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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
the species represented in claim 10; and
the species represented in claim 11.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim is generic: claim 1.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Claims 10 and 11 lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tsukihara et al. (US Pub. No. 2020/0391305 A1). Tsukihara et al. discloses an end mill (1) that includes a plurality of peripheral cutting edges (11, 21). The plurality of peripheral cutting edges are selected from a group that consists of the claimed types, which include a right-handed helical tooth that is twisted rightward (Fig. 2; θ1), and a left-handed helical tooth that is twisted leftward (Fig. 3; θ2). Adjacent teeth (of the plurality of peripheral cutting teeth) are different in shape from each other (Figs. 1-3). Because the claim merely requires the plurality to be selected from a group consisting of three types, the claim is met by two types different from each other. The claim does not require that each type in the group is present.
During a telephone conversation with Nisha Ramesh on May 13, 2026 a provisional election was made without traverse to prosecute the species of claim 11. Affirmation of this election must be made by applicant in replying to this Office action. Claim 10 has been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 1-9 and 11 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 “an endmill” in Line 9. Antecedent basis for “an end mill” has already been set forth in Line 1. It is therefore unclear whether Applicant is attempting to set forth a different feature or referring back to the end mill recited in the preamble. Appropriate correction required.
Claim 1 recites “the curved tooth has a shape consisting of a single arc when viewed from an outer circumferential surface of the end mill around a longitudinal axis such that a corresponding one . . . is provided on a concave side of a curved shape” in Lines 13-16. The term “when” renders the claim indefinite. It is unclear whether the limitation is required if the “when” clause is never triggered. Furthermore, the view is unclear as to whether it is from the surface as written in the claim or of the surface. It is further unclear as to how the “around a longitudinal axis” impacts the view. Moreover, because the curved tooth already has a curved shape that consists of a single arc, it is unclear whether the curved shape refers back to that of the curved tooth or not. Appropriate correction required.
Claim 3 recites “smooth teeth” in Line 3. The metes and bounds of what constates a smooth tooth are not clearly delineated such that one of ordinary skill would understand the claim scope. The term “smooth” is a relative term which renders the claim indefinite. The term “smooth” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction required.
Claim 4 recites “an axial direction” in Line 3. This recitation already has antecedent basis in claim 1. As such, it is unclear whether this recitation refers back to that axial direction or another axial direction. Appropriate correction required.
Claim 4 recites “an inner periphery” in Line 4. It is unclear what constitutes the inner periphery. A periphery, by its definition, is the outer perimeter or external surface of a body. As such, it is unclear what is required to meet the inner periphery limitation. Appropriate correction required.
Claim 4 recites “each of the peripheral cutting edges extends from the shank portion to a bottom cutting edge” in Lines 7-8. It is unclear whether each peripheral edge extends to the same bottom cutting edge as the language suggests or if there is a respective/corresponding bottom edge relative to each peripheral edge as disclosed. Appropriate correction required.
Claim 4 recites “the distances are located at a position along a length of the tooth and the position is ¼ from a bottom or a top of the tooth.” The recitation “the tooth” lacks proper antecedent basis. It is unclear whether the limitation is referring to one of the previously recited teeth, each tooth, or the tooth portion. Appropriate correction required.
Claim 6 recites “at least one of a plurality of bottom edges, which are contiguous to a respective plurality of peripheral cutting edges” in Lines 2-3. The limitation is unclear as it seemingly requires one or more to be contiguous to a given plurality. That is, the recitation does not require each bottom edge of the plurality of bottom edges to be contiguous to a respective peripheral edge of the plurality of peripheral edges. Instead, the recitation states that one bottom edge (or more) is linked to a given plurality. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsukihara et al. (US Pub. No. 2020/0391305 A1).
(Claim 1) Tsukihara et al. (“Tsukihara”) discloses an end mill (1) that includes a plurality of peripheral cutting edges (11, 21). The plurality of peripheral cutting edges are selected from a group that consists of the claimed types, which include a right-handed helical tooth that is twisted rightward (Fig. 2; θ1), and a left-handed helical tooth that is twisted leftward (Fig. 3; θ2). Adjacent teeth (of the plurality of peripheral cutting teeth) are different in shape from each other (Figs. 1-3). Because the claim merely requires the plurality to be selected from a group consisting of three types, the claim is met by two types different from each other. The claim does not require that each type in the group is present.
(Claim 2) The helix angles of each tooth fall within the claimed range (¶¶ 0030, 0036).
(Claim 3) The peripheral cutting edges are defined by one kind of teeth selected from among smooth teeth, nicked teeth and roughing teeth (Figs. 1-3 – as best understood, the teeth are considered smooth).
(Claim 5) An angle difference between a helix of the right-handed helical tooth and a helix of the left-handed helical tooth approximately zero (¶ 0036).
(Claim 6) At least one of a plurality of bottom cutting edges (12, 21), which are, as best understood, contiguous to a respective plurality of peripheral cutting edges (Figs. 1, 4) and are provided in a distal end portion of the end mill, includes a center edge portion that is adjacent to the longitudinal axis (Fig. 4).
(Claim 7) A number of the peripheral cutting edges is not smaller than three and is not larger than six (Figs. 1-5).
(Claim 8) A surface of a tooth portion, which is provided with the peripheral cutting edges, is covered with a diamond coating (¶ 0040).
(Claim 9) The end mill is made of a cemented carbide (¶ 0040).
(Claim 11) Because this claim only limits the curved cutting edge and claim 1 does not require the curved cutting edge to be present, this claim is met by the prior art reading upon claim 1 without the inclusion of the curved cutting edge.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tsukihara et al. (US Pub. No. 2020/0391305 A1) in view of Povich (US Pub. No. 7,284,935 B2).
The end mill includes a tooth portion (3) that is contiguous to a shank portion (2) in an axial direction of the end mill (Fig. 1). The tooth portion includes an inner periphery and an outer periphery (Fig. 1). The plurality of cutting edges are disposed on the outer periphery of the tooth portion (Fig. 1). Each of the peripheral cutting edges extends from the shank portion to a bottom cutting edge with a constant helix angle (Fig. 1). The plurality of peripheral cutting edges are spaced apart from one another in a circumferential direction of the end mill such that there is a distance between each of the plurality (Fig. 1). The distances, as best understood, are located at a position along a length of the tooth and the position is ¼ from a bottom or a top of the tooth (Fig. 1). Yet, Tsukihara does not explicitly disclose the distance between each of the plurality of peripheral cutting edges being equal to one another.
Povich discloses the distance between each of the plurality of peripheral cutting edges being equal to one another (Fig. 4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the end mill disclosed in Tsukihara with equal distances as suggested by Povich in order to reduce chatter, improve milling function and surface quality of the milled workpiece (Col. 1, Lines 20-25).
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive. Applicant argues that the prior art of record fails to disclose the curved tooth as claimed. This issue, however, is moot. The claims have been amended to require the cutting edges to be selected from a group consisting of three types. As such, the curved cutting edge need not be selected. It is enough to satisfy the claims to have the right-handed and left-handed helical teeth. Thus, the prior art reads upon the claimed invention.
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 RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil 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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/RYAN RUFO/Primary Examiner, Art Unit 3722
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