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 .
Response to Amendment
The Applicant’s amendment filed on 04/30/2026 has been fully considered and made of record. As such, the objection and rejection of claims under 112(b), as outlined in the Office action mailed 02/04/2026, have been withdrawn.
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.
Claim 17 is 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.
In claim 17, lines 21-26 recite the limitations “the first strain sensor being electrically connected to the first portion or the second portion, wherein the first strain sensor is arranged on the first surface and electrically connected to the first portion, and the second strain sensor is arranged on the second surface and electrically connected to the second portion.” As such, the claim recites that the first sensor is electrically connected to the first portion or the second portion (alternative language means that the first sensor is connected to the second portion) and then positively recites in the same claim and in the next line that the first sensor is electrically connected to the first portion which is considered as New Matter with no support in the originally filed claim. Phrase it differently, claim 17 is claiming an embodiment wherein the first sensor is electrically connected to both the first and second portions of the board module which appears to have no support in the originally filed disclosure. Furthermore, such limitation appears to raise enablement issues as to how the first strain sensor could be electrically connected to both the first portion and the second portion of the board module at the same time.
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.
Claim 17 is 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 17 recites the limitation of the first strain sensor to be electrically connected to the first portion or the second portion of the module board and followed by reciting that the first strain sensor is electrically connected to the second portion of the board. However, it is unclear how the first sensor could be electrically connected to two different portions of the same module board at the same time.
Claim Rejections - 35 USC § 103
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 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) 1-5, 8, 10-13 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (WO20020171157A1, hereinafter “Hashimoto”) in view of Redecker et al. (US 7,289,873, hereinafter “Redecker”).
As applied to claims 1 and 16, Hashimoto teaches a cutting tool (101) for cutting a workpiece by contacting the workpiece that is rotating, the cutting tool comprising:
a body portion (5, 11 and 13) having a bar shape extending from a first end to a second end; and a sensor (9) arranged on a surface of the body portion, the surface of the body portion including a first surface (surface of body portion 5/11 with recess 35, Fig. 2), a second surface (surface of body portion 5/13 with cavity 61), and a third surface (any remaining surface of body portion 5 of cutting tool), the sensor including a first strain sensor (9, paragraph [0035]) arranged on any of the first surface, the second surface, and the third surface (Fig. 8),
a board module electrically connected to the first strain sensor (see board module/portion which the sensor is mounted on, paragraphs [0041]-[0042], Figs. 2 and 8), and
a wireless communication unit mounted on the board module (Antenna 7 mounted on board/portion in Fig. 8) and transmitting a signal containing information on strain of the body portion detected by the first strain sensor to an outside (see paragraphs [0041] and [0043]),
the board module including a first portion arranged on the first surface (the portion in Fig. 8 which sensor 9 is mounted on), a second portion arranged on the second surface (the portion in Fig. 8 which antenna 7 is mounted on), and a connecting portion (37) electrically connecting the first portion to the second portion, the first strain sensor being electrically connected to the first portion or the second portion (the first strain sensor 9 is electrically connected to the first and second portions, paragraphs [0041], [0043], Fig. 8).
Hashimoto does not explicitly teach that the second portion of the board is on a plane that intersects a plane of the first portion (as in claim 1) and wherein the second portion is orthogonal to the first portion (as in claim 16).
Redecker teaches that it is well-known in the art of the machine tools to have a sensor system for a cutting machine tool (300) with an energy supply unit (10) wherein sensors 111 to 114 are connected to a processing electronics (131) with the electronics (131) preferably arranged on a flexible printed circuit board or on a segmented printed circuit board to be adaptable to the design of the cutting machine tool (300, abstract, col. 7, lines 14-21). Redecker further teaches that a pair of strain sensors (114) which are electrically connected to the board module (in order to transmit collected data) are poisoned perpendicular to one another (paragraph 6, lines 57-61). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to fabricate the board module of Hashimoto as a flexible segmented board (i.e., having multiple planes at different angles including 90 degrees and connected to one another through a connecting portion), as taught by Redecker, as an effective means of providing the machine tool with maximum flexibility based on specific design criteria including board segments/portions having planes that intersect each other or are orthogonal to one another for allowing the mounting of electronic components at most appropriate positions.
As applied to claim 2, Hashimoto as modified by Redecker teaches the invention cited including Hashimoto further teaches wherein the first surface has a first recess formed therein, the second surface has a second recess formed therein, the first portion is arranged in the first recess, the second portion is arranged in the second recess, and the first strain sensor is arranged in one of the first recess and the second recess, or with the third surface having a third recess formed therein, the first strain sensor is arranged in the third recess (first recess 35 and second recess 61, Fig. 2).
As applied to claim 3, Hashimoto as modified by Redecker teaches the invention cited including Hashimoto further teaches a lid that covers a sensor housing recess, which is one of the first recess, the second recess, and the third recess in which the first strain sensor is arranged, wherein the body portion includes a first bottom wall constituting a wall surface defining the sensor housing recess, and a second bottom wall constituting the wall surface defining the sensor housing recess, the second bottom wall having a smaller distance from an opening of the sensor housing recess than the first bottom wall, the second bottom wall surrounding the first bottom wall as viewed in a depth direction of the sensor housing recess, the first strain sensor is arranged on the first bottom wall, and the lid is arranged on the second bottom wall and is received within the sensor housing recess (lid 63 rests on the bottom wall of a recess portion with a smaller depth than a bottom wall of the recess portion 35 on which the sensor 9 is positioned, Figs. 1 and 7).
As applied to claim 4, Hashimoto as modified by Redecker teaches the invention cited including Hashimoto further teaches wherein the first portion is a first board, the second portion is a second board, the connecting portion is a cable or a connecting board that electrically connects the first board to the second board, the body portion has a first through hole(holes for screw 57) formed to connect the first surface to the second surface, and the cable or the connecting board electrically connects the first board to the second board through the first through hole (see Figs. 8 and 10, region B2, paragraph [0041]).
As applied to claim 5, Hashimoto as modified by Redecker teaches the invention cited including the electronic board module made of a flexible and segmented board but does not explicitly teach wherein the first portion, the second portion, and the connecting portion are composed of a single board.
However, the court has held that the use of a one piece construction instead of the multipiece structure disclosed in the prior art would be merely a matter of obvious engineering choice (see MPEP 2144.04-V-B). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the first, second and connecting portion of Hashimoto’s board from a single board depending on the specific design criteria.
As applied to claims 8 and 10-13, Hashimoto as modified by Redecker teaches the invention cited including the wireless communication unit mounted on the board module transmitting signal from first strain sensor, wherein the electronic board module made of a flexible and segmented board which would have obviously been made of multiple portions (i.e., first portion, second portion, and the connecting portion) and that the first strain sensor arranged on the first surface would have obviously been electrically connected to a portion of the board (i.e., first portion) of the multi-portion board. Redecker further teaches the sensor module (100) generates radio link to the outside to transmit processed data (i.e. wireless transmission, abstract, col. 7, lines 22-27) and that the sensor module includes a plurality of strain sensors (two strain gauges 114) that are arranged perpendicular to each other (paragraph bridging cols. 6 and 7). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to further employ into the cutting tool of Hashimoto a second strain sensor arranged on a plane perpendicular to the plane of the first strain sensor and connected to the wireless communication unit to transmit the collected signal from the second strain sensor, as taught by Redecker, as an effective means of collecting additional data of the cutting tool, workpiece and cutting process which would result in a more enhanced and accurate cutting process.
Furthermore, the combination of Hashimoto and Redecker teaches the electrically connections between the first and second strain sensors with the board module, that the board module is segmented which is made of first and second portions with a connecting portion in between and that the first and second strain sensors are arranged on planes perpendicular to one another. As such, it would have been further obvious to one of ordinary skill in the art to have arranged the first strain sensor on a portion (i.e., first portion) of the board module and have arranged the second strain sensor on a different portion (i.e., second portion) of the module board in order to maximize the reach of the sensors in collecting and transmitting the desired data from multitude of locations of the cutting tool and the workpiece during the cutting process.
As applied to claims 17 and 18, Hashimoto teaches a cutting tool (101) for cutting a workpiece by contacting the workpiece that is rotating, the cutting tool comprising:
a body portion (5, 11 and 13) having a bar shape extending from a first end to a second end; and a sensor (9) arranged on a surface of the body portion, the surface of the body portion including a first surface (surface of body portion 5/11 with recess 35, Fig. 2), a second surface (surface of body portion 5/13 with cavity 61), and a third surface (any remaining surface of body portion 5 of cutting tool), the sensor including a first strain sensor (9, paragraph [0035]) arranged on any of the first surface, the second surface, and the third surface (Fig. 8),
a board module electrically connected to the first strain sensor (see board module/portion which the sensor is mounted on, paragraphs [0041]-[0042], Figs. 2 and 8), and
a wireless communication unit mounted on the board module (Antenna 7 mounted on board/portion in Fig. 8) and transmitting a signal containing information on strain of the body portion detected by the first strain sensor to an outside (see paragraphs [0041] and [0043]),
the board module including a first portion arranged on the first surface (the portion in Fig. 8 which sensor 9 is mounted on), a second portion arranged on the second surface (the portion in Fig. 8 which antenna 7 is mounted on), and a connecting portion (37) electrically connecting the first portion to the second portion, the first strain sensor being electrically connected to the first portion or the second portion (the first strain sensor 9 is electrically connected to the first and second portions, paragraphs [0041], [0043], Fig. 8).
Hashimoto does not explicitly teach a second strain sensor arranged on the second surface and electrically connected to the second portion of the board module (as in claim 17) and a second strain sensor electrically connected to the board module (as in claim 18).
Redecker teaches that it is well-known in the art of the machine tools to have a sensor system for a cutting machine tool (300) with an energy supply unit (10) wherein sensors 111 to 114 are connected to a processing electronics (131) with the electronics (131) preferably arranged on a flexible printed circuit board or on a segmented printed circuit board to be adaptable to the design of the cutting machine tool (300, abstract, col. 7, lines 14-21). Redecker further teaches that a pair of strain sensors (114) which are electrically connected to the board module (in order to transmit collected data) are poisoned perpendicular to one another (paragraph 6, lines 57-61). Redecker further teaches the sensor module (100) generates radio link to the outside to transmit processed data (i.e. wireless transmission, abstract, col. 7, lines 22-27) and that the sensor module includes a plurality of strain sensors (two strain gauges 114) that are arranged perpendicular to each other (paragraph bridging cols. 6 and 7). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to employ into the cutting tool of Hashimoto a second strain sensor arranged on a second surface (different than the first surface) and electrically connected to the second portion of the module board, as taught by Redecker, depending on the specific design criteria and as an effective means of collecting additional data of the cutting tool, workpiece and cutting process which would result in a more enhanced and accurate cutting process.
Furthermore, the combination of Hashimoto and Redecker teaches the electrically connections between the first and second strain sensors with the board module, that the board module is segmented which is made of first and second portions with a connecting portion in between and that the first and second strain sensors are arranged on planes perpendicular to one another. As such, it would have been further obvious to one of ordinary skill in the art to have arranged the first strain sensor on a portion (i.e., first portion) of the board module and have arranged the second strain sensor on a different portion (i.e., second portion) of the module board in order to maximize the reach of the sensors in collecting and transmitting the desired data from multitude of locations of the cutting tool and the workpiece during the cutting process.
Claim(s) 6-7 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (WO20020171157A1, hereinafter “Hashimoto”) in view of Redecker et al. (US 7,289,873, hereinafter “Redecker”) as applied to claim 1 above, and further in view of Minora et al (JP2016004176A, hereinafter “Minoru”).
As applied to claim 6, Hashimoto as modified by Redecker teaches the invention cited including a sensor and wiring connection (abstract) but does not explicitly teach wherein the sensor further includes first wiring that connects the first strain sensor to the board module with slack.
Minoru teaches that in fabricating an electronic device it is well-known to provide a slack in the wiring between electronic components (i.e., sensors) on a circuit board to repent stress from being applied to the wiring due to any dimensional changes of the components (English Machine Translation, page 6, 7th full paragraph, page 7, last full paragraph of Claims). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to employ in the tool of Hashimoto/Redecker wiring slack in the first wiring that connects the first strain sensor to the board module, as taught by Minoru, as an effective means of allowing the assembling of the sensor onto the board while preventing any damages incurred to the wiring.
As applied to claim 7, Hashimoto as modified by Redecker and Minoru teaches the invention cited including body portion having recesses and the wiring has a slack. However, the combination does not explicitly teach wherein the surface of the body portion has a fourth recess formed therein, and a portion of the first wiring corresponding to the slack is housed in the fourth recess.
Hashimoto explicitly teaches forming recesses and cavities in the body portion to accommodate components such as the board, sensor and antenna. In addition, the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04-VI-B). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide in the surface of the tool body of Hashimoto/Redecker/Minoru a fourth recess and housed a portion of the first wiring corresponding to the slack depending on the specific design criteria.
As applied to claims 14 and 15, Hashimoto as modified by Redecker and Minoru teaches the invention cited including the wireless communication unit mounted on the board module transmitting signal from first strain sensor, wherein the electronic board module made of a flexible and segmented board which would have obviously been made of multiple portions (i.e., first portion, second portion, and the connecting portion) and that the first strain sensor arranged on the first surface would have obviously been electrically connected to a portion of the board (i.e., first portion) of the multi-portion board. Redecker further teaches the sensor module (100) generates radio link to the outside to transmit processed data (i.e. wireless transmission, abstract, col. 7, lines 22-27) and that the sensor module includes a plurality of strain sensors (two strain gauges 114) that are arranged perpendicular to each other (paragraph bridging cols. 6 and 7). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to further employ into the cutting tool of Hashimoto as modified by Redecker and Minoru a second strain sensor arranged on a plane perpendicular to the plane of the first strain sensor and connected to the wireless communication unit to transmit the collected signal from the second strain sensor, as taught by Redecker, as an effective means of collecting additional data of the cutting tool, workpiece and cutting process which would result in a more enhanced and accurate cutting process.
Furthermore, the combination of Hashimoto, Redecker and Minoru teaches the electrically connections between the first and second strain sensors with the board module, that the board module is segmented which is made of first and second portions with a connecting portion in between and that the first and second strain sensors are arranged on planes perpendicular to one another. As such, it would have been further obvious to one of ordinary skill in the art to have arranged the first strain sensor on a portion (i.e., first portion) of the board module and have arranged the second strain sensor on a different portion (i.e., second portion) of the module board in order to maximize the reach of the sensors in collecting and transmitting the desired data from multitude of locations of the cutting tool and the workpiece during the cutting process.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (emphasis added).
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach or fairly suggest the limitation of the sensor further includes a third strain sensor arranged on the third surface, and a strain sensor wiring connected to the third strain sensor, the body portion has a second through hole formed to connect the third surface to the first surface or the second surface, and the strain sensor wiring connects the third strain sensor to the first portion or the second portion through the second through hole.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. During a short telephone call made to the Applicant’s attorney on 06/29/2026, the examiner inquired Applicant’s willingness to accept the allowable subject matter to place the application in condition for allowance. However, Mr. Maksymonko indicated that his client would still like to receive an office action. As such, the examiner agreed to issue a Final office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jayer et al. (US 20160045994A1) teaches an insert holder for a tool for turning a machine tool, comprising an insert holder body (2), the head (22) of which is intended to receive a cutting insert (3), characterized in that at least two measurement recesses (4, 5) are provided in the insert holder body (2) on the side of the head (22), said measurement recesses (4, 5) being arranged symmetrically relative to the neutral fiber (6) of the insert holder body (2) and centered on the neutral fiber (6). The measurement recesses (4, 5) have, respectively, a planar bottom (41, 51) that is parallel to the direction (Y) of the component of the tangential cutting force of the insert holder to be measured, and parallel to the longitudinal direction (X, Z) of the insert holder body (2). The insert holder also comprises at least one first strain gauge (71, 72, 73, 74) configured such as to measure the change in shape of the planar bottom (41, 51) of at least one of the measurement recesses (4, 5, abstract, Figs. 1-14).
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 SARANG AFZALI whose telephone number is (571)272-8412. The examiner can normally be reached M-F 7 am - 4 pm EST.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 07/02/2026
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