Prosecution Insights
Last updated: April 19, 2026
Application No. 18/378,228

CUTTING INSERT WITH SENSOR ARRANGEMENT AND METHOD FOR MANUFACTURING A CUTTING INSERT

Non-Final OA §103§112
Filed
Oct 10, 2023
Examiner
RUFO, RYAN C
Art Unit
3722
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Sandvik Intellectual Property AB
OA Round
1 (Non-Final)
59%
Grant Probability
Moderate
1-2
OA Rounds
2y 10m
To Grant
99%
With Interview

Examiner Intelligence

Grants 59% of resolved cases
59%
Career Allow Rate
376 granted / 634 resolved
-10.7% vs TC avg
Strong +41% interview lift
Without
With
+40.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
59 currently pending
Career history
693
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
40.4%
+0.4% vs TC avg
§102
21.3%
-18.7% vs TC avg
§112
34.5%
-5.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 634 resolved cases

Office Action

§103 §112
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- 1 4) and species illustrated in Figures 1-4 (claims 1 -3, 5-7 and 10-13) in the reply filed on October 28, 2025 is acknowledged. The traversal is on the ground that the subject matter of claims 1-15 is subject sufficiently related such that a thorough search may be performed without serious burden on the Examiner. This is not found persuasive. MPEP Section 808 states: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . . The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following: Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06 , the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following: (A) Separate classification thereof : This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification. (B) A separate status in the art when they are classifiable together : Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search. (C) A different field of search : Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search. Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. Examiner noted that, at the very least, different search queries would be necessary to examine the exclusive characteristics of each invention and species. Thus, burden has been properly established. The requirement is still deemed proper and is therefore made FINAL. Claims 4, 8, 9, 14 and 15 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL. 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 appl icant regards as his invention. Claims 1 -3, 5-7 and 10-13 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 “for at least one depth below at least a portion of the electronically conductive material in the recess” in Lines 8-9 . The phrase “for at least a depth” creates a lack of clarity concerning claim scope because it is unclear what is required by “at least a portion below at least of portion of the material in the recess . Appropriate correction required. 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 , 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 105458312 A) . (Claim s 1 and 3 ) Tao et al. (“Tao”) discloses a cutting insert (10) for turning, milling or drilling of metal. The cutting insert (10) includes a body (Figs. 1-4) having an elongate recess (20) extending along at least a portion of the body (Fig. 1). The body includes a substrate (area detail 10 points to in Figs. 2-4), a first layer (21) covering interior side walls of the recess, and a sensor arrangement (Figs. 1-4) that includes a lead (22) extending along the recess (Figs. 1-4). The lead ( 22 ) comprises electrically conductive material (translation at pages 6-7), which is arranged in the recess such that the first layer (21) is located between said electrically conductive material and the substrate (Figs. 2-4). As best understood , for at least one depth below , which at least a portion of said electrically conductive material is arranged in the recess, a width of the recess measured at said depth between portions of said first layer covering opposite interior side walls of the recess is within 50-100 micrometers (translation at page 6). At a time prior to filing it would have been obvious for one having ordinary skill in the art to select a width within the claimed range ( less than or equal to 80 micrometers ) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). Tao does not explicitly disclose a recess depth of the recess being within the claimed range. Yet, the depth of the recess is a result-effective variable because it impacts sensing capability and protection of the sensor arrangement/lead , the fact of which examiner takes official notice . Thus, at a time prior to filing it would have been obvious for one having ordinary skill in the art to modify the recess of Tao to have a depth within the claimed range in order to optimize the balance between sensing capability and protection of the sensor arrangement/lead based upon operational parameters (work material, cutting speed, etc.). See Smith v. Nichols , 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “ will not sustain a patent ” ); 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.”). At least a portion of the lead is arranged at a lead depth of the recess such that there is space (24) within the recess above the lead (Figs. 2-4). (Claim 2) T he recess (20) is formed in the substrate (Figs. 1-4) . (Claim s 5 and 6 ) F or each depth at which at least a portion of said electrically conductive material (22) is arranged in said recess, the width of the recess measured at said depth between portions of said first layer covering opposite interior side walls of the recess is less than or equal to 80 micrometers . That is, there is but one depth at which at least a portion of said electrically conductive material ( 22 ) is arranged in the recess (Fig. 2). The depth between portions of said first layer covering opposite interior side walls of the recess is within 50-100 micrometers (translation at page 6). At a time prior to filing it would have been obvious for one having ordinary skill in the art to select a width within the claimed range (less than or equal to 80 micrometers) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). (Claim 7 ) T he first layer (21) is an electrically insulating layer (translation at pages 6-7). (Claim 10) At least a portion of the lead (22) is arranged at a depth of at least 5 micrometers. That is, the depth of the recess is disclosed as being 150-250 micrometers (translation at page 6). (Claim 13) T he sensor arrangement includes first and second contact regions (30, 40) through which the sensor arrangement is connectable to external measuring circuitry. The lead is connected to the first and second contact regions (Fig. 1) . Claim s 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 105458312 A) in view of Alvelid et al. (US Patent No. 4,945,770 A) . Tao does not explicitly disclose a cross sectional width of the lead being at least 5 micrometers. Alvelid et al. (“ A lvelid”) discloses a sensor film (9) being in the range of 1-50 micrometers (Col. 4, Lines 16-20). At a time prior to filing it would have been obvious for one having ordinary skill in the art to provide the sensor film disclosed in Tao with a cross-sectional width (or thickness) as taught by Alvelid in order to keep the sensor film well below the top of the recess. While the range of the modified sensor film overlaps the claimed range of at least 5 micrometers, at a time prior to filing it would have been obvious for one having ordinary skill in the art to select a cross-sectional width (or thickness) within the claimed range because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). Tao does not explicitly disclose the electrically insulating layer covering at least portions of the interior side walls of the recess. Yet, at a time prior to filing it would have been obvious for one having ordinary skill in the art to provide the sensor film disclosed in Tao covering multiple side walls of the recess as obvious to try - choosing from covering one to covering more than one - with the predictable result of providing a greater film hold area within the recess. See K SR International Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including “obvious to try”) . Claims 1-3, 5 -7 , 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 105458312 A) in view of Mueggler et al. (EP 2637014 A1) . (Claim s 1 and 3 ) Tao discloses a cutting insert (10) for turning, milling or drilling of metal. The cutting insert (10) includes a body (Figs. 1-4) having an elongate recess (20) extending along at least a portion of the body (Fig. 1). The body includes a substrate (area detail 10 points to in Figs. 2-4), a first layer (21) covering interior side walls of the recess, and a sensor arrangement (Figs. 1-4) that includes a lead (22) extending along the recess (Figs. 1-4). The lead (22) comprises electrically conductive material (translation at pages 6-7), which is arranged in the recess such that the first layer (21) is located between said electrically conductive material and the substrate (Figs. 2-4). As best understood, for at least one depth below, which at least a portion of said electrically conductive material is arranged in the recess, a width of the recess measured at said depth between portions of said first layer covering opposite interior side walls of the recess is within 50-100 micrometers (translation at page 6). At a time prior to filing it would have been obvious for one having ordinary skill in the art to select a width within the claimed range (less than or equal to 80 micrometers) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). At least a portion of the lead is arranged at a lead depth of the recess such that there is space (24) within the recess above the lead (Figs. 2-4). Tao does not explicitly disclose a recess depth of the recess being within the claimed range. Mueggler et al. (“Mueggler”) discloses a cutting tool (¶ 0035) having an elongate recess (4) extending along at least a portion of a body (Figs. 1A , 1B). T he depth of the recess is disclosed as being within the range of 10-1000 micrometers ( ¶ 0042 ). At a time prior to filing it would have been obvious for one having ordinary skill in the art to provide Tao select a depth within the claimed range (less than or equal to 50 micrometers) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). (Claim 2) T he recess is formed in the substrate ( Tao Figs. 1-4). (Claim s 5 and 6 ) F or each depth at which at least a portion of said electrically conductive material ( Tao 22) is arranged in said recess, the width of the recess measured at said depth between portions of said first layer covering opposite interior side walls of the recess is less than or equal to 80 micrometers . That is, there is but one depth at which at least a portion of said electrically conductive material ( Tao 22 ) is arranged in the recess ( Tao Fig. 2). The depth between portions of said first layer covering opposite interior side walls of the recess is within 50-100 micrometers ( Tao translation at page 6). At a time prior to filing it would have been obvious for one having ordinary skill in the art to select a width within the claimed range (less than or equal to 80 micrometers) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). (Claim 7 ) T he first layer ( Tao 21) is an electrically insulating layer ( Tao translation at pages 6-7). (Claim 10) At least a portion of the lead ( Tao 22) is arranged at a depth of at least 5 micrometers. That is, the depth of the recess is disclosed as being 150-250 micrometers ( Tao translation at page 6). (Claim 13) T he sensor arrangement includes first and second contact regions ( Tao 30, 40) through which the sensor arrangement is connectable to external measuring circuitry. The lead is connected to the first and second contact regions ( Tao Fig. 1) . Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (CN 105458312 A) in view of Mueggler et al. (EP 2637014 A1) further in view of Alvelid et al. (US Patent No. 4,945,770 A) . Tao does not explicitly disclose a cross sectional width of the lead being at least 5 micrometers. Alvelid et al. (“ A lvelid”) discloses a sensor film (9) being in the range of 1-50 micrometers (Col. 4, Lines 16-20). At a time prior to filing it would have been obvious for one having ordinary skill in the art to provide the sensor film disclosed in Tao with a cross-sectional width (or thickness) as taught by Alvelid in order to keep the sensor film well below the top of the recess. While the range of the modified sensor film overlaps the claimed range of at least 5 micrometers, at a time prior to filing it would have been obvious for one having ordinary skill in the art to select a cross-sectional width (or thickness) within the claimed range because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). Tao does not explicitly disclose the electrically insulating layer covering at least portions of the interior side walls of the recess. Yet, at a time prior to filing it would have been obvious for one having ordinary skill in the art to provide the sensor film disclosed in Tao covering multiple side walls of the recess as obvious to try - choosing from covering one to covering more than one - with the predictable result of providing a greater film hold area within the recess. See K SR International Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including “obvious to try”) . Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Mueggler et al. (EP 263 7014 A1 ) in view of Tao et al. (CN 105458312 A) . Mueggler discloses a cutting tool ( ¶ 0035 ). The cutting tool includes a body having an elongate recess ( 4 ) extending along at least a portion of the body (Fig s . 1 A , 1B ). The body includes a substrate ( 2 ), a first layer ( 9 ) covering interior side walls of the recess, and a sensor arrangement ( 5 ) that includes a lead ( 7, 8, 10 ) extending along the recess (Figs. 1A, 1B ). The lead ( 7, 8, 10 ) comprises electrically conductive material (¶ 0033 ), which is arranged in the recess such that the first layer ( 9 ) is located between said electrically conductive material and the substrate (Figs. 1A, 1B ). As best understood, for at least one depth below, which at least a portion of said electrically conductive material is arranged in the recess, a width of the recess measured at said depth between portions of said first layer covering opposite interior side walls of the recess is within 10 -100 0 micrometers ( ¶ 0042 ). Likewise, the depth of the recess is disclosed as being within the range of 10-1000 micrometers ( ¶ 0042 ). At a time prior to filing it would have been obvious for one having ordinary skill in the art to select a width and a depth within the claimed range ( width less than or equal to 80 micrometers and depth of equal to or less than 50 micrometers ) because it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 (quoting In re Wertheim , 541 F.2d 257 (CCPA 1976)). While the Mueggler reference discloses the invention being used in a cutting tool, the cutting tool being a cutting insert is not explicitly disclosed. Tao discloses a cutting insert (10) for turning, milling or drilling of metal. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the cutting tool disclosed in Mueggler as a cutting insert taught by Tao in order to monitor wear on the surface of a replaceable cutting insert. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT RYAN RUFO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-4604 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon-Thurs . Examiner interviews are available via telephone, in-person, and video conferencing 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, FILLIN "SPE Name?" \* MERGEFORMAT Singh Sunil can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-3460 . 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. /RYAN RUFO/ Primary Examiner, Art Unit 3722
Read full office action

Prosecution Timeline

Oct 10, 2023
Application Filed
Mar 24, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12594611
ROTARY TOOL AND METHOD FOR MANUFACTURING MACHINED PRODUCT
2y 5m to grant Granted Apr 07, 2026
Patent 12589442
SELF-ADJUSTING POCKET HOLE JIG SYSTEM
2y 5m to grant Granted Mar 31, 2026
Patent 12583040
TOOL HOLDER FOR TOOL ASSEMBLY AND TOOL ASSEMBLY COMPRISING TOOL HOLDER
2y 5m to grant Granted Mar 24, 2026
Patent 12508660
Rotary cutting tool and holding element for a rotary cutting tool
2y 5m to grant Granted Dec 30, 2025
Patent 12496641
POCKET HOLE JIG
2y 5m to grant Granted Dec 16, 2025
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
59%
Grant Probability
99%
With Interview (+40.8%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 634 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month