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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10 August 2026 has been entered.
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.
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.
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.
Claims 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 20140321927 A1).
As to claim 4, Craig teaches a holder (holder body 200) on a distal end of which a cutting insert is to be mounted (cutting insert body 100, see Fig 10. The language, “to be mounted” is an intended use in this preamble. The cutting insert is not claimed.), the holder comprising: an insert pocket (cavity 220) into which the cutting insert is to be fitted (the cutting insert body 100 is capable of fitting into the cavity 220); a restriction surface (support surface 222) for contacting an outer surface of the cutting insert and holding the cutting insert (see Fig 15); and a stopper portion (locking tab 230) for elastically locking the cutting insert to be fitted into the insert pocket (this is an intended use of the stopper portion. The locking tab 230 is capable of performing this intended use as described at [0050]: “locking tab 230 elastically displaces from the obstructing position to allow insertion of the cutting insert body 100 into the cavity 220 and then, after the cutting insert body 100 is inserted to a sufficient distance into the cavity 220, the locking tab 230 snaps into the recess 114.”); and wherein the stopper portion (locking tab 230) has a cantilever-beam shape (as shown in Figs 13 and 14) with a free end on a distal end side (tip 231) and a base end (first portion 230A) connected to the holder on a rear end side (as shown in Fig 14, the “rear end side” is relative to the orientation of the cantilever beam, not the holder itself), is configured to be elastically deformable independently of the restriction surface (as described at [0050] above, the locking tab 230 “elastically displaced”).
Craig does not anticipate: wherein the stopper portion includes a convex portion having a convex curved shape in a side view, and has the curved convex portion disposed at the free end.
Craig’s stopper portion (locking tab 230) has a convex shape but isn’t curved. Instead, the convex shape is formed of several flat faces as shown for example in Fig 13. See also Fig 21 which indicates the flat surface may be connected by curved or filleted features.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to form a curved convex tip on locking tab 230 of Craig rather than from several flat faces because Applicant has not disclosed that a stopper portion having a curved surface provides an advantage, is used for a particular purpose, or solves a stated problem beyond the purpose and function of the locking tab 230. One of ordinary skill in the art, furthermore, would have expected Craig’s locking tab 230 and applicant’s invention, to perform equally well with either a convex surface formed of three flat faces taught by Nash or the claimed curved convex surface because both convex configurations would perform the same function of entering and abutting against a locking portion equally well considering the geometry of the concave locking portions of Craig and Applicant’s invention.
Therefore, it would have been prima facie obvious to modify Craig to obtain the invention as specified in claim 4 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Craig.
Craig further teaches and wherein the stopper portion has a locking surface between the convex portion and the base end, the locking surface tilting downward toward the rear end side of the stopper portion (as illustrated in the labeled Figure below, the locking surface is tilted down toward the rear end. The Figure shows the stopper portion of Craig Fig 13 isolated and rotated for ease of comparison to Applicant’s Fig 4. The identified surface is fairly considered a “locking surface” as it impinges on the cutting insert body 100 to prevent movement.).
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As to claim 5, Craig teaches the holder according to claim 4, wherein a slit (cooling channel 240) extending in a direction in which the cutting insert is to be fitted into the insert pocket is formed on the insert pocket side at the stopper portion (see Figs 14 and 15).
As to claim 6, Craig teaches the holder according to claim 4, wherein the convex portion of the stopper portion (tip of locking portion 230) engages with a concave lock portion (recess 114) formed at the cutting insert to be fitted into the insert pocket (recess 114 is formed in stem 104 of cutting insert body 100. The locking tab 230 engages with the locking recess 114 as shown in Fig 15).
As to claim 8, Craig teaches the holder according to claim 4, through which a key hole (cavity relief area 224) communicating with a front side of the insert pocket in a direction in which the cutting insert is to be fitted is formed (see Figs 13-15).
Allowable Subject Matter
Claims 1, 3, 9-11, 13-15 are allowed.
The following is an examiner’s statement of reasons for allowance: Examiner’s best art does not teach or suggest the limitations of independent claims 1 or 9. Specifically, claims 1 and 9 require a lock target surface as a tilt surface on the back side of the lock portion...the lock surface tilting downward from the lock portion to the slide surface to contact the locking surface of the holder, which is not disclosed or suggested by Craig or Nagaya. Claims 1 and 9 effectively claim the specific shape of the locking portion of the cutting insert such that there are particular locking, tilting, sliding, forward and rearward facing surface which are not disclosed in the prior art. Since the particular shape of any given locking surface is dependent on its specific geometry and the surfaces against which is impinges, it does not appear to be prima facie obvious to combine the geometry of two prior art references unless some particular motivation or acknowledgement otherwise exists. Applicants remarks filed 10 August 2026 pertaining to claims 1 and 9 are convincing.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 10 August 2026 pertaining to claim 4 have been fully considered but they are not persuasive.
Applicant argues the references cited do not teach the limitations of claim 4. Examiner disagrees. See the rejection of claim 1 above. Each limitation has been clearly mapped to a feature of Craig, and helpful diagrams have been provided.
While Examiner acknowledges that the limitations of claims 1 and 9 are different from the structure of the cutting insert of Craig, the limitations of claim 4 relating to the holder, and specifically the stopper portion of the holder, are not patentably distinct from the teachings of Craig.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 17 September 2026
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