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 .
Election/Restrictions
Newly amended claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the embodiment with the resetting elements biasing the clamping mechanism to the open position is the unelected species illustrated in Figures 7-8. Accordingly, claim 16 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 3, 6 and 9 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.
Claims 3 and 6 lack adequate disclosure in the specification at the time of filing for what constitutes a prime mover. As such, it is not clear that the inventor had possession of the invention at the time of filing. Appropriate correction required.
Claim 9 recites “the cutting inserts are detachable from the toolholder without use of a mechanical tool when the clamping elements are in the open position.” This recitation contains new matter. The limitation of “without use of a mechanical tool” is not supported by the specification at the time of filing. As disclosed, the detachment of the inserts requires the use of a mechanical tool. Furthermore, the written description discloses “a tool-free manner,” not specifically without a mechanical tool. 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 1-11, 13-15 and 17-201 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 “the cutting insert in the respective one of the plurality of recesses” in Lines 15-16. There is insufficient antecedent basis for this limitation (i.e., the plurality of recesses) in the claim. Appropriate correction required.
Claim 3 recites “a prime mover” in Lines 3-4. It is unclear what constitutes a prime mover. Appropriate correction required.
Claim 6 recites “a prime mover” in Lines 2-3. It is unclear what constitutes a prime mover. Appropriate correction required.
Claim 9 recites “the cutting inserts are detachable from the toolholder without use of a mechanical tool when the clamping elements are in the open position.” The metes and bounds of “without use of a mechanical tool” are not clearly delineated such that one of ordinary skill would understand the scope of the claim. In particular, it is unclear at what point the detachment is considered “without a mechanical tool” and at what point it is not. It is curious because a tool is required to actuate the adjustment element, which actuates the clamping element between open and closed positions. 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 1-11, 13-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 1124730 A.
(Claim 1) GB 1124730 A (‘730) discloses a toolholder (Figs. 1, 2) with a body (1, 2) having a plurality of receptacles (Page 2, Lines 33-38; Fig. 2), and a plurality of cutting inserts, each of the plurality of cutting inserts is positionable in a respective one of the plurality of receptacles (Figs. 1, 2). A clamping mechanism including a plurality of clamping elements (8, 11), each of the clamping elements (8, 11) being associated with the respective one of the receptacles and being associated with a respective hydraulic channel (Fig. 1, Page 2, Lines 61-89; channel including 11-13) of a plurality hydraulic channels of a hydraulic system such that each of the clamping elements (8, 11) is hydraulically (Page 1, Lines 82-83) adjustable between a closed position and an opened position via the hydraulic channel to which the clamping element is associated (Page 2, Lines 61-89). The toolholder is configured such that each of the clamping elements clamp the cutting insert in the respective one of the plurality of receptacles in the closed position for a cutting operation such that the cutting inserts are fixed to the toolholder via the clamping elements being in the closed position and each of the clamping elements release the cutting insert in the respective one of the plurality, as best understood, of recesses in the opened position for detachment from the toolholder (Page 2, Lines 61-117). A filling opening of the hydraulic system on a front face of the body (1, 2), the filling opening being so that an annular reservoir of the hydraulic system is fillable via the filling opening, the annular reservoir being in fluid communication with the hydraulic channels (via removal of nut 4 and ring 5, Fig. 1; Page 2, Lines 19-32).
(Claim 2) The hydraulic channels are fluidly connected to one another (via chamber Fig. 1; Page 2, Lines 26-32).
(Claim 3) The filling opening is provided so as to oppose a prime mover connectable to the toolholder (via removal of nut 4 and ring 5, Fig. 1; Page 2, Lines 19-32).
(Claim 4) The toolholder has an adjustment element (4) by means of which the pressure of the hydraulic system adjustable (Page 2, Lines 61-117; Fig. 1).
(Claim 5) The adjustment element (4) is adjustable between a first position in which the clamping elements are in the opened position and a second position in which the clamping elements are in the closed position (Page 2, Lines 61-117; Figs. 1, 2).
(Claim 6) As best understood, the adjustment element (4) is arranged on a side of the toolholder that is provided so as to not oppose a prime mover attachable to the toolholder for the cutting operation (Fig. 1).
(Claim 7) The clamping elements (8, 11) are plungers, each of which is slidably supported in a cylinder recess (Page 2, Lines 38-117; Figs. 1, 2).
(Claim 8) The toolholder for each clamping element includes a resetting element (13) associated with the corresponding clamping element that biases the associated clamping element to the opened position or the closed position (Page 2, Lines 45-50).
(Claim 9) As best understood, the cutting inserts are detachable from the toolholder without use of a mechanical tool when the clamping elements are in the open position (Page 2, Lines 38-117; Figs. 1, 2).
(Claims 10 and 11) The toolholder of the ‘730 patent has the structure claimed. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)).
(Claim 13) The hydraulic system has an adjustment channel (channel for ring 5) and the toolholder includes an adjustment element (4, 5) that is moveable in an adjustment direction to increase or decrease a force with which the adjustment element presses on hydraulic fluid within the hydraulic system to change a pressure of the hydraulic fluid within the hydraulic system (Fig. 1; Page 2, Lines 71-117).
(Claim 14) The adjustment element (4, 5) is moveable in the adjustment direction to increase the force to adjust the clamping elements from the closed position to the open position (Fig. 1; Page 2, Lines 71-117).
(Claim 15) The adjustment element (4, 5) is moveable in the adjustment direction from a first position to a second position to decrease the force to simultaneously adjust all the clamping elements from the open position to the closed position (Fig. 1; Page 2, Lines 71-117).
(Claim 17) Each of the clamping elements has an axial end that engages a notch (at front end of 11 via 9) in the tensioning element associated with the clamping element (Figs. 1, 2).
(Claim 20) The clamping mechanism includes a plurality of resetting elements (11, 13). Each of the resetting elements associated with a respective one of the clamping elements to bias the clamping element to which the resetting element is associated to the closed position (Figs. 1, 2; Page 2, Lines 45-50).
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 10 and 11 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over GB 1124730 A in view of Semnisky et al. (US Pub. No. 2021/0060665 A1).
While the ‘730 patent has the claimed structure, there isn’t explicit disclosure of 3D printing.
Semnisky et al. discloses the use of 3D printing of one or all components of a cutting tool (¶ 0036). At a time prior to filing it would have been obvious to one having ordinary skill in the art to make the toolholder disclosed in ‘730 via 3D printing as suggested by Semnisky et al. in order to “optimize the shape and distribution of material.” (¶ 0001).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over GB 1124730 A in view of Korotun et al. (SU 1235669 A2).
The ‘730 patent does not explicitly disclose a compression screw.
Korotun et al. discloses a compression screw (4) for adjustment of hydraulic pressure (translation). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the toolholder disclosed in ‘730 with a compression screw as suggested by Korotun et al. in order to further adjust the pressure of the fluid (translation).
Response to Arguments
Applicant's arguments filed July 2, 2026 have been fully considered but they are not persuasive. Applicant argues that the 112f interpretations and the written description rejections are erroneous. Additionally, Applicant alleges that “the plurality of recesses,” “prime mover” and “without use of a mechanical tool” are definite. Turning to the prior art rejections, Applicant argues that the GB 1124730 reference fails to disclose the filling opening, hydraulic fluid as the pressure medium, and an annular reservoir in communication with hydraulic channels. Furthermore, relative to the dependent claims, Applicant once more alleges that limitations are missing either in conclusory fashion or due to the lack of hydraulic fluid. Relative to claims 18 and 19, Applicant argues against the modifying reference in isolation. Examiner disagrees.
One having ordinary skill in the art would not understand the scope of the structure for the features interpreted as nonce terms triggering a means-plus-function interpretation. That is, the limitations lack inherent structure by the mention of their function. As such, the interpretations have been properly determined.
The rejections under 35 USC 112 have been correctly maintained. Relative to the indefiniteness rejection of claims 3 and 6, it is curious that Applicant argues that the written description provides support for what constitutes a prime mover, but fails to provide a definition for the prime mover. Applicant merely points to parts of the written description that mention the prime mover. An example is provided from a different patent document, which identifies “a prime mover in the form of a motor” that may be powered electrically, hydraulically or pneumatically. It is worth noting that the cited patent document does not define “prime mover” as a motor that may be so powered. It merely states that the prime mover is in the form of a motor. Similar guidance is provided for the “without a mechanical tool” limitation. Applicant merely states that the specification refers to removal of cutting inserts may be removed by hand, thus without tools. Yet, Applicant explicitly ignores the rejection that makes it clear that a tool is required to unclamp the inserts, thus with tool. If Applicant desires the capability of removing inserts manually in the open position of the clamping element, then Applicant must amend in a manner that one of ordinary skill would understand the claim scope. Rejections maintained.
The Action correctly identifies indefinite recitations. There isn’t antecedent basis for “the plurality of recesses” in claim 1; and therefore, the scope of those features us unclear. The phrases “prime mover” and “without use of a mechanical tool” lack clarity. The phrases do not possess a plain meaning. If the meaning of “prime mover” was plain, then a definition would be easily within reach. Instead, Applicant attempts to provide a scope for “prime mover” by referencing an unrelated patent document that discloses that the prime mover is a motor. This is not an industry definition. Moreover, the prime mover being a motor does not fit the context in the claim (motor “attachable to the tool holder”). Further still, if prime mover was tantamount to motor, it would be simple to then recite motor instead. Similarly, the “without use of a mechanical tool” scope lacks clarity as to scope concerning a mechanical tool is involved. In an attempt to cure the indefinite nature of “without a tool,” Applicant attempts to separate the pressure adjustment screw from the clamping and unclamping of the inserts. Because the inserts may not be removed without use of the adjustment screw increasing the fluid pressure within the system, the two are linked and cannot be separated into different concepts. The stance Applicant is taking is an odd one. It would appear all cutting inserts would then be removed without use of a tool because after removing, with a tool mind you, whatever clamping mechanism is involved in a given cutting tool with inserts, the inserts may then be removed … without a tool. Thus, the rejections have been maintained.
Relative to the prior art rejection, the GB 1124730 reference discloses a filling opening (via removal of the nut and ring) that makes it possible to fill an annular reservoir of the system, hydraulic fluid as the pressure medium, and an annular reservoir in communication with hydraulic channels. Applicant merely alleges, in conclusory fashion, that the prior art fails to disclose the filling opening. Contrary to Applicant’s allegation, the GB 1124730 reference explicitly discloses that the pressure transmission medium may be hydraulic fluid. Likewise, the prior art reference provides for an annular chamber (chamber for pressure transmission medium) and the hydraulic channels (Page 2, Lines 61-89; channel including 11-13). Moreover, contrary to Applicant’s assertion that only channel exists, the disclosure includes a plurality of cutting blades and clamping elements (Page 2, Lines 34-38). The cross-sectional view in Figure 1 only shows one, but there is a plurality of channels. Thus, the rejection has been maintained.
Relative to claims 13 and 15, the prior art discloses an adjustment element and an adjustment channel as claimed. The GB 1124730 reference explicitly discloses that the pressure medium may be hydraulic fluid. Features 4 and 5 cooperate to adjust the pressure of the medium; and therefore, the clamping or unclamping of the inserts. Given the rejection above, the conclusory argument relative to claim 17 is moot. Thus, the prior art reads upon the claimed invention.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). It is worth noting that the teaching reference suggests the claimed means (a screw) for adjusting pressure of a medium within the tool body. One having ordinary skill would understand the suggestion because “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Shevchenko (SU 1278119 A1).
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. 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 The previous Action contained a typographical error of the rejected claims only being 1-17, but this should have been recited as claims 1-19. Based on the rejection of claim 1, all claims dependent therefrom (1-19) were rejected.
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