CTNF 18/226,972 CTNF 87801 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Election/Restrictions 08-05 AIA Claim s 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II , there being no allowable generic or linking claim.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 4.2.2026. The applicants’ arguments are not persuasive for the following reasons: Applicants assert that Groups I and II claims are sufficiently related that a search for one would encompass a search for the other. The examiner disagrees. As detailed in the restriction requirement mailed 4.2.2026, a serious burden exists based on MPEP 806.05(e). If applicants believe that the groups of obvious variants of each other, they should indicate that on the record. However, the 4.2.2026 office action appropriately indicated that here is a burden because the features of claim 13 may be used with a materially different apparatus than that recited in claim 1, and the features of claim 1 could be used to perform a materially difference method than that recited in claim 13. Only one of these is required to establish a serious burden exists. The Office Action established both of them. As such, as serious burden exists and the well-made rejection is hereby maintained and made FINAL . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fumiaki (JP H10-202431) in view of Hoesel (WO2009052841) . Regarding claim 1 . Fumiaki discloses (English abstract figs. 1 and 2) An electrical-discharge machining tool comprising a moveable and activatable assistive electrode(2, 5) and a cutting electrode(3), a first conduit(hollow core of 3) for supplying a dielectric(12) and a second conduit(annular gap between 2 and 3) for flushing dielectric material(annular gap useful for flushing material because it can flow therein), wherein when used on a dielectric layer on a substrate the assistive electrode is activated and positioned substantially between the ground electrode and the cutting electrode (this electric discharge machining tool may be used this way, and is in interpreted as an intended use see MPEP2111.02). Fumiaki does not discloses: a ground electrode, in related art, Hoesel discloses: a ground electrode,(G). Hoesel discloses that the recited features provide the benefit of allowing the device to performing welding and cutting operations. It would have been obvious to modify Fumiaki in view of Hoesel to include the ground electrode for the obvious benefit of allowing the device to perform welding and cutting operations. As such, the features of claim 1 would have been obvious to one having ordinary skill in the art. Regarding claim 2 . Fumiaki discloses The electrical discharge machining tool according to claim 1, wherein the dielectric supplied by the first conduit is supplied at a high pressure. (See abstract, 12 is supplied at a pressure which is interpreted to be a high pressure) Regarding claim 3 . Fumiaki discloses The electrical-discharge machining tool according to claim 1, wherein the assistive electrode has a flat tip. (2 is a flat tip). Regarding claim 4 . Fumiaki discloses all of the features of claim 1. Fumiaki does not disclose The electrical-discharge machining tool according to claim 1, wherein the assistive electrode is positioned directly between the ground and cutting electrode. However, it would have been obvious to position the electrodes as recited for the benefit of providing a good weld quality, in view of the position of the ground electrode in Hoesel. As such, the recited features of claim 4 would have been obvious to one having ordinary skill in the art. Regarding claim 5 . Fumiaki discloses all of the features of claim 1. Fumiaki does not disclose The electrical-discharge machining tool according to claim 1, wherein the second conduit is located within the cutting electrode. However, the recited features is a mere duplication of parts of the conduit within 3 of Fumiaki which would provide the benefit of enhanced delivery of dielectric material with no new or unexpected results.. See MPEP 2144.04(VI)(B). Regarding claim 6 . Fumiaki discloses all of the features of claim 1. Fumiaki does not disclose The electrical-discharge machine tool according to claim 1, wherein the control of the electrical discharge machine is performed by a computer, having computer readable instructions. However, the device of claim 1 may be controlled by a computer or not controlled by a computer. It would have been obvious to automate the control of the device of claim 1 using a computer for the obvious benefit of easing control of the device. See MPEP 2144.05(II)(B) Regarding claim 7 . Fumiaki discloses The electrical-discharge machining tool according to claim 1, wherein the cutting electrode is rotatable.(See Fig. 1, 3 rotatable) Regarding claim 8 . Fumiaki discloses The electrical-discharge machining tool according to claim 1, wherein in use on a dielectric substrate the cutting electrode is positioned vertically, and the assistive electrode is positioned angled relative to the cutting electrode.(electrode 2 is angled by 90 degrees with respect to 3, and with respect to vertical axis.) Regarding claim 9 . Fumiaki discloses The electrical-discharge machining tool according to claim 1, wherein the cutting electrode and the assistive electrode are positioned angled relative to a vertical axis.(see fig. 1 and 2, electrode 2 and 3 are positioned relative to a vertical axis) Regarding claim 10 . Fumiaki discloses The electrical-discharge machining tool according to claim 1, wherein the assistive electrode has a larger surface area than the cutting electrode.(2 has larger surface than 3) Regarding claim 12 . Fumiaki discloses The electrical-discharge machining too according to claim 1, wherein the dielectric is selected from one of pressurised air, deionised water, noble gases or oil.(see abstract disclosing Machining fluid may be used which includes deionoised water, or oils) 07-21-aia AIA Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fumiaki (JP H10-202431) in view of Hoesel (WO2009052841) in view of Qian (U.S. Patent Application Publication 2015/0306690) Regarding claim 11 . Fumiaki discloses all of the features of claim 1. Fumiaki does not disclose: The electrical-discharge machining tool according to claim 1, wherein the electrodes are made from brass. In related art Qian discloses: The electrical-discharge machining tool according to claim 1, wherein the electrodes are made from brass([0006]) Qian discloses that the recited features provide the benefit of providing a good cutting electrode material. IT would have been obvious to provide the bronze electrodes of Qian to the device of Fumiaki for the benefit of making good cutting electrodes. As such, the recited features would have been obvious to one having ordinary skill in the art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G BACHNER whose telephone number is (571)270-3888. The examiner can normally be reached on Monday-Friday, 10-6 EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Leonard Chang can be reached at (571) 270-3691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT G BACHNER/ Primary Examiner, Art Unit 2898 Application/Control Number: 18/226,972 Page 2 Art Unit: 2898 Application/Control Number: 18/226,972 Page 3 Art Unit: 2898 Application/Control Number: 18/226,972 Page 4 Art Unit: 2898 Application/Control Number: 18/226,972 Page 5 Art Unit: 2898 Application/Control Number: 18/226,972 Page 6 Art Unit: 2898 Application/Control Number: 18/226,972 Page 7 Art Unit: 2898 Application/Control Number: 18/226,972 Page 8 Art Unit: 2898 Application/Control Number: 18/226,972 Page 9 Art Unit: 2898
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