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 1-11, 19, 22 in the reply filed on 2/20/2026 is acknowledged. The traversal is on the ground(s) that JP 2000043006 A does not disclose the invention as amended and thus unity of invention requirement should be withdrawn. This is not found persuasive because rejection below using a different reference discloses the invention as amended and thus maintains that special technical feature is known and thus unity of invention requirement is upheld. Note that if claims are found allowable during prosecution then rejoinder may occur for qualifying inventions dependent on any allowable claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-17, 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/20/2026.
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 4, 7 is/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 4 recites the limitation " the offset (V)". There is insufficient antecedent basis for this limitation in the claim. Claim 3 introduces an offset but does not have a reference V so it is unclear if this is the same element.
Claim 4 recites the limitation “which is measured”. It is unclear what element the “which” is referring to.
Claim 7 recites the limitation “two stacked columns, wherein the cutting head blank elements each have a semi-cylindrical shape and are disposed such that the cutting head blank has a cylindrical shape”. However, the scope is not clear since the language does not clarify that the two stacked columns are comprised of the cutting head blank elements and seems to introduce them as additional components.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2, 7-8, 10, 19, 22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Glimpel (DE 102005042410 A1, from IDS, machine translation relied on).
Re Claim 1, Glimpel discloses a tool blank for a cutting tool 2, including: a tool shank 3 [configured to be received in a rotating tool holder of a processing machine], and a cutting head blank 21-25 fixedly connected to the tool shank, the cutting head blank comprising multiple cutting head blank elements 21-25 that are fixedly connected to one another by solder, and are made of a high-hardness material having a hardness (HV) in the range of 2000-10000 kg/mm.sup.2 (Fig. 1-4, 11-15; para. 42-48, 52-56). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 2, Glimpel discloses the multiple cutting head blank elements are stacked on each other in multiple stacked columns that extend in parallel in the direction of an axis of rotation (R) of the tool blank and are disposed adjacent to each other around the axis of rotation (R) (para. 30).
Re Claim 7, as best understood, Glimpel discloses two stacked columns, wherein the cutting head blank elements each have a semi-cylindrical shape and are disposed such that the cutting head blank has a cylindrical shape (Fig. 15; para. 55).
Re Claim 8, Glimpel discloses the multiple cutting head blank elements are disposed in a single stacked column and have a cylindrical shape, and adjacent ones of the cutting head blank elements of the single stacked column abut against each other at respective abutment surfaces and are connected to each other at these abutment surfaces (Fig. 1-4, 11-15; para. 42-48, 52-56).
Re Claim 10, Glimpel discloses a pin 5 projecting from an end face of the tool shank to which the cutting head blank is attached, wherein a bore or recess is formed in at least one of the cutting head blank elements such that the at least one of the cutting head blank elements having the bore or recess is attached to the pin of the tool shank in a form-fit manner (Fig. 1-4, 11-15; para. 42-48, 52-56).
Re Claims 19, 22, Glimpel discloses the high-hardness material is polycrystalline diamond (para. 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.
Claim(s) 3-6, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Glimpel.
Re Claim 3, 5, Glimpel discloses multiple stacked columns (para. 30) as discussed for claim 2 above. Further, Glimpel discloses another embodiment where a first one of the cutting head blank elements is disposed in an offset manner with respect to an adjacent second one of the cutting head blank elements with an offset in the direction of the axis of rotation (R) (Fig. 13-14; para. 54) and a third one of the cutting head blank elements is disposed at a rotational offset angle (β) about the axis of rotation (R) with respect to an adjacent fourth one of cutting head blank elements (Fig. 13-14; para. 54). It would be obvious to one of ordinary skill in the art to combine these configurations to meet the claim limitations since it would be straightforward and could easily be implemented together and in order to obtain a desired final geometry.
Re Claim 4, as best understood, Glimpel discloses the offset (V) is in the range of 20% to 80% of a height (x1), which is measured in the direction of the axis of rotation, of the first one of the cutting head blank elements or of the second one of the cutting head blank elements (Fig. 13-14; para. 54).
Re Claim 6, Glimpel discloses the rotational offset angle (β) is in the range of 10° to 80° (Fig. 13-14; para. 54).
Re Claim 11, Glimpel discloses the cutting head blank elements each have a height (x1), which is measured in the direction of an axis of rotation of the tool blank, and the cutting head blank has a length (x2), which is measured in the direction of the axis of rotation (Fig. 1-4, 11-15; para. 42-48, 52-56)., but does not explicitly disclose height (x1) in the range from 0.2 mm to 2 mm and length (x2) in the range from 0.2 mm to 15 mm. However, it would be obvious to one of ordinary skill in the art to have these specific dimensions since these are common sizes of such components and it would be straightforward to make the tool of proper size for forming holes of desired size and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955) and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Glimpel in view of Hiroyasu (US 6,663,326).
Re Claim 9, Glimpel discloses at least one abutment surface between two of the cutting head blank elements, which abut on each other in the direction of an axis of rotation (R) of the tool blank, has an angle of 90 degrees with respect to the axis of rotation (R) in at least one region of the tool blank (Fig. 1-4, 11-15; para. 42-48, 52-56) but not specifically an angle in the range of 75°-89°. Hiroyasu teaches adjusting angle of adjoining cutting head blank elements (Fig. 13C). It would be obvious to one of ordinary skill in the art to have an angle in the range of 75°-89° (which could be merely a 1 degree difference) in order to obtain a desired optimal configuration of the tool for forming desired components and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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