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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 1, 2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: clamping mechanism in claim 1; clamping element in claim 1; adjustment element in claims 6 and 13-15; resetting element in claims 8 and 16; and tensioning element in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 9 and 16 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.
Claim 16 recites “the clamping mechanism includes a plurality of resetting elements, 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 opened position or the closed position.” It is new matter that the resetting element biases a corresponding clamping element to the opened position. That is, this presents a conflict with claim 1. While the specification has support for the resetting element biasing the clamping element to either the open position or the closed position, the optional biasing depends on the home position. 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 1-17 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 12 recites “at least one cutting insert” in Lines 1-2. Antecedent basis for this limitation has previously been set forth. Furthermore, a plurality of cutting inserts has been set forth. It is unclear whether this recitation refers back to the previously recited at least one cutting insert, the plurality, or a different at least one cutting insert. Appropriate correction required.
Claim 16 recites “the clamping mechanism includes a plurality of resetting elements, 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 opened position or the closed position.” This recitation presents a conflict with claim 1. While the specification has support for the resetting element biasing the clamping element to either the open position or the closed position, the optional biasing depends on the home position. 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 1-17 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 12) The ‘730 disclosure includes a cutting tool having a toolholder according to claim 1 and at least one cutting insert (7; Figs. 1, 2; Page 2, Lines 33-38).
(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 16) 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 opened position or the closed position (Figs. 1, 2; Page 2, Lines 45-50).
(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 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 April 1, 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 “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. Examiner disagrees.
One having ordinary skill in the art would not understand the scope of the structure for a 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.
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. The same guidance is provided for the “without a mechanical tool” limitation. Rejections maintained.
Turning to the new matter rejection of claim 16, the specification at the time of filing lacks support for a claim that the resetting element biases the clamping element to the open position when claim 1 sets forth the home position as the closed position. That is, this presents a conflict with claim 1. While the specification has support for the resetting element biasing the clamping element to either the open position or the closed position, the optional biasing depends on the home position. (Written Description Page 3). Thus, the rejection has been maintained.
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. 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Shevchenko (SU 1278119 A1).
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
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