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 objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 16, pointing to a “ball” in at least Fig 10. Examiner notes the Specification Page 16 line 4 recites a “locking ball 24”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-18 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 limitation "the chip-removing working region." There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "one or more secondary cutting tools." This limitation lacks a proper article, and it is unclear whether it refers to the “further shaft-side secondary cutting tools” recited in claim 1.
Claim 2 recites the limitation “the circumference.” While it is widely accepted that cutting tools will have a circumference, it is also as widely accepted that cutting tools do not always have one and only one circumference. It is unclear which circumference the limitation in claim 2 refers to.
The term “cassette-like” in claim 3 is a relative term which renders the claim indefinite. The term “like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 4 and 5 recite the limitation "the at least one shaft-side, unilaterally open receiving opening." There is insufficient antecedent basis for this limitation in the claim since while no receiving opening had previously been recited. Moreover, limitations should preferably follow the item they are further narrowing. For example, please first recite a receiving opening, and then later narrow the receiving opening to be located on a shaft and to be “unilaterally open.”
The term “unilaterally open” in claims 4 and 5 is a relative term which renders the claim indefinite. The term “unilaterally” in the context of being “open” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 6 recites the limitation "the at least one shaft-side, receiving opening." There is insufficient antecedent basis for this limitation in the claim since while no receiving opening had previously been recited. Moreover, limitations should preferably follow the item they are further narrowing. For example, please first recite a receiving opening, and then later narrow the receiving opening to be located on a shaft.
Claim 6 further recites “the working region” and “the clamping region.” There is insufficient antecedent basis for these limitations in the claim.
Claims 7 and 8 recite the limitation “the circumference.” While it is widely accepted that cutting tools will have a circumference, it is also as widely accepted that cutting tools do not always have one and only one circumference. It is unclear which circumference the limitation in claims 7 and 8 refers to.
Claim 10 recites “secondary cutting tools” This limitation lacks a proper article, and it is unclear whether it refers to the “further shaft-side secondary cutting tools” recited in claim 1.
Claim 11 recites the limitation "the tip." There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the at least one cassette-shaped receiving housing." There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the at least one associated shaft-side receiving opening." There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the receiving housings." There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the shaft-side receiving openings." There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the receiving housing." There is insufficient antecedent basis for this limitation in the claim. Claim 14 later recites “receiving housings” without an article. It is unclear whether this refers to one or more of the “receiving housing” recited above.
Claim 14 recites the limitation "the shaft-side receiving opening." There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation “its end.” It is unclear what “it” refers to here.
Claim 15 recites “the bolt side” and “the side wall.” There is insufficient antecedent basis for these limitations in the claim.
Claim 16 recites the limitation "the end face." There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the pocket-shaped receiving opening." There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the positive connection” and “the cassette-like receiving housing, and “the pocket-shaped receiving opening” There is insufficient antecedent basis for this limitation in the claim.
The term “cassette-like” in claim 18 is a relative term which renders the claim indefinite. The term “like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-7, 9, 10, 12-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over TAKIGUCHI (JP 2005-14152 A) in view of ZINNER (DE 43 34 852 A1).
As to claim 1, Takiguchi teaches a cutting tool (drill body 1, see Fig 1)
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which is driven with its shaft in a rotating or pushing and pulling manner about its longitudinal axis (this is an intended use of the drill of Takiguchi. Takiguchi is capable of being driven in this way by virtue of being a drill bit), and wherein [a] further shaft-side secondary cutting [tool is] fastened to the shaft (tip 50 having blade 51 is fastened to the drill via the cartridge 40), wherein the secondary cutting [tool is] fastened in an exchangeable manner to the shaft (because the tip 50 is screwed to the cartridge, and cartridge 40 is screwed to the drill, the tip 50 is exchangeable.) and/or in the chip-removing working region of the cutting tool (as shown in Fig 1, the cartridge 40 is located in the chip-removing working region of the drill.)(Note that this limitation is an “and/or” limitation. The broadest reasonable interpretation of this limitation uses the “or” such that only one of the options must be satisfied in order to meet the entire claim.).
Takiguchi does not teach a plurality of further shaft-side secondary cutting tools. Rather, Takiguchi teaches a single tip 50 located on a single cartridge 40.
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However, in the field of cutting tools, it was well known to provide for a plurality of shaft-side secondary cutting tools. See Zinner Fig 1 which teaches two cutting inserts 8, 8a on a single cutter.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Takiguchi to provide for a plurality of tips 50 in a plurality of cartridges in the matter of the cutting inserts in the manner of Zinner. Such a person would have been motivated to do so in order to reduce the material needed to be removed by any given cutter. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. Also, there is legal precedent for the obviousness of the duplication of parts, see MPEP § 2144.04 VI B.
As to claim 2, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein one or more secondary cutting tools are arranged on the circumference of the shaft of the cutting tool (as shown in both Takiguchi and Zinner, the cutting tools are located on the outer circumference of the tool rather than within a chip removing flute).
As to claim 3, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein each secondary cutting tool (Takiguchi’s tip 50) is received in a cassette-like receiving housing (Takiguchi’s cartridge 40) which is detachably arranged in a pocket-shaped recessed receiving opening (Takiguchi’s recess 30) in the shaft of the cutting tool (as shown in Takiguchi Fig 1 and 2).
As to claim 4, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the at least one shaft-side, unilaterally open receiving opening in the shaft of the cutting tool (Takiguchi’s recess 30 is a receiving opening) is aligned in a radial direction relative to the longitudinal axis of the shaft (Zinner teaches the cutting tools are arranged in a radial direction in Figs 4-6, 8, 10, and 12).
As to claim 5, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the at least one shaft-side, unilaterally open receiving opening in the shaft of the cutting tool (Takiguchi’s recess 30 is a receiving opening) is aligned at an angle to the radial direction to the longitudinal axis of the shaft (Zinner teaches the cutting tools are arranged at an angle to the radial direction in Figs 1, 3, 7, 9, and 11. The limitation “at an angle” is interpreted here as an angle larger than 0.).
As to claim 6, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the at least one shaft-side receiving opening is arranged in the working region or below the clamping region in the shaft of the cutting tool (as shown in Takiguchi Fig 1).
As to claim 7, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, where multiple secondary cutting tools are arranged evenly distributed (as illustrated in Zinner Fig 1). Takiguchi in view of Zinner does not teach the cutting tools are on the circumference of the shaft of the cutting tool on a same circumferential line.
Rather, the teachings of multiple cutters 8, 8a are illustrated only in cross-section by Zinner. There is evidence that Zinner’s cutters are on the same circumferential line as they appear to be screwed into the end face 5 of the milling head 1.
Still, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have made the cutters of Zinner to be on a same circumference line in order to ensure the cutters are cutting the same portion of a workpiece.
As to claim 9, Takiguchi in view of Zinner 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 (Takiguchi teaches a drill.).
As to claim 10, Takiguchi in view of Zinner 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 (Takiguchi’s tip 50 has a chamfering blade 51 which is capable of being used to at least deburr.).
As to claim 12, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the at least one cassette-shaped receiving housing (Takiguchi’s cartridge 40) for holding the at least one secondary cutting tool (Takiguchi’s tip 50) is interchangeably and positively fastened (the cartridge is fastened by screws through mounting hole 46) in the at least one associated shaft-side receiving opening of the cutting tool (as illustrated in Takiguchi Fig 1).
As to claim 13, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the fastening of the receiving housings in the shaft-side receiving openings is designed as a screw fastening (the cartridge 40 of Takiguchi is screw- fastened to the drill via bolt 47).
As to claim 14, Takiguchi in view of Zinner 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 shaft-side receiving opening.
However, Zinner teaches a fastening recess in the shaft (bore 40) useful for the bolt 42 which fastens the cartridge 8. See Fig 8. Note that Zinner has at least two embodiments in Fig 8 and 10 in which the bore 40 enters the cartridge from either the left or the right side.
Even though Zinner teaches the embodiments are separate, 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 bore 40 to be on both the left and right side of the cartridge. Such a person would have been motivated to do so in order to increase number of ways to attach the cartridge 8 to the mill.
See also MPEP § 2143 which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. In this case, the prior art elements are two embodiments of Zinner. The method of forming each bore is well understood. The predictable result is described above as increasing the options a user would have to attach the cartridge.
As to claim 15, Takiguchi in view of Zinner teaches the cutting tool according to claim 13, wherein the screw fastening is formed by at least one grub screw which is screwed in a threaded bore in the shaft directed obliquely to the radial direction (see Zinner’s bolt 42 which is a grub screw threaded obliquely to the radial direction in Figs 7 and 8) and engages with its end on the bolt side into a fastening recess on the side wall of the receiving housing directed obliquely outwards and open on one side (surface 33 of cartridge as illustrated in Zinner Fig 7).
As to claim 18, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein the positive connection between the cassette-like receiving housing and the pocket-shaped receiving opening is designed as a snap-in or clamping or wedge or screw connection (both Takiguchi and Zinner teach a screw connection).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi in view of Zinner as applied to claim 1 above, and further in view of MORIYA (JP 2003-145331).
As to claim 8, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, wherein multiple secondary cutting tools are arranged uniformly distributed on the circumference of the shaft of the cutting tool (as shown in Zinner Fig 1). Takiguchi in view of Zinner does not teach the cutting tools are on circumferential lines axially offset relative to one another.
Rather, the teachings of multiple cutters 8, 8a are illustrated only in cross-section by Zinner.
However, it was well known in the field of secondary cutters to axially offset the cutter relative to one another. See Moriya which teaches chamfering bits 5, 40 which are axially offset.
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It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Takiguchi to provide for the chamfering bits 5, 40 of Moriya. Such a person would have been motivated to do so in order to achieve the benefits of Moriya such as the simultaneous chamfering of the top and bottom surfaces of workpiece W. See Moriya Fig 5.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi in view of Zinner as applied to claim 1 above, and further in view of Heule (US 5,288,184 A).
As to claim 11, Takiguchi in view of Zinner teaches the cutting tool according to claim 1, but does not teach chip-removing tools are missing at the tip of the tool.
However, it is well known for deburring tools to be placed on bits which do not have chip-removing tools. See Heule which teaches an embodiment at Fig 2 in which a bit having no chip removing tool at the tip has deburring cutters. Heule also teaches in Fig 3 an embodiment where the bit has a drill cutting tool 20 at the tip.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Takiguchi to provide for chip removing tools missing at the tip of the tool. Such a person would have recognized that chip removing tools at a tip are optional, as disclosed by the dual embodiments of Heule.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi in view of Zinner as applied to claim 13 above, and further in view of GRUNSKY (DE 3602427 A1).
As to claim 16, Takiguchi in view of Zinner teaches the cutting tool according to claim 13, but does not teach the screw fastening is formed by two threaded screws each bearing against the end face of the receiving housing.
Rather, Takiguchi teaches a single threaded screw, and Zinner teaches either a single threaded screw, or threaded screws from different angles. However, it was known at the time the invention was effectively filed to provide for two threaded screws connecting a cartridge to a drill. See Grunsky which teaches a blade 8 which is held in pocket by two screws 16, each bearing against the end face of the blade 8.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Takiguchi to provide for the screw fastening formed by two threaded screws each bearing against the end face of the receiving housing in the manner of Grunsky. Such a person would have been motivated to do so in order to have a stronger connection of two fasteners rather than one.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi in view of Zinner as applied to claim 13 above, and further in view of Gehri (US 4,580,929).
As to claim 17, Takiguchi in view of Zinner teaches the cutting tool according to claim 13, but does not teach one side of the receiving housing is fixed in the pocket-shaped receiving opening by means of a positively fitting suspension connection.
Rather, Takiguchi’s housing does not have a positively fitting suspension connection. However, in the field of insert-holding cartridges, it was known at the time the invention was effectively filed to provide for positively fitting suspension connections. See Gehri which teaches a cartridge 1 having a plane 6 similar to surface 31 of Zinner. Gehri further teaches walls 5’ which flare out to create a positive fitting suspension connection.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have modified Takiguchi in order to provide for the positively fitting suspension connection described by Gehri. Such a person would have been motivated to do so in order to provide for a stronger connection of the cartridge to the drill.
Conclusion
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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 9 January 2026