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) (illustrated in Figure 5B) in the reply filed on November 4, 2025 is acknowledged. The traversal is on the grounds that the species illustrated in Figures 5B and 5D have similar features such that the classification and search terms for each species would be the same. Additionally, Applicant argues that no serious search burden exists because the species are sufficiently related. This is not found persuasive.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. Examiner noted that, at the very least, different search queries would be necessary to examine the exclusive characteristics of each species. Thus, burden has been properly established.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the gear forming tool in claims 1, 10 and 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2-9 and 11-16 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 2 recites “each skiving tooth defines at least one outlet in fluid communication with the interior pathways.” It is unclear whether there is a respective relationship between the at least one outlet defined by each tooth and the interior pathways or all interior pathways lead inti each outlet. In addition, the scope of each tooth defining at least one outlet is vague. In particular, it is unclear how each tooth defines the at least one outlet. The “defines” term is used throughout the claims. Appropriate correction required.
Claim 4 recites “a tool holder that defines a plurality of channels . . . and a skiving tool . . . [that] defines a plurality of capillaries . . . .” It is unclear how the channels and the capillaries relate to the previously recited interior pathways. Appropriate clarification required.
The term “proximate” in claim 4 is a relative term which renders the claim indefinite. The term “proximate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. That is the point in which the outlet is considered proximate the skiving teeth and not proximate is not clearly delineated. Appropriate correction required.
Claims 5 and 13 each recite “each of the capillary outlets is open through a corresponding skiving tooth.” This recitation appears to conflict with the previous recitation in claim 4 that each capillary outlet is open proximate the skiving teeth. That is, it is unclear how each outlet is considered near the teeth the outlet is open through a respective tooth. Moreover, the scope of the outlets being open through a tooth is unclear. The outlet itself is open so being open through a tooth must mean something more but it is unclear what is required. Appropriate correction required.
Claim 6 recites “the flowing the fluid” in Line 2. It is unclear whether a limitation is missing from the claim as the phrase is grammatically troublesome. Appropriate correction required.
Claim 6 recites “each channel outlet is coupled to a plurality of the capillary inlets such that the flowing the fluid through the interior pathways includes: sequentially providing and then inhibiting fluid flow through the interior pathways” in Lines 4-5. Again, the relationship between the interior pathways and the capillary outlets is unclear. Furthermore, it is unclear how the channel being coupled to the plurality of the inlets provides for sequential provision and then inhibition of the fluid flow. That is, it is unclear how there is inhibition of fluid flow through the interior pathways- whatever the scope of said pathways. Appropriate correction required.
Claim 7 recites “the outer sleeve defines an outer sleeve aperture that sequentially comes into and then out of fluid communication with each of the channels as the tool holder rotates relative to the outer sleeve.” It is unclear how the outer sleeve aperture sequentially comes into communication with each channel. In particular, it is unclear how the sequence with each channel occurs. Appropriate correction required.
Claim 11 recites “the sleeve . . . defines an aperture through the sleeve that sequentially comes into and then out of fluid communication with each channel as the tool holder is rotated relative to the sleeve.” It is unclear how the outer sleeve aperture sequentially comes into communication with each channel. In particular, it is unclear how the sequence with each channel occurs. Appropriate correction required.
The term “proximate” in claim 12 is a relative term which renders the claim indefinite. The term “proximate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. That is the point in which the outlet is considered proximate the skiving teeth and not proximate is not clearly delineated. Appropriate correction required.
Claim Rejections - 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, 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 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Schweiker et al. (US Patent No. 9,415,454 B2) in view of Birenbaum et al. (DE 102016218103 B3) or Ball et al. (US Patent No. 5,290,135).
(Claim 1) Schweiker et al. (“Schweiker”) discloses a method of forming a gear (2) from a workpiece using a gear forming tool (0) that comprises skiving teeth disposed about a rotational axis of the gear forming tool (Fig. 1). The method includes moving the gear forming tool, relative to the workpiece, in an axial direction of the rotational axis while rotating the skiving teeth, relative to the workpiece, in a first rotational direction about the rotational axis (Col. 4, Lines 51-65) and while rotating the workpiece about an axis of the workpiece in a second rotational direction that is opposite the first rotational direction, so that subsets of the skiving teeth sequentially come into and then out of contact with the workpiece and skive material from the workpiece (Fig. 1 showing opposite hands of rotation during the cutting operation). The Schweiker method does not explicitly disclose fluid delivery during the method.
Birenbaum et al. (“Birenbaum”) discloses flowing a fluid through interior pathways of the gear forming tool so that the fluid flows out of the gear forming tool and onto the skiving teeth that are in contact with the workpiece, but not onto the skiving teeth that are on a diametrically opposite side of the gear forming tool (Figs. 1a-4 showing feed the intersects only a subset of inlets; Translation ¶¶ 0033, 0040 disclosing that feed is limited to coolant channels/outlets at teeth engaged with the workpiece). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Birenbaum in order to introduce coolant and “reduce temperatures in the area of the tool cutting edges” and control the amount of coolant delivered (Translation ¶¶ 0002, 0039).
Ball et al. (“Ball”) discloses flowing a fluid through interior pathways of the gear forming tool so that the fluid flows out of the gear forming tool and onto the skiving teeth that are in contact with the workpiece, but not onto the skiving teeth that are on a diametrically opposite side of the gear forming tool (Fig. 6 showing delivery to only a portion of the tool inlets; Col. 6, Lines 51-68; Col. 7, Lines 1-17). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Ball in order to introduce coolant to “the contact area between the tool and workpiece” and “assist in the removal of metal chips” (Col. 7, Lines 10-16).
(Claims 2 and 3) The Schweiker reference does not explicitly disclose each skiving tooth defining at least one outlet in fluid communication with the interior pathways open in a direction that faces axially away from the skiving tool.
Ball discloses each skiving tooth defining at least one outlet (54, 59) in fluid communication with the interior pathways open in a direction that faces axially away from the skiving tool (Figs. 3-7). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Ball in order to introduce coolant to “the contact area between the tool and workpiece” and “assist in the removal of metal chips” (Col. 7, Lines 10-16).
(Claim 4) The Schweiker reference does not explicitly disclose the tool holder, but the modified tool includes capillaries leading to the outlets.
Ball discloses a gear forming tool that includes a tool holder (2) that defines a plurality of channels (65) spaced apart from one another in a circumferential direction about the rotational axis (Fig. 6), each channel of the plurality of channels having a channel inlet open to an exterior of the tool holder and a channel outlet open to the exterior of the tool holder (Figs 6, 7), each channel extending from its channel inlet to its channel outlet independently of each other channel (Figs. 6, 7); and a skiving tool (34) that is coupled to the tool holder for common rotation about the rotational axis and defines the skiving teeth (Fig. 7), wherein the skiving tool defines a plurality of capillaries (68), each capillary having a capillary inlet and a capillary outlet, each capillary outlet being open to an exterior of the skiving tool proximate the skiving teeth (Fig. 7), wherein each channel is in fluid communication with one or more of the capillary inlets (Fig. 7). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Ball in order to introduce coolant to “the contact area between the tool and workpiece” and “assist in the removal of metal chips” (Col. 7, Lines 10-16).
(Claim 5) Each of the capillary outlets is open through a corresponding skiving tooth (Ball Fig. 7).
(Claim 6) As best understood, the modified method of Schweiker includes each channel outlet being coupled to a plurality of the capillary inlets such that the flowing the fluid through the interior pathways includes sequentially providing and then inhibiting fluid flow through the interior pathways so that fluid is permitted to flow through the interior pathways that are in fluid communication with the capillary outlets of the skiving teeth in contact with the workpiece and is inhibited from flowing through the interior pathways that are in fluid communication with the capillary outlets of the skiving teeth out of contact with the workpiece (Birenbaum Figs. 1a-4; Ball Fig. 6).
(Claim 7) The gear forming tool includes an outer sleeve (Ball 60) disposed about the tool holder such that the tool holder rotates relative to the outer sleeve (Ball Fig. 6); the outer sleeve defines an outer sleeve aperture that sequentially comes into and then out of fluid communication with each of the channels as the tool holder rotates relative to the outer sleeve (Ball Fig. 6 showing delivery to only a portion of the tool inlets; Col. 6, Lines 51-68; Col. 7, Lines 1-17).
(Claim 9) Each skiving tooth defines a plurality of the capillary outlets (Ball Figs. 4, 7-9).
(Claim 10) Schweiker discloses a method of forming a gear from a workpiece (2) using a gear forming tool (0) that includes skiving teeth disposed about a rotational axis of the gear forming tool (Fig. 1). The method includes skiving, with the skiving teeth, material from the workpiece by simultaneously moving the gear forming tool, relative to the workpiece, in an axial direction of the rotational axis (Col. 4, Lines 51-65), and rotating the skiving teeth, relative to the workpiece, in a first rotational direction about the rotational axis; and rotating the workpiece about an axis of the workpiece in a second rotational direction that is opposite the first rotational direction (Fig. 1 showing opposite hands of rotation during the cutting operation). The Schweiker method does not explicitly disclose fluid delivery during the method.
Birenbaum lubricating the skiving teeth during the skiving by flowing a fluid through interior pathways of the gear forming tool so that the fluid flows out of the gear forming tool onto the skiving teeth that are in contact with the workpiece but not onto at least one subset of the skiving teeth that is not in contact with the workpiece (Figs. 1a-4 showing feed the intersects only a subset of inlets; Translation ¶¶ 0033, 0040 disclosing that feed is limited to coolant channels/outlets at teeth engaged with the workpiece). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Birenbaum in order to introduce coolant and “reduce temperatures in the area of the tool cutting edges” and control the amount of coolant delivered (Translation ¶¶ 0002, 0039).
Ball discloses lubricating the skiving teeth during the skiving by flowing a fluid through interior pathways of the gear forming tool so that the fluid flows out of the gear forming tool onto the skiving teeth that are in contact with the workpiece but not onto at least one subset of the skiving teeth that is not in contact with the workpiece (Fig. 6 showing delivery to only a portion of the tool inlets; Col. 6, Lines 51-68; Col. 7, Lines 1-17). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Ball in order to introduce coolant to “the contact area between the tool and workpiece” and “assist in the removal of metal chips” (Col. 7, Lines 10-16).
(Claim 11) The method includes rotating the skiving teeth on a skiving tool, rotating a tool holder (inherent) about the rotational axis in the first rotational direction (Schweiker Fig. 1), relative to a sleeve of the gear forming tool (Ball Fig. 6; 60). Schweiker does not explicitly disclose the tool holder including channels and a sleeve as claimed.
Ball discloses the tool holder (2) defines a plurality of channels arranged about the rotational axis, the tool holder being coupled to a tool (34) for common rotation. The sleeve (60) is disposed about the tool holder and defines an aperture through the sleeve that sequentially comes into and then out of fluid communication with each channel as the tool holder is rotated relative to the sleeve (Col. 4, Lines 51-65). At a time prior to filing it would have been obvious to provide the method disclosed in Schweiker with the fluid delivery taught by Ball in order to introduce coolant to “the contact area between the tool and workpiece” and “assist in the removal of metal chips” (Col. 7, Lines 10-16).
(Claim 12) The skiving tool defines a plurality of capillaries (Ball 68), each capillary having a capillary inlet and a capillary outlet (Ball Figs. 4, 6-9), each capillary outlet being open to an exterior of the skiving tool proximate the skiving teeth (Ball Figs. 4, 6-9), wherein each channel (66) is in fluid communication with one or more of the capillary inlets (Ball Figs. 4, 6-9).
(Claim 13) Each of the capillary outlets is open through a corresponding skiving tooth (Ball Figs. 4, 7-9).
(Claim 14) A channel outlet of each channel is coupled to a plurality of the capillary inlets (Ball Fig. 6).
(Claim 15) The skiving teeth extend in a radially outward pattern relative to the rotational axis and each capillary outlet is open in a direction that faces axially away from the skiving tool (Schweiker Fig. 1).
(Claim 16) Each skiving tooth defines a plurality of the capillary outlets (Ball Figs. 4, 7-9).
Allowable Subject Matter
Claims 17-20 are allowed.
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 closest prior art of record fails to disclose or suggest a method of skiving with the tool holder, skiving tool, inner sleeve and outer sleeve as per claims 8 and 17.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Marchetti (WO 2016/020796 A1) (disclosing a skiving tool with nozzles that are capable of being positioned to target only the cutting edges in contact with workpiece).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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/RYAN RUFO/Primary Examiner, Art Unit 3722