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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Drawings
The drawings are no longer objected to in view of the amendments filed 29 April 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, 2, 4-11, and 14-15 are no longer rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph in view of the amendments filed 29 April 2026.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Grunsky (DE 3602427 A) in view of Gehri (EP 0007512 A1).
As to claim 1, Grunsky teaches a cutting tool ([0001]: “The invention relates to a tool for machining...”) which is driven with its shaft in a rotating or pushing and pulling manner about its longitudinal axis ([0001, cont] “...rotatable about its longitudinal axis”. This limitation is an intended use of the tool of which the tool is capable), and wherein further shaft-side secondary cutting tools are fastened to the shaft (the primary cutting tools are the drill blade 2, the secondary cutting tools are the reaming blades 8), wherein the secondary cutting tools are fastened in an exchangeable manner (the reaming blades 8 are held by clamping screws 10. The blades are thus “interchangeable” as discussed at [0002]) to the shaft and/or in the a chip-removing working region of the cutting tool (the blades 8 are on the shaft as shown in Fig 1). Grunsky does not teach each secondary cutting tool is housed in a cassette-shaped receiving housing.
Rather, the reaming blades 8 are fitted directly into pockets/grooves 6 without a cassette-shaped housing. However, in the field of cutting tools, it was known at the time the invention was effectively filed to provide for blades to be variously fit into pockets or fit into cartridges/cassettes which are then fit into pockets. See Gehri which teaches a drill comprising cutting inserts. Gehri teaches cutting inserts 5 which are illustrated at Fig 2 to be screwed directly against body 1, or alternatively at Fig 7 to be screwed into support 9, which is itself positioned directly against body 1. Gehri teaches this is a second embodiment (see [0016]) in which the cutting insert 5 and support 9 for an interchangeable cartridge.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for the secondary cutting tool (reaming blade 8) of Grunsky to be housed in a cassette-shaped receiving housing as taught by Gehri. It appears that housing a blade directly against the tool, or within a housing which is housed against the tool are known substitutes for one another, and choosing one or the other would amount to the simple substitution of one known element for another to obtain predictable results. See MPEP § 2143 B.
Grunsky in view of Gehri accordingly teach: [each cassette-shaped housing] which is removably received in a pocket-shaped recessed receiving opening in the shaft of the cutting tool (in Gehri, the support 9+cutting insert 5 of the second embodiment has the same shape as the cutting insert 5 of the first embodiment. Thus, as the reamer blade of Grunsky is received in a pocket-shaped recessed receiving opening in the shaft of the tool, so too would the obviated cassette), the receiving opening having a bottom surface (see Grunsky Fig 6: groove base 14), a pair of opposed side surfaces (illustrated in Grunsky Figs 1 and 6 but unlabeled), and a pair of opposed end surfaces (the curved portions of groove 6 as shown in Grunsky Fig 1), the receiving housing removably received in the receiving opening by movement perpendicular to the longitudinal axis (the reamer blade 8 is inserted circumferentially, which is perpendicular to the longitudinal axis of the drill bit), the receiving housing detachably secured in the receiving opening by a screw threadably received in a threaded bore in the shaft (screws 10 are threaded into the shaft as shown in Grunsky Fig 6), an end of the screw engaging a fastening recess on a side wall of the receiving housing which is inclined outwards and open on one side (chamfer 15, see Fig 6), whereby the receiving housing is urged against the bottom surface and one of the side surfaces of the receiving opening (because of the angle of the screw head impinging on blade 8, the blade 8 is urged against the bottom wall and a side wall of the pocket 6).
As to claim 2, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein the one or more secondary cutting tools are arranged on a circumference of the shaft of the cutting tool (there are at least two reamer blades 8 in Grunsky, and the grooves 6 are “diametrically opposite” as described in [0016].).
As to claim 4, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein at least one receiving opening in the shaft of the cutting tool is aligned in a radial direction relative to the longitudinal axis of the shaft (Grunsky’s grooves 6 are open in the radial (circumferential) direction relative to the longitudinal axis of the shaft.).
As to claim 5, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein at least one receiving opening in the shaft of the cutting tool is aligned at an angle to the radial direction to the longitudinal axis of the shaft (in reference to similar component 9, Grunsky teaches the guide rail 9 is inclined at an angle b of approximately 5 degree to help prevent the rail 9 from falling out even if the screw should loosen. An artisan would have found it obvious to have applied the same principal to the reamer 8 for the same motivation.).
As to claim 6, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein at least one receiving opening is arranged in a working region or below a clamping region in the shaft of the cutting tool (as illustrated in Grunsky Fig 1).
As to claim 7, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein multiple secondary cutting tools are arranged evenly distributed on a circumference of the shaft of the cutting tool on a same circumferential line (Grunsky teaches the grooves 6 are “diametrically opposite” [0016]. See also Grunsky Fig 4.).
As to claim 8, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein multiple secondary cutting tools are arranged uniformly distributed on a circumference of the shaft of the cutting tool on circumferential lines axially offset relative to one another (as shown in Grunsky Fig 1, the reaming blades 8 and guide rails 9 are uniformly distributed and axially offset).
As to claim 9, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein the cutting tool is a drill or a milling cutter or a deburring tool or a turning chisel or a broaching tool (Grunsky’s tool is a drill).
As to claim 10, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein secondary cutting tools are designed as a deburring tool or as a countersinking tool or as a honing tool or as a grooving tool (the blade 8 are described as “reaming blades” and which are capable of honing or deburring.).
As to claim 11, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein chip-removing tools are missing at a tip of the tool (this limitation is met when the knives 2 of Grunsky are removed via screws 4).
As to claim 14, Grunsky in view of Gehri teaches the cutting tool according to claim 1, but does not teach two mutually opposite fastening recesses in the shaft of the cutting tool are provided on mutually opposite side surfaces of the receiving housing, in order to permit left-hand or right-hand fastening of receiving housings in the receiving opening.
Rather, Grunsky teaches two screws 10 are on the same side of the blade 8 or rail 9. However, adding a fastening recess for screws to enter from the rights side, rather than from the left side amounts to the mere duplication of parts. See 2144.04 VI B. Here, even though Grunsky teaches the screws enter from only the left side, providing a set of screw holes on the right side is not considered a patentable jump since the screw holes would have been recognized by an artisan as providing the same function whether on the left or right (or both) sides of the blade. No new and unexpected result is produced by adding a screw hole useful for clamping a blade to a drill bit in the manner of, but in a different position than, the screw holes of Grunsky.
As to claim 15, Grunsky in view of Gehri teaches the cutting tool according to claim 1, wherein the screw is a grub screw and wherein the threaded bore is directed obliquely to the radial direction and engages the fastening recess on the side wall of the receiving housing directed obliquely outwards and open on one side (as illustrated in Grunsky Fig 4).
Response to Arguments
Applicant’s arguments with respect to claim 1, 2, 4-11, and 14-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 7 August 2026
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