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 Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23-24, 26-31, 38-39, 41 is/are rejected under 35 U.S.C. 102a1 and a2 as being anticipated by de Souza Filho (PGPub 2012/0099940).
Re Claim 23, de Souza Filho discloses a damping apparatus 30 for a machine tool, comprising:an annular body 32 with an inwardly facing surface, the inwardly facing surface [arranged for coupling to an outer surface of a machine tool stem], wherein the annular body comprises an internal cavity 42, the cavity comprising a damping mass 40 (Fig. 1-2). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 24, de Souza Filho discloses the damping mass is coupled to and spaced from an inwardly facing surface of the internal cavity by one or more elastomeric or rubber couplings 48, 50 (Fig. 1-2; para. 20).
Re Claim 26, de Souza Filho discloses the damping mass is in the form of a generally cylindrical body with two opposing end faces 44, 46 and the one or more elastomeric or rubber couplings 48, 50 are arranged on the end faces of the damping mass (Fig. 1-2; para. 20).
Re Claim 27, de Souza Filho discloses the one or more elastomeric or rubber couplings are in the form of O-rings (Fig. 1-2; para. 20).
Re Claim 28, de Souza Filho discloses the one or more elastomeric or rubber couplings are in the form of a plurality of discrete elastomeric elements (Fig. 1-2; para. 20).
Re Claim 29, de Souza Filho discloses the one or more elastomeric or rubber couplings are coupled to the inwardly facing surface of the annular body (Fig. 1-2; para. 20).
Re Claim 30, de Souza Filho discloses the one or more elastomeric or rubber couplings are coupled to the outer surfaces of the damping mass (Fig. 1-2; para. 20).
Re Claim 31, de Souza Filho discloses the one or more elastomeric or rubber couplings are continuous and portions of the inwardly facing surface of the internal cavity and/or an outer surface of the damping mass are provided with recesses 52, 54 in alignment with a line of contact of the one or more elastomeric or rubber couplings and the damping mass (Fig. 1-2; para. 20).
Re Claim 38, de Souza Filho discloses a damper for a tool comprising a cylindrical body 32 and a central circular aperture; the cylindrical body comprising radially inwardly extending fixtures [arranged to couple the damper to a portion of the tool], wherein the damper comprises a circumferentially extending cavity 42 within the damper, the cavity comprising a movable damping mass 40 (Fig. 1-2; para. 20). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 39, de Souza Filho discloses a cutting tool 10/12 comprising: a damping apparatus for a machine tool, including an annular body 32 with an inwardly facing surface, the inwardly facing surface [arranged for coupling to an outer surface of a machine tool stem], wherein the annular body comprises an internal cavity 42, the cavity comprising a damping mass 40 (Fig. 1-2; para. 20). The recitation in brackets [ ] is considered functional language. The reference discloses all the structural components of the tool, which read on those of the instant invention. Therefore, the device is capable of performing the same desired functions as the instant invention as claimed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over de Souza Filho in view of Sasaki (PGPub 2012/0003055).
Re Claim 25, de Souza Filho does not disclose the one or more elastomeric or rubber couplings are arranged around the circumference of the damping mass. However, Sasaki teaches elastomeric couplings 130 are arranged around the circumference of a damping mass 110 (Fig. 4). It would be obvious to one of ordinary skill in the art to utilize elastomeric couplings arranged around the circumference of the damping mass, as taught by Sasaki, for the purpose of providing support in a desired area and also since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over de Souza Filho in view of Richter (US 3,643,546).
Re Claim 32, de Souza Filho does not disclose the damping mass is in the form of a single metallic or plastic element. However, Richter teaches damping mass is in the form of a single metallic or plastic element (Fig. 1-3; col. 2, lines 10-30). It would be obvious to one of ordinary skill in the art to utilize a single metallic or plastic element, as taught by Richter, for the purpose of providing desired strength properties and ensure the component can absorb vibrations effectively and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 33-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over de Souza Filho in view of Bellinghausen (US 5,095,786).
Re Claim 33-34, de Souza Filho discloses the inwardly facing surface of the internal cavity is provided with a plurality of circumferentially spaced recesses in alignment with the one or more elastomeric or rubber couplings, the recesses extend between 5 and 15 degrees around the circumference of the damping apparatus and have a depth of between 0.5mm and 3 mm. However, Bellinghausen teaches inwardly facing surface of an internal cavity is provided with a plurality of circumferentially spaced recesses in alignment with the one or more elastomeric or rubber couplings 576, the recesses extend between 5 and 15 degrees around the circumference of the damping apparatus and have a depth (Fig. 8). It would be obvious to one of ordinary skill in the art to utilize a plurality of circumferentially spaced recesses, as taught by Bellinghausen, for the purpose of providing sufficient support for couplings so that they stay in desired location. Further, the size of such couplings is generally in the claimed size range and it would be obvious to make the recess for the coupling in the range of 0.5-3 mm in order to accommodate the couplings as this is standard practice in the art and also since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 35-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over de Souza Filho in view of Nedzlek (WO 2016000870 A1, from IDS).
Re Claim 35-37, de Souza Filho does not disclose the damping mass is formed of a plurality of discrete and independent elements contained within the internal cavity, the plurality of discrete and independent elements are a plurality of metallic elements, the metallic elements are selected from powder, shot peen or metallic spheres. However, Nedzlek teaches a damping mass is formed of a plurality of discrete and independent elements contained within the internal cavity, the plurality of discrete and independent elements are a plurality of metallic elements, the metallic elements are selected from powder, shot peen or metallic spheres 6 (Fig. 1; pg. 7, lines 22-37; pg. 10). It would be obvious to one of ordinary skill in the art to utilize such metallic elements, as taught by Nedzlek, for the purpose of providing effective damping using known means and since the limited movements of balls 6, shaft 4, disks 5 and O-rings 8 thereby allowed will cause a substantial dissipation of energy and momentum due to any vibrational movement incurred upon operation of a corresponding tool, thereby improving the damping effect (pg. 10).
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over de Souza Filho in view of Matano (PGPub 2014/0105701).
Re Claim 40, de Souza Filho does not disclose the damping apparatus is fixed to the stem of the cutting tool. However, Matano teaches damping apparatus 1A is fixed to the stem of the cutting tool 4/5 (Fig. 3). It would be obvious to one of ordinary skill in the art to utilize such metallic elements, as taught by Nedzlek, for the purpose of providing damping directly to the cutting tool to improve the cutting process and also since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 6-10 that claim 23 and similarly claim 39 is being amended to recite that the annular body is coupled 'to an outer surface of a machine tool stem'. It is respectfully submitted that this is not taught in any of the cited documents. -In response, it is noted that this limitation is merely a functional recitation. The “an outer surface of a machine tool stem' is not part of the claimed invention. The claim merely requires that the damping apparatus is capable to couple to an outer surface of a machine tool stem, which is very broad since coupling could be any type of attachment and any type of machine tool stem having an outer surface. Inherently, the damping apparatus is capable to couple to an outer surface of a machine tool stem as there are endless possible ways it could be coupled such as via welding, interconnection or even tying by a string. Applicants arguments are not persuasive. Examiner suggests adding limitations which define structural requirements of the damping apparatus itself which read over the prior art of record since functional limitations as to what the apparatus can couple to do not add sufficient distinctness.
Applicant’s arguments regarding 112 rejections are persuasive in view of amendments submitted and said rejections are withdrawn.
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 RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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