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 .
DETAILED ACTION
This office action is in response to Applicant’s amendment filed 2 September 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 6, and 7 now recite the limitation “for machining fastening threads, excluding threads on a nut of a sliding screw assembly” in the preamble of each claim. However, this limitation was not set forth in the original disclosure of the instant application, and instead appears to have been taken from the prior art reference to Haruta. As such, this limitation is being treated as new matter, as the instant specification does not state that the thread tap is used for machining fastening threads or excludes machining threads on a nut of a sliding screw assembly.
Claim Rejections - 35 USC § 102/103
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 of this title, 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Haruta (US 2016/0039024 A1) in view of Akiki et al. (US 2006/0127193 A1).
Regarding claim 1, Haruta discloses a tap 1 comprising: an incomplete thread 6 (tapered section, see figure 4) formed on a tip portion of the tap and having a plurality of thread ridges 3a that threads a workpiece; a complete thread 2 (non-tapered section, see figure 4) formed continuously from the incomplete thread and consisting of cutting edges 3a formed at three adjacent thread ridges in the complete thread (as seen in figures 3B and 4, three thread ridges are found in the complete thread); a shank positioned on a rear end of the tap (not shown but inherent for attaching the tap to a tool holder); and a groove 5 extending from the tip of the tap, across the incomplete thread and the complete thread for discharging chips of the workpiece, wherein relationships respectively expressed by the following expressions (1) and (2) are simultaneously satisfied in a relationship among a nominal diameter D0 of the tap, a root diameter D1, a pitch P, and a thread ridge height h:
D1 ≥ D0 – P … (1), and h ≤ P/2 … (2). Since D0 = D1 + h, the first equation can be rewritten as D1 + P ≥ DO, or D1 + P ≥ D1 + h, such that this can be shortened to P ≥ h. The second equation can be rewritten as P ≥ 2h. Therefore, whenever the second equation is met, the first equation must also be met.
Haruta discloses that the tap is a large pitch tap for forming a large-lead internal thread, and as can be seen in figure 4 of Haruta, P ≥ 2h, as the pitch appears to be equal to approximately 4h. However, if it is to be argued that the pitch of Haruta is not distinctly disclosed to be ≥ 2h in the specification of Haruta, it is put forth that it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a pitch to be ≥ 2h for the purpose of creating a desired large pitch internal thread in a workpiece. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding the intended use limitation “for machining fastening threads, excluding threads on a nut of a sliding screw assembly” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. Although Haruta teaches that the disclosed thread tap is used for this purpose, the thread tap could also be used for a different operation. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Haruta does not distinctly disclose that the groove extends to a region just before the shank. Akiki et al. teaches the use of a tap 1 that comprises a tapping region 2 comprising an incomplete 2a and complete thread 2b and a groove 4 that extends from the tip of the tap to a region just before a shank 3 for the purpose of discharging chips from the tap prior to the chips reaching the shank portion of the tap. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the application to have combined the tap of Haruta with the groove free shank portion as taught by Akiki et al. in order to prevent chips from interfering with the clamping of the tap in a tool holder.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Haruta in view of Akiki et al. and further in view of Henderer et al. (US 9,011,050).
Regarding claims 2-5, the modified invention Haruta discloses the invention substantially as claimed, except Haruta does not disclose wherein the cutting edges in the complete thread are subjected to chamfering, or wherein the cutting edges at a second and subsequent thread ridges in the complete thread are subjected to the chamfering, or wherein the cutting edges in the whole or part of a portion excluding roots in the complete thread are subjected to the chamfering. Henderer et al. teaches the use of a thread tap 10 comprising an incomplete thread portion 24 and a complete thread portion 26, wherein the complete thread portion comprises full threads 28 with cutting edges 29 that are chamfered on a chamfer surface 48 of the cutting edge portion, excluding a root 34 of the thread, for the purpose of preventing chipping of the cutting edges. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the cutting edges of Haruta with the chamfer surfaces as taught by Henderer et al. in order to provide a thread tap that is less susceptible to having the cutting edges chip, thereby increasing the operational life of the tap.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Haruta in view of Henderer et al. (US 9,011,050).
Regarding claim 6, Haruta discloses a tap 1 comprising: an incomplete thread 6 (tapered section, see figure 4) having a plurality of thread ridges 3a that threads a workpiece; a complete thread 2 (non-tapered section, see figure 4) formed continuously from the incomplete thread and including cutting edges 3a formed at a plurality of thread ridges in the complete thread (as seen in figures 3B and 4, three thread ridges are found in the complete thread); and a groove 5 that is disposed in each of the incomplete thread and the complete thread to discharge chips of the workpiece, and wherein relationships respectively expressed by the following expressions (1) and (2) are simultaneously satisfied in a relationship among a nominal diameter D0 of the tap, a root diameter D1, a pitch P, and a thread ridge height h:
D1 ≥ D0 – P … (1), and h ≤ P/2 … (2). Since D0 = D1 + h, the first equation can be rewritten as D1 + P ≥ DO, or D1 + P ≥ D1 + h, such that this can be shortened to P ≥ h. The second equation can be rewritten as P ≥ 2h. Therefore, whenever the second equation is met, the first equation must also be met.
Haruta discloses that the tap is a large pitch tap for forming a large-lead internal thread, and as can be seen in figure 4 of Haruta, P ≥ 2h, as the pitch appears to be equal to approximately 4h. However, if it is to be argued that the pitch of Haruta is not distinctly disclosed to be ≥ 2h in the specification of Haruta, it is put forth that it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a pitch to be ≥ 2h for the purpose of creating a desired large pitch internal thread in a workpiece. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding the intended use limitation “for machining fastening threads, excluding threads on a nut of a sliding screw assembly” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. Although Haruta teaches that the disclosed thread tap is used for this purpose, the thread tap could also be used for a different operation. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Haruta does not disclose wherein the cutting edges in the complete thread are subjected to chamfering. Henderer et al. teaches the use of a thread tap 10 comprising an incomplete thread portion 24 and a complete thread portion 26, wherein the complete thread portion comprises full threads 28 with cutting edges 29 that are chamfered on a chamfer surface 48 of the cutting edge portion for the purpose of preventing chipping of the cutting edges. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the cutting edges of Haruta with the chamfer surfaces as taught by Henderer et al. in order to provide a thread tap that is less susceptible to having the cutting edges chip, thereby increasing the operational life of the tap.
Regarding claim 7, Haruta discloses a tap 1 comprising: an incomplete thread 6 (tapered section, see figure 4) having a plurality of thread ridges 3a that threads a workpiece; a complete thread 2 (non-tapered section, see figure 4) formed continuously from the incomplete thread and including cutting edges 3a formed at a plurality of thread ridges in the complete thread (as seen in figures 3B and 4, three thread ridges are found in the complete thread); and a groove 5 that is disposed in each of the incomplete thread and the complete thread to discharge chips of the workpiece, and wherein relationships respectively expressed by the following expressions (1) and (2) are simultaneously satisfied in a relationship among a nominal diameter D0 of the tap, a root diameter D1, a pitch P, and a thread ridge height h:
D1 ≥ D0 – P … (1), and h ≤ P/2 … (2). Since D0 = D1 + h, the first equation can be rewritten as D1 + P ≥ DO, or D1 + P ≥ D1 + h, such that this can be shortened to P ≥ h. The second equation can be rewritten as P ≥ 2h. Therefore, whenever the second equation is met, the first equation must also be met.
Haruta discloses that the tap is a large pitch tap for forming a large-lead internal thread, and as can be seen in figure 4 of Haruta, P ≥ 2h, as the pitch appears to be equal to approximately 4h. However, if it is to be argued that the pitch of Haruta is not distinctly disclosed to be ≥ 2h in the specification of Haruta, it is put forth that it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected a pitch to be ≥ 2h for the purpose of creating a desired large pitch internal thread in a workpiece. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, involves only routine skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 417, 82 USPQ2d 1385, 1396 (2007)
Regarding the intended use limitation “for machining fastening threads, excluding threads on a nut of a sliding screw assembly” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. Although Haruta teaches that the disclosed thread tap is used for this purpose, the thread tap could also be used for a different operation. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Haruta does not disclose wherein the cutting edges at a second and subsequent thread ridges in the complete thread are subjected to the chamfering. Henderer et al. teaches the use of a thread tap 10 comprising an incomplete thread portion 24 and a complete thread portion 26, wherein the complete thread portion comprises full threads 28 with cutting edges 29 that are chamfered on a chamfer surface 48 of the cutting edge portion for the purpose of preventing chipping of the cutting edges. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have modified the cutting edges of Haruta with the chamfer surfaces as taught by Henderer et al. in order to provide a thread tap that is less susceptible to having the cutting edges chip, thereby increasing the operational life of the tap.
Response to Arguments
Applicant's arguments filed 2 September 2026 have been fully considered but they are not persuasive.
Counsel’s statements regarding the tap of Haruta and there being no motivation to modify the tap to meet the requirements of the equations in claims 1, 6, and 7 are not factually supported and appear to be speculative in nature. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. Note that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). See also MPEP section 716.01(c), for example. Additionally, objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)
Applicant’s arguments related to figure 3A of Haruta and the number of incomplete threads are not persuasive because figure 4 was relied upon in the rejection, and it can be seen in figure 4 that the thread facing out in the figure has three incomplete threads. Also, it can be seen in figure 4 (and figure 3B, which was not relied upon) that the tap has three thread ridges. Figure 3A, which appears to show four thread ridges, was not relied upon in the rejections of the claims.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that only the second and subsequent thread ridges in the complete thread are subjected to chamfering) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
For the reasons set forth above, the rejections are maintained.
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 ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC A. GATES/Primary Examiner, Art Unit 3722 6 October 2026
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