 8, 10-11, 13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nordstrom.
Regarding claims 5, 8, and 15-16, Nordstrom discloses the invention substantially as claimed, except Nordstrom does not disclose wherein the external cutting edge is disposed at an angle in the range of about 55 degrees to about 65 degrees from the shaft axis, or wherein the internal cutting edge extends from the shaft distal end in a direction substantially away from the shaft proximal end at an angle in the range of about 20 degrees to about 30 degrees from the shaft axis, or wherein the internal cutting edge is disposed at an angle of about 30 degrees from the shaft axis, or wherein the external cutting edge is disposed at an angle of about 60 degrees from the shaft axis. However, these claimed are result-effective variables because the selection of these angles would be determined by the desired final cut shape of the bushing. Therefore, it would have been an obvious matter of design choice to make deburring tool angles to be as claimed, because it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Additionally, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected these claimed angles for the deburring tool for the purpose of providing a desired final cut shape to the bushing, because 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)
Regarding claims 10-11 and 13, Nordstrom discloses wherein the blade body 7 extends from the shaft distal end a blade distance from a peripheral surface of the shaft to a blade distal end (see figure 2) and wherein the cutting edge is configured to remove material along an internal portion of the distal end to define an internal cut surface. Nordstrom does not disclose the blade distance being greater than a thickness of the bushing, or wherein the external cutting edge extends along the cutting edge for more than half of the blade distance, or the external cut surface being larger in area than the internal surface. However, it would have been an obvious matter of design choice to make the different portions of the device of whatever relative sizes were desired for the purpose of providing a desired final cut shape to the bushing, since such a modification would have involved a mere change in the proportions of components. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nordstrom in view of Cogsdill (US 3,122,947).
Regarding claim 2, Nordstrom discloses wherein the blade body 7 has a forward facing blade surface and a rearward facing blade surface when moving in the deburring direction (see figures 1-2), and wherein the forward facing blade surface is planar.
Regarding the intended use limitation “wherein the deburring tool is configured to rotate within and around the bushing in a deburring direction”, it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex part Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Nordstrom does not disclose the rearward facing blade surface is nonplanar. Cogsdill teaches the use of a deburring tool comprising a blade body 13, wherein a forward facing blade surface 20 is planar and a rearward facing blade surface 22 is nonplanar for the purpose of providing a relief surface on the cutting blade. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the deburring tool of Nordstrom with the deburring tool relief surface as taught by Cogsdill in order to prevent the deburring tool blade from dragging against the workpiece during a deburring operation, thereby minimizing friction and preventing blade wear.
Regarding claim 17, Nordstrom discloses the invention substantially as claimed, except Nordstrom does not disclose wherein the base, the shaft, and the blade body are integrally formed from a single piece of material. Cogsdill teaches that it is desirable to form a deburring tool base, shaft and blade body from a single piece of material for the purpose of eliminating the need for a blade controlling mechanism, and for making a deburring tool that is simple in construction and economically manufactured. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the deburring tool of Nordstrom with the deburring tool made integrally from a single piece of material as taught by Cogsdill in order to simplify the construction of the tool and to reduce the manufacturing cost.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nordstrom in view of Zhong et al. (CN 103658794 A).
Regarding claim 9, Nordstrom discloses the invention substantially as claimed, except Nordstrom does not disclose wherein the cutting edge further includes a distal cutting edge between the internal cutting edge and the external cutting edge, the distal cutting edge oriented perpendicular to the shaft axis. Zhong et al. teaches the use of a deburring tool 200 that comprises an external cutting edge 622, an internal cutting edge 626, and a perpendicular cutting edge 624 that is located between the internal cutting edge and the external cutting for the purpose of retaining a flat end surface on a tubular workpiece 100 to be machined. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the deburring tool of Nordstrom with the deburring tool have a perpendicular center cutting edge as taught by Cogsdill in order to obtain a flat end surface on a bushing that is being deburred.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 22 May 2026
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