DETAILED ACTION1
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2013/0129428 to Henry in view of U.S. 2021/0339319 to Hecht.
Claim 1 recites an indexable cutting tool. Henry relates to such a tool. See Henry [0021]. Claim 1 recites that the tool adopts a structure in which a cutting insert…is removably mounted. The phrase adopts a structure is interpreted to mean the tool is configured to have a cutting insert mounted in the recited manner. Henry teaches the cutting tool (22) has a cutting insert (24) with a cutting edge (148). Claim 1 recites that the cutting insert has two opposing end surfaces and a side surface connecting the two. Figure 11 of Henry shows the insert has a top surfaced (145) and opposing bottom surface, with a connecting front surface (150). Examiner defines the top and bottom as the end surfaces and the front surface as the side surface that connects them. Figure 11 of Henry also shows the cutting edge (148) is formed on a ridge line of the side surface specifically the ridge line that connects the side to the top. The cutting insert is also at a leading edge in the axial direction. Id. Henry further teaches the tool has a coolant flow passage (60, 130, 90) for coolant supply. Claim 1 also recites the coolant flow passage being provided to the tool body. The phrase provided to is interpreted as synonymous with ‘provided in.’ In other words, that the claim is reciting that the passage is in the body, rather than the passage provides coolant to a second, unclaimed passage in the body. Applicant may wish to amend the claim to recited ‘provided in’ as this would be clearer, both here and in later claim features. Henry further teaches an opening part (96, 98) of the coolant flow passage…provided [in] the insert mounting seat. Finally, claim 1 recites a recessed part [fluidly connected] to…the opening part flows…provided [in] the cutting insert. Henry teaches the cutting insert (24) has a coolant channel (154) that fluidly connects to channel (96). See Henry Figs. 5-11 and [0038]-[0040].
Henry does not teach a screw hole penetrating the opposing end surfaces. Rather, Henry teaches clamping its insert in via pressure from an threaded screw (70) elsewhere on the tool. But it would have been obvious to modify Henry to include a screw hole in the insert itself in view of Hecht. Hecht also relates to an indexable cutting tool (20) with a cooling channel (176) and is therefore analogous art. See Hecht Abstract and Fig. 15. Hecht teaches the insert has a screw hole (34) for screwing the insert to the main tool via threaded bore (70). See Hecht [0167] and Fig. 14. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious to modify Henry to use an alternate, known way of attaching an insert via a screw hole in the insert. The screw hole could go through central protrusion (146) without affecting the fluid flow on to the channels on either side. Thus, the modification would have predictably worked.
Claim 2 recites the opening part and the recessed part…form a coolant discharge part that faces toward the cutting edge. Figure 5 of Henry shows the coolant exits from channel (96, 98) towards the cutting edge (C) and figures 6-7 show the groove (154) on the insert is longitudinally aligned with this path towards the cutting edge. Thus, claim 2 is anticipated. Claim 3 recites that the coolant discharge part is formed in a shape with which the coolant is discharged toward part of the cutting edge. This feature is oddly worded and vague, but broadly interpreted appears to recite that the coolant discharge part has a shape that facilitates the coolant moving towards the cutting edge. The V shaped channel of Henry facilitates the coolant moving towards the cutting edge, rather than spilling laterally over the insert edge and thus meets the claims. See Henry Figs. 8 & 11.
Claim 6 (addressed out of order) recites the recessed part is formed as a hemispherical dimple. Henry shows a V shaped dimple, not a hemisphere. But it would have been obvious to modify the groove to a hemisphere shape in view of Hecht. Figure 15 of Hecht shows coolant grooves (176) having a hemisphereical shape in cross-section on the cutting insert (22). Thus, this was a known coolant groove shape in the field of cutting inserts. It would have been obvious to one of ordinary skill in the art to modify Henry to use a hemispherical channel because it is obvious to substitute one known element for another to obtain predictable results. See MPEP 2143(B).
Alternately, it would have been an obvious matter of design choice to modify Henry to have a hemisphere channel since applicant has not disclosed that having a hemisphere solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either designs. Furthermore, absent a teaching as to criticality of a hemisphere, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Claim 4 recites that the opening part and the recessed part are combined to form a substantially circular shape. Figure 5 of Henry shows that the coolant channel exit (98) mates with the cutting insert and forms a collective outflow in which the tool forms half of the channel exit and the groove in the insert forms the other half. Thus, Henry teaches that the opening part and the recessed part are combined to form a…shape. Henry does not teach a circular shape. Rather figures 8-10 show the exit region is a narrow rectangular channel widening later into a V shape. Yet when modifying the groove (154) in view of Hecht, as proposed above, the exit regions of both the insert groove (154) and the coolant channel (98) could both have been modified to be hemispherical forming a circle. This shape would have functioned as intended.
Claim 5 recites the recessed part has a dimple shape. The broadest reasonable interpretation of a dimple includes a groove, such groove (154). This also therefore anticipates claim 8 (addressed out of order). Regarding claim 7, Henry teaches the channel starts narrow and widens as it approaches the cutting edge. See Henry Figs. 8-10. Thus, Henry teaches a side of the recessed part closer to the cutting edge is deeper. Regarding claim 9, the cutting insert of Henry (24) has a plurality of the recessed parts (specifically two) because the insert can be reversed to present a cutting edge on either side, with a coolant channel on either side. See Henry Fig. 8. Figure 8 of Henry further shows the cutting insert has a symmetrical shape, with different cutting edges being able to be used…[when] turned as recited in claim 10.
RESPONSE TO ARGUMENTS
Applicant's arguments filed June 29, 2026 are persuasive. The anticipation rejection of claim 1 has been withdrawn and replaced with a combination rejection using previously cited reference Hecht. The new claim features, and by extension applicant’s arguments, are addressed in the rejection.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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