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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (US 11,344,953) in view of Buerkle (US 2023/0082274).
As to claim 1, Hirano teaches a fixing member (pressing member 2) that presses and fixes a cutting insert disposed on an insert mounting part of a tool body (Fig 1 shows pressing member 2 presses and fixes cutting insert 4 on holder body 1), the fixing member (pressing member 2; refer to Figs 4-7. Hirano teaches a “fixing member 3” which is a fastener such as a screw which is not interpreted as the claimed “fixing member.”) comprising: a fixing member body (the body of the pressing member 2 is shown in cross-section in Fig 7) that has a pressing part for pressing the cutting insert (front end portion 2a of pressing member 2 is the claimed “pressing part” and is capable of pressing the cutting insert 4 as shown in Figs 1 and 8); a fitting protrusion (the base 2b which extends around reservoir 23 is the fitting protrusion) that is integrally formed with the fixing member body and provided so as to protrude from a bottom part of the fixing member body (as illustrated), the fitting protrusion being fitted in a fitting hole formed in the tool body (this is an intended use of the claimed fixing member. The pressing member 2 is capable of having the base 2b fit into a hole (insert portion 13) in tool body 1 as shown in Figs 1 and 3.); and a flow path (the flow path is illustrated in Fig 7 as beginning at inflow hole 22, passing through reservoir 23, then flow path 24, and exiting at ejection hole 21) that guides a fluid delivered from a supply path of the tool body (the supply path of the tool body is illustrated in Fig 3 as flow path 14) to a discharge port formed in a leading end of the fixing member body so as to be discharged therefrom (the ejection hole 21 is formed at the leading end of the pressing member 2 as illustrated in Fig 2).
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Hirano 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, Hirano teaches an inlet port of the flow path of the fitting protrusion is at a bottom surface, not in an outer peripheral surface (see annotated Fig 7 below).
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 in the annotated Figure below. Accordingly, Hirano 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 the inlet hole 22 at the bottom surface of Hirano Fig 7, 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 hole 22 of reservoir 23 of Hirano 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, Hirano 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, a discharge flow path on the discharge port side, and a fluid reservoir provided between the introduction flow path and the discharge flow path (for each of these features, refer to annotated Hirano Fig 7 below), the fluid reservoir having a flow path whose cross-sectional area is larger than the introduction flow path and the discharge flow path (Fig 7 is illustrated in cross-section. The reservoir indicated in annotated Fig 7 has a cross-sectional area larger than the flow path and discharge flow path.).
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As to claim 4, Hirano in view of Buerkle teaches a cutting tool, comprising: the fixing member according to claim 1 (the fixing member of claim 1 is taught by Hirano in view of Buerkle. Hirano further teaches a cutting tool 1); a tool body (the tool’s body is shown alone in Hirano Fig 2) having an insert mounting part (seat face 11) on which the cutting insert is disposed (cutting insert 4 is placed on seat face 11 as described at Col 6 lines 15-16) and a fixing member mounting part with which the fixing member is assembled (insertion portion 13); and the cutting insert that is disposed on the insert mounting part and pressed and fixed by the fixing member (as shown in Hirano Fig 1), wherein the tool body includes: a fitting hole that is formed in the fitting member mounting part1 (the insertion portion 13 is illustrated as a hole, see Figs 2 and 3) and fitted with the fitting protrusion of the fixing member (Hirano Col 6 lines 26-27: “Pressing member 2 is inserted into insertion portion 13 of holder body 1 at base end portion 2b.”); and a supply path that is formed in an inner peripheral surface of the fitting hole (Hirano teaches flow path 14. Buerkle teaches fluid channeling 48), the supply path having an outlet port that communicates with the inlet port in the outer peripheral surface of the fitting protrusion (this limitation is made obvious in view of Buerkle as explained in the rejection of claim 1, above.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (US 11,344,953) 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 3, Hirano 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 Hirano’s paths 23, 24 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 Hirano 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.
Response to Arguments
Applicant’s arguments, see pages 4-5, filed 13 August 2026, with respect to the rejection(s) of claim(s) 1,2, and 4 under Nagae in view of Buerkle have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hirano in view of Buerkle.
Specifically, Applicant argues independent claim 1 requires the fitting protrusion to be integrally formed with the fixing member body, which is not taught by Nagae. Examiner agrees that Nagae’s body is not integral with the pipe 6.
However, Nagae is no longer relied upon for rejection of this claim limitation. Examiner introduces Hirano which teaches a pressing member 2 having a fixing member body and an integral fitting protrusion. See for example Fig 7 and Examiner’s annotated Figs 7 above.
Applicant has not argued that Buerkle or Luik do not teach the limitations for which they are relied upon.
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 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 16 September 2026
1 Examiner interprets “fitting member mounting part” here as referred to “fixing member mounting part” described earlier in the claim.
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