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 . 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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/14/2024, 05/30/20205 and 05/28/2026 have been considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 05/19/2026 is acknowledged. The traversal is on the ground(s) that “Heinemann et al. does not disclose either "the superposition of the different partial cutting tooth geometries (31, 32, 41, 42) reproduces the cutting tooth geometry (30, 40)" (of claim 1, Group I), or the equivalent "which geometries together form the cutting tooth geometry (30, 40) including the cutting edges of the cutting tooth geometry (30, 40)" (of claim 5, Group II)”. This is not found persuasive because the claim merely requires a partial element of the cutting tooth geometry, and portions of the cutting teeth 7, 7’ when taken as partial elements and “superimposed” would read upon the claimed limitations. Applicant also traverses the search burden. Examiner notes the language provides for an apparatus and method. As currently claimed, these groupings require different class searches, between different units and thus a search burden (For Example, US Class 409/01000 for the apparatus portion of the claims and US Class 76/115).The requirement is still deemed proper and is therefore made FINAL. Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/22/2026.
Claim Objections
Claim 1 is objected to because of the following informalities:
-Claim 1, Lines, 3, 5, 9, 16 and 17 utilize capital letters for the beginning of the lines, while they should be lowercase for appropriate formatting. Appropriate correction is required.
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 1-4 and 8-9 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.
-Regarding claim 1, the phrase “defining a tooth profile to be machine with the milling tool from a workpiece to be processed to produce a gear tooth” lacks written description. As currently claimed, there does not appear to be any related structural component capable of performing the function of “defining a tooth profile to be machined”. What structure is capable of defining the tooth profile? Examiner notes there does not appear to be any associated controller, or program related to how the tooth profile is determined, and the process appears to be read upon by a user “thinking” or determining a tooth profile to be machined.
-Regarding claim 1, the phrase “determining a cutting tooth geometry” lacks written description. As currently claimed, there does not appear to be any related structural component capable of performing the function of “determining a cutting tooth geometry. What structure is capable of determining what can and cannot be considered the cutting tooth geometry? Examiner notes there does not appear to be any associated controller, or program related to how the cutting tooth geometry is determined, and the process appears to be read upon by a user “thinking” or determining any geometry to be machined. Examiner notes there to be similar issues with the phrase “the superposition of the different partial cutting tooth geometries reproduces the cutting tooth geometry”. How are the geometries reproduced, and then superimposed to provide for the final cutting tooth geometry? What structure provides the ability to “superimpose” multiple partial cutting tooth geometries?
-Regarding claim 2, the phrase “the method additionally comprises the step of calculating a theoretical material removal” lacks written description. Examiner notes the specification and drawings do not appear to provide how or what is capable of calculating the “theoretical” material removal. How is the theoretical material removal calculated without the known properties of the cutting tooth and workpiece to be worked on? What determinations are made to allow for the calculations and what performs those steps?
-Regarding claim 3, the phrase “for which the theoretical material removal falls below a predetermined limit value at least in some portions, but is greater than zero” lacks written description. Examiner notes the specification itself does not provide for such language. It is unclear what the bounds of the predetermined limit value may be, while also being greater than zero. As currently claimed, any material removal greater than 0 reads upon such language.
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 1-4 and 8-9 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 pre-AIA the applicant regards as the invention.
-Regarding claim 1, the phrase “defining a tooth profile to be machine with the milling tool from a workpiece to be processed to produce a gear tooth” is unclear. It is unclear what structural components are capable of performing the function of “defining a tooth profile to be machined”. Examiner notes there does not appear to be any associated controller, or program related to how the tooth profile is determined, and the process appears to be read upon by a user “thinking” or determining a tooth profile to be machined. Similar issues arise with the phrase “determining a cutting tooth geometry” lacks written description. As currently claimed, there component capable of performing the function of “determining a cutting tooth geometry and the specification appears silent as to any structural element capable of such a function. Examiner notes as there does not appear to be any associated controller, or program related to how the cutting tooth geometry is determined, and the process appears to be read upon by a user “thinking” or determining any geometry to be machined. Further, the phrase “the superposition of the different partial cutting tooth geometries reproduces the cutting tooth geometry” is unclear. How are the geometries reproduced, and then superimposed to provide for the final cutting tooth geometry? What structure provides the ability to “superimpose” multiple partial cutting tooth geometries?
-Regarding claim 2, the phrase “the method additionally comprises the step of calculating a theoretical material removal” is unclear. Examiner notes the specification and drawings do not appear to provide how or what is capable of calculating the “theoretical” material removal. How is the theoretical material removal calculated without the known properties of the cutting tooth and workpiece to be worked on? What determinations are made to allow for the calculations and what performs those steps? As currently claimed, a user may “think” about what the material to be removed may be, provide no further input, and appear to read upon such language, as the milling tool is not positively recited in such a way that it must interact with the intended workpiece.
-Regarding claim 3, the phrase “for which the theoretical material removal falls below a predetermined limit value at least in some portions, but is greater than zero” is unclear. It is unclear what the bounds of the predetermined limit value may be, while also being greater than zero. As currently claimed, any material removal greater than 0 reads upon such language. For the purposes of examination, any milling tool capable of interacting with a workpiece will be treated as having a “theoretical material removal” below a predetermined limit value (failure point) and above 0.
-Regarding claims 4, 8 and 9, the language of “are machined from the milling tool blank using a grinding wheel with a standardized profile or standard grinding wheel, preferably using end of the line processing” is unclear. It is unclear what can and cannot be considered a “standardized profile” for a grinding wheel, and what is considered a “standard grinding wheel”. For the purposes of examination, any grinding wheel with any grinding wheel profile will be treated as reading upon the limitations as claimed.
-A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 4, 8 and 9 recites the broad recitation are machined from the milling tool blank using a grinding wheel with a standardized profile or standard grinding wheel, and the claim also recites preferably using end of the line processing. which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-4 and 8-9 dependent from claim 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are rejected as being dependent from a rejected parent claim.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8 and 9 are rejected, as best understood in light of the 112 rejections above, under 35 U.S.C. 102(a)(1) as being anticipated by Kirby (US 2009/0324347).
Regarding claim 1, Kirby teaches a method for producing a milling tool (1) with cutting teeth (8)(Figure 1) with the steps of;
defining a tooth profile to be machined with the milling tool (1) from a workpiece to be processed to produce a gear tooth (Figure 1; Noting Paragraph 0055 and the cutter blank being use);
determining a cutting tooth geometry (Figure 1), including the cutting edges (4) of the cutting tooth geometry (Figure 1) with which the defined tooth profile to be machined in the workpiece to be processed can be machined using a milling process (Abstract);
subdividing the cutting tooth geometry (8) into at least two different partial cutting tooth geometries (11,12), wherein the different partial cutting tooth geometries are configured such that at least one of the partial cutting tooth geometries (11,12) has portions (P1, P2, P3, P4) which recess behind the outer contour of the cutting tooth geometry (8) and that the superposition of the different partial cutting tooth geometries reproduces the cutting tooth geometry (8)(Figure 1; See annotated Figure 1 below noting multiple different “portions” that recess behind the outer contour of the overall cutting tooth geometry as shown in Figures 1-2);
providing a milling tool blank (Paragraph 0055; and
machining of cutting teeth, which have the different partial cutting tooth geometries (P1, P2, P3, P4), from the milling tool blank (Figures 1-2 and Paragraphs 0055-0060).
Regarding claim 2, Kirby teaches the method according to claim 1 characterized in that the method additionally comprises the step of calculating a theoretical material removal during the interaction of a cutting tooth with a given cutting tooth geometry and/or partial cutting tooth geometries with a workpiece (Paragraph 0041 noting the rake angle may be adjusted thereby providing for a variation in the “theoretical material removal”).
Regarding claim 3, Kirby teaches the method according to claim 2, characterized in that, when dividing the cutting tooth geometry into the partial cutting tooth geometries, those sections of the cutting tooth geometry in at least one partial cutting tooth geometry recess behind the cutting tooth geometry for which the theoretical material removal falls below a predetermined limit value at least in some portions, but is greater than zero (Figures 1-2; Paragraphs 0041-0046).
Regarding claim 4, Kirby teaches the method according to claim 1, characterized in that the machining of cutting teeth (8), which comprise the different partial cutting tooth geometries (11,12), are machined from the milling tool blank using a grinding wheel with a standardized profile or standard grinding wheel (Abstract; Paragraphs 0055-0060), preferably using end of the line processing (Figure 1; Note Figure 3 showing two grinding wheels).
Regarding claim 8, Kirby teaches the method according to claim 2;
characterized in that the machining of cutting teeth (8), which comprise the different partial cutting tooth geometries (11,12), are machined from the milling tool blank using a grinding wheel with a standardized profile or standard grinding wheel (Abstract; Paragraphs 0055-0060), preferably using end of the line processing (Figure 1; Note Figure 3 showing two grinding wheels).
Regarding claim 9, Kirby teaches the method according to claim 3;
characterized in that the machining of cutting teeth (8), which comprise the different partial cutting tooth geometries (11,12), are machined from the milling tool blank using a grinding wheel with a standardized profile or standard grinding wheel (Abstract; Paragraphs 0055-0060), preferably using end of the line processing (Figure 1; Note Figure 3 showing two grinding wheels).
Related Prior Art
Below is an analysis of the relevance of references cited but not used
- "892 cited references A-M on page 1 and A on Page 2 establish the state of the art with a variety of milling tools and methods of making different tool elements, some using a grinding process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/RICHARD D CROSBY JR/ 06/15/2026Examiner, Art Unit 3724
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