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 .
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 1-3, 7, 8, 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.
With regards to claims 1, 8, and 16, the phrase “wherein an end of the rounded projection opposite the relief face of each cutting tool is shaped to match a profile of the corresponding tooth body at the second end of the cutting tooth” does not appear to be supported and is new matter and is unclear. The original specification does not appear to provide support for the shaping of this rounded projection end after the cutting member has been coupled and the ground to form the tooth which includes creating the rounded projection. It is unclear what structure represents the end of the rounded projection that is also opposite the relief face 642. It is believed to be end E in the Figure below because at least claim 1 discloses the cutting tooth has a first end (636) and a second end (644) earlier in the claim and, as written, the “end of the rounded portion” limitation is introduced and does not reference back to any other end limitation. Also end E appears to be the only end opposite to the face 642. In order for the end to be “of the rounded projection” and “opposite the relief face”, the rounded projection and relief face must have already been formed via the grinding which means this end E would already be coupled to the edge of the blade body. It is unclear how the end of the rounded projection can be shaped when it is already coupled to the blade body edge and there does not appear to be any support in the original specification for a step of shaping this end after the cutting member has been coupled and underwent grinding. The end E does not appear to be accessible for this shaping step to take place. Also, looking at Figures 19 and 20, the end E of insert 746 and the portions of ends 670 and 638 of the insert 746 that are directly adjacent to the tooth body in Figure 19 appear to be unchanged as Figure 19 transitions to Figure 20 where the rounded projection has been created with the forming of the tooth 618. Basically, end E appears to be the same shape in Figure 19 as it is in Figure 20 and the portions of ends 670 and 638 that are directly adjacent the tooth body appear to be the same in Figure 19 as it is in Figure 20. Also, the phrase “shaped to match a profile of the tooth body” is unclear and new matter. Using Figure 19, the portions of the ends 636 and 670 directly adjacent to the tooth body appear to already match the profile of the tooth body and end E of insert 746 also already appears to match the profile of the tooth body. It is unclear what is meant by the “shaped to match a profile of the tooth body” limitation when the inserts look shaped to match the profile in Figure 19 and the corresponding portions of the teeth in Figure 20 look unchanged and, therefore, appear to already be shaped to match before the rounded projection and relief face are formed.
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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 1-3, 7, 8, and 16 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.
With regards to claims 1, 8, and 16, it is unclear what structure allows for the end of the rounded projection to undergo a “shaping to match a profile” method step while this end is already coupled to the tooth body in a way that appears to be inaccessible via the coupling step. See rejection above
With regards to claim 1 lines 16-17, the phrase “each cutting tooth” and “of the corresponding tooth body” does not appear to be proper as the claim only appears to disclose a cutting tooth singular. These phrases need to be amended to match the terminology already disclosed in claim 1. Also, the term “the corresponding tooth body” would have antecedent basis issues and would need to disclose “a corresponding one of the tooth bodies”.
Claims
It is to be noted that claims 1-3, 7, 8 and 16 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant’s arguments with respect to the claims been considered but are moot because the new ground of rejection is not specifically challenged in the argument.
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 JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached Monday-Friday: 7:00 am-3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer D Ashley can be reached on (571)272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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08 May 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
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