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 .
Election/Restrictions
Newly submitted claim 12 is directed to an invention that lacks unity with the invention originally claimed for the following reasons:
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I (claims 1-11) and II (claim 12) lack unity of invention because even though the inventions of these groups require the technical feature of:
A deburring blade for deburring edges of holes on workpieces, wherein at least one cutting blade can be held in a tool holder, which can rotate around an axis of rotation in at least one direction of rotation, wherein the cutting blade comprises a cutting portion with a first cutting edge and a second cutting edge
this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Heule ‘334 (see rejection below).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 12 is withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Applicant is advised that should claim 8 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Regarding the above, the only difference between claims 8 and 9 is the recitation of “tool” vs. “blade” in the preamble, which is further addressed below.
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 1-10 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 “which free surface is designed as a cutting part” in lines 6-7. The disclosure explains that the free surface is recessed and clears the cutting edge (e.g. page 7, lines 6-7), so it is unclear how it is "designed as a cutting part", rendering its scope indefinite.
Claim 3 recites “approximately orthogonal”. The term “approximately” renders the scope indefinite since it is unclear how far off of orthogonal the axis can be.
Claim 8 recites “The deburring tool according to claim 1”. However, claim 1 recites a “deburring blade” which can be used with a tool rather than a deburring tool.
Any claims not explicitly discussed above are rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Heule (U.S. Patent 7,273,334, equivalent to EP1579937 cited in the IDS) in view of Heule (DE19712377, cited in IDS, with reference to translation).
Claim 1: Heule (‘334) discloses a deburring blade (1) for deburring edges of holes on workpieces (e.g. title), wherein at least one cutting blade can be held in a tool holder (see claim 1), which can rotate around an axis of rotation (14) in at least one direction of rotation (Id.), wherein the cutting blade comprises at least one cutting portion having at least one first cutting edge (8) and at least one second cutting edge (9), wherein a free surface (4) is associated with the second cutting edge (column 4, lines 3-8), which free surface is designed as a cutting part (at least in that it is associated with a cutting edge and allows it to cut, Id.), and a control surface (5) is associated with the second cutting edge (column 4, lines 28-30), which control surface is designed as a non-cutting part (Id.), wherein the second cutting edge transitions (at 18 - column 4, lines 9-11 and 15-19) from the cutting part (4) to the non-cutting part (5), wherein the second cutting edge (9) directly adjoins at an angle the first cutting edge (8 - see column 3, lines 60-63 and Figs. 3-4) and in that the first cutting edge (8) has an associated free surface (3), which transitions into the surface which is associated with the second cutting edge (column 4, lines 2-5).
Heule (‘334) does not disclose wherein the second cutting edge transitions into a helically twisted surface which forms a continuous transition from the cutting part to the non-cutting part. However, Heule (‘377) teaches a deburring tool wherein a cutting edge (4, 4’), analogous to the second cutting edge, transitions into a helically twisted surface (25, 25’) which forms a continuous transition from a cutting part (8) to a non-cutting part (9 - see [0006]-[0008], [0058]-[0060]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a helically twisted surface which is forms a continuous transition from the cutting part to the non-cutting part as taught by Heule (‘377) since it allows for a defined chamfer diameter can to be attached to a defined bore, regardless of the displacement of the knife into the bore [0005]. Furthermore, such would have involved applying a known technique (a helical transition surface) to a known or similar device (a deburring cutter sharing otherwise similar geometry) to achieve predictable results (MPEP 2143 I. C. and D.).
Claim 2: Referring to ‘334, the cutting blade comprises two cutting portions for forward and backward deburring (column 3, lines 16-20), wherein both cutting portions are arranged mirror-symmetrically to each other with respect to a center line (column 3, lines 29-31).
Claim 3: Referring to ‘377 and as applied to ‘334, starting from the second cutting edge, a torsion axis extends in a direction approximately orthogonal to the second cutting edge, about which axis the twisted surface is rotated helically with a rotation (a twist would naturally have a torsion axis).
Claim 4: Referring to ‘377, the twisted surface forms the second cutting edge (4, 4’) due to its rotation, as well as the non-cutting part (9), which is analogous to the control surface (5) of ‘334.
Claim 5: Referring to ‘377, the continuous transition of the twisted surface has a neutral point (16) which determines the transition from the cutting part to the non-cutting part (see [0007]-[0008], [0060]), wherein the neutral point corresponds to the position of a deburring or chamfering size (e.g. the extent of the cutting part would determine the maximum extent of the deburring/chamfering).
Claim 6: The shape of the twisted surface is not explicitly an angular shape, a cylindrical shape or a conical shape, which is superimposed by a rotation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any of the claimed shapes as the basic shape since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, page 8, lines 28-32, Applicant has not disclosed any criticality for the basic shape.
Claim 7: Referring to ‘334, the non-cutting portion of the twisted (as modified by ‘377) surface is delimited or cleared on a front side lower corner of the cutting blade (noting that “front” and “lower” are relative terms which have little weight here) by an additional surface (17).
Claims 8-9: Referring to ‘334, the cutting edges are straight or arcuate (column 4, lines 9-14).
Claim 10: A deburring tool with a deburring blade according to claim 1 for deburring the edges of holes on workpieces is implied as discussed for claim 1 above.
Claim 11: Referring to ‘334, the cutting blade has two cutting sections, one for forward deburring and the other for reverse deburring, wherein the cutting section for forward deburring is designed differently from the cutting section for reverse deburring (column 3, lines 29-36).
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive.
Regarding the limitation “which free surface is designed as a cutting part”, it is true that the previous citation in the specification was to the prior art description,. However, page 7, lines 6-7 describe the instant invention in a similar manner. Applicant's remarks fail to address the core concern of the rejection, which has been maintained.
Applicant’s remarks on pages 5-6 discuss the disclosure and alleged benefits of the instant invention, but do not address the rejection.
Applicant’s remarks on page 7 with regard to Heule (“EP937”) merely state its deficiencies with respect to claim 1, which is essentially what is established in the rejection.
Applicant then lists the deficiencies of “DE377”, which are essentially those features which are already disclosed in EP937 or else relate to unclaimed features or features not pertinent to claim 1.
Consequently, Applicant’s arguments come across as a form of piecemeal analysis which does not adequately address the actual combination as proposed in the rejection. The arguments do not explain how or why one could not or would not have applied the helical surface of DE377 to the cutter of EP937. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant shows two images on page 9 which allegedly contrast the cutters of DE377 and the instant invention. However, it is unclear where these images come from as they appear in neither DE377 nor the instant application and are not recognizable as applying to either. Furthermore, while the examiner did not spend considerable time playing “spot the difference”, the images appear to be identical to one another rather than showing any differences.
On page 9, Applicant discusses the chip breaker of DE377, which is not claimed or relevant. Furthermore, the claims do not strictly require a straight cutting edge, and Applicant does not adequately explain how or why an “unwanted notch” which be formed if a straight edge were to be used.
New claim 11 is addressed in the rejection above. New claim 12 is non-elected by original presentation.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing 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, Sunil K. 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.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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