DETAILED ACTION
Claims 1-16 are pending.
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 .
Response to Arguments
The most recent claim objections have been withdrawn in light of the current claim amendment(s).
The most recent 35 U.S.C. § 112(b) rejection has been withdrawn in light of the current claim amendment(s).
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner suggests incorporating more claim language in light of the specification (i.e., structural and/or functional) to overcome the prior art rejection and advance prosecution, preferably towards an allowance.
Drawings
The drawings were received on 06/12/2026. These drawings are unacceptable.
The drawings are objected to because of the following:
The line quality of all the drawings, when zoomed in, illustrate an inconsistent line quality. 37 CFR 1.84 (Standards for Drawings), section L (Character of lines, numbers, and letters) states: “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined”. The drawings should be viewed in the USPTO’s patent center in order to see this problem.
Figure 1 has section identifiers (e.g., A-A’), which should use Roman or Arabic numerals. See 37 CFR 1.84, section “h”, subsection “3”.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 § 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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. (US Publication Number 2024/0384653 A1; herein “Bernard”) in view of Dlugosz et al. (US Publication Number 2023/0084514 A1; herein “Dlugosz”).
In regard to claim 1, Bernard discloses: A cutting tool (200 — see paragraphs [0020, 0056-0061] and figures 1 & 7-10) comprising:
a cutting bit (310) having a cutting element (312); and
a cylindrical shank (320) located below said cutting element (as shown in figures 7-8), wherein said cylindrical shank has a clip groove (336) having at least one surface that is one selected from the group consisting of at least one flat side (i.e., as shown in the cross sectional view in figure 10), at least one convex surface, and at least one concave surface;
a retainer sleeve (360) having a first internal radial tab (370) positioned to engage the at least one surface and a second internal radial tab (380) positioned to engage the at least one surface (paragraph [0057] and figure 9A);
the retainer sleeve having a split (364) extending in a longitudinal direction along a longitudinal length of said retainer sleeve (paragraph [0061] and figures 8-10); and
a recessed radial groove defined in a bore of a cutting bit holder (i.e., 110 of 200).
However, Bernard is silent in regard to: “[...] the retainer sleeve also having a radially outward projecting longitudinal external tab; and
the radially outward projecting longitudinal external tab being sized and configured to fit into a recessed radial groove defined in a bore of a cutting bit holder.”
Nonetheless, Dlugosz teaches a similar type of cutting tool (10) comprising a retainer sleeve (32) to hold a cutting shank (16 — see abstract and paragraphs [0008-0011, 0022-0025]), similar to that of Bernard. Furthermore, Dlugosz teaches for the retainer sleeve to include a radially outward projecting longitudinal tab (34) which fits in the recessed radial groove defined in a bore of a cutting bit holder, as shown in figures 1-2 and 4 (paragraphs [0022-0025]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the retainer sleeve, as taught by Bernard, to include for a radially outward projecting longitudinal external tab, as taught by Dlugosz, to reduce the friction force between the retainer sleeve and the bore of a cutting bit holder when installing the retainer sleeve (paragraph [0024] — Dlugosz).
In regard to claim 2, Bernard further discloses: wherein the clip groove has a flat side surface (i.e., as shown in the cross sectional view in figure 10).
In regard to claim 3, Bernard further discloses: A cutting tool assembly (i.e., comprising 200 — see paragraphs [0020, 0056-0061] and figures 1 & 7-10) comprising: the cutting tool according to claim 1;
the cutting bit holder having the bore, the bore being an internal cylindrical bore (122); and
the retainer sleeve being a cylindrical retainer sleeve, wherein said cylindrical shank fits inside said cylindrical retainer sleeve (as shown in figures 9-10), and wherein said at least one surface of said clip groove of said cylindrical shank biases against said first internal radial tab and said second internal tab of said retainer sleeve to inhibit axial movement and radial rotation of said cylindrical shank of said cutting tool (paragraphs [0020, 0056-0061] and figures 7-10).
In regard to claim 4, Bernard further discloses: wherein an outer wall of said cylindrical retainer sleeve has the split, the split forming an opening on said cylindrical retainer sleeve (paragraph [0061] and figures 8-10).
In regard to claim 5, Bernard further discloses: wherein said cylindrical retainer sleeve is made of a compressible material (paragraphs [0020, 0056-0061] and figures 7-10).
In regard to claim 6, Bernard further discloses: wherein the first internal radial tab (370) has a first convex portion (paragraph [0057] and figure 9A), the second internal radial tab (380) has a second convex portion (paragraph [0057] and figure 9A), and wherein said first convex portion of said first internal radial tab, said second convex portion of said second internal radial tab bias against and are in juxtaposition to said clip groove of said shank (paragraphs [0020, 0056-0061] and figures 7-10).
However, Bernard is silent in regard to: the retainer sleeve also has a third internal radial tab having a third convex portion, and a fourth internal radial tab having a fourth convex portion, and wherein said third convex portion of said third internal radial tab, and said fourth convex portion of said fourth internal radial tab bias against and are in juxtaposition to said clip groove of said shank.
Nonetheless, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the teachings of Bernard to include a plurality of internal radial tabs to allow for additional retaining support. Furthermore, in the absence of an unexpected result, the mere duplication of parts has been held as an obvious design choice.
In regard to claim 7, Bernard further discloses: wherein the cutting tool is interchangeable (i.e., by being removable) with a rotating cutting tool in the internal cylindrical bore of the cutting bit holder (Examiner notes that the cutting tool is designed to meet the limitation).
In regard to claim 8, Bernard further discloses: wherein the cutting tool is configured to be removed from the internal cylindrical bore, and then indexed and replaced in the internal cylindrical bore (Examiner notes that the cutting tool is designed to meet the limitation).
In regard to claim 9, Barnard discloses: A cutting tool assembly (i.e., comprising 200 — see paragraphs [0020, 0056-0061] and figures 1 & 7-10) comprising:
a cutting bit (310) having a head (i.e., as shown in the annotated figure 8 below commensurate to that as disclosed in the instant specification) comprising of a body (i.e., as shown in the annotated figure 8 below commensurate to that as disclosed in the instant specification) located longitudinally below a cutting element (312) and a shoulder located below said body (i.e., as shown in the annotated figure 8 below commensurate to that as disclosed in the instant specification), and a cylindrical shank (320) that has an outer wall having a longitudinal length that extends in a longitudinal direction from below said shoulder (as shown in figure 7), and wherein said cylindrical shank has a clip groove (336) that is located on said outer wall of said cylindrical shank, and wherein said clip groove has at least one surface that is one selected from the group consisting of at least one flat side (i.e., as shown in the cross sectional view in figure 10), at least one convex surface, and at least one concave surface;
a cutting bit holder (i.e., 110 of 200) having an internal cylindrical bore (122) and a front face (120 — see paragraphs [0039] and figure 1), and wherein said internal cylindrical bore has a mouth (i.e., upper end of 122 where the cutting assembly enters when assembled), and wherein said internal cylindrical bore has a longitudinal length that extends in a longitudinal direction of said cylindrical shank (paragraphs [0039, 0056-0061] and figures 1 and 7-10);
a washer (390) having a center hole (i.e., bore of 390), and wherein said washer is located between (i.e., longitudinally between) said shoulder of said cutting bit and said front face of said cutting bit holder (Examiner notes that 200, as shown in the figure 10 (and, figures 7-9) embodiment, is detailed in figure 1 with respect to the “cutting bit holder” which shows the claimed configuration); and
a cylindrical retainer sleeve (360) having an outer wall (366 — figure 9B), said cylindrical retainer sleeve has a longitudinal length (as shown in figures 7-9), and a split (364) that is located on the circumference of said outer wall that forms an opening on said cylindrical retainer sleeve and wherein said split extends in a longitudinal direction along the longitudinal length of said cylindrical retainer sleeve (paragraph [0061] and figures 8-10), said retainer sleeve having at least one internal radial tab (i.e., 370 and/or 380) having a first convex portion (paragraph [0057] and figure 9A),
wherein said cylindrical retainer sleeve fits inside said internal cylindrical bore of said cutting bit holder (Examiner notes that 200, as shown in the figure 10 (and, figures 7-9) embodiment, is detailed in figure 1 with respect to the “cutting bit holder” which shows the claimed configuration),
wherein said cylindrical shank fits inside said cylindrical retainer sleeve (as shown in figures 9-10),
a recessed radial groove defined in the internal cylindrical bore (as shown in figures 1 and 7-10); and
wherein said at least one internal radial tab biases against and is in juxtaposition to said at least one surface of said clip groove to inhibit axial movement and radial rotation of said cylindrical shank of said cutting tool (paragraphs [0020, 0056-0061] and figures 7-10).
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In regard to claim 10, Bernard further discloses: wherein said cylindrical shank has a circumference (i.e., radially inner or outer circumference) that is smaller than a circumference (i.e., radially inner or outer circumference) of said shoulder (as shown in the side of at least figure 8).
In regard to claim 11, Bernard further discloses: wherein said internal cylindrical bore of said cutting bit holder has a circumference that is larger than the circumference of said cylindrical shank (as shown in figures 1 and 7-10).
In regard to claim 12, Bernard further discloses: wherein said center hole of said washer has a circumference that is larger than the circumference (i.e., radially inner or outer circumference) of said cylindrical shank and the circumference of the center hole of said washer is also smaller than the circumference of said shoulder (as shown in figures 1 and 7-10).
In regard to claim 13, Bernard further discloses: wherein said outer wall of said cylindrical retainer sleeve has a circumference (i.e., radially inner or outer circumference) that is smaller than the circumference of said internal cylindrical bore of said cutting bit holder (as shown in figures 1 and 7-10).
In regard to claim 14, Bernard further discloses: wherein said cylindrical retainer sleeve is made of a compressible material (paragraphs [0020, 0056-0061] and figures 7-10).
In regard to claim 15, Bernard in view of Dlugosz teaches the preceding claim.
However, the modification of Bernard in view of Dlugosz is/are silent in regard to: wherein said opening of said split is about 8 millimeters in width in an uncompressed state, and wherein said opening of said split is compressed to a width of from less than about 8 millimeters to greater than about 1 millimeter.
Nonetheless, Dlugosz teaches a similar type of cutting bit assembly to Dlugosz, where a compressible retainer sleeve “32” is coupled to the exterior of the bit shank “16” (paragraphs [0022-0023] and figures 1-3). Dlugosz teaches that the compressed (contracted) state and uncompressed state of the retainer sleeve can comprise of the claimed dimensions, as discussed in paragraphs [0011, 0027-0029].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the retainer sleeve, as taught by Bernard, to have the compressed/uncompressed dimensions (as claimed), as taught by Dlugosz, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In regard to claim 16, Bernard in view of Dlugosz teaches the preceding claim.
However, the modification of Bernard in view of Dlugosz is/are silent in regard to: wherein the opening of said split is about 8 millimeters in width in an uncompressed state, and wherein said opening of said split is compressed to a width of from less than about 8 millimeters to greater than about 1 millimeter. Examiner notes the claim is being interpreted in light of BRI as notated in the 35 U.S.C. § 112(b) rejection herein.
Nonetheless, Dlugosz teaches a similar type of cutting bit assembly to Dlugosz, where a compressible retainer sleeve “32” is coupled to the exterior of the bit shank “16” (paragraphs [0022-0023] and figures 1-3). Dlugosz teaches that the compressed (contracted) state and uncompressed state of the retainer sleeve can comprise of the claimed dimensions, as discussed in paragraphs [0011, 0027-0029].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the retainer sleeve, as taught by Bernard, to have the compressed/uncompressed dimensions (as claimed), as taught by Dlugosz, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
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 NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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