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
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: mounting interface in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-14 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 arranged for holding the boring tool” 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 “when the tightening screw is tightened” in Line 20. The term “when” renders the claim indefinite because it raises the question of whether the capability is required at all if the “when” condition does not occur. Appropriate correction required.
Claim 6 recites “in a direction towards the flexible end wall” in Line 5. This direction is unclear as there isn’t an origin for setting the direction. Appropriate correction required.
Claim 9 recites “a boring head according to claim 1” in Line 2. Yet, claim 1 already sets forth antecedent basis for a boring head. Appropriate correction required.
Claim 11 recites “when mounted” in Line 2. The term “when” renders the claim indefinite because it raises the question of whether the capability is required at all if the “when” condition does not occur. Appropriate correction required.
Claim 12 recites “when the boring tool is mounted” in Lines 3-4. The term “when” renders the claim indefinite because it raises the question of whether the capability is required at all if the “when” condition does not occur. 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) arranged for holding the boring tool (3), said piston (2) being 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 (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) when 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) arranged for holding the boring tool (80), said piston (20) being 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). 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) when 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 explicitly disclosure of 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, examiner takes official notice that such a configuration is well-known in the art. 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 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 takes official notice that constant thread depth is well-known in the art. 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), when 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 when the boring tool (Chen 80) is mounted to the piston (Chen 20) 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 Pape et al. (US Patent No. 4,398,854).
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 takes 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.
Conclusion
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.
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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.