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
Applicant's election with traverse of Species B in the reply filed on 04/29/2026 is acknowledged. The traversal is on the grounds that, generally, the entire specification is relevant to both Species A and B and therefore all of the pending Claims 1-14 read on Species B (Figure 4) and should be examined.
These remarks are convincing and Claims 1-14 will be examined.
Claim Interpretation
Several of the claims recite the phrase “preferably”. This limitation renders the claim(s) unclear as to whether the limitation following “preferably” is required or not (See 112(b) rejections below). For the purposes of advancing prosecution, the term will be interpreted as an alternative.
Claim 5 recites “closed on at least one sided”. The term “sided” is interpreted as a typo and should be “side”.
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 1-14 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 frontal side”. There is insufficient antecedent basis for this limitation.
Claim 5 recites “the at least one additional recess”. There is insufficient antecedent basis for this limitation.
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “at least 170mm to at most 300mm”, and the claim also recites “at least 180mm to at most 280mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “at least 0.8 to at most 3.5”, and the claim also recites “at least 2 to at most 3” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
“A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation ”first material” and “second material”, and the claim also recites “light metal” and “steel” respectively which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 14, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 9-10, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rosenberg (US20140321933A1).
Claim 1
Rosenberg teaches a tool (Figure 1) for machining an outer circumferential surface of a workpiece (¶0044), the tool comprising: an interface (driver plate, 18) which is adapted for fastening the tool to a counter interface (drill chuck, 38), and with a base body (12) which is cylindrical (Figure 1) at least in sections, wherein the base body has a circumferential wall encompassing a mounting space (Figure 2 shows the interior is surrounded by a circumferential wall.) and is configured to be open at the frontal side (Figure 4, Item 46) in such a way that the workpiece can be at least partially accommodated in the mounting space (Figure 9a-c), wherein at least one cutting edge (74) engaging in the mounting space (Figure 4) is arranged on the base body (pocket, 72) for the machining of the outer circumferential surface of the workpiece (¶0020), and wherein the circumferential wall has at least one chip passing recess (One of Items 58, 60, 62, See ¶0020) which is arranged relative to the at least one cutting edge (¶0050) in such a way that chips removed by the at least one cutting edge during the machining of the workpiece can exit through the at least one chip passing recess from the mounting space into an outer surrounding area of the base body. (¶0020)
Claim 2
Rosenberg teaches the tool according to claim 1, wherein the tool comprises a plurality of cutting edges as the at least one cutting edge (¶0050 teaches each pocket (72) has a cutting element (74).) wherein the circumferential wall comprises a plurality of chip passing recesses (58, 60, 62), and wherein at least one cutting edge of the plurality of cutting edges is assigned to each chip passing recess of the plurality of chip passing recesses (¶0050 teaches that each opening (58, 60, 62) has a pocket (72) and each pocket has a cutting element (74).) in such a way that chips removed by the respectively assigned cutting edge can exit through the assigned chip passing recess from the mounting space into the outer surrounding area. (¶0020)
Claim 3
Rosenberg teaches the tool according to claim 1, wherein the at least one chip passing recess is configured to be closed along a closed recess circumferential line. (Applicant discusses this feature in Published ¶0065 as that the recesses are framed by material of the wall of the tool. Rosenberg, Figure 1 shows the recesses (58, 60, 62) are framed by material of the wall (12) of the tool.)
Claim 4
Rosenberg teaches the tool according to claim 1, wherein the circumferential wall comprises at least one additional recess. (One of Items 58, 60, or 62 not selected for Claim 1)
Claim 5
Rosenberg teaches the tool according to claim 1, wherein the at least one additional recess (One of Items 58, 60, or 62 not selected for Claim 1): extends through the circumferential wall (Figure 1), or is configured to be closed on at least one sided. (Figure 1)
Claim 7
Rosenberg teaches the tool according to claim 1, wherein the mounting space has a length from an opening sided end face to an opposite base face which corresponds to the flight circle multiplied by a factor of at least 0.8 to at most 3.5, preferably from at least 2 to at most 3, preferably from at least 1.5 to at most 2.5. (The flight circle is interpreted as the diameter of the circle representing the path of the cutting edges. Therefore, even without specific dimensions, the disclosure in Figure 4 clearly shows the flight circle is less than the length (or a ratio of greater than 1), and by a factor of less than 3.5.)
Claim 9
Rosenberg teaches the tool according to claim 1, wherein the base body and the interface are configured in multipart form and are connected to one another. (Figure 7 shows the driver plate (18) has holes that connect to the housing via the shoulder bolts (28, 30, 32) of the housing.)
Claim 10
Rosenberg teaches the tool according to claim 1, wherein the base body comprises a first material, wherein the interface comprises a second material, wherein preferably the first material having a lower density than the second material, wherein in particular the first material is a light metal, in particular aluminium or an aluminium alloy (¶0029 teaches the housing is made from aluminum.), and the second material is steel. (¶0026 teaches the driver plate is made from steel.)
Claim 12
Rosenberg teaches the tool according to claim 1, wherein the at least one cutting edge is configured integrally with the circumferential wall, or material-fit connected to the circumferential wall, or form-fit and/or friction-fit mounted to the circumferential wall, or arranged adjustable on the circumferential wall. (¶0050 teaches the cutting edges (74) are secured with bolts (78) and therefore adjustable as they can be removed.)
Claim 14
Rosenberg teaches the tool according to claim 1, wherein the circumferential wall including the at least one chip passing recess comprises a plurality of recesses (Items 58, 60, or 62), wherein each recess of the plurality of recesses is selected from a group consisting of a chip passing recess and an additional recess (Items 58, 60, or 62 are all recesses that can be considered chip passing (See ¶0020) or additional, as addition does not describe the recess in any way to require a specific structure.), and wherein preferably the plurality of recesses is arranged such that material of the circumferential wall is not recessed in regions of load paths occurring during the machining of a workpiece. (The “preferably” part of the claim is an alternative not required in the prior art to meet the claimed limitations.)
Claims 1-5, 8 and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall (US20060018728A1).
Claim 1
Hall teaches a tool (Figure 1) for machining an outer circumferential surface of a workpiece (¶0014), the tool comprising: an interface (bore, 22) which is adapted for fastening the tool to a counter interface (tool (¶0035)), and with a base body (14, 16) which is cylindrical (Figure 2 / ¶0035) at least in sections, wherein the base body has a circumferential wall encompassing a mounting space (Figure 2) and is configured to be open at the frontal side (Figure 2) in such a way that the workpiece can be at least partially accommodated in the mounting space (Figure 1 / ¶0033), wherein at least one cutting edge (45) engaging in the mounting space (Figure 1) is arranged on the base body (Figure 1) for the machining of the outer circumferential surface of the workpiece (¶0036), and wherein the circumferential wall has at least one chip passing recess (recesses in between the milling elements, 40) which is arranged relative to the at least one cutting edge (Figure 1) in such a way that chips removed by the at least one cutting edge during the machining of the workpiece can exit through the at least one chip passing recess from the mounting space into an outer surrounding area of the base body. (¶0044 teaches the milling head sheds chips or shavings away from the blade cutting surfaces.)
Claim 2
Hall teaches the tool according to claim 1, wherein the tool comprises a plurality of cutting edges (45) as the at least one cutting edge, wherein the circumferential wall comprises a plurality of chip passing recesses (recesses in between the milling elements, 40), and wherein at least one cutting edge of the plurality of cutting edges is assigned to each chip passing recess of the plurality of chip passing recesses (Figure 1 shows a recess next to each cutting edge (45).) in such a way that chips removed by the respectively assigned cutting edge can exit through the assigned chip passing recess from the mounting space into the outer surrounding area. (¶0044 teaches the milling head sheds chips or shavings away from the blade cutting surfaces.
Claim 3
Hall teaches the tool according to claim 1, wherein the at least one chip passing recess is configured to be closed along a closed recess circumferential line. (Applicant discusses this feature in Published ¶0065 as that the recesses are framed by material of the wall of the tool. Hall, Figure 1 shows the recesses (recesses in between the milling elements, 40) are framed by material of the wall of the tool.)
Claim 4
Hall teaches the tool according to claim 1, wherein the circumferential wall comprises at least one additional recess. (Figure 1 shows a plurality of recesses formed in the material of the wall.)
Claim 5
Hall teaches the tool according to claim 1, wherein the at least one additional recess: extends through the circumferential wall, or is configured to be closed on at least one sided. (Figure 1 shows a plurality of recesses formed in the material of the wall.)
Claim 8
Hall teaches the tool according to claim 1, wherein the tool comprises as the at least one cutting edge at least one first cutting edge (40) and at least one second cutting edge (50), wherein the at least one first cutting edge is orientated relative to the at least one second cutting edge is arranged offset in the axial direction of the base body (Figure 1 shows the first cutting edge (40) is located at a different axial location on the tool than the second (50).), and wherein, in addition, the at least one first cutting edge is assigned a first flight circle which is different from a second flight circle assigned to the at least one second cutting edge. (Figure 2 shows the second cutting edge (50) has a smaller flight circle since it is located closer to the central longitudinal axis than the first cutting edge (40).)
Claim 12
Hall teaches the tool according to claim 1, wherein the at least one cutting edge is configured integrally with the circumferential wall, or material-fit connected to the circumferential wall, or form-fit and/or friction-fit mounted to the circumferential wall, or arranged adjustable on the circumferential wall. (Figure 1 shows the cutting elements (40) are connected via fasteners, which allows for adjustment/removal.)
Claim 13
Hall teaches the tool according to claim 1, wherein at least one guiding bar (The term guiding bar does not require any specific structure or purpose. Item 30 is a “guiding bar” within the mounting space.) engaging in the mounting space (Figure 2) is arranged on the base body. (Figure 2)
Claim 14
Hall teaches the tool according to claim 1, wherein the circumferential wall including the at least one chip passing recess comprises a plurality of recesses, wherein each recess of the plurality of recesses is selected from a group consisting of a chip passing recess and an additional recess (Figure 1 shows a plurality of recesses (between milling elements (40)) that can be interpreted as either “chip passing” or additional.), and wherein preferably the plurality of recesses is arranged such that material of the circumferential wall is not recessed in regions of load paths occurring during the machining of a workpiece. (The “preferably” part of the claim is an alternative not required in the prior art to meet the claimed limitations.)
Claims 1-5, 8-9 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Archer (US20230211387A1).
Claim 1
Archer teaches a tool (Figure 3) for machining an outer circumferential surface of a workpiece (¶0050), the tool comprising: an interface (drive spindle, 3) which is adapted for fastening the tool to a counter interface (¶0035), and with a base body (2) which is cylindrical (Figure 1) at least in sections, wherein the base body has a circumferential wall encompassing a mounting space (Figure 1 shows the interior is surrounded by a circumferential wall.) and is configured to be open at the frontal side (Figures 1 or 3) in such a way that the workpiece can be at least partially accommodated in the mounting space (Figure 6), wherein at least one cutting edge (13) engaging in the mounting space (Figure 3) is arranged on the base body (Figure 3) for the machining of the outer circumferential surface of the workpiece (¶0050), and wherein the circumferential wall has at least one chip passing recess (33) which is arranged relative to the at least one cutting edge (¶0046) in such a way that chips removed by the at least one cutting edge during the machining of the workpiece can exit through the at least one chip passing recess from the mounting space into an outer surrounding area of the base body. (¶0046)
Claim 2
Archer teaches the tool according to claim 1, wherein the tool comprises a plurality of cutting edges (9, 13) as the at least one cutting edge, wherein the circumferential wall comprises a plurality of chip passing recesses (33), and wherein at least one cutting edge of the plurality of cutting edges is assigned to each chip passing recess of the plurality of chip passing recesses in such a way that chips removed by the respectively assigned cutting edge can exit through the assigned chip passing recess from the mounting space into the outer surrounding area. (¶0046 teaches each scraper (9, 13) has a waste material channel (33) that performs the functional limitations of the claim.)
Claim 3
Archer teaches the tool according to claim 1, wherein the at least one chip passing recess is configured to be closed along a closed recess circumferential line. (Applicant discusses this feature in Published ¶0065 as that the recesses are framed by material of the wall of the tool. Archer, Figure 1 shows the recesses (33) are framed by material of the wall of the tool.)
Claim 4
Archer teaches the tool according to claim 1, wherein the circumferential wall comprises at least one additional recess. (The recess in the rejection of Claim 1 is the channel (33) for the scraper (13). ¶0046 of Archer discloses another channel (33) for the other scraper (9).)
Claim 5
Archer teaches the tool according to claim 1, wherein the at least one additional recess: extends through the circumferential wall, or is configured to be closed on at least one sided. (Figure 1 shows the recess (33) extends through the wall and is closed on one side.)
Claim 8
Archer teaches the tool according to claim 1, wherein the tool comprises as the at least one cutting edge at least one first cutting edge (13) and at least one second cutting edge (9), wherein the at least one first cutting edge (13) is orientated relative to the at least one second cutting edge (9) is arranged offset in the axial direction of the base body (Figure 3), and wherein, in addition, the at least one first cutting edge is assigned a first flight circle which is different from a second flight circle assigned to the at least one second cutting edge. (Figure 1 shows the first (13) and second (9) cutting edges are positioned at different distances from the central longitudinal axis of the tool body (2), which meets the claimed limitations regarding “flight circle(s)”.)
Claim 9
Archer teaches the tool according to claim 1, wherein the base body (2) and the interface (3) are configured in multipart form and are connected to one another. (¶0034 teaches the drive spindle is secured via screws (12).)
Claim 11
Archer teaches the tool according to claim 1, wherein a cutting ring (first scraper tool assembly (See ¶0042)) comprising at least one end cutting edge (9) is arranged on an opening sided end face of the base body (Figure 3), which cutting ring is preferably configured in multipart form with the base body and is connected to the base body (Figure 3), wherein preferably the cutting ring comprises a third material which has a higher density than the first material of the base body (Since the first material has not been introduced yet, it is interpreted as an intended use of the third material that it has a higher density than another material.), and wherein further preferably the third material is steel. (¶0033 teaches the housing, including the first scraper tool assembly, is made from steel.)
Claim 12
Archer teaches the tool according to claim 1, wherein the at least one cutting edge is configured integrally with the circumferential wall, or material-fit connected to the circumferential wall, or form-fit and/or friction-fit mounted to the circumferential wall, or arranged adjustable on the circumferential wall. (Figure 3 shows levers (10, 14) that urge the scraper tools radially inward. This means the scraper tools are “arranged adjustable” on the wall. See also ¶0042.)
Claim 13
Archer teaches the tool according to claim 1, wherein at least one guiding bar (18) engaging in the mounting space (Figure 3) is arranged on the base body (2).
Claim 14
Archer teaches the tool according to claim 1, wherein the circumferential wall including the at least one chip passing recess comprises a plurality of recesses (33), wherein each recess of the plurality of recesses is selected from a group consisting of a chip passing recess and an additional recess (The waste material channels (33) are chip passing recesses.), and wherein preferably the plurality of recesses is arranged such that material of the circumferential wall is not recessed in regions of load paths occurring during the machining of a workpiece. (The “preferably” part of the claim is an alternative not required in the prior art to meet the claimed limitations.)
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg (US20140321933A1), as applied in claim 1, in view of Mainolfi (US20120255406A1).
Claim 6
Rosenberg teaches the tool according to claim 1, wherein the at least one cutting edge is arranged on a flight circle. (Figure 2)
Rosenberg does not explicitly disclose the flight circle has a diameter of at least 170 mm to at most 300 mm, preferably from at least 180 mm to at most 280 mm, preferably from at least 190 mm to at most 270 mm, preferably from at least 200 mm to at most 260 mm.
It is noted that the flight circle is interpreted as corresponding to a circle formed based on a diameter equaling the distance between cutting elements.
However, Mainolfi teaches the flight circle has a diameter of at least 170 mm (6.69 inches) to at most 300 mm (11.81 inches) (¶0025 teaches the shaving tool can have an inner diameter of 8.5 inches, which corresponds to a flight circle measurement.), preferably from at least 180 mm to at most 280 mm, preferably from at least 190 mm to at most 270 mm, preferably from at least 200 mm to at most 260 mm.
One of ordinary skill would have been motivated to apply the known larger diameter sized tool of Mainolfi to the unknown dimensions of the device of Rosenberg in order to allow the use of the tool on larger pipes. (See Maninolfi ¶0025-0026)
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed, to apply the known larger diameter sized tool of Mainolfi to the unknown dimensions of the device of Rosenberg because it has been held to be prima facie obvious to apply a known technique to a known method/apparatus to yield predictable results. See MPEP 2143(I)(D).
The predictable result is the tool of Rosenberg will be made larger or smaller depending on the size of pipe to be worked upon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the PTO-892 Form.
Document
Date
Description of Relevant Subject Matter
US20070098509A1
2005-11-03
Figure 1 teaches a milling head (20) having windows (60) and cutting elements. The head is made from steel (¶0047)
US20120255406A1
2012-04-05
¶0025 teaches the tool can be made from steel. ¶0025 teaches the tool inner diameter is selected based on the size pipe and gives examples of 4, 6 and 8 inch pipes.
US20160263658A1
2015-03-09
Figure 1 shows an interface (24) and base body (28) that are two separate components.
US20150298214A1
2014-04-22
Figure 1 shows a cutting tool that has an interface (11); a base body (12); cutting elements (52); additional cutting element (102); recess (86).
US8770900B1
2013-05-07
Figures 1-3 show a cutting tool (2) having an interface (16); cutting blades (24); a cutting ring (40) having cutting teeth (44); and that is much longer than the flight circle.
US8708620B2
2009-12-01
Figures 1-4 show a base body (T1) having an interface (10); cutting blades and associated windows (Figure 4).
US20050175421A1
2005-04-13
Figure 11 teaches a cutting tool (420) having an interface (424); cutting blades (432); windows (next to blades); second blades (448) that are axially offset from the first cutting blades.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael W Hotchkiss whose telephone number is (571)272-3854. The examiner can normally be reached Monday-Friday from 0800-1600.
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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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