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 .
Specification
The disclosure is no longer objected to in view of the amendments filed 11 March 2026.
Claim Objections
Claim 10 is no longer objected to because claim 10 has been cancelled.
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.
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.
Claim 10 is no longer rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
Applicant’s arguments are convincing only insofar as claim 10 is cancelled and the limitation “made of a material that has a variable strength along said length of said cutting edge” doesn’t appear in the claims.
Applicant’s arguments would otherwise not be convincing as there is no teaching in the originally filed Specification how the material might have a variable strength. It is generally understood that the strength of a material is constant based on its material properties.
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 1-10 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, “and wherein a portion of said cutting edge at the depth of cut location is positioned opposite to said nose and extends in part away from said nose”. It is unclear how a portion of said cutting edge at the depth of cut location can extend “in part” away from said nose. Examiner’s understanding of the term “extend away” is that it does not connote a magnitude. It appears that a portion of a cutting edge would either extend away from said nose, extend toward said nose, or not extend at all. The addition of the term “in part” implies that the cutting edge extends some undefined distance. As the distance is undefined, the claim is indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagafuchi et al. (US 20240100610 A1).
As to claim 1, Nagafuchi teaches a cutting insert (cutting insert 1) comprising a cutting edge (cutting edge 5) having a nose (tip 2a) and a depth of cut location (as illustrated in Fig 2, the edge 5 extends along the entire right side of the cutting insert. The depth of cut location is chosen to be opposite the tip 2a.), wherein said cutting edge has a first end (the portion of edge 5 far from the nose is the first end. In the orientation of Fig 2, this is near the bottom) and a second end that is located opposite to said first end (the portion of the edge 5 which is near the nose is the first end. In the orientation of Fig 2, this is near the top.), and wherein said nose is located at said second end of said cutting edge (the second end of the edge 5 is defined this way), said nose having a height and a first K-factor1 (the height of the nose is illustrated in Examiner’s annotated Fig 4, below. As there are both horizontal and vertical portions of the roundover from the top surface to the cutting edge, there is inherently a K-factor), and wherein a portion of said cutting edge at the depth of cut location is positioned opposite to said nose (as shown in Fig 4 below, the depth of cut location on the left side, while the nose location is on the right side. The left side is opposite the right side) and extends in part away from said nose in the direction toward said first end of said cutting insert (the edge runs the entire right side of the cutting insert. The nose is defined above as being at the second end. The depth of cut location is defined above as being at a first end. The ends are opposite to each other and extend toward or away from one another.), said portion of said cutting edge at the depth of cut location having a height (the height at depth of cut location is noted in Examiner’s annotated Fig 4, below) and a second K-factor (since the depth of cut location has both a horizontal portion of the roundover and a vertical portion of the roundover, it inherently has a K-factor), the height of said portion of said cutting edge at the depth of cut location being less than the height of the nose (as shown in the annotated Fig 4 below, the height at depth of cut location is relatively smaller than the height at the nose.), wherein the first K-factor is a ratio of a rake surface rounding of the nose to clearance surface rounding of the nose (as discussed above, this is the definition of the K-factor at the nose. Since the nose has both a rake surface rounding (horizontal component) and a clearance surface rounding (vertical component), the nose inherently has a K-factor.); and wherein the second K-factor is a ratio of the rake surface rounding at the depth of cut location to clearance surface rounding at the depth of cut location (as discussed above, this is the definition of the K-factor at the depth of cut location. Since the depth of cut location has both a rake surface rounding (horizontal component) and a clearance surface rounding (vertical component), the nose inherently has a K-factor.), the second K-factor being higher than the first K-factor (to determine the K-factors of the depth of cut location and the nose, one must know the horizontal (X) and vertical (Y) components of the roundovers at the depth of cut location and the nose. As shown in Examiner’s annotated Fig 4 below, the heights of the roundovers are known in relative size. The height at the depth of cut location is smaller than the height at the nose. Thus we define Ylarge at the nose (first K-factor), and Ysmall at the depth of cut location (second K-factor). As for the horizontal component, please refer to Nagafuchi Fig 2 which shows the cutting insert in plan view. The horizontal component of the roundover is shown as between item 21 and item 17, and is essentially constant around the entire perimeter of the cutting insert 1. Thus we define the horizontal component as X for both the nose (first K-factor) and depth of cut location (second K-factor). We now compare the first K-factor (X/Ylarge) to the second K-factor (X/Ysmall) and find that X/Ysmall > X/Ylarge. The second K-factor must necessarily be higher because the denominator is smaller considering the numerators are equal.).
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As to claim 2, Nagafuchi teaches the cutting insert of Claim 1 wherein the cutting edge has a drop in height at a location between the nose and the portion of the cutting edge at the depth of cut location (as illustrated in the annotated Figure 4 above, the height at the nose is larger than the height at the depth of cut location. The location between the nose and depth of cut location has a height between the two.).
As to claim 3, Nagafuchi teaches the cutting insert of Claim 2 wherein said drop height is stepped, linear, or on a radius of said cutting edge (Nagafuchi Fig 4 illustrates the drop is linear).
As to claim 4, Nagafuchi teaches the cutting insert of Claim 1, wherein a height of the cutting edge decreases along a length of said cutting edge that extends from the nose to the depth of cut location (as illustrated in Fig 4 above, the height at the nose is the largest and the height decreases from the nose to the depth of cut location).
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As to claim 5, Nagafuchi teaches a cutting insert (cutting insert 1) comprising a base and at least one cutting edge positioned in juxtaposition to said base and wherein said cutting edge has a first end and a second end that is located opposite to said first end and wherein said cutting edge has a length extending from said first end to said second end (see Examiner’s annotated Fig 2, above) and wherein said cutting edge has a first height measured from a plane of said base and wherein said first height of said cutting edge varies over said length of said cutting edge, and wherein said cutting edge has a nose located at said second end of said cutting insert and a depth of cut location located opposite to said nose and a portion of said cutting edge at the depth of cut location extending in part away from said nose in the direction toward said first end of said cutting insert, and wherein said cutting edge of the cutting insert at said depth of cut location has a second height and wherein said cutting edge of said cutting insert at said nose has a third height, and wherein said second height of said cutting edge at said depth of cut location is smaller in comparison to said third height of said cutting edge located at said nose of said cutting insert (See Examiner’s annotated Figure 4 above).
As to claim 6, Nagafuchi teaches the cutting insert of Claim 5 including2 wherein there is a drop in said first height between said second height and said third height (as illustrated in annotated Fig 4 above, there is a drop in height between the second height and the third height).
As to claim 7, Nagafuchi teaches the cutting insert of Claim 6 wherein said drop in said first height between said second height and said third height is stepped, linear, or on a radius of said cutting edge (Nagafuchi illustrates the drop is linear).
As to claim 8, Nagafuchi teaches the cutting insert of Claim 6 having a higher K-factor at said cutting edge of said depth of cut location compared to the K-factor at said cutting edge of said nose of said cutting insert (K-factor is defined at Applicant’s Fig 8A as the Rake edge rounding divided by Flank edge rounding. As shown in Nagafuchi Fig 2, the edge 5 has a rake edge rounding which is consistent across the entire length of the edge. However, as shown in Nagafuchi Fig 4 (annotated above), the flank edge rounding varies from very small at the “second height” to medium at a “first height” to large at a “third height.” Thus, the K-factor at “second height” is largest, and the K-factor at the nose, or “third height” is smallest.).
As to claim 11, Nagafuchi teaches the cutting insert of claim 5, wherein the nose has a first K-factor and the depth of cut location has a second K-factor that is higher than the first K-factor (to determine the K-factors of the depth of cut location and the nose, one must know the horizontal (X) and vertical (Y) components of the roundovers at the depth of cut location and the nose. As shown in Examiner’s annotated Fig 4 below, the heights of the roundovers are known in relative size. The height at the depth of cut location is smaller than the height at the nose. Thus we define Ylarge at the nose (first K-factor), and Ysmall at the depth of cut location (second K-factor). As for the horizontal component, please refer to Nagafuchi Fig 2 which shows the cutting insert in plan view. The horizontal component of the roundover is shown as between item 21 and item 17, and is essentially constant around the entire perimeter of the cutting insert 1. Thus we define the horizontal component as X for both the nose (first K-factor) and depth of cut location (second K-factor). We now compare the first K-factor (X/Ylarge) to the second K-factor (X/Ysmall) and find that X/Ysmall > X/Ylarge. The second K-factor must necessarily be higher because the denominator is smaller considering the numerators are equal.).
As to claim 12, Nagafuchi teaches the cutting insert of claim 5, wherein: the first K-factor is a ratio of a rake surface rounding of the nose to clearance surface rounding of the nose (as discussed above, this is the definition of the K-factor at the depth of cut location. Since the depth of cut location has both a rake surface rounding (horizontal component) and a clearance surface rounding (vertical component), the nose inherently has a K-factor.); and the second K-factor is a ratio of rake surface rounding at the depth of cut location to clearance surface rounding at the depth of cut location (as discussed above, this is the definition of the K-factor at the depth of cut location. Since the depth of cut location has both a rake surface rounding (horizontal component) and a clearance surface rounding (vertical component), the nose inherently has a K-factor.), the second K-factor being higher than the first K-factor (to determine the K-factors of the depth of cut location and the nose, one must know the horizontal (X) and vertical (Y) components of the roundovers at the depth of cut location and the nose. As shown in Examiner’s annotated Fig 4 below, the heights of the roundovers are known in relative size. The height at the depth of cut location is smaller than the height at the nose. Thus we define Ylarge at the nose (first K-factor), and Ysmall at the depth of cut location (second K-factor). As for the horizontal component, please refer to Nagafuchi Fig 2 which shows the cutting insert in plan view. The horizontal component of the roundover is shown as between item 21 and item 17, and is essentially constant around the entire perimeter of the cutting insert 1. Thus we define the horizontal component as X for both the nose (first K-factor) and depth of cut location (second K-factor). We now compare the first K-factor (X/Ylarge) to the second K-factor (X/Ysmall) and find that X/Ysmall > X/Ylarge. The second K-factor must necessarily be higher because the denominator is smaller considering the numerators are equal.).
Response to Arguments
Applicant's arguments filed 11 March 2026 have been fully considered but they are not persuasive.
On pages 7-8, Applicant argues the limitation at issue in claim 10 is enabled. These arguments are moot as claim 10 is cancelled and the same limitation is not found in the claims.
On Pages 9-12, Applicant argues that Nagafuchi teaches the cutting tips 2a, 2b are at a height that is less than the height of the cutting edge 5.
Examiner believes there is a misunderstanding of the definition of “height.” The specification refers to the heights 20, 21, 22 as shown in Applicant’s Figure below. If one were to refer to Examiner’s annotated Fig 4 above, they would understand that this is the same interpretation of “height” used in the rejections.
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Applicant’s representative has a different interpretation of height, as shown in the annotated drawings filed 11 March 2026.
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Here, Applicant’s representative incorrectly presumes “height” refers to the height of the entire cutting insert.
The arguments filed 11 March 2026 are based on this faulty premise and are thus not persuasive.
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 25 March 2026
1 K-factor is defined in the Specification. K=[Rake Edge Rounding] / [Flank Edge Rounding]. Otherwise stated, K= [horizontal portion of roundover] / [vertical portion of roundover].
2 “Including” is interpreted here as “comprising”
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