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 Interpretation
Claim 4 recites “the tool body has a uniform diameter along its axial length”. Looking at Applicant’s Figure 3, the tool body (22) extends from a first end (24) to another (26) and has areas of differing diameter (the cutting portion (27) and seat area (32)). Therefore, the claim will be interpreted as requiring that the tool body has a specific portion that has a uniform diameter. For example, an area of the shank (23) has a uniform diameter. Additionally, Claim 1 already recites “a diameter of the tool body”. The “uniform diameter” in Claim 4 is interpreted as a different diameter.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 1, 3-5, 7-8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kress (EP2448705B1) in view of Cheng (TW201347949A).
Text citations of Kress and Cheng are from the provided machine translations.
Claim 1
Kress teaches a cutting tool (Figure 1, Item 1) comprising: a tool body (3, 45) having opposed first and second ends (Figure 1), the tool body including a cutting portion (3) formed at the first end and a mounting portion (25) formed between the cutting portion and the second end (Figure 1); a body (19) disposed on the tool body at the mounting portion (Figure 1, Item 25), the body having a larger diameter than a diameter of the tool body (Figure 1); a cutting insert (Item 31 is a cutting insert that is soldered or adhered (See Lines 98-99) to the inside of the body (19).) at least partly extending from the body. (Figure 1)
Kress does not disclose a thermoset molded body disposed on the tool body at the mounting portion.
However, Cheng teaches a thermoset molded body disposed on the tool body at the mounting portion. (Figure 1b-1c teaches a mounting portion (14) on a tool body (10) where a thermoset portion (20) is formed using engineering plastic using a molding method (See Line 84).)
One of ordinary skill would have been motivated to apply the known polymer molding of the larger diameter, non-shank portion of a cutting tool technique of Cheng to the tool having a larger diameter, non-shank portion manufacturing method of Kress in order to create a lower the material costs of the drill bit (See Cheng Lines 16-19) as well as saving labor and time cost (See Lines 25-26).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to apply the known polymer molding of the larger diameter, non-shank portion of a cutting tool technique of Cheng to the tool having a larger diameter, non-shank portion manufacturing method of Kress because it has been held to be prima facie obvious to apply a known technique to a known method/apparatus to yield predictable results. See MPEP 2143(I)(D).
The predictable result is the fasring of Kress will be made by injection molding a polymer.
Claim 3
Kress in view of Cheng teaches the cutting tool of claim 1, wherein the thermoset molded body is a thermoset material made of a polymer or epoxy. (Cheng, Lines 64-69)
Claim 4
Kress in view of Cheng teaches the cutting tool of claim 1, wherein the tool body has a uniform diameter along its axial length. (Kress, Figure 1 teaches the shaft (45) has a uniform diameter.)
Claim 5
Kress in view of Cheng teaches the cutting tool of claim 1, wherein a length of the thermoset molded body is at least equal to a diameter of the tool body. (In the combined invention of Kress in view of Cheng, the thermoset molded material and method from Cheng is used to create the Fasring (19) of Kress, which is the analogous body. The length of the body (19) in Kress is at least equal to the diameter of the tool (1) as shown in Figure 1.)
Claim 7
Kress in view of Cheng teaches the cutting tool of claim 1, wherein a first portion of the insert is embedded within the thermoset molded body and a second portion of the insert extends beyond an outside surface of the thermoset molded body. (Kress, Figure 1 teaches the insert (31) is embedded (Lines 98-99 teach the permanent attachment via soldering or gluing) to the interior of the Fasring (19) with another end having the cutting edge (29) protruding. In the combined invention of Kress in view of Cheng, the Fasring (19) is made from injection molding polymer as taught by Cheng.)
Claim 8
Kress in view of Cheng teaches the cutting tool of claim 7, wherein the second portion includes a cutting edge of the insert. (Kress, Figure 1 teaches the insert (31) is embedded (Lines 98-99 teach the permanent attachment via soldering or gluing) to the interior of the Fasring (19) with another end having the cutting edge (29) protruding. In the combined invention of Kress in view of Cheng, the Fasring (19) is made from injection molding polymer as taught by Cheng.)
Claim 10
Kress in view of Cheng teaches the cutting tool of claim 1, wherein the cutting insert is positioned within the thermoset molded body such that at least part of the surface of the insert is embedded within the thermoset molded body. (Kress, Figure 1 teaches the insert (31) is embedded (Lines 98-99 teach the permanent attachment via soldering or gluing) to the interior of the Fasring (19) with another end having the cutting edge (29) protruding. In the combined invention of Kress in view of Cheng, the Fasring (19) is made from injection molding polymer as taught by Cheng.)
Kress in view of Cheng does not explicitly disclose that ½ of the surface of the insert is embedded within the body.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to size the embedding portion of Kress in view of Cheng as ½ because applicant has not disclosed that having the particular embedded percentage/portion provides an advantage, is used for a particular purpose, or solves a stated problem. Applicant discusses this feature in ¶0034 without indicating a criticality or motivation for choosing the percentage/portion. One of ordinary skill in the art, furthermore, would have expected Kress in view of Cheng’s embedded amount, and applicant’s invention, to perform equally well because both embedding amounts would perform the same function of providing part of the insert to secure to the molded material.
Therefore it would have been prima facie obvious to modify Kress in view of Cheng to obtain the invention as specified in Claim 10 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Kress in view of Cheng.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Claim 11
Kress in view of Cheng teaches the cutting tool of claim 1, wherein a cutting edge of the insert extends from the thermoset molded body. (Kress, Figure 1 teaches the insert (31) is embedded (Lines 98-99 teach the permanent attachment via soldering or gluing) to the interior of the Fasring (19) with another end having the cutting edge (29) protruding. In the combined invention of Kress in view of Cheng, the Fasring (19) is made from injection molding polymer as taught by Cheng.)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kress (EP2448705B1) in view of Cheng (TW201347949A), as applied in Claim 1, further in view of Bookheimer (US20190270142A1)
Claim 2
Kress in view of Cheng teaches the cutting tool of claim 1.
Kress teaches the tool body, but does not disclose the material used. Therefore, Kress does not explicitly disclose the tool body is made of a hardened steel, ceramic, cemented carbide, and/or cermet.
However, Bookheimer teaches a tool body is made of a hardened steel, ceramic, cemented carbide, and/or cermet. (¶0013-0015 teach the use of various materials for the tool shank, including cemented carbide.)
One of ordinary skill would have been motivated to apply the known cemented carbide material selection technique of Bookheimer to the tool body formation method of Kress in order to use a material that has enhanced hardness and rigidity. (See Bookheimer ¶0014)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to apply the known cemented carbide material selection technique of Bookheimer to the tool body formation method of Kress because it has been held to be prima facie obvious to apply a known technique to a known method/apparatus to yield predictable results. See MPEP 2143(I)(D).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kress (EP2448705B1) in view of Cheng (TW201347949A), as applied in Claim 1, further in view of Webb (US20070207715A1).
Claim 6
Kress in view of Cheng teaches the cutting tool of claim 1, wherein the cutting insert has opposed ends, a first end of the cutting insert including a cutting edge. (Kress, Figure 1, Item 29)
Kress in view of Cheng does not disclose a second end of the cutting insert including an indentation or mounting detail. Kress does not show the second end of the cutting tool (31), but does disclose that it is permanently affixed via gluing or soldering (See Lines 98-99). When combined with Cheng in Claim 1, the cutting insert of Kress is embedded in the polymer material molded to the shaft.
However, Webb teaches a second end of the cutting insert including an indentation or mounting detail. (Figure 2B teaches a cutting insert (abrasive tip, 22) that is embedded in a body (23) by molding plastic material around a preformed metal insert (¶0052). A portion of the insert away from the cutting portion (the protruding part) has geometric features (24) that “further secure the tip to the insert body” (¶0052).)
One of ordinary skill would have been motivated to apply the known geometric feature on the metal cutting part technique from Webb to the cutting insert securing to the polymer body method in Kress in view of Cheng in order to further secure the metal part within the polymer material. (See Webb ¶0052)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to apply the known geometric feature on the metal cutting part technique from Webb to the cutting insert securing to the polymer body method in Kress in view of Cheng because it has been held to be prima facie obvious to apply a known technique to a known method/apparatus to yield predictable results. See MPEP 2143(I)(D).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kress (EP2448705B1) in view of Cheng (TW201347949A), as applied in Claim 1, further in view of Gatling (US20140048605A1).
Claim 9
Kress in view of Cheng teaches the cutting tool of claim 1, wherein the tool has a thermoset molded body. (Kress in view of Cheng teaches the body of Kress (19) formed via molding polymer material (See Cheng Item 20 and at least Line 84).)
Kress in view of Cheng does not disclose wherein the body includes a RFID chip therein.
However, Gatling teaches the body includes a RFID chip therein. (Figures 1B-1C teach an RFID tag (electronic identification device, 113) embedded in the body (an increased diameter portion of the tool assembly that fits around the cutting shaft) of a bit (103).)
One of ordinary skill would have been motivated to apply the known RFID embedding into the body technique from Gatling to the polymer body for a cutting tool formation method of Kress in view of Cheng in order to identify and track the bit (See Gatling ¶0016)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to apply the known RFID embedding into the body technique from Gatling to the polymer body for a cutting tool formation method of Kress in view of Cheng because it has been held to be prima facie obvious to apply a known technique to a known method/apparatus to yield predictable results. See MPEP 2143(I)(D).
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Kress does not teach or suggest: a molded body; a body formed of thermoset material; a body molded onto or disposed on a mounting portion of a tool body; or a body that encapsulates or embeds an insert by molding.
It is respectfully asserted that the rejection dated 02/26/2026 does not state Kress teaches a molded body; a body formed of thermoset material; or a body that encapsulates or embeds an insert by molding.
Kress does however, teach a body (19) (Figure 1, Item 25) of a tool body (3, 45).
Applicant argues that Cheng does not teach or suggest: molding a body onto an existing metal tool body; providing a separate mounting portion of a tool body onto which a molded body is disposed; a countersink fasring or equivalent structure; or modifying a precision countersinking tool such as Kress in the manner proposed by the Examiner.
It is respectfully asserted that Claim 1 does not require molding a body onto an existing metal tool body or a countersink fasring or equivalent structure. These arguments are not in line with the claimed limitations in Claim 1.
For the sake of argument, Cheng does teach molding a body (20) onto an existing metal tool body (Line 26 teaches the drill cutting portion is made from tungsten carbide or stainless steel.); providing a separate mounting portion (fixing portion, 14) of a tool body onto which a molded body is disposed (Figure 1C shows item 20 is placed on the mounting portion (14).); a countersink fasring or equivalent structure (Figure 1C shows an increased diameter portion of the molded body (20) that has an angled face that fits onto a mounting portion (14). Looking to Kress, the fasring (19) is an increased diameter portion having an angled face and fits onto a mounting portion (25) of the tool body.); or modifying a precision countersinking tool such as Kress in the manner proposed by the Examiner. (The proposed combination of references arrives at creating the fasring (19) of Kress as a molded component. This creation comprises forming an increased diameter portion (either Item 20 in Cheng or Item 19 in Kress) made from molded material to a mounting portion (either Item 14 in Cheng or Item 25 in Kress).)
Applicant argues that the combination of references changes the principle operation of Kress.
Although this is argued in the remarks 05/26/2026, there is no mention of how forming the Fasring of a polymer changes the principle of operation in Kress or citations from the prior art to indicate how the operation is changed. The operation of the Fasring (19) in Kress is understood to be to fixedly connect (See Line 118, 142, or 161 of Kress) around the diameter of an existing drill at a mounting location (25) and support a blade plate (31). The molded material of Cheng (20) fixedly connects around the diameter of an existing drill body (10) at a mounting location (14). There is no evidence in the prior art that the material of Cheng is incapable of supporting the blade plate of Kress.
Applicant argues that “A mechanically fastened metal ring is not equivalent to a thermoset molded body disposed on a tool body, and the cited art provides no disclosure or suggestion of molding a polymer body around a tool body mounting portion as claimed.”
It is respectfully asserted that a review of Kress did not find any indication of the material of the Fasring nor a disqualification of using polymer as the material of the Fasring. However, Cheng does disclose that the material of the increased diameter molded portion (20) is a polymer (Line 39) and can be molded onto an existing tool body mounting portion (14). The prior art of Cheng does disclose a suggestion of molding a polymer body around a tool body mounting portion as claimed.
Applicant argues that “Kress merely attaches an insert to a fasring via soldering or adhesive. Such attachment does not constitute an insert being embedded within a molded body, which requires material flow around the insert during molding to create mechanical encapsulation. The Examiner's position conflates post-assembly attachment with molding-based embedding, which is unsupported by the cited references.”
It is respectfully asserted that Kress teaches embedding (Line 98) the blade plate (31) within the body of the Fasring and that the blade plate is attached using a permanent connection method (soldering or gluing, Line 99). In the proposed combination, the embedding occurs by molding around the cutting element using the engineered plastic of Cheng. There is no teaching provided by Kress or Cheng that the cutting element cannot be encapsulated in the engineered plastic material in Cheng.
Applicant argues that the interpretation of Claim 4 is improper and that the rejection is deficient.
It is respectfully requested that the proper interpretation (with support from the written specification) be put on the record if the one presented in the office action is incorrect. Without an understanding of how the interpretation is improper or the rejection is incorrect, it is unclear how to respond to this remark.
Applicant argues that the rejection of Claim 10 is deficient due to the prior art failing to disclose embedding an insert in a thermoset molded body.
Kress teaches a cutting insert (31) that is embedded (Line 98) in an increased diameter portion (fasring, 19) positioned on a mounting portion (25) of an existing tool body. Cheng teaches the formation of an increased diameter portion (20) on an existing tool body (10) mounting portion (14) using engineered plastic. The combination of references arrived at the structure of an embedded cutting insert as claimed. Applicant’s specification does not indicate criticality or motivation for choosing the claimed dimension, and the prior art does not disqualify the use of the claimed definition. Therefore, the design choice rejection is proper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the PTO-892 Notice of References Cited form.
Document
Date
Description of Relevant Subject Matter
US20130121777A1
2011-11-16
Gey teaches a cutting tool (Figure 1) comprising: a tool body (52) having opposed first and second ends (Figure 7), the tool body including a cutting portion (17) formed at the first end and a mounting portion (Any place where the molded body (12) is connected to the body (52).) formed between the cutting portion and the second end (Figure 1 shows portion of the molded body (12) are formed between the cutting portion (17) and the second end.); a thermoset molded body (12) disposed on the tool body at the mounting portion, the thermoset body having a larger diameter than a diameter of the tool body (Figure 3); and a cutting insert (20) at least partly extending from the thermoset body. (Figure 1)
EP2875886B1
2014-11-19
Metschlechner teaches a cutting tool (Figure 1) comprising: a tool body (3) having opposed first and second ends (2), the tool body including a cutting portion (portion where item 8 connects) formed at the first end (Figure 2) a mounting portion (Any place where the molded body (2) is connected to the body (3).) formed between the cutting portion and the second end (Figure 1 shows portion of the molded body (2) are formed between the cutting portion and the second end.); a thermoset molded body (2) disposed on the tool body at the mounting portion, the thermoset body having a larger diameter than a diameter of the tool body (Figure 2); and a cutting insert (8) at least partly extending from the thermoset body. (Figure 1)
US6595729B2
2001-09-26
Figure 1 teaches an increased diameter portion (3) added to an existing drill body (2) and that has an embedded cutting insert (Figure 2, Item 14).
THIS ACTION IS MADE FINAL. 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 Michael W Hotchkiss whose telephone number is (571)272-3854. The examiner can normally be reached Monday-Friday from 0800-1600.
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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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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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