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 1-14 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.
Claim 1 recites “a positioning means arranged for radial positioning of the piston within the guiding cavity for securing the boring tool to the piston” in Lines 10-11. The recitation that the positioning means are for securing the boring tool to the piston is new matter. At the time of filing, the disclosure provides for the positioning means positioning the piston relative to the cavity. The claim limitation lacks support in the specification for securing the boring tool to the piston. Appropriate correction required.
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 1-14 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 “a piston” in Line 6. The term “piston” means “a sliding piece moved by or moving against fluid pressure . . . .”1 It appears, in this context, that the term is being used in a manner inconsistent with its normal meaning. That is, it is unclear if this is a piston under fluid pressure as one would understand from the term employed or if the piston is merely a cylindrical member movable within the guiding cavity (via a threaded connection of the positioning means). Appropriate correction required.
Claim 1 recites “a positioning means arranged for radial positioning of the piston within the guiding cavity for securing the boring tool to the piston” in Lines 10-11. It is unclear how the positioning means are capable of securing the boring tool to the piston. 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tugend et al. (US Patent No. 8,322,952 B2.
Tugend et al. (“Tugend”) discloses a boring head (Fig. 1) arranged for fixing of a boring tool (3) to a rotatable tool holder (Fig. 2), wherein the boring tool is arranged for cutting machining of a workpiece upon rotation of the boring tool around an axis of rotation defining an axial direction (Fig. 1). The boring head includes a main body (1) capable of being mounted to the rotatable tool holder (via shank at axial rear end of the body, e.g., Fig. 1); and a piston (2) received within a guiding cavity (Figs. 1, 2) of the main body (1) and being movable (via 5) with respect to the main body in a radial direction of the boring tool (Col. 2, Lines 35-57; Figs. 1, 2). A circumferential surface of the piston (2) includes a flat face (16; Fig. 3) extending in parallel with the radial direction. A positioning means arranged for radial positioning of the piston (5) within the guiding cavity for, as best understood, arranged for holding the boring tool (3; Fig. 1). Tugend discloses a combined orientation and fixation device (6) arranged for orienting and fixing a piston (2) with respect to the main body (1). The combined orientation and fixation device (6) includes a blind2 sleeve (14), which is internally threaded and fixedly mounted in the main body (Fig. 3; Col. 3, Lines 31-56), such that a flexible end wall (14’) of the blind sleeve (14) faces the flat face (16) of the piston (2), and a tightening screw (15) configured for threaded engagement with the blind sleeve (Col. 3, Lines 47-48). The combined orientation and fixation device (6) is configured so that the flexible end wall (14’) presses against the flat face (16) of the piston (2) as the tightening screw is tightened, thereby pressing the piston (2) against the main body (1) so as to simultaneously orient and fix the piston with respect to the main body (Col. 3, Lines 29-56).
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.
Claims 1-3, 5-7 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Patent No. 9,427,809 B2) in view of Tugend et al. (US Patent No. 8,322,952 B2).
(Claim 1) Chen discloses a boring head (Figs. 1-6) arranged for fixing of a boring tool (80) to a rotatable tool holder, wherein the boring tool is arranged for cutting machining of a workpiece upon rotation of the boring tool around an axis of rotation defining an axial direction (Fig. 1). The boring head includes a main body (10) capable of being mounted to the rotatable tool holder (via shank at axial rear end of the body, e.g., Fig. 1); and a piston (20) received within a guiding cavity (11) of the main body (10) and being movable (inferred by dial member, one of ordinary skill would understand this arrangement for causing radial movement) with respect to the main body in a radial direction of the boring tool (Figs. 1-6). A circumferential surface of the piston (104) includes a flat face (Figs. 2, 5) extending in parallel with the radial direction. A positioning means arranged for radial positioning of the piston (20) within the guiding cavity (11; annotated Fig. 2) for, as best understood, securing the boring tool (80). Chen discloses a set screw for fixing position of the piston, but does not explicitly disclose a combined orientation and fixation device as claimed.
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Tugend discloses a combined orientation and fixation device (6) arranged for orienting and fixing a piston (2) with respect to the main body (1). The combined orientation and fixation device (6) includes a blind3 sleeve (14), which is internally threaded and fixedly mounted in the main body (Fig. 3; Col. 3, Lines 31-56), such that a flexible end wall (14’) of the blind sleeve (14) faces the flat face (16) of the piston (2), and a tightening screw (15) configured for threaded engagement with the blind sleeve (Col. 3, Lines 47-48). The combined orientation and fixation device (6) is configured so that the flexible end wall (14’) presses against the flat face (16) of the piston (2) as the tightening screw is tightened, thereby pressing the piston (2) against the main body (1) so as to simultaneously orient and fix the piston with respect to the main body (Col. 3, Lines 29-56). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify Chen to have the combined orientation and fixation device (in place of set screw) as suggested by Tugend to orient the piston and provide “a more point-shaped complementary tightening of said radial piston 2.” (Col. 3, Lines 46-56).
(Claim 2) The circumferential surface of the piston (Chen 20) includes a rounded surface portion opposite to the flat face (Chen annotated Fig. 2; Col. 1, Line 59; Col. 2, Lines 37-38), which rounded surface portion is configured to press against a corresponding rounded surface of the guiding cavity (Chen 11) when the tightening screw (Tugend 15; Col. 3, Lines 45-56) is tightened.
(Claim 3) The piston (Chen 20) includes a mounting interface (Chen 21, 22) for securing the boring tool (Chen 80 via 90) thereto (Chen Figs. 1-3). The mounting interface (Chen 21, 22) is provided at a front end of the piston, and the positioning means (annotated Fig. 2 above) is provided at an opposite rear end of the piston (Chen Figs. 1-3).
(Claim 5) The blind sleeve (Tugend Fig. 3) is pivotally adjustable during mounting thereof in the main body (Col. 3, Lines 39-40).
(Claim 6) The blind sleeve (Tugend 14) is described as a threaded sleeve but such is ambiguous as to whether it is threaded externally or internally (Tugend Col .3, Line 33). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blind sleeve of the modified Chen device with an external thread for mating with the thread of the hole in the body as a known means for attaching the sleeve to the body. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including application of a known method to improve a device in a predictable manner). While the modified Chen device lacks explicit disclosure of the screw hole having a thread depth that decreases in a direction from an opening of the screw hole towards the flexible end wall, examiner took official notice that such a configuration is well-known in the art. Because the well-known assertion was not traversed by Applicant, the assertion is taken as admitted prior art. See MPEP 2144.03 C. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blind sleeve of the modified Chen device one of the external thread of the blind sleeve and an internal thread of the screw hole with a thread depth that decreases in a direction from an opening of the screw hole towards the flexible end wall as obvious to try – choosing from a finite number of solutions – constant, increasing or decreasing – with a predictable result of a threaded connection. See KSR, 550 U.S. at 418.
(Claim 7) While the modified Chen device includes one of the external thread of the blind sleeve and an internal thread of the screw hole having a thread depth that decreases in a direction towards the flexible end wall, the other of the blind sleeve and the internal thread of the screw hole is not explicitly disclosed as having a constant thread depth. Yet, in the absence of a disclosure to the contrary, one having ordinary skill would expect the thread depth to be constant. Moreover, examiner took official notice that constant thread depth is well-known in the art. Because the well-known assertion was not traversed by Applicant, the assertion is taken as admitted prior art. See MPEP 2144.03 C. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blind sleeve of the modified Chen device one of the external thread of the blind sleeve and an internal thread of the screw hole with a thread depth that decreases in a direction towards the flexible end wall as obvious to try – choosing from a finite number of solutions – constant, increasing or decreasing – with a predictable result of a threaded connection. See KSR, 550 U.S. at 418.
(Claim 8) The guiding cavity (11) appears to be a circle cylindrical shape (Chen Figs. 2, 3).
(Claim 9) Chen discloses a boring tool assembly (Figs. 1-6) that includes the boring head of claim 1; and a boring tool (80) capable of being mounted to the boring head (Fig. 1).
(Claim 10) A cutting diameter of the boring tool assembly is adjustable in a cutting diameter range between a minimum cutting diameter and a maximum cutting diameter using the positioning means (Chen Figs. 1-6).
(Claim 11) The boring tool assembly is configured so that the boring tool (80) that is mounted to the piston (Chen 20) is movable over the cutting diameter range without contacting the main body of the boring head (Figs. 1-3 showing that cutting tool (Chen 80) does not contact the main body, at least directly, due to intervention of the cartridge pocket wall).
(Claim 12) The boring tool assembly is configured so that, over the cutting diameter range, there is no contact between the boring tool (Chen 80) and the main body, and the piston is oriented and fixed using the combined orientation and fixation device (Figs. 1-3 showing that cutting tool 80 does not contact the main body, at least directly, due to intervention of the cartridge pocket wall).
(Claim 13) The boring tool, under an alternative interpretation, includes an insert holder (Chen 90) configured to be removably mounted to the piston (Chen 20), and a cutting insert (Chen 80) configured to be removably mounted to the insert holder (Chen Figs. 1-3).
(Claim 14) The boring tool (Chen 80) is mounted at a front end of the piston, opposite to the positioning means (Chen Figs. 1-6).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Patent No. 9,427,809 B2) in view of Tugend et al. (US Patent No. 8,322,952 B2) further in view of Lee et al. (US Pub. No. 2007/0170176 A1).4
Chen does not explicitly disclose a glued connection between the blind sleeve and the main body.
Lee et al. (“Lee”) discloses gluing a sleeve (240, 250) within a bore to a main body (¶ 0029). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide device disclosed in Chen with a glued connection between sleeve and main body as taught by Lee in order to fasten the sleeve to the body. See KSR, 550 U.S. at 418.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Patent No. 9,427,809 B2) in view of Tugend et al. (US Patent No. 8,322,952 B2) further in view of Pape et al. (US Patent No. 4,398,854).
In the event Applicant traverses the disclosure of a cylindrical bore disclosure in Chen, Pape et al. (“Pape”) discloses a cylindrical transverse hole (6; Col. 1, Line 62). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the guiding cavity disclosed in Chen with a circle cylindrical shape as taught by Pape in order to locate the piston within and allow for radial movement as is well-known in the art, the fact of which examiner took official notice; and/or as obvious to try – choosing from a finite number of solutions leading to the predictable solution of locating the piston within the body and allowing for radial movement of the piston relative to the body. See KSR, 550 U.S. at 418. Because the well-known assertion was not traversed by Applicant, the assertion is taken as admitted prior art. See MPEP 2144.03 C.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive. Applicant argues that the Tugend reference fails to disclose an orientation and fixation device capable of simultaneously orienting and fixing the piston with respect to the main body. Instead of the claimed invention, Applicant alleges that the prior art discloses separate means for tightening and orienting the piston. Examiner disagrees.
The Tugend reference discloses the claimed invention. Likewise, the modified Chen reference reads upon the claimed invention. The presence of an additional feature in Tugend does not prevent the device from reading upon the claimed invention. Specifically, the Tugend reference discloses that claimed structure. The claim does not limit the device to not include another feature. If Applicant’s disclosed/claimed device is capable of performing the claimed function, then the prior art having the claimed limitation is also capable of performing the claimed function. Any additional feature in the prior art reference does not prevent the capability of the extremely similar prior art orientation and fixation device. Furthermore, the teaching of additional features is not tantamount to a teaching away from the claimed function. 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
1 https://www.merriam-webster.com/dictionary/piston (last visited January 27, 2026).
2 The blind sleeve is so considered “blind” simply because it has a blind hole in it.
3 The blind sleeve is so considered “blind” simply because it has a blind hole in it.
4 The previous Action included a copy and paste error. The body of the rejection recites to the Lee reference, which was cited in the PTO-892 form. The error in the rejection title has been fixed (i.e., the mistaken recitation of the Pape reference was corrected to refer instead to the Lee reference).
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