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. 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. Claim s 1-20 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 “the center” in line 4. There is insufficient antecedent basis for the “center” since no “center” of the shank has been previously introduced in the claim. Further clarification is needed. Claim 1 recites “the outer direction ” in line 4 5 . There is insufficient antecedent basis for the “the outer direction” since no “outer direction” has been previously introduced in the claim. The Examiner notes that in line 9, there is “an outward direction” defined. However, it is not clear if this “outward direction” the same as the “outer direction” of line 45 or not. Further clarification is needed. Claim 1 recites “the c ondition ” in line 4 6 . There is insufficient antecedent basis for the “the condition” since no “the condition” has been previously introduced in the claim. Further clarification is needed. Claim 2 recites the term “can” in line 2. However, the term “can” renders the claim indefinite as it is unclear if that tooth is actually extending in the forward direction and subtends an external attach angle with the imaginary plane or not. Further clarification is needed. Claim 8 recites “the total number of said gashes ” in line 1 and “the total number of said teeth” in line 2 . There is insufficient antecedent basis for each of “the total number of said gashes” and “the total number of said teeth” since no “total number of said gashes” and “total number of said teeth” ha ve been previously introduced in the claim. Further clarification is needed. Claims 13 and 14 each recite “a sharp corner” in line 2. However, it is unclear what the metes and bounds of “sharp” are. What is catalogued as sharp? In relation to what is the corner considered “sharp”. Further clarification is needed. Claim 19 recites “wherein one of each shank flat surface and an axially aligned one of each rake surface of one of the teeth forms a pair and said pair extends at a right angle to each other”. However, the claim in its entirety is confusing. It is unclear what is being axially aligned one of each rake surface. Axially aligned with a respective flat surface? How is it axially aligned? The metes and bounds of from where to where is this “right angle” defined are not clearly set forth. Further clarification is needed. 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- 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2004 013 835 (hereafter—DE’835--) . In regards to claim s 1 , 5, 6, and 7 DE’835 discloses a miniature internal boring tool (11) comprising: a shank portion (14) ; a cutting portion (17) e xtending from the shank portion (14) ; and a central axis (16) extending through the center of the shank portion and cutting portion (see Figure 1) ; the central axis (16) defining: a cutting direction (in the same way as presented by Applicant) ; a forward direction from the shank portion towards the cutting portion (in the same way as presented by Applicant) ; a rearward direction opposite to the forward direction (in the same way as presented by Applicant) ; an outward direction extending perpendicular to, and outward from, the central axis (in the same way as presented by Applicant) ; and a n inward direction opposite to the outward direction (in the same way as presented by Applicant) ; the shank portion ( 14) comprising: a rear end; and a peripheral shank surface extending from the rear end to the cutting portion (17) ; the peripheral shank surface comprising: two to four shank flat surfaces (26) ; exactly three shank flat surfaces ( claim 7 ) ; and two to four shank curved surfaces (27 or 28) ; the shank flat surfaces and the shank curved surfaces alternating about the central axis (see Figures 2 and 3) ; the cutting portion comprising: a neck portion (13) extending from the shank portion (14) to the cutting portion (17) ; a gashed portion (22) extending forward from the neck portion; a front end; and an imaginary plane perpendicular to the central axis and located at the front end; the gashed portion comprising: two to four integrally formed and angularly spaced apart teeth ( teeth that make up cutting edges 18) ; exactly three teeth ( claim 7 ) extending further in the outward direction than the neck portion; and a plurality of gashes (22) ; each tooth comprising: a rake surface (19) ; a relief surface (20) ; a cutting edge (18) extending along an intersection of the rake surface and relief surface; and the relief surface comprising: a forwardmost relief sub-surface (in the same way as presented by Applicant) ; and a rearwardmost relief sub-surface (in the same way as presented by Applicant) ; the cutting edge comprising: a forwardmost cutting sub-edge (in the same way as presented by Applicant) extending along the intersection of the rake surface and forwardmost relief sub-surface (in the same way as presented by Applicant) ; a rearwardmost cutting sub-edge extending (in the same way as presented by Applicant) along the intersection of the rake surface and rearwardmost relief sub-surface (in the same way as presented by Applicant) ; and a nose cutting sub-edge (in the same way as presented by Applicant) connecting the forwardmost cutting sub-edge and the rearwardmost cutting sub-edge; a transition corner (in the same way as presented by Applicant) is formed between the rake surface of at least one of the teeth and the relief surface of the adjacent tooth to said at least one of the teeth, said adjacent tooth being located further in the cutting direction from said rake surface; wherein: outermost points of the cutting edges (in the same way as presented by Applicant) in the outer direction define an outer cutting diameter (OD) (in the same way as presented by Applicant , see annotated Figure 1 below ) . However, DE’835 fails to disclose that the outer cutting diameter OD fulfills the condition: 2mm < OD < 9mm (claim 1); 2mm < OD < 6 mm (claim 5 and claim 7) ; and 2 .5 mm < OD < 4 mm (claim 6). Since DE’835 does, however, disclose that the tool has outer cutting diameter ; the outer cutting diameter of the tool constitute a defined value of the cutting tool. Therefore, the outer cutting diameter is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the values of the outer cutting diameter, will depend on the size and type of workpiece being machined. A smaller outer cutting diameter results in more compact cutting tool which minimizes manufacturing costs . Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined outer cutting diameter , were disclosed in Figure 1 of the prior art by DE’835 , it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide DE’835 ’s outer cutting diameter be within a desired range such as 2mm < OD < 9mm ( claim 1 ); 2mm < OD < 6mm ( claim 5 and claim 7 ); and 2.5mm < OD < 4mm ( claim 6 ) . In re Aller, 105 USPQ 233. In regards to claim s 2 , 3 and 4 , DE’835 as modified discloses t he miniature internal boring tool according to claim s 1 , 2 and 3 respectively , DE’835 as modified also discloses that in a view perpendicular to the rake surface of one of the teeth (see Figure 1, in the same way as presented by Applicant) , the forwardmost cutting sub-edge of that tooth can extends in the forward direction (from an outermost radial direction to an innermost radial direction towards the central axis, as in Figure 1 above) and subtends an external attack angle AE with the imaginary plane PI (annotated in Figure 1 above) . However, DE’835 fails to disclose that the external attack angle fulfills the condition: 4° < AE < 16° ( claim 2 ); 6° < AE < 12° ( claim 3 ); and 6° < AE < 10° ( claim 4 ). Since DE’835 does, however, disclose that the tool has an external attack angle ; the external attack angle of the forwardmost cutting sub-edge constitute a defined value of the cutting t ooth . Therefore, the external attack angle is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the values of the external attack angle , will depend on the type of material of workpiece being machined and desired clearance between the workpiece and the tooth when performing a n end face boring operation and thus prevent unnecessary rubbing between the tool and the workpiece . Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined external attack angle , were disclosed in Figure 1 of the prior art by DE’835 , it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide DE’835’s external attack angle be within a desired range such as 4° < AE < 16° ( claim 2 ); 6° < AE < 12° ( claim 3 ); and 6° < AE < 10° ( claim 4 ). In re Aller, 105 USPQ 233. In regards to claim 8 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 , DE’835 as modified also discloses that t he total number of said gashes corresponds exactly to the total number of said teeth (see Figures 2 and 3, and note that in Figure 2, the total number of gashes is four which corresponds exactly to the total number of teeth which is also four; and in Figure 3, the total number of gashes is three which corresponds exactly to the total number of teeth which is also three) . In regards to claim s 9, 10 and 11 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 and 9 respectively , DE’835 as modified also discloses that one of the plurality of gashes has a gash length LG parallel to central axis (see annotated Figure 1 above) , and the neck has a neck length LN parallel to central axis (see annotated Figure 1 above) , the gash length LG fulfilling the condition LG < 0.35 LN. However, DE’835 fails to disclose that the gash length fulfills the condition: LG < 0.35 LN ( claim 9 ); LG < 0.25 LN ( claim 10 ); and LG < 0.22 LN ( claim 11 ). Since DE’835 does, however, disclose that the tool has a gash length and a neck length ; the gash length and the neck length constitute a defined value of the cutting t oo l . Therefore, the gash length is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the values of the gash length, will depend on the type of material of workpiece being machined a nd desired chip removal and discharge wh en performing a boring operation . Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined gash length and a neck length , were disclosed in Figure 1 of the prior art by DE’835 , it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide DE’835’s gash length be within a desired range such as : LG < 0.35 LN ( claim 9 ); LG < 0.25 LN ( claim 10 ); and LG < 0.22 LN ( claim 11 ) . In re Aller, 105 USPQ 233. In regards to claim 1 2 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 , DE’835 as modified discloses that th e rake surface of one of the teeth comprises: a front rake sub-surface (in the same way as presented by Applicant) extending between the forwardmost cutting sub-edge (in the same way as presented by Applicant) , the rearwardmost cutting sub-edge and the nose cutting sub-edge (in the same way as presented by Applicant) ; a concave rake sub-surface (in the same way as presented by Applicant) , extending from and further in the inward direction from the front rake sub-surface; and a rear rake sub-surface (in the same way as presented by Applicant) extending from and further in the inward direction from the concave rake sub-surface; wherein, in a view along the central axis in the rearward direction, the rear rake sub-surface extends in a basic straight path (in the same way as presented by Applicant) to the transition corner of the tooth adjacent thereto in the cutting direction. In regards to claim 1 3 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 2 , DE’835 as modified discloses that in a view along the central axis in the rearward direction, the transition corner is a sharp corner (see Figures 1-3 and note that the transition corner is sharp) . In regards to claim 1 4 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 , DE’835 as modified discloses that in a view along the central axis in the rearward direction, the transition corner is a sharp corner (see Figures 1-3 and note that the transition corner is sharp). In regards to claim s 1 5 , 16 and 17 , DE’835 as modified discloses the miniature internal boring tool according to claim s 1 15 and 16 respectively , DE’835 as modified discloses exactly three shank flat surfaces (26 as in Figure 3) and exactly three teeth (Figure 3) , wherein in a view along the central axis in the rearward direction, at the front end coinciding with the imaginary plane, a void area Av (refer to void or clearance area behind adjacent cutting teeth, in a rotation direction) defined between two adjacent cutting edges and bounded by a circular segment SC (as presented by Applicant) defined by outer cutting diameter OD . Howe ver, DE’835 fails to disclose that the void area fulfills the condition: 0.10 OD < Av < 0.25 O D (claim 15 ); 0.12OD < Av < 0.22 OD (claim 16 ); and 0.14OD < Av < 0.20 O D (claim 17 ). Since DE’835 does, however, disclose that the tool has void area ; the void area of the tool constitute a defined value of the cutting tool. Therefore, the void area is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the values of the void area , will depend on the type of material of workpiece being machined and desired clearance between the workpiece and the tooth when performing a side boring operation and thus prevent unnecessary rubbing between the tool and the workpiece . Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined outer cutting diameter , were disclosed in Figure 1 of the prior art by DE’835 , it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide DE’835’s void area within a desired range such as 0.10 OD < Av < 0.25 OD ( claim 15 ); 0.12OD < Av < 0.22 OD ( claim 16 ); and 0.14OD < Av < 0.20 OD ( claim 17 ). In re Aller, 105 USPQ 233. In regards to claim 1 8 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 , DE’835 as modified discloses that the shank flat surfaces (26) extend until the rear end (see Figures 2 and 3) . In regards to claim 20 , DE’835 as modified discloses the miniature internal boring tool according to claim 1 , DE’835 as modified discloses that the tool is 120° rotationally symmetric (in the same way as presented by Applicant, see Figure 3 and note that each of the teeth are at 120 ° rotationally symmetric arrangement in relation to each other) . Examiner's Notes It has been noted that n o art has been presented for claims 19 , however the examiner reserves the right to present art when the 35 USC 112 2 nd issues are resolved. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT NICOLE N RAMOS whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-5134 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 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, FILLIN "SPE Name?" \* MERGEFORMAT Sunil K Singh can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (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