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 without traverse of Group I, claims 1-15 and Species b of Figures 7-8 and 9A corresponding to claims 1, 5-7 and 10-17 in the reply filed on 01/06/2026 is acknowledged.
Claims 2-4, 8-9, 16-19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III and Species a, c-f, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026.
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 1, 5-7 and 10-15 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 in:
Line 4, the term “generally” which renders the claim indefinite as it is unclear what something that is “generally” cylindrical, is. Further clarification is needed.
Lines 9-11 that the spring clip “includes a contracted configuration and an expanded configuration, and in both the contracted configuration and the expanded configuration the protrusion interacts with the rotation-limiting surface”. However, it is unclear how a structural element can “include” a contracted configuration and an expanded configuration. What exactly is the structure that allows for this configuration to be “included” in the spring clip. The metes and bounds of this phrase need to be further defined. Further clarification is needed. Additionally, the phrase “interacts with” renders the claim indefinite, as it is unclear what exactly this interaction is. How is the protrusion “interacting with” the rotation-limiting surface? Further clarification is needed.
Claim 11 recites in line 1 “a bore” of the washer. However, since claim 10, from which claim 11 directly depends on already sets forth that the washer has a bore (see line 3 of claim 10), it is unclear if the “bore” of claim 11 is in addition to the “bore” of claim 10, or not. Further clarification is needed.
Claim 14 recites in line 2 the phrase “can be” which renders the claim indefinite as it is unclear if the spring clip is actually being slid over the proximal end of the shank or not. Further clarification is needed.
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(s) 1, 5-7, 10-11, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mouthaan et al. US 2007/0257545 (hereafter—Mouthaan--).
In regards to claim 1, Mouthaan discloses a cutting bit (10) assembly for attachment to a tool holder (14) of a milling-type machine, the cutting bit assembly (10) comprising: a cutting tip (20); a generally cylindrical shank (30) extending from the cutting tip (20) and comprising a rotation-limiting surface (76); and a spring clip (34) surrounding a body of the shank and comprising a protrusion (74) configured to interact with the rotation-limiting surface (76) of the shank to limit rotation of the shank (30) relative to the spring clip (34) wherein the spring clip (34) includes a contracted configuration (when washer is disposed around it as shown in Figure 8) and an expanded configuration (as in Figure 2 and 5a), and in both the contracted configuration and the expanded configuration the protrusion interacts (as shown in Figures 1-2, 8 and 9) with the rotation-limiting surface (76).
In regards to claim 5, Mouthaan as modified discloses the bit assembly of claim 1, Mouthaan as modified also discloses that the rotation-limiting surface (76) comprises a groove in the shank (see Figure 4), and wherein the protrusion (74) is configured to extend into the groove (paragraph [0033], lines 16-19).
In regards to claim 6, Mouthaan as modified discloses the bit assembly of claim 5, Mouthaan as modified also discloses that the protrusion (74) comprises at least one tab (refer to the tab 74) configured to extend into the groove (paragraph [0033], lines 16-19).
In regards to claim 7, Keller as Mouthaan discloses the bit assembly of claim 5, Mouthaan as modified also discloses that each of the at least one tabs (74) is capable of engaging a sidewall of the groove to limit rotation between the spring clip (34) and the shank (30) (note that the shank will rotate in conjunction with the spring clip within bore 32).
In regards to claim 10, Mouthaan as modified discloses the bit assembly of claim 5, Mouthaan as modified also discloses a washer (36) surrounding a portion of the spring clip (34), wherein the washer (36) has a bore (see Figures 6 and 6A) to hold the spring clip in the contracted configuration for insertion into the tool holder (see Figure 8), wherein the washer is slidable off of the spring clip onto a shoulder of the shank to allow the spring clip to expand to the expanded configuration (as in Figure 9).
In regards to claim 11, Mouthaan as modified discloses the bit assembly of claim 10, Mouthaan as modified also discloses that a proximal edge of a bore of the washer is beveled (as shown in Figure 6) to allow the washer to be slid from the shoulder onto the spring clip to force the spring clip into the contracted configuration (see Figure 6 and Figure 8).
In regards to claim 13, Mouthaan as modified discloses the bit assembly of claim 1, Mouthaan as modified also discloses that a proximal end (28) of the shank (30) has a larger diameter than the body (at 76) of the shank to axially constrain the spring clip on the shank (see Figure 4).
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) 1, 5-7, 13-14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Keller US 2010/0038955.
In regards to claim 1, Keller discloses a cutting bit (10, 130, 210 Figures 1, 4, 10 and 11) assembly for attachment to a tool holder (20, 222) of a milling-type machine, the cutting bit (10, 210) assembly comprising: a cutting tip (not shown, but inherently inferred in paragraph [0031] lines 21-26 so as to disposed within 38); a generally cylindrical shank (34,134 and Figure 11) extending from the cutting tip (to be disposed within 38 and corresponding of Figure 111) and comprising a rotation-limiting surface (40,140, 240); and a spring clip (60, 250) surrounding a body of the shank and comprising a protrusion (64, 264) configured to interact with the rotation-limiting surface (40,140, 240) of the shank to limit rotation of the shank relative to the spring clip (see Figures 2, 3, 8, and 11) wherein the spring clip (60, 250) includes a contracted configuration and an expanded configuration, and in both the contracted configuration and the expanded configuration the protrusion interacts (as shown in Figures 2, 3 and 11) with the rotation-limiting surface.
If the applicant considers that the interpretation of the claim(s) under pre-AIA 35 U.S.C. 102, i.e., is or may be in dispute under given the current interpretation, the current under pre-AIA 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111- 2116.01.
If the applicant considers that the current interpretation of Keller fails to explicitly teach “a cutting tip”, the Examiner takes Official Notice on the fact that cutting tips made of hard materials such as polycrystalline diamond are to be disposed within the tool bore to machine a workpiece. Accordingly, it would have been obvious to a person having ordinary skill in the art at the time the Applicant’s invention was filed, to have a cutting tip disposed within a shank bore, as this concept of having a cutting tip within a shank bore to machine a workpiece is known to those skilled in the art, and Keller has explicitly stated that the assembly is structured and arranged to accept a cutting tool having a tip made from polycrystalline diamond (paragraph [0031] lines 21-26).
In regards to claim 5, Keller as modified discloses the bit assembly of claim 1, Keller as modified also discloses that the rotation-limiting surface (40,140, 240) comprises a groove in the shank, and wherein the protrusion (64, 264) is configured to extend into the groove (as shown in Figures 2, 3 and 11).
In regards to claim 6, Keller as modified discloses the bit assembly of claim 5, Keller as modified also discloses that the protrusion (64, 264) comprises at least one tab (refer to the tab of 64, 264) configured to extend into the groove (as shown in Figures 2, 3 and 11).
In regards to claim 7, Keller as modified discloses the bit assembly of claim 5, Keller as modified also discloses that each of the at least one tabs (64, 264) is capable of engaging a sidewall of the groove to limit rotation between the spring clip (60, 250) and the shank (see paragraph [0032] lines 10-19).
In regards to claim 13, Keller as modified discloses the bit assembly of claim 1, Keller as modified also discloses that a proximal end (e.g. end closest to portion 42 as in Figure 4 or taking Figure 4 as reference, end immediately after groove 36) of the shank (34) has a larger diameter than the body (see Figure 3) of the shank to axially constrain the spring clip on the shank (see Figure 3 and Figure 4).
In regards to claim 14, Keller as modified discloses the bit assembly of claim 13, Keller as modified also discloses that the proximal end of the shank comprises a notch (refer to beveled notch in Figure 4, 5 and/or 11) providing clearance so that the protrusion (64, 264) of the spring clip can be slid over the proximal end of the shank.
In regards to claim 15, Keller as modified discloses the bit assembly of claim 1, Keller as modified also discloses that the cutting tip comprises a polycrystalline diamond tip (paragraph [0031] lines 21-26).
Claim(s) 12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mouthaan et al. US 2007/0257545 (hereafter—Mouthaan--) as applied to claim 10 and claim 1 respectively above.
In regards to claim 12, Mouthaan as modified discloses the bit assembly of claim 10, Mouthaan as modified also discloses that the spring clip has a distal edge and a proximal edge. The proximal edge, showing a bevel to allow the washer to be slid onto the spring clip to force the spring clip into the contracted configuration.
However, Mouthan fails to explicitly disclose that the distal edge of the spring clip is beveled to allow the washer to be slid from the shoulder onto the spring clip to force the spring clip into the contracted configuration.
Nevertheless, since Mouthan does teach that there is a bevel in the proximal edge (see Figure 8) so as to allow the washer to be slid onto the spring clip to force the spring clip into the contracted configuration, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to provide an additional bevel on the other end (e.g. distal end) of the spring clip, to allow the washer to be slid in the other direction, from the shoulder onto the spring clip, as a person having ordinary skilled in the art would have recognized that beveled, notched, chamfered edges provides ease when sliding a structural element within the other and prevent jamming or unnecessary interference.
In regards to claim 15, Mouthaan as modified discloses the bit assembly of claim 1, Mouthaan as modified also discloses that the cutting tip comprises a hard material tip (paragraph [0024]).
However, Mouthaan fails to explicitly disclose that the hard material is polycrystalline diamond.
Accordingly, it would have been obvious to a person having ordinary skill in the art, at the time Applicant’s invention was filed to have the cutting tip of Mouthaan be made of polycrystalline diamond, since it has been held that the selection of a known material is based on its suitability for its intended use. See MPEP § 2144.07 (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
Examiner interviews are available via telephone, 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, Sunil K Singh 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICOLE N RAMOS/Primary Examiner, Art Unit 3722