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 14-21 and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kress (US 20020081168 A1) in view of Junger (EP 4393620 A1).
As to claim 14, Kress teaches a milling tool (“Toole for the fine machining of workpieces” (Title)), comprising: a milling tool main body (the tool 1 has a main body (base body 4) as shown in Fig 1) having a first end (although it is not illustrated, the tool 1 inherently has an end opposite the front end 3. This “rear” end is considered the claimed first end). Kress does not teach: with an interface for connecting to a machine-proximal tool receptacle.
Rather, Kress teaches the tool 1 is useful for fine machining of a workpiece and further teaches at [0002]: “The tool is usually rotated to machine a stationary workpiece.” Examiner takes official notice that it was known at the time the invention was effectively filed for machine tools useful for rotating to machine a stationary object to have interfaces for connected to a machine-proximal tool receptable.
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 for such an interface. Such a person would have been motivated to do so, with a reasonable expectation of success in order to connect the tool 1 of Kress to a rotating machine to effect the rotation required to cut the workpiece.
Kress further teaches: and a free second end (front end 3) having at least one seat (see Fig 1. [0020]: “The recess 9 is formed in a boundary surface 7 of the chip space 5 to receive an inserted cutter tip 11.”) for receiving an interchangeable cutting insert (cutter tip 11); a first support member (see Fig 4 which shows a setting device 25 having adjusting elements 27, 27’. The adjusting element 27 is the claimed first support member), disposed on said at least one seat (as illustrated in Figs 1 and 4), for supporting a first lateral face of the interchangeable cutting insert (as shown in the orientation of Fig 4, the adjusting element 27 is useful for supporting the bottom face of the cutting tip 11. In the orientation shown in Examiner’s annotated Fig 1 below, this this is support in the y direction.), said first support member being reversibly fastened by way of a first fastening element to said milling tool main body ([0022]: “The adjusting element 27 is displaceable relative to the cutter tip 11 by a set screw 31.”); a second support member (See Fig 4. Adjusting element 27’), disposed on said at least one seat (as illustrated in Figs 1 and 4), for supporting a second lateral face of the interchangeable cutting insert (as shown in the orientation of Fig 4, the adjusting element 27’ is useful for supporting the left face of the cutting tip 11. In the orientation shown in Examiner’s annotated Fig 1 below, this this is support in the z direction.), said second support member being reversibly fastened by way of a second fastening element to said milling tool main body (set screw 31).
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Kress does not teach a third support member, disposed on said at least one seat, for supporting a lower side of the interchangeable cutting insert, said third support member being reversibly fastened by way of a third fastening element to said milling tool main body.
Rather, Kress teaches the setting device allows a user to repeatedly set a cutting tip in what are considered the y and z direction, but not the x direction.
However, it was known at the time invention was effectively filed to provide for a support member for a cutter to control the cutter’s position in the equivalent of Kress’s x direction. See Junger which teaches a turning insert having a cutter useful for being set into a seat 27. Junger teaches the cutter is lifted from the seat by a shim 28. Shims are known in the art as being useful for controlling the distance between two components to create a repeatable indexing, in the same way that Kress’ adjusting elements 27, 27’ provide offsets to form a repeatable indexing.
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 for the arrangement of the shim 28 of Junger in the device of Kress.
Such a person would have been motivated to do so, with a reasonable expectation of success, in order to control the position of an indexable cutter in each of the X, Y, and Z directions. Moreover, such a person would have recognized the benefit of a shim alone in the ability to use cutters of different heights, and to match them with different shims to arrive at a consistent cutting height for all cutters. For example, if a total cutting height is 2 cm, then a user might choose a cutter of 1 cm paired with a shim of 1cm. Or if only a cutter of 8mm is available, then to choose a shim of 1.2cm.
The shim 28 of Junger is fastened to the cutter by a fastener, 31.
As to claim 15, Kress in view of Junger teaches the milling tool according to claim 14, wherein said first fastening element, said second fastening element and said third fastening element are in each case formed as screws (Kress and Junger teaches fasteners 31 which are illustrated as screws).
As to claim 16, Kress in view of Junger teaches the milling tool according to claim 14, wherein said first fastening element (Kress’ set screw 31 in adjusting element 27), said second fastening element (Kress’ set screw 31 in adjusting element 27’) and said third fastening element (Junger’s screw 31 in shim 28) are in each case formed with an engagement region for a screw-driving tool (each are set screws. The ability to drive a screw with an engagement region is implied), and said engagement region is conceived to engage with the screw-driving tool (each are screws and therefore are useful for engaging with a screw-driving tool).
As to claim 17, Kress in view of Junger teaches the milling tool according to claim 14, further comprising a clamping wedge (Junger teaches a clamp 39) for exerting a clamping force on an upper side of the interchangeable cutting insert is disposed in a region of said at least one seat (as shown in Junger, the clamp 39 is useful for clamping the cutter and is located in the region of the seat. Examiner notes that Junger’s clamp 39 is necessary in combination with the shim 28 as unlike Kress, Junger’s cutting tip can not be directly attached to the seat via a screw since the shim is in the way. Thus, when Kress is modified by Junger to include a shim, an artisan would also have imported Junger’s clamp to ensure the cutting tip is held fast.).
As to claim 18, Kress in view of Junger teaches the milling tool according to claim 17, further comprising a screw element (Junger teaches a tightening screw 40), said clamping wedge is connected to said milling tool main body by way of said screw element (Junger [0075] teaches: “In order to clamp the turning insert, the tightening screw 40 of the clamping mechanism is tightened, whereby the clamp 39 engages the main top support surface 14 and presses the turning insert toward the shim 28 and toward the side surface 32.”).
As to claim 19, Kress in view of Junger teaches the milling tool according to claim 18, but does not teach said clamping wedge has a threaded portion; said milling tool main body has a threaded portion; and said screw element has a first threaded region which interacts with said threaded portion in said clamping wedge, and a second threaded region which interacts with said threaded portion in said milling tool main body.
Rather, the screw 41 of Junger’s clamp 39 is partially threaded as a bolt. See Fig 5. This allows the screw 40 to extend through an unthreaded region of the clamp 39 while being threaded to the body 26.
However, Kress teaches the various components which are screwed together have the arrangement as claimed such that both components have screw threads such that the screw is screwed into both. See Kress’ set screw 31 having regions 43, 45.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have used the arrangement of two threaded regions on a single screw, and a threaded region on each of the wedge and the tool main body as claimed.
Such an arrangement is at least a known analogue to the bolt-style threading shown in Junger. Thus, choosing one or the other amounts to either a simple substitution of one known element for another to obtain a predictable solution (MPEP § 2143 B) or would have been obvious to try in view of a small number of identified predictable solutions (MPEP § 2143 E).
As to claim 20, Kress in view of Junger teaches the milling tool according to claim 19, wherein said first threaded region and said second threaded region of said screw element differ from one another in a rotation direction of a thread and/or a thread pitch (Kress teaches the set screw 31 has a right-threaded region 43 and a left-threaded region 45.).
As to claim 21, Kress in view of Junger teaches the milling tool according to claim 14, wherein said third support member is laterally supported on both said first support member and said second support member (this is expected given the arrangement of the support members controlling the offset in the X, Y, and Z directions.).
As to claim 23, Kress in view of Junger teaches the milling tool according to claim 14, further comprising: a first set of said first support member, said second support member and said third support member; and at least one further set, which is different from said first set, of a further first support member, a further second support member and a further third support member for adapting said at least one seat for receiving different cutting inserts (on one hand, any grouping of the support members obviated by Kress in view of Junger may be considered a set. As it is widely understood that multiple copies may exist, any other group of those copies may be considered a second set. Each set will be useful for a different cutting insert, even if the cutting inserts are dimensionally the same. On the other hand, if the claim requires cutting inserts having different geometries, please refer to Examiner’s comments regarding the usefulness of shims to bring different sized cutting inserts to the same cutting position. In this case, a grouping of support members having large thicknesses are obviated to be used with small cutting insert while a grouping of support members having small thicknesses are obviated for use with a thick cutting insert, in order to ensure that both cutting inserts have the same cutting position.).
As to claim 24, Kress in view of Junger teaches the milling tool according to claim 14, wherein said at least one seat is one of a plurality of seats on said second end, said plurality of seats are distributed across a circumference of said milling tool main body, for receiving interchangeable cutting inserts (Kress [0045]: “[0045] From the explanations of FIGS. 1 to 7, it can be seen that the setting device may also be used in tools which have a plurality of cutter tips.”).
As to claim 25, Kress in view of Junger teaches the milling tool according to claim 14, wherein said first support member and said second support member are of identical design (as shown in Kress Fig 4, the adjustable supports 27, 27’ are of the same design.).
As to claim 26, Kress in view of Junger teaches the milling tool according to claim 14, wherein said at least one seat on said milling tool main body is generated entirely by hobbing from one machining direction (this is a product-by-process limitation. See MPEP § 2113. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. There is no particular structure required by the claim. Thus, whatever structure the claim already requires is rejected under Kress in view of Junger.).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kress in view of Junger as applied to claim 14 above, and further in view of Ozeki (JP 2004136428 A).
As to claim 22, Kress in view of Junger teaches the milling tool according to claim 14, but does not teach said third fastening element is disposed obliquely in such a manner that said third support member is tensioned in a direction of said first support member and in a direction of said second support member.
Rather, Kress and Junger’s fastening elements are disposed perpendicular to the axis, not oblique. However, it was known in the art to provide for fastening elements disposed obliquely to the axis. See Ozeki Figs 3 and 4 which teaches fastening elements having shaft centers 25, 15 which are oblique to the axis in which the associated elements extend. This obliqueness helps wedge the components together.
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 for disposing the third fastening element of Kress in view of Junger obliquely as claimed.
Such a person would have been motivated to do so to provide for the wedge effect shown in Ozeki.
Conclusion
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 11 June 2026
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