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 .
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. RE50,607 Semnisky et al. (‘Semnisky-607 hereafter), App 18/083299; Filed 12/16/2022
U.S. 2023/0256520 Semnisky et al. (‘Semnisky-520 hereafter), App 17/674382; Filed 02/17/2022
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1 - 11 are currently being examined.
No Claims have been canceled.
Claims 1 – 10 are allowed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter) because Claim 25 is a method claim and is dependent on a product claim and requires: “A method for manufacturing a machined product,
the method comprising: rotating the cutting tool according to claim 1;
bringing the cutting tool into contact with a workpiece; and separating the cutting tool from the workpiece.”
Claim 11 is directed towards subject matter outside the four statutory categories (i.e. product, apparatus, method, and composition of matter) and is not directed to one statutory category.
Claim Rejections - 35 USC § 112(b)
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 11 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 requires: “A method for manufacturing a machined product, the method comprising: rotating the cutting tool according to claim 1; bringing the cutting tool (10) into contact with a workpiece; and separating the cutting tool from the workpiece.”
It is unclear which statutory class Claim 11 is classified to.
Allowable Subject Matter
Claim[s] 1 is/are allowed. The following is a statement of reasons for the indication of allowable subject matter: The prior art does not anticipate nor render obvious the combination set forth in the independent or dependent claims, specifically does not show: “A cutting tool comprising: a shaft portion having a cylindrical shape and extending along a rotation axis from a front end toward a rear end; a first protrusion protruding from the shaft portion toward an outer periphery and having a first cutting edge at an end portion of the outer periphery; a second protrusion protruding from the shaft portion toward the outer periphery and having a second cutting edge at an end portion of the outer periphery; and a first beam located away from the shaft portion and connected to the first protrusion and the second protrusion, wherein the second protrusion is located behind the first protrusion with respect to a rotation direction of the rotation axis, and the first beam has a projecting shape protruding toward the outer periphery in a view at a side of the front end.”
The closest prior art is as cited were: ‘Semnisky-607 & ‘Semnisky-520.
‘Semnisky-607 teaches: A cutting tool (‘Semnisky-607, Abst, “ A lightweight cutting tool, such as a reamer, includes a front cutting body, a front cutting ring, a center tube, a rear cutting ring and a rear machine connection member.”) comprising: a shaft portion having a cylindrical shape and extending along a rotation axis from a front end toward a rear end (‘Semnisky-607 Figs 1 & 2, #16 (center tube/ shaft portion), extends along #RA (rotational axis) from the front end towards the rear end); a first protrusion protruding from the shaft portion toward an outer periphery (‘Semnisky-607, Fig 1, system of #36 (trailing arms), #34 (leading arms), #30 (flange) and #38 (cutting head), are arranged radially around the shaft towards the outer periphery, first protrusion is towards left most side of Fig 1) and having a first cutting edge at an end portion of the outer periphery; (‘Semnisky-607, Fig 7, #38 (cutting head) has a cutting edge and are at the end portions of the outer periphery), a first protrusion protruding from the shaft portion toward an outer periphery and having a first cutting edge at an end portion of the outer periphery (‘Semnisky-607, Fig 1, system of #36 (trailing arms) , #34 (leading arms), #30 (flange) and #38 (cutting head), first protrusion is towards left most side of Fig 1, and are arranged radially around the shaft towards the outer periphery) and having a first cutting edge (25A) at an end portion of the outer periphery (‘Semnisky-607, Fig 7, #38 (cutting head) has a cutting edge and are at the end portions of the outer periphery); a second protrusion protruding from the shaft portion toward the outer periphery and having a second cutting edge at an end portion of the outer periphery (‘Semnisky-607, Fig 1, system of #36 (trailing arms), #34 (leading arms), #30 (flange) and #38 (cutting head), second protrusion is towards right most side of Fig 1, and are arranged radially around the shaft towards the outer periphery); a first beam located away from the shaft portion and connected to the first protrusion (‘Semnisky-607, Fig 1, system of #34 (leading arms), #32 (sleeve member), #44 (arm assembly), and #36 (trailing arms)) and the second protrusion,
‘Semnisky-607 does not teach: a first beam located away from the shaft portion and connected to the first protrusion and the second protrusion.
‘Semnisky-607 Fig 1, shows a second protrusion on a second beam system of #34 (leading arms), #32 (sleeve member), #44 (arm assembly), and #36 (trailing arms)).
‘Semnisky-520, does teach the first protrusion and second protrusion connected to the shaft and on a first beam system. Further ‘Semnisky-520 teaches a shaft portion Figs 2 – 4 & 6, #18 (central hub/ shaft portion), and Fig 3 shows cylindrical shape.
‘Semnisky-607 does not teach: a shaft portion having a cylindrical shape and extending along a rotation axis from a front end toward a rear end.
Neither of these references provides the limitations of Claim 1. Also, neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited. Claims 2 - 10, are also allowed because they are dependent on claim 1.
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
07/21/2026
Prosecution Insights