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
Applicant's election with traverse of Group I, claims 1-10 in the reply filed on 01/27/2026 is acknowledged. The traversal is on the ground(s) that the Examiner failed to properly establish why there would be a serious search and/or examination burden and because the inventions are similarly classified and closely related, then there is no serious search and/or examination burden.
This is not found persuasive because although at least one tool “according to claim 1” is included in the method claim; in apparatus claims, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, on this basis, the claimed apparatus is not limited for “chip-removing deburring and/or chamfering of a workpiece toothing” and Groups I and II are patentably distinct.
Further, method claims require for the actual method steps limitations, at least to be search on: 1) areas different from areas where apparatus claims have been classified, and 2) on areas that do not automatically encompass the apparatus per se. Method claims require additional limitations to be searched, which are beyond the scope of searching apparatus limitations. For this, there is a search burden and different searches or search queries will have to be done.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. On Page 2 of the restriction requirement mailed on 11/28/2025, Examiner noted that, at the very least, that 1) each group as claimed has a separate classification (see section 2 on page 2) and 2) different areas of search, search queries and search strategies would be necessary to examine the different groups as claimed (see section 5 on page 2). Thus, burden has been properly established and the Restriction requirement is still deemed proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/27/2026.
Claim Rejections - 35 USC § 112
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 1-10 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 in line 4 the phrase “in particular” which renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “workpiece edges”, and the claim also recites “front edges of the workpiece toothing each extending between a tooth flank and a front side of a workpiece tooth” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites in lines 1-7 variations of “a workpiece toothing”; “workpiece teeth”; “a workpiece tooth”. It is unclear if all these elements are the same or not. What is the difference between “workpiece toothing”, “workpiece teeth”, and “workpiece tooth”? Further clarification is needed.
Claim 1 recites in lines 9-10 “tool teeth” and “tool toothing”. It is unclear if these elements are the same or not. What is the difference between “tool teeth” and “tool toothing”? Further clarification is needed.
Claim 2 recites in lines 3-4 the phrase “as required at least ten, preferably at least fifteen, in particular at least twenty” which renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “at least five”, and the claim also recites “twenty” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The metes and bounds of the claim are unclear as it is unclear how many tool teeth are being claimed.
Claim 2 recites line 5-6 “the circumferential direction” which has insufficient antecedent basis as no “circumferential direction” has been previously set forth in either claim 2 or claim 1, from which claim 2 directly depends on. Further clarification is needed.
Claim 3 recites in lines 3-4 “the tool toothing is designed as front toothing and/or in that the projections of the tool teeth onto a projection plane arranged perpendicular to the tool rotation axis each extend at least substantially radially”. Which in its entirety is unclear.
First, it is unclear how the tool toothing “is designed as front toothing”. Front toothing in relation to what.
There is insufficient antecedent basis for “the projections” since no projections of the tool teeth, have been previously introduced in either claim 3 or claim 1 from which claim 3 directly depends on.
From where to where are these “projections” taken from. How do the tool teeth project?
Projection plane of what?
“each” what extends at least substantially radially?
Claim 4 recites in lines 4-6 “the cutting edges each extend between a tooth flank and a front side of a tool tooth, the front side, in particular, being arranged radially outside with respect of the tool rotation axis”. Which renders the claim indefinite.
In relation to what is this side, considered “front” side?
It is unclear if this “tool tooth” is in addition to the “tool tooth” already set forth in claim 1 or not.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “front side”, and the claim also recites “radially outside” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
“radially outside” of what?
Claim 5 recites in lines 4-6 “the tool teeth each comprise two cutting edges, in particular assigned to different tooth flanks of the tool tooth, for deburring and/or chamfering of mutually opposite workpiece edges”. Which renders the claim indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “two cutting edges”, and the claim also recites “assigned to different tooth flanks of the tool tooth” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
It is unclear what exactly is meant by “mutually opposite”. Further clarification is needed.
Claim 6 recites in line 4 “in the region”, which has insufficient antecedent basis as no “region” of the at least one cutting edge, has been previously set forth in either claim 6 or claim 1, from which claim 6 directly depends on. Furthermore, the metes and bounds of this region, are unclear.
Claim 6 also recites the term “axisymmetric”, however it is unclear in relation to what axis, are tool teeth considered “axisymmetric”. Further clarification is needed.
Claim 7 recites in lines 4-7 “two tool toothings spaced apart from one another along the tool rotation axis, in particular facing one another, for simultaneous deburring and/or chamfering of workpiece edges assigned to different front sides of the workpiece toothing”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “spaced apart”, and the claim also recites “facing one another” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The phrase “workpiece edges assigned to different front sides of the workpiece toothing” is unclear and confusing.
Claim 8 recites in lines 4-5 “the tool teeth each taper at least in one cross-section in the region of the at least one cutting edge at the tooth head of the tool tooth”.
Where exactly this cross-section is being defined?
“in the region” and “the tooth head” each has insufficient antecedent basis as no “region” of the at least one cutting edge or “tooth head”, has been previously set forth in either claim 8 or claim 1, from which claim 8 directly depends on. Furthermore, the metes and bounds of this region, are unclear.
Claim 9 recites in lines 4-7 “the tool toothing faces a clamping section of the tool for clamping the tool in a tool holder and/or in that a carrier carrying the at least one tool toothing, in particular extending along the tool rotation axis and/or comprising the clamping section, is provided.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “carrying the at least one tool toothing”, and the claim also recites “extending along the tool rotation axis” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The overall form of the claim is unclear and confusing. Is provided, by what? What exactly is being provided where? Further clarification is needed.
Claim 10 recites in lines 4-7 “the cutting edges have an edge radius of at least 0.01 mm, preferably at least 0.02 mm, and/or at most 0.2 mm, preferably at most 0.1 mm, in particular at most 0.05 mm, and/or in that the tool toothing, at least in the region of the cutting edges, has a hardness of at least 60 HRC, preferably at least 63 HRC, in particular at least 66 HRC”.
The entirety of the claim is unclear and confusing.
How exactly the “edge radius” is defined.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites a broad recitation “at least 0.01mm”, and the claim also recites “at most 0.05mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites a broad recitation “at least 60 HRC”, and the claim also recites “at least 66 HRC” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-4, 6-8 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 2406325 (hereafter—DE’325--).
A Machine Translation of DE’325 will be provided herein for prosecution purposes. Refer to the Machine Translation for details.
In regards to claim 1, DE’325 discloses a tool (26, 26a,b) for chip-removing deburring and/or chamfering of a workpiece toothing (Figure 1, 4 and 5) comprising a plurality of workpiece teeth (Figure 1, 4 and 5), having a plurality of cutting edges (36) for chip-removing deburring and/or chamfering of workpiece edges, in particular front edges, of the workpiece toothing each extending between a tooth flank and a front side of a workpiece tooth, the cutting edges (36) arranged distributed around a tool rotation axis (110a,b) of the tool (26) and each having an extension along the tool rotation axis (110a,b), characterized in that wherein the cutting edges (36) are formed by tool teeth (as presented by Applicant in Figure 2A, refer to all of 36) of at least one tool toothing (as presented by Applicant in Figure 2B, refer to all of 36) of the tool (26, 26a,b).
In regards to claim 2, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the tool toothing (all of 36) comprises at least five (note that 26 has 24 teeth), tool teeth (36) each forming at least one cutting edge (36a or 36b) and/or in that the cutting edges (36a or 36b) each have an extension in the circumferential direction with respect to the tool rotation axis (110a,b) and/or in that the cutting edges (28, 29) are arranged at least substantially on a cylinder shell surface around the tool rotation axis (110 a,b).
In regards to claim 3, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the tool toothing (all of 36) is designed as front toothing (36 a, b) and/or in that the projections of the tool teeth (36) onto a projection plane arranged perpendicular to the tool rotation axis (110 a, b) each extend at least substantially radially to the tool rotation axis (110 a, b, see Figure 2).
In regards to claim 4, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the cutting edges (36a, b) each extend between a tooth flank (in the same way as presented by Applicant’s flank 24, 25, see Figure 2 of DE’325) and a front side (in the same way as presented by Applicant’s front side 26, 27, see Figure 2 of DE’325) of a tool tooth (36), the front side, in particular, being arranged radially outside with respect to the tool rotation axis (110 a, b, see Figure 2 and 5).
In regards to claim 6, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the tool teeth (36) each have, at least in the region of the at least one cutting edge (36a, b), an at least substantially asymmetrical cross-section (see Figure 4 and note that the teeth 36 are asymmetrical).
In regards to claim 7, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the tool (26, 26a,b) comprises two tool toothings (36) spaced apart from one another along the tool rotation axis (110a,b), in particular facing one another, for simultaneous deburring and/or chamfering of workpiece edges assigned to different front sides of the workpiece toothing.
In regards to claim 8, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the tool teeth (36) each taper at least in one cross-section in the region of the at least one cutting edge (36a,b) at the tooth head (apex) of the tool tooth (36) (see Figure 4).
In regards to claim 9, DE’325 discloses the tool according to claim 1, DE’325 also discloses that a carrier element (42a,b) carrying the at least one tool toothing (36a,b), in particular extending along the tool rotation axis (110a,b) and/or comprising the clamping section (to be disposed within 32), is provided.
Claim(s) 1, 3-8 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ribbeck US 2020/0147706.
In regards to claim 1, Ribbeck discloses a tool (2) for chip-removing deburring and/or chamfering of a workpiece toothing (Figure 1, 4 and 5) comprising a plurality of workpiece teeth (Figure 1, 4 and 5), having a plurality of cutting edges (6) for chip-removing deburring and/or chamfering of workpiece edges, in particular front edges, of the workpiece toothing each extending between a tooth flank and a front side of a workpiece tooth, the cutting edges (6) arranged distributed around a tool rotation axis (R) of the tool (2) and each having an extension along the tool rotation axis (R), characterized in that wherein the cutting edges (6) are formed by tool teeth (as presented by Applicant in Figure 2A, refer to all of 6) of at least one tool toothing (as presented by Applicant in Figure 2B, refer to all of 6) of the tool (2).
In regards to claim 3, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the tool toothing (all of 6) is designed as front toothing (12) and/or in that the projections of the tool teeth (6) onto a projection plane arranged perpendicular to the tool rotation axis (R) each extend at least substantially radially to the tool rotation axis (R, see Figure 2).
In regards to claim 4, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the cutting edges (6) each extend between a tooth flank (refer to any of the sides of 6) and a front side (refer to a front side, in a rotation direction) of a tool tooth (6), the front side, in particular, being arranged radially outside with respect to the tool rotation axis (R).
In regards to claim 5, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the tool teeth (6) each comprise two cutting edges (10 and 14), in particular assigned to different tooth flanks (see Figure 3) of the tool tooth (6), so as to be capable of deburring and/or chamfering of mutually opposite workpiece edges of the workpiece teeth.
In regards to claim 6, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the tool teeth (6) each have, at least in the region of the at least one cutting edge (10 or 12 or 14), an at least substantially asymmetrical cross-section (see Figure 1 and note that the teeth 6 are asymmetrical).
In regards to claim 7, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the tool (2) comprises two tool toothings (6) spaced apart from one another along the tool rotation axis (R), in particular facing one another, for simultaneous deburring and/or chamfering of workpiece edges assigned to different front sides of the workpiece toothing.
In regards to claim 8, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that the tool teeth (6) each taper at least in one cross-section in the region of the at least one cutting edge (10 or 12 or 14) at the tooth head (10) of the tool tooth (6) (see Figures 1 and 3).
In regards to claim 9, Ribbeck discloses the tool according to claim 1, Ribbeck also discloses that a carrier element (4) carrying the at least one tool toothing (6), in particular extending along the tool rotation axis (R).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 2406325 (hereafter—DE’325--) as applied to claim 1 above.
In regards to claim 10, DE’325 discloses the tool according to claim 1, DE’325 also discloses that the cutting edges (36) have an edge radius (in the same way as presented by Applicant’s radius).
However, DE’325 fails to disclose that the edge radius is of at least 0.01 mm.
It would have been obvious to one having ordinary skill in the art at the time of the invention was made to provide have the edge radius with a desired value such as of at least 0.01mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges/value of a result effective variable (variable that will depend on the size of the workpiece being machined) involves only routine skill in the art. In re Boesch, 205 USPQ 215 (CCPA 1980). In re Aller, 105 USPQ 233.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh 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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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722