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 .
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 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Nagae (US 2019/0184467 A1) in view of Buerkle (US 2023/0082274 A1).
As to claim 1, Nagae teaches a fixing member (clamp member 4) that presses and fixes a cutting insert (insert 3. The clamp is useful for performing this intended use. See [0062]: “The clamp member 4 is a member for fixing the insert 3 to the pocket 23 as illustrated in FIGS. 2 and 3.”) disposed on an insert mounting part of a tool body (insert 3 is disposed in pocket 23 of holder 2), the fixing member comprising: a fixing member body (clamp 42) that has a pressing part for pressing the cutting insert (columnar engaging part 423, see Fig 14, is useful for performing this intended use); a fitting protrusion (pipe 6) that is provided so as to protrude from a bottom part of the fixing member body (see for example Figs 6 and 20 which show pipe 6 protruding from the bottom of clamp 42), the fitting protrusion being fitted in a fitting hole formed in the tool body (as shown in Fig 7, there is a flow path 51 comprised of portions 515, 514, 513, 512, 511. As shown in Fig 6, the pipe 6 is inserted into the portions); and a flow path that guides a fluid delivered from a supply path of the tool body to a discharge port formed in a leading end of the fixing member body so as to be discharged therefrom (the clamp 42 includes a flow path 52 shown in Fig 14 which extends from the flow path 51 of the tool holder 2 to an opening 521 at the tip of the clamp 42.).
Nagae does not teach: wherein an inlet port of the flow path which communicates with an outlet port of the supply path of the tool body is formed in an outer peripheral surface of the fitting protrusion.
Rather, Nagae teaches an inlet port of the flow path of the fitting protrusion is at a bottom surface (indicated at arrow A in annotated Fig 20 below), not in an outer peripheral surface (indicated at arrow B, for example).
Examiner’s interpretation of “outer peripheral surface” is narrower than merely “outer surface.” In one potential interpretation, “peripheral” may refer broadly to “periphery” meaning any exterior surface, which includes the bottom face of the pipe 6. However, the claim already recites “outer... surface” which would make the term “periphery” redundant. Thus “outer peripheral surface” must be more narrow. Here the term “peripheral” is imbued with the connotation “circumferential” as shown in Applicant’s figures and indicated for example at arrow B in the annotated Figure below. Accordingly, Nagae does not teach the inlet port of the flow path through pipe 6 is at an “outer peripheral surface.”
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However, in the art of tool holders having flowpaths communicating with clamping components, it was known at the time the invention was effectively filed to provide for inlet ports at the outer peripheral surface of a fitting protrusion. See Buerkle which teaches a tool body 1 having an insert 9 held thereon by a clamping member 11 which is itself held by a clamping pin 17 which is inserted into the tool body 1. See Fig 1. Moreover, the clamping pin 17 has a flowpath therethrough (coolant fluid channel 23) useful for conveying fluid from a channel within the tool 1 (fluid channel 48) to the insert 9 (see Fig 5).
Buerkle teaches several variations on the inlet port of pin 17. As shown in Fig 5, the inlet port of pin 17 is at a bottom surface (similar to arrow A of Nagae Fig 20, above). However, Buerkle also teaches a different embodiment in which the bottom of clamping pin 17 passes by the fluid channel 48 such that the inlet port of clamping pin 17 is at an outer peripheral surface. See Buerkle Figs 12 and 13.
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It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have swapped the inlet port of pipe 6 of Nagae from the bottom surface to an outer peripheral surface. Such a person would have been motivated to do so, with a reasonable expectation of success, in order to allow the bottom of the pipe to be used in a threaded arrangement as shown in Buerkle Fig 13 to more sufficiently secure a clamp while allowing fluid to pass into the pipe. Moreover, see MPEP § 2143 B which discusses the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results. In this case, as Buerkle indicates that both bottom and side inlets are useful, choosing one for the other would have been a simple matter of swapping one known component for another.
As to claim 2, Nagae in view of Buerkle teaches the fixing member according to claim 1, wherein the flow path includes an introduction flow path on the inlet port side (Nagae’s pipe 6 includes a flow path between 6a and 6b as shown in Fig 22), a discharge flow path on the discharge port side (see Fig 14, the discharge path on the discharge port side is identified as 522a), and a fluid reservoir provided between the introduction flow path and the discharge flow path (second coupling part 523 as shown in Fig 14), the fluid reservoir having a flow path whose cross-sectional area is larger than the introduction flow path and the discharge flow path (the second coupling part 523 is a reservoir having a larger gross-sectional area than either the path 522a or the path through pipe 6.).
As to claim 4, Nagae in view of Buerkle teaches a cutting tool (Nagae’s cutting tool 1), comprising: the fixing member according to claim 1 (as shown in Fig 1, Nagae includes the clamp member 4); a tool body (tool holder 2) having an insert mounting part (pocket 23) on which the cutting insert is disposed (insert 3 is mounted in the pocket as illustrated in Nagae Fig 2) and a fixing member mounting part with which the fixing member is assembled (as shown in Nagae, the fixing member is mounted to the tool holder 2 via surface 24); and the cutting insert that is disposed on the insert mounting part and pressed and fixed by the fixing member (as shown in Nagae Fig 2), wherein the tool body (tool holder 2) includes: a fitting hole (region 513 as shown in Fig 7) that is formed in the fitting member mounting part and fitted with the fitting protrusion of the fixing member (as shown in Nagae Figs 6 and 7, the pipe 6 is inserted into the region 513); and a supply path that is formed in an inner peripheral surface of the fitting hole, the supply path having an outlet port that communicates with the inlet port in the outer peripheral surface of the fitting protrusion (as shown in Beuerkle Figs 12 and 13, the supply path (fluid channel 48) is formed in an inner peripheral surface of a hole 52 (analogous to Nagae’s region 513). The fluid channel 48 has an outlet port which communicates with the outer peripheral surface ports of clamping pin 17. See Examiner’s interpretation in the rejection of claim 1, above.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nagae (US 2019/0184467 A1) in view of Buerkle (US 2023/0082274 A1) as applied to claim 1 above, and further in view of Luik (US 11,440,101 B2).
As to claim 4, Nagae in view of Buerkle teaches the fixing member according to claim 2, but does not teach the introduction flow path is formed inside the fitting protrusion so as to be curved from the inlet port toward the fluid reservoir.
Rather, as shown in both Nagae’s pipe 6 and Buerkle’s pin 17, the flow path through the fitting protrusion is columnar or straight and not curved.
However, in the field of tool holders having flowpaths therein, it was known at the time the invention was effectively filed to provide for either straight or curved flowpaths within the various components. See Luik which teaches a tool holder 12 having an insert 14 clamped by an attachment 16 and fastening element 24. A flowpath through the attachment 16 conveys coolant from the holder 12 to the insert. Notably the flowpath through attachment 16 is either straight, as shown in Fig 5, or curved as shown in Figs 6 and 7. Luik Col 5 line 43+ teaches the benefit of the curved path is for improved fluid dynamics: “Compared with an angular configuration of the second internal coolant duct, an arcuate curve has fluid dynamic advantages since the coolant then does not experience any “hard” deflections with increased flow resistance in the interior of the coolant guiding attachment.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the introduction flow path of the fitting protrusion of Nagae in view of Buerkle to be curved as taught by Luik. Such a person would have been motivated to do so, with a reasonable expectation of success, in order to achieve the benefits of optimized fluid dynamics.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hirano et al. (US 11,344,953) teaches a clamp having a protruding fitting member and a flowpath therein. The flowpath has varying cross-sections along its length.
Giannetti (US 7,273,331) teaches a tool having an insert and a clamp. The flowpath within the tool is shown in Fig 7. The flowpath 16 intersections the flowpath 22 at what would correspond to an “outer peripheral surface” if a fitting member extended the entire length of the flowpath 22. That is, the flowpath 16 does not meet the bottom face of the flowpath 22.
Armbrust (US 4,955,264) teaches fasteners 38 are not the components fixing the clamping member 30 to the tool holder 12.
Hecht (US 8,529,162), similar to Hirano, teaches flowpaths within the components which have varying cross-sections.
Chen et al. (US 9,101,985) teaches a fitting member that is not perpendicular to the clamping face.
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.
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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 26 June 2026
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