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 .
Detailed Action
The preliminary amendment filed on 09/25/2024 has been entered.
Claim Rejection - 35 U.S.C. 112(b)
1. 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.
2. Claims 1 and 5-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
(1) In claim 1, lines 14-15, “the moving direction is a direction in which the cutting edge is brought close to the first surface and the second surface” does not agree with Fig.7. As shown in the figure, the cutting edge 11 is brought close to the first surface 15 in a first moving direction R1 by a first moving device 263, and the cutting edge 11 is brought close to the second surface 25 in a second moving direction R2 by a second moving device 264. Note lines 16-18 of claim 1. As shown in Fig.7, the first moving direction R1 is perpendicular to the second moving direction R2. Thus, it is incorrect to say “the moving direction is a direction in which the cutting edge is brought close to the first surface and the second surface” In other words, the same moving direction is not the direction in which the cutting edge 11 is brought close to the first surface 15 and the second surface 25 but is achieved by two different moving directions R1 and R2 with a first moving device 263 and a second moving device 264, respectively, as seen in Fig.7.
(2) In claim 6, line 1, “a base” is vague. It is suggested “having a cutting edge joined to a base” be changed to --having a base and a cutting edge joined to the base--.
Claim Rejection - 35 U.S.C. 102(a)(1)
1. 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.
2. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ananthanarayanan (U.S. Patent No. 8,963,043).
Regarding claim 1, Ananthanarayanan discloses a manufacturing apparatus (10, see Fig.1) comprising:
a first electrode (12);
a second electrode (14);
a current generator (16) that generate an electric current flowing between the first electrode (12) and the second electrode (14); and
a moving device including a first moving device and a second moving device (e.g., a pair of movable arms, see column 3, lines 15-16) relatively move at least one of the first electrode (12) and the second electrode (14) in a moving direction.
The statement of intended use (e.g., for manufacturing an insert being used in a cutting tool and having a cutting edge joined to a base) adds no structure to the claimed manufacturing apparatus and accordingly cannot serve to distinguish.
Claim Rejection - 35 U.S.C. 103
1. 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.
2. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ananthanarayanan (U.S. Patent No. 8,963,043) in view of Hayashi (U.S. Patent Application Publication No. 2023/0009387).
Regarding claim 5, Ananthanarayanan’s manufacturing apparatus (1) as set forth shows all the claimed structure except it lacks a controller.
Hayashi discloses a manufacturing apparatus (30, see Fig.3) comprising a moving device (35), a current generator (33), a first electrode (31), a second electrode (32), and a controller (34, e.g., a switching device, see paragraph [0038], lines 1-2 and 18-20) that controls the moving device (35) and the current generator (33) so as to cause an electric current to flow between the first electrode (31) and the second electrode (32).
Thus, it would have been obvious to one skilled in the art to modify Ananthanarayanan by providing the manufacturing apparatus (1) with a controller to allow for controlling of the moving device and the current generator as taught by Hayashi.
Indication of Allowable Subject Matter
Claims 6 and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Prior Art Citation
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KR 10-1630184 shows a manufacturing apparatus (see Fig.11) comprising a first electrode (72) and a second electrode (73).
Point of Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HWEI-SIU PAYER whose telephone number is (571)272-4511. The examiner can normally be reached on Monday – Friday from 6:00 AM to 2:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley , can be reached at telephone number 571-274502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/HWEI-SIU C PAYER/ Primary Examiner, Art Unit 3724
Prosecution Insights