DETAILED ACTION1
CLAIM OBJECTIONS
Claims 1-25 are objected to because of informalities. First, claim 1 recites a cutting inserting…comprising three elements: (1) opposing insert…surfaces, (2) an insert edge, and (3) a corner cutting portion. Grammatically the word ‘and’ is required prior to the third element. Claim 1 later does have an and. Specifically, claim 1 recites that the corner cutting portion compris[es]: a corner cutting edge…; and two nose cutting edges. It is examiner’s understanding that this later ‘and’ is linking two elements of the corner cutting portion. As such, it is not being read as linking the two nose cutting edges as the fourth element of the overall cutting insert. For improved clarity, the semi-colon in the phrase corner edge (33); and should be changed to a comma to ensure there is no confusion on this point.
Second, claim 1 recites a corner cutting portion which exhibits mirror symmetry. Grammatically, the word which in this feature (and several others) should be amended to the word ‘that.’ Claims 2-25 are objected to based in their dependence. Appropriate correction is required.
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 7 & 25 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 applicant regards as the invention.
Claim 7 recites nose cutting edge length (CL) is greater than or equal to 1.5 mm and less than or equal to 4.5 mm. The specification does not define what constitutes the length dimension for purpose of measuring the recited feature. It is therefore indefinite.
Claim 25 recites the pocket support surface is located on the fastening member. There is insufficient antecedent basis for the pocket support surface.
REJECTIONS UNDER 35 USC 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 11, 13-14, 16-19, & 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2022/0266349 to Ida.
Claim 1 recites a cutting insert, for turning metal cutting operations, having an insert central axis defining opposite upward and downward directions. Ida relates to such an insert (390). See Ida [0002] and Figs. 3 & 16. Figures 3, 16, & 17 of Ida show the cutting insert (390) has opposing insert upper (101) and lower surfaces (100) and an insert peripheral surface (104) extending therebetween and about the insert central axis (C). Ida further shows an insert edge (103) formed at the intersection of the upper and peripheral surfaces and that this edge has two side edges on either side of a convex corner edge (91).
Claim 1 also recites the two side edges [each have one of] two mid-side edges spaced apart from the corner edge. Although figure 16 does not explicitly label such side edges, the side edges in figure 16 show several distinct segments with separating lines, based on changing curvatures. One such segment in the middle may be defined as the mid-side edge on either side.
Claim 1 then recites a corner cutting portion [that] exhibits mirror symmetry with respect to a corner bisector plane. Figure 16 shows the corners have mirror symmetry with respect to the line running from the corner through center C. Claim 1 then recites the corner cutting portion has both a corner cutting edge formed from the corner edge; and two nose cutting edges (38) and two narrowing edges (40) formed on the two side edges. Ida teaches that the corner has a corner cutting edge at location (91) and then two nose cutting edges (120) on the side edges. See Ida [0061]. Ida further teaches each side has a respective one of the narrowing edges (142). Figures 5 and 16 shows that each nose cutting edge (140) extends from the corner cutting edge (91) to a respective narrowing edge (142) and that each narrowing edge (142) extend[s] from a respective nose cutting edge towards a respective mid-side edge. The combination of figures 5 and 16 further show that each narrowing edge (142) extends away from the corner bisector plane as it moved away from the respective nose cutting edge. Finally, Ida teaches that the two nose cutting edges (140) form a nose angle (β) that is smaller than the mid-size angle (α) formed by the two mid-side edges. See Ida [0077]-[0080.
Claim 2 recites that the corner cutting portion further comprises two intermediate edges formed on the two side edge. Figure 6 of Ida shows the corner region starting at (91) with a downslop region (102) until a rising segment at (103). This rising region corresponds to the intermediate edges, element 44, in figures 3-4 of applicant’s specification. Thus, Ida appears to show intermediate edges. Likewise, this rising region in figure 6 of Ida meets the limitation of claim 3, that the far-corner intermediate edge extends away from the median plane (P) with increasing distance (i.e. is higher than) the near-corner intermediate edge. Regarding claim 4, figure 6 shows the nose cutting edges slopes downward away from the nose and thus extend[s] towards the median plane (P) with increasing distance from the corner.
Regarding claim 5, figure 5 shows that the corner cutting edge (91) and the two nose cutting edges are located within an angular extent of the mid-side angle (α). Regarding claim 11, figure 16 of Ida shows the he cutting insert comprises exactly three corner cutting portions and the insert edge [has] exactly three side edges. Regarding claim 13, the figures of Ida show N-fold rotational symmetry about the insert central axis (C). Regarding claim 14, some embodiments of Ida, such as figure 6 show mirror symmetry with respect to the median plane (P1). Claim 16 recites the cutting insert is pressed-to-size and no portion or surface thereof is ground. This is a product-by-process limitation and does not limit the structure. It therefore carries no patentable weight.
Claim 17 recites a turning cutting tool using the insert of claim 1 in an insert holder. Figures 1-2 of Ida shows such a tool (1). The tool has an insert pocket (30) located at a forward end…[with] a fastening member (82). Regarding claim 18, the approach angle is defined by use of the tool and therefore is not a structure of the tool. It therefore has no patentable weight. This is also the case for the ramp down angle of claim 19. Finally, regarding claim 25, figure 1 of Ida shows the fastening member (84) is a clamping arm, releasably attached to the insert holder (20) by a clamping screw (84) as well as showing that [a] pocket support surface (30) is located on the fastening member.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 6-7, 12, 15, & 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2022/0266349 to Ida.
Claim 6 recites no part of the narrowing edge (142) is located closer to a mid-way point of the side edge upon which the narrowing edge is formed than to the corner cutting edge. Figure 16 appears to show this. Although figures are not necessarily to scale, it would have been obvious as a matter of common sense to start from the illustrated relative distances when recreating the device of Ida.
Claim 7 recites that the nose cutting edge length (CL) is greater than or equal to 1.5 mm and less than or equal to 4.5 mm. As noted in the indefiniteness rejection, this length is not defined. Regardless, the size of the cutting tool of Ida can be scaled up or down, as necessary for specific uses and tools. As such, the length is a mere design choice as applicant has not defined that this length has any criticality or is for any specific purpose.
Regarding claim 12, Ida teaches the mid-side angle (α) is equal to 60°. See Ida [0080]. Ida does not teach the nose angle (β) is equal to 55° rather teaching it is 35 degrees. But it would have been obvious to modify Ida to have a larger value as a mere design choice. Applicant has not taught any criticality to this value. Regarding claim 15, the size of the cutting tool of Ida can be scaled up or down, as necessary for specific uses and tools. As such, the corner radius of claim 15 can be obtained via scaling, and applicant has not defined that this radius has any criticality or is for any specific purpose. Claim 20 recites that the nose cutting edge of the first side edge is oriented parallel to the holder longitudinal axis. It is difficult to definitely state this is the case in figure 1. But figure 9 of applicant’s specification does not appear to show this feature either. Both show the feature to the same approximate level. Thus, this feature is deemed to be an obvious variant.
ALLOWABLE SUBJECT MATTER
Claims 8-10 and 21-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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