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/Restrictions
Applicant's election with traverse of Group I (claims 1-13) in the reply filed on June 15, 2026 is acknowledged. The traversal is on the ground that the search hand examination of the entire applicant can be done without serious burden. This is not found persuasive because the restriction has been made on the basis of unity of invention, which does not require serious burden. While examiner does not acquiesce to the allegation, the serious burden need not be demonstrated. It is enough that the respective groups lack unity of invention over the cited prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14 and 15 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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: cutting element in claim 1.
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 1-13 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 nominal rake angle with respect to a surface of the workpiece” in Lines 8-9. The rake angle being measured with respect to the workpiece is disclosed as being measured in a plane perpendicular to the surface of the workpiece. This rake angle measurement conflicts with the industry standard definition. Moreover, because the workpiece is disclosed as being round due to the lathe environment. It is unclear how the plane is considered perpendicular to the round surface. It may be simpler to refer to the rake measured relative to the rotational axis of the workpiece in the manner of the industry standard. Appropriate clarification required.
Claim 1 recites “an effective rake angle and an effective clearance angle that depend on the wear of the cutting element” in Lines 10-11. The metes and bounds of how the angles depend on the wear of the cutting element are not clearly delineated. The claim must state clearly how the angles so depend. Appropriate correction required.
Claim 1 recites “or with respect to another workpiece to be machined” in Lines 18-19. It is unclear whether the workpiece is in a machining position or if it is merely set off to the side. Furthermore, the future tense of “to be machined” is vague as to at what point in time the workpiece is to be machined. Appropriate correction required.
Claim 3 recites “the second effective clearance angle corresponds to, or substantially corresponds to, the first clearance angle.” The scope of “substantially corresponds to” is unclear. Furthermore, it is unclear what is required by the angles corresponding to each other (unclear if this requires equality). Appropriate correction required.
Claim 5 recites “when” in Line 2. The term “when” renders the claim indefinite because it is unclear whether the limitation is required if the “when” condition is never triggered. Appropriate correction required.
Claim 6 recites “a duration of each machining step is selected based on a predefined time period that the cutting element has been in cut.” It is unclear how the selection occurs in this step. It is unclear whether this requires a method step of a mental process. It may be simpler to state that each machining step is defined by a time period the cutting element has been in cut. Appropriate correction required.
Claim 7 recites “a second orientation” in Line 2. Yet, a second orientation already has antecedent basis in claim 1. As such, it is unclear whether this is a further limitation or meant to refer back to the first recitation thereof. Appropriate correction required.
Claim 7 recites “is parallel to, but not in line with, the tool axis in the first tool axis position.” It is unclear how the tool axes are parallel yet considered not in line with each other. Appropriate correction required.
Claim 9 recites “with respect to another workpiece to be machined” in Lines 3-4. It is unclear whether the “another workpiece” is the same one previously recited in claim 1 or another workpiece. The future tense “to be” also creates a vagueness as to the timing aspect of the other workpiece. Appropriate correction required.
Claim 10 recites “the third orientation” in Line 2. This limitation lacks proper antecedent basis. It should be noted that claim 10 depends upon claim 8, not claim 9. 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.
Claims 1 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore (GB 1401010 A).
Moore discloses a turning method for a CNC-lathe (Figs. 1, 2; Page 1, Lines 9-17), comprising the steps of: providing a workpiece (2), rotatable in a rotation direction (A) around a rotational axis thereof; providing a turning tool (4) extending along a tool axis, wherein the turning tool includes a cutting element (4b) including a rake face (Page 3, Line 84), a clearance face (Figs. 1, 2) and a cutting edge formed at a border between the rake face and the clearance face (Figs. 1, 2), wherein the cutting element is arrangeable in different orientations with respect to the workpiece (Figs. 1, 2), each orientation being defined by a nominal rake angle with respect to a surface of the workpiece, and wherein the cutting element has, at a point of contact between the cutting edge and the workpiece, an effective rake angle and an effective clearance angle that depend on wear of the cutting element (Figs. 1, 2); arranging the cutting element with respect to the workpiece at a first orientation defined by a first nominal rake angle resulting in a first effective rake angle resulting in a first effective clearance angle 9Fig. 1); machining, in a first machining step, the workpiece with the cutting element in the first orientation (Fig. 1); and after the first machining step, re-arranging the cutting element with respect to the workpiece, or with respect to another workpiece to be machined at a second orientation defined by a second nominal rake angle resulting in a second effective rake angle and a second effective clearance angle (Fig. 2), wherein the second nominal rake angle is different from the first nominal rake angle; and machining, in a second machining step, the workpiece or the another workpiece, with the cutting element in the second orientation (Figs. 1, 2).
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 2-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Moore (GB 1401010 A) in view of Tool and Manufacturing Engineers Handbook (TMEH).
(Claim 2) Moore does not explicitly disclose a method with the second nominal rake angle being smaller than the first nominal rake angle.
The TMEH discloses that rake angles in operations involving work material that is relatively harder than a soft material (Page 10-34). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Moore with a second nominal rake smaller than the first nominal rake angle in an operation in which the first machining step is performed on soft material while the second machining operation is performed on harder material as suggested by the TMEH. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(Claim 3) As best understood, the second effective clearance angle at least substantially corresponds to the first effective clearance angle (Moore Figs. 1, 2).
(Claim 4) The second nominal rake angle is not explicitly disclosed as differing from the first nominal rake angle by 2-10 degrees. Yet, the TMEH discloses that rake angles are impacted by the hardness of the work material (Page 10-34). Therefore, the rake angle is a result-effective variable that depends on work material. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Moore with a rake angle relationship as claimed in order to optimize the rake angle relative to the work material between each machining operation as a function of work material involved. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”).
(Claim 5) In the modified method in which a second workpiece is provided of differing material than that of the first, the re-arranging would occur at a point in time that cutting is not occurring.
(Claim 6) Moore discloses a machining step of a cut-off operation (Figs. 1, 2). As such, the direction of each step of such an operation between distinct workpieces is selected on a time period that the cutting element has been in cut (i.e., the time period relates to engagement of tool until cutoff is complete).
(Claim 9) Moore does not explicitly disclose a method with a third orientation as claimede.
The TMEH discloses that rake angles in operations involving work material that is relatively harder than a soft material (Page 10-34). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Moore with a third orientation as claimed in an operation performed on a material of different hardness from the first two machining steps as suggested by the TMEH. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Moore (GB 1401010 A) in view of Pretorius (US Pub. No. 2012/0051854 A1).
Moore discloses that the cutting tool may be integral or one with inserts as well as being of any material (Page 2, Lines 122-129). Yet, Moore does not explicitly disclose the tool as being CBN/PCBN or the workpiece being HRSA.
Pretorius discloses a cutting insert of PCBN and a workpiece of HRSA (¶ 0034; Clm. 9). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Moore with a cutting tool and workpiece as suggested by Pretorius in order to cut hard work material.
Claims 7, 8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Moore (GB 1401010 A) in view of Salnikov et al (RU 2741397 C1) and Mundy (GB 1480792 A).
(Claim 7) Moore does not explicitly disclose the tool holder axis being parallel between the first and second operations.
Salnikov et al. discloses a cutting tool (Figs. 1-5) capable of changing the rake angle of the insert while maintaining the tool holder axis (Fig. 2). At a time prior to filing it would have been obvious to modify the method disclosed in Moore with a tool capable of adjusting rake without adjusting the tool axis as disclosed in Salnikov in order to provide the tool with the ability to automatically adjust the rake angle.
Mundy discloses presentation of a tool axis at a same orientation (parallel at different cutting locations along the axis) with differing rake angles (Figs. 10-12). At a time prior to filing it would have been obvious to modify the method disclosed in Moore with a cutoff operation where the tool axis is kept at the same angle regardless of rake angle as suggested by Mundy as obvious to try to repeat orientation regardless of rake angle. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(Claim 8) The tool axis in the modified method of Moore is moved from the first tool axis position to the second tool axis position by a first distance in a first direction (cut-off moved to new location relative to the workpiece).
(Claims 10 and 11) The tool axis in the modified method of Moore is moved from differing tool axis positions in order to cut-off at a new location. Yet, the distance is not explicitly disclosed as being the distances are either the same or one is smaller than the other. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method of Moore with a cut-off location at the same distance or smaller than a previous distance as obvious to try – choosing from a finite number of results (equal, smaller or larger) – with a predictable result of an equal cutoff workpiece or a smaller piece. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Salnikov et al. (RU 2741397 C1) (disclosing a cutting tool and method of changing the rake angle as a result of adverse cutting conditions (interpreted as wear) or a change in work material).
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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/RYAN RUFO/Primary Examiner, Art Unit 3722
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