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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 26, 2025 has been entered.
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.
Claims 36-52 are 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.
Claim 36 recites “the forward most bearing surface extends perpendicular to an operational direction . . . .” This recitation contains new matter because the bearing surfaces is stepped (recessed, non-recessed and transition). As such, the bearing surface, at a part thereof (e.g., recessed and/or non-recessed), is perpendicular to the operational direction, but not in its entirety. Appropriate correction required.
Claim 39 recites “wherein each bearing surface is straight.” Yet, the bearing surface includes a recessed portion and a non-recessed portion with a transition therebetween the portions. A straight bearing surface is therefore new matter. Appropriate correction required.
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 36-52 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 36 recites “the tool head comprising an adaptor recess . . . with a first tool bearing surface and a second tool bearing surface protruding from the tool holder along a periphery of the adaptor recess . . . .” The bearing surfaces are part of the adaptor recess and the tool holder. As such, it is unclear how the bearing surfaces protrude from the tool holder along the recess. It would be clearer to state that the bearing surfaces protrude from a bottom surface of the adaptor recess. Appropriate correction required.
Claim 36 recites “a plurality of bearing surfaces and one of which extends between each pair of circumferentially adjacent pockets . . . . “ It is unclear how one of the plurality extends between each pair of circumferentially adjacent pockets. Appropriate correction required.
Claim 36 recites “parallel to the elongation of the tool shank . . . .” The elongation of the tool shank is not clearly set forth in order to adequately describe the operational direction. Appropriate correction required.
Claim 38 recites “the one of the pockets” in Line 3. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 39 recites “wherein each bearing surface is straight.” Yet, the bearing surface includes a recessed portion and a non-recessed portion. It is unclear how the bearing surface is considered straight. The boundary between straight and non-straight is unclear. Appropriate correction required.
Claim 44 recites “the plurality of pockets comprises three, four, or five pockets.” It is unclear whether the plurality merely includes that many pockets as the language suggests or if the plurality is that many pockets. Appropriate correction required.
Claim 52 depends from itself. Therefore, the scope of the claim is unclear. 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 36, 37, 39, 40, 44-46, 48, 49 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Milewski et al. (US Patent No. 3,561,086) in view of Betschart (DE 29908767 U1) and Nuding (US Patent No. 2,836,240).
(Claims 36 and 40) Milewski et al. (“Milewski”) discloses a tool assembly for parting off (Figs. 5, 6). The tool assembly includes an insert adaptor (42). The reference lacks explicit disclosure of a metal adaptor. Yet, because Applicant did not traverse the well-known assertion that metal adaptors are well-known, the assertion was taken as admitted prior art. See MPEP § 2144.03 C. Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the adaptor disclosed in Milewski of metal in order to take advantage of the strength/wear characteristics thereof. The insert adaptor includes parallel adaptor first and second sides which are connected by an adaptor peripheral surface extending peripherally around the insert adaptor (Figs. 5, 6). The adaptor peripheral surface connects the adaptor first and second sides; an adaptor index axis extending through a center of the first and second sides; an adaptor thickness measured between the first and second sides, in a direction parallel to the adaptor index axis; and a plurality of pockets formed about the adaptor peripheral surface, each pocket having a front end and a rear end, each pocket opening out at the front end to the adaptor peripheral surface, each pocket configured for clamping; and a cutting insert (48) mounted to one pocket of the plurality of pockets (Figs. 5, 6).
The cutting insert include: a rake surface; a base surface located opposite to the rake surface; an insert peripheral surface connecting the rake surface and the base surface, the insert peripheral surface having a front insert peripheral surface; a rear insert peripheral surface located opposite to the front insert peripheral surface; a first side insert peripheral surface connecting the front insert peripheral surface and the rear insert peripheral surface; and a second side insert peripheral surface connecting the front insert peripheral surface and the rear insert peripheral surface; and a cutting edge extending along an intersection of the rake surface and the front insert peripheral surface from the first side insert peripheral surface to the second side insert peripheral surface (Figs. 5, 6).
A tool holder (50) includes: an elongated tool shank (52) having a forward end; and a tool head provided at the forward end of the tool shank (Fig. 6). The tool head includes an adaptor recess (Fig. 6) receiving the insert adaptor therein with a first tool bearing surface (58) and a second tool bearing surface (64) protruding from the tool holder along a periphery of the adaptor recess (Fig. 6). The adaptor peripheral surface includes a plurality of bearing surfaces (56, 66, 70-72) and one of which extends a bearing surface extending between each pair of circumferentially adjacent pockets, and another one of which is a forward most bearing surface (Fig. 5).
In an operational position, the forward most bearing surface extends transverse to an operational direction, operational direction being parallel to the elongation of the tool shank (Fig. 5). The insert adaptor is mounted to the adaptor recess of the tool head with one of the first and second sides of the insert adaptor abutting the adaptor recess and two of the plurality of bearing surfaces each abutting one of the first tool bearing surface and the second tool bearing surface (Figs. 5, 6).
The insert adaptor has a material volume of greater than 50%, or 55%, and less than 80%, or 75%, of an imaginary cylinder encompassing the insert adaptor, the imaginary cylinder is a right-circular cylinder having a cylinder axis coincident with the adaptor index axis (Fig.5). It is worth noting that the Milewski reference discloses that the shape on operative and non-operative sides as shown in Figure 5 may differ. Regardless, the volume that the adaptor takes up in the imaginary cylinder is a result-effective variable because it impacts the strength, weight and/or cost of the adaptor. Thus, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Milewski adaptor with the material volume within the claimed range in order to optimize strength, weight and/or cost for a given machining operation on a specific work material. 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.”).
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Milewski does not explicitly disclose a resilient clamping configuration or the forward most bearing surface extending perpendicular to an operational direction.
Betschart discloses that pockets may be configured for resilient clamping (8) as opposed to other types of insert fixation (Fig. 1; ¶ 0012). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify Milewski to have resilient clamping pockets as taught by Betschart as simple substitution of one known element for another while also reducing the amount of working parts of the adaptor. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Nuding discloses a forward most bearing surface extends perpendicular to an operational direction (Fig. 6). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify Milewski to have a forward most bearing surface extends perpendicular to an operational direction as suggested by Nuding as a simple substitution of one known configuration for another leading to the predictable result of added support under the cutting insert. See KSR, 550 U.S. at 418.
(Claim 37) The forward most bearing surface connects, indirectly, the one pocket and the other of the pair of circumferentially adjacent pockets (Milewski Fig. 5).
(Claim 39) As best understood, each bearing surface is straight (Milewski Fig. 5).
(Claim 44) There are three pockets disclosed in Milewski (Fig. 5).
(Claim 45) The modified adaptor is devoid of elasticity grooves between adjacent pockets (Betschart Fig. 1).
(Claim 46) Milewski discloses parallel adaptor first and second sides being planer and free of projecting bearing surfaces (Figs. 5, 6).
(Claim 48) Milewski does not explicitly disclose exactly three tool holes in the recess.
Nuding discloses exactly three tool holes in a recess for attaching the adaptor to the tool holder (Figs. 1-6). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify Milewski to have a three-hole clamping arrangement as suggested by Nuding as a simple substitution of one known configuration for another leading to the predictable result of fixing the adaptor to the holder. See KSR, 550 U.S. at 418.
(Claim 49) The tool shank has a quadrilateral cross-section (Milewski Fig. 6; Nuding Figs. 1-3, 6).
(Claim 52) The first tool bearing surface and the second tool bearing surface are the only tool bearing surfaces of the tool holder, such that the insert adaptor contacts the tool holder only at one of the first and second sides of the insert adaptor, and at exactly two of the insert adaptor's bearing surfaces (Milewski Figs. 5, 6).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Milewski et al. (US Patent No. 3,561,086) in view of Betschart (DE 29908767 U1) and Nuding (US Patent No. 2,836,240) further in view of Hecht (US Pub. No. 2005/0207854 A1).
The thickness of the adaptor and the diameter of the imaginary cylinder are not explicitly disclosed.
Yet, the diameter of the adaptor is a result-effective variable because it impacts the grooving/parting cut and the strength of the adaptor. Therefore, at a time prior to filing a person having ordinary skill in the art would have found it obvious to provide the adaptor of Milewski within the diameter range for the cylinder as claimed in order to optimize the cutting capability and strength of the adaptor. See In re Aller, 220 F.2d at 456 (“[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.”).
Hecht discloses an adaptor having a thickness within a range of 0.5 mm to 12 mm. At at time prior to filing, a person having ordinary skill in the art would have found it obvious to provide the Milewski with a thickness within the claimed range as suggested by Hecht in order to cut grooves of proximate the width. See MPEP 2144.05 (“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”) (citing In re Werthheim, 541 F.2d 257 (CCPA 1976)).
Claims 42, 43, 50 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Milewski et al. (US Patent No. 3,561,086) in view of Betschart (DE 29908767 U1) and Nuding (US Patent No. 2,836,240) further in view of Hecht (US Pub. No. 2013/0156516 A1).
Milewski does not explicitly disclose the claimed clamping configuration.
Hecht discloses a fastening configuration (Figs. 7A, 7B; 326A-326E) including a plurality of screw holes (326A-326E) opening out to the first and second sides for clamping the insert adaptor to a tool (312). Each and every one of said plurality of screw holes is offset from the adaptor index axis with no screw holes located at the center of the first and second sides (Figs. 7A, 7B; 326A-326E). Each of the screw holes of the plurality of screw holes (326A- 326E) is equally circumferentially about the adapter index axis (Figs. 7A, 7B). Each screw hole of the insert adaptor is also configured to serve as a release aperture (Figs. 7A, 7B). The tool head includes a concave recessed tool head front surface (Fig. 7A). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the adapter disclosed in Milewski with a plurality of screw holes within a recess and a concave front end as taught by Hecht '516 in order to adequately support the adapter relative to a holder and provide “a larger cutting region and hence cutting depth may be achieved, when compared with a single clamping hole” (Hecht ¶ 0137) while also providing clearance for a workpiece.
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Milewski et al. (US Patent No. 3,561,086) in view of Betschart (DE 29908767 U1) and Nuding (US Patent No. 2,836,240) further in view of Sumitomo (WO 2009/022570 A1).
Milewski discloses a thickness of the insert at the cutting edge being greater than a thickness of a remaining portion of the insert, both thicknesses being measured in the direction parallel to the adaptor index axis (Fig. 6). A maximum thickness of the adaptor, measured in the direction parallel to the adaptor index axis is smaller than the thickness of the insert at the cutting edge (Milewski Fig. 6). Milewski does not explicitly disclose a coolant channel as claimed.
Sumitomo discloses a tool holder further having a coolant channel which extends underneath the adaptor recess and opens out at a forward most portion of the adaptor recess, the coolant channel being aligned with an adaptor plane bisecting the insert adaptor first and second sides (Fig. 1). At a time prior to filing, it would have been obvious to one having ordinary skill in the art to provide the modified Milewski device with a centrally located coolant outlet relative to the insert adapter as suggested by Sumitomo in order to provide the cutting edge and therefore the groove being cut with coolant in a central location.
Response to Arguments
Applicant’s arguments with respect to claims 36-52 have been considered but are moot because of the new grounds of rejection.
Conclusion
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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