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 elected Group 1 claims 1 - 19. Claim 1 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/22/2026. The restriction is made FINAL.
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2022/0274183 Shigetaka Hashimoto (‘Hashimoto hereafter), App 17/633175 Filed 02/04/2022,
U.S. 2021/0140647 Schlotterer-Fratoanni et al. (‘Schlotterer-Fratoanni hereafter), App 16/616662 Filed 05/18/2018;
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1 - 20 are currently being examined.
Claims 20 has been withdrawn.
No Claims have been canceled.
Claims 15 & 16 are objected to for allowable subject matter.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: #316 found in Specification Para 0043, is not shown in the drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: #310 shown in Figure 3 is not in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2022/0274183 Shigetaka Hashimoto (‘Hashimoto hereafter).
Regarding Claim[s] 1, ‘Hashimoto discloses all the claim limitations including: An apparatus for a cutting tool (‘Hashimoto, Fig 2, #20 (cutting tool)) with an integrated thermoelectric power generation (TEPG) module (‘Hashimoto, Para 0080, “In an embodiment, the sensor 41 may have a thermocouple. In this case, the sensor 41 can measure a physical quantity, for example, related to gas temperature. In an embodiment, for example, the sensor 41 may have a piezoelectric sensor including piezoelectric elements. In this case, the sensor 41 can measure physical quantities related to, for example, acceleration, vibration, strain, and internal stress of the base body 50. For example, the sensor 41 of the present disclosure may be simply a wiring circuit. In the case of the sensor 41 simply being a wiring circuit, the sensor 41 can measure, for example, the wear of the cutting tool 20. More specifically, the sensor 41 may measure the resistance of the wiring circuit (sensor 41) that varies in response to the degree of wear, thereby providing the data related to the condition of the cutting tool 20. Various types of sensors can be adopted as the sensor 41, and accordingly the sensor 41 is not limited to the above-described thermocouple, piezoelectric sensor, or wiring circuit. The sensor 41 may be any type of sensor that can measure the physical quantity described above. An example of the sensor 41 other than the above may be a MEMS sensor. The sensor 41 may be formed only of a transducer that converts a physical quantity into an electric signal (a sensor in its narrow meaning) or may be formed of a transducer for converting a physical quantity into an electric signal and also of an amplifier and other components.” Thermocouple, piezoelectric sensor or piezoelectric elements may be applied to the cutting tool, thermocouples use Seebeck effect to create electricity, Para 0077, “The data containing the physical quantities measured by the sensor 41 may be sent to the wireless communication unit 42 via the wiring 44 and transmitted to the data collection device 11 from the wireless communication unit 42.” Power generated is sufficient to power wireless communication),
the apparatus comprising:
a body (‘Hashimoto, Fig 2, #50 (base body/ body)) and a blade portion (‘Hashimoto, Fig 2, #31 (cutting portion)) of the cutting tool (‘Hashimoto, Fig 2, #20 (cutting tool)); and
the TEPG module disposed in a cavity (‘Hashimoto, Fig 2, #60 (recess)) of the body of the cutting tool (‘Hashimoto, Fig 2 shows #60 (recess) is a cavity within #50 (body) of #20 (cutting tool)).
Regarding Claim[s] 2, ‘Hashimoto discloses all the claim limitations including: further comprising:
a first end of the TEPG module (‘Hashimoto, Fig 2, #41 (sensor)) positioned in the body nearest to the blade portion (‘Hashimoto, Fig 2, #31 (cutting portion)) of the cutting tool (‘Hashimoto, Fig 2 shows #41 (sensor) is positioned nearest #31 (cutting portion) of #20 (cutting tool)); and
a second end of the TEPG module (‘Hashimoto, Fig 2, #42 (wireless communication unit)) positioned in the body opposite the first end of the TEPG module (‘Hashimoto, Fig 2, near #40b (second end)),
wherein the first end presents a heat source side of the TEPG module and the second end represents a cooled side of the TEPG module (‘Hashimoto, Fig 2, #41 (sensor) is placed closest to the cutting portion of the tool, nearest to the heat source caused by the cutting tool and friction. #42 (wireless communication unit) is positioned nearest to #40b further away from the heat source and through the conduction to the body of the cutting tool will be on the cool side).
Regarding Claim[s] 3, ‘Hashimoto discloses all the claim limitations including: wherein the TEPG module is secured within the cavity of the body of the cutting tool utilizing one or more fasteners (‘Hashimoto, Para 0068, “The sensor 41 and the wireless communication unit 42 may be fixed to the recess 60 using an appropriate method. For example, the fixation may be carried out by way of bonding or using screws. In the case of bonding, the sensor 41 and the wireless communication unit 42 may be bonded, for example, to the third bottom 63b. The third bottom 63b may have a sensor bonding surface 64b and a wireless communication unit bonding surface 65b. The sensor 41 may be bonded to the sensor bonding surface 64b. The wireless communication unit 42 may be bonded to the wireless communication unit bonding surface 65b. The wireless communication unit bonding surface 65b may be positioned closer than the sensor bonding surface 64b to the second side surface 52. Put another way, the sensor bonding surface 64b may be positioned closer than the wireless communication unit bonding surface 65b to the first side surface 51. The sizes of the sensor bonding surface 64b and the wireless communication unit bonding surface 65b (i.e., lengths in the front-rear and up-down directions) may be determined appropriately in accordance with the sizes of the sensor 41 and the wireless communication unit 42.”).
Regarding Claim[s] 4 & 5, ‘Hashimoto discloses all the claim limitations including: wherein the TEPG module is secured within the cavity of the body of the cutting tool utilizing one or more clips, the TEPG module is secured within the cavity of the body of the cutting tool utilizing one or more clamps. (‘Hashimoto, Para 0069, teaches a cover placed over the module, the cover is a clip or a clamp).
Regarding Claim[s] 6, ‘Hashimoto discloses all the claim limitations including: wherein the TEPG module is secured within the cavity of the body of the cutting tool utilizing one or more adhesives (‘Hashimoto, Para 0088, As illustrated by way of example in FIG. 4, the sensor 41 and the wireless communication unit 42 may be bonded to the base body 50 using a bonding member Bo2 (hereinafter referred to as a second bonding member Bo2). The second bonding member Bo2 may be an adhesive made of an organic material or an inorganic material. The second bonding member Bo2 may be, or need not be, electrically conductive. The material of the second bonding member Bo2 may be the same as that of the first bonding member Bo1 or may be different.“).
Regarding Claim[s] 9, ‘Hashimoto discloses all the claim limitations including: a channel on a top surface of the body of the cutting tool, wherein the channel is positioned above the second end of the TEPG module (‘Hashimoto, Fig 3 (below)).
Regarding Claim[s] 11, ‘Hashimoto discloses all the claim limitations including: cutting tool is secured in a tool holder, wherein the cutting tool is electrically coupled to the tool holder (‘Hashimoto, Fig 2, #20 (cutting tool) is secured to #40 (cutting tool holder), #41 (sensor) thermocouples use Seebeck effect to create electricity the cutting tool is a part of the system that generates electricity. The cutting tool, and the tool holder are electrically coupled).
Regarding Claim[s] 12, ‘Hashimoto discloses all the claim limitations including: first electrical contact lead on the cutting tool at least partially aligns with a first electrical contact pad on the tool holder (‘Hashimoto, #44 (wiring) is an electrical contact lead on the cutting tool system and aligns with #41 (sensor) which is on the tool holder),
wherein the first electrical contact lead contacts the first electrical contact pad (‘Hashimoto, #44 (wiring) contacts #41 (sensor)).
Regarding Claim[s] 17, ‘Hashimoto discloses all the claim limitations including: a cutting blade secured to the blade portion utilizing at least one fastener (‘Hashimoto, Fig 2 (below) fastener shown in the clamp-fastener system, Para 0036, “The tip 30 may have a through hole 32 that pierces the tip 30 in the up-down direction (or need not have it). A portion of the clamp 21 may be inserted in the through hole 32. The tip 30 may be held by the cavity 40c (the bottom of the cavity 40c) and the clamp 21 inserted in the through hole 32 and thereby fixed to the holder 40. The clamp 21 may be fixed to the holder 40 with a screw screwed into the holder 40.”).
Regarding Claim[s] 18, ‘Hashimoto discloses all the claim limitations including: wherein the cutting blade includes at least one aperture for the at least one fastener for securing the cutting blade to the blade portion (‘Hashimoto, Fig 2 (below) aperture shown in the blade and being secured by the clamp- fastener system, Para 0036 ).
Regarding Claim[s] 19, ‘Hashimoto discloses all the claim limitations including: wherein the at least one fastener is selected from the group consisting of: a screw, bolt, and rivet (‘Hashimoto, Fig 2 (below), Para 0036)
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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7, 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2022/0274183 Shigetaka Hashimoto (‘Hashimoto hereafter), and further in view of
U.S. 2021/0140647 Schlotterer-Fratoanni et al. (‘Schlotterer-Fratoanni hereafter),
Regarding Claim[s] 7, ‘Hashimoto discloses all the claim limitations except is silent regarding: a thermal conductive material (TCM) is positioned between the TEPG module and an inner surface of the cavity of the body of the cutting tool.
However, ‘Schlotterer-Fratoanni, Para 0010 teaches: “To improve the heat transfer between the heatsink and the sensor, preferably a thermal interface material is disposed between the heatsink and the sensor, such as thermal grease, thermal glue or a thermal adhesive, which improves the thermal conductivity between the heatsink and the sensor by eliminating gaps or spaces between these components.”
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hashimoto with a thermal grease between a module and the inner surface of a cavity as taught by ‘Casalino in order to improve the thermal conductivity between the heatsink and the sensor by eliminating gaps or spaces between these components (‘Schlotterer-Fratoanni, Para 0010).
Regarding Claim[s] 8, ‘Hashimoto and ‘Schlotterer-Fratoanni, discloses all the claim limitations including: where the TCM is selected from the group consisting of: a thermal pad, a thermal paste, and a thermal interface material (TIM) (‘Schlotterer-Fratoanni, Para 0010).
Regarding Claim[s] 10, ‘Hashimoto and ‘Schlotterer-Fratoanni, discloses all the claim limitations including: channel is partially enclosed and includes an inlet and an outlet (‘Schlotterer-Fratoanni, Fig 1 shows an inlet and an outlet).
Regarding Claim[s] 13, ‘Hashimoto and ‘Schlotterer-Fratoanni, discloses all the claim limitations including: an inlet channel of the tool holder for directing a coolant fluid towards a channel on a top surface of the body of the cutting tool,
wherein the channel is positioned above the second end of the TEPG module (‘Schlotterer-Fratoanni, Para 0003, “Furthermore, when the sensor is located within a vent channel, so as to be cooled by air that is removed from within the oven cavity, not only does the positioning of the sensor within the vent channel interfere with, and thus deteriorate, the venting action, but also is the sensor cooling rather limited, given that the air that leaves the oven cavity is of high temperature.”).
Regarding Claim[s] 17, ‘Hashimoto and ‘Schlotterer-Fratoanni, discloses all the claim limitations including: an outlet channel of the tool holder for directing the coolant fluid away from the channel on the top surface of the cutting tool (‘Schlotterer-Fratoanni, Fig 1 (below), shows a clamp arm and a fastener system).
Allowable Subject Matter
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 15 with the limitations of claim 14, 13, 12, 11, 2 and 1. Specifically, the prior art does not teach the combination of limitations wherein "wherein the channel on the top surface of the cutting tool is defined by a lower surface portion of the tool holder, a cooling side of the TEPG module and a plurality of walls on the top surface of the cutting tool.”
The closest prior art is as cited above (‘Hashimoto and ‘Schlotterer-Fratoanni).
‘Hashimoto and ‘Schlotterer-Fratoanni does not teach the top surface defined by a lower surface and a cooling side and a plurality of walls on the top surface. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 16. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
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Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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, 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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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
05/21/2026
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