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 .
Election/Restrictions
Applicant’s election without traverse of invention I, lines 1-17 in the reply filed on 09/14/2026 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/14/2026.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “angle that is parallel” on both lines 4 and 7 of claim 3; the “groove is sized to be between half of a cone in shape to a quarter of a cone in shape” as in claim 6; the “groove is sized to be a third of a cone in shape” in claim 7; “pre-selected angle” in claim 9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “movable member” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 6-7, 9-10 and 11 are 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 6 recites in lines 1-2 that “the groove is sized to be between half of a cone in shape to a quarter of a cone in shape”. The metes and bounds of the claim are unclear. It is unclear how exactly the groove is “sized to be between half of a cone in a shape to a quarter of a cone in shape”. What is catalogued as “half of a cone in shape to a quarter of a cone in shape”. Further clarification is needed.
Claim 7 recites in line 1 “the groove is sized to be a third of a cone in shape”. The metes and bounds of the claim are unclear. It is unclear how exactly the groove is “sized to be to be a third of a cone in shape”. What is catalogued as “third of a cone in shape”. Further clarification is needed.
Claim 9 recites in line 3 “a pre-selected angle”. It is unclear how exactly this angle has been “pre-selected”. From where to where? In relation to what these angles are defined. Further clarification is needed.
Claim 10 recites in lines 1-3 that the “pre-selected angle at which the first wall edge extends linearly is between 0° and 60° and the pre-selected angle at which the second wall edge extends linearly is between 0° and 60°”. However, it is unclear how exactly these angles have been “pre-selected angle”. From where to where? In relation to what these angles are defined. Further clarification is needed.
Claim Rejections - 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.
Claim(s) 1-3, 5, 8-16 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawashima US 2023/0321733.
In a first interpretation:
In regards to claim 1, Kawashima discloses a cutting apparatus (Figures 1-19) comprising: a cutting insert (1) having a body, the body having at least one cutting side (11), each of the at least one cutting side (11) configured to define a back shoulder edge (see annotated Figure 1 below) and a first wall positioned between a groove (70A) and the back shoulder edge, the groove (70A defined to be in communication with a first end mouth and a second end mouth opposite the first end mouth, the first end mouth being smaller than the second end mouth (see annotated Figure 1 below); a gap being defined in communication with the groove, the gap being tapered such that a portion of the gap adjacent the second end mouth is larger than a portion of the gap defined adjacent to the first end mouth (see Figure 1 below).
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In a second interpretation:
In regards to claim 1, Kawashima discloses a cutting apparatus (Figures 1-19) comprising: a cutting insert (1) having a body, the body having at least one cutting side (11), each of the at least one cutting side (11) configured to define a back shoulder edge (see annotated Figure 1 below) and a first wall positioned between a groove (70A) and the back shoulder edge, the groove (70A defined to be in communication with a first end mouth and a second end mouth opposite the first end mouth, the first end mouth being smaller than the second end mouth (see annotated Figure 1 below); a gap being defined in communication with the groove, the gap being tapered such that a portion of the gap adjacent the second end mouth is larger than a portion of the gap defined adjacent to the first end mouth (see Figure 1 below).
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In regards to claim 2, on either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that the first end mouth is curved, and the second end mouth is curved (see Figure 1).
In regards to claim 3, on either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that the groove has a length that extends from the first end mouth to the second end mouth, the first end mouth being offset relative to the second end mouth such that a first centerline passing linearly through a center of the first end mouth toward the second end mouth at an angle that is parallel to an axis of rotation about which the cutting insert is rotatable, the first centerline passing linearly through a center of the first end mouth toward the second end mouth being offset by an offset distance (Od) from a second centerline passing linearly through a center of the second end mouth toward the first end mouth at an angle that is parallel to the axis of rotation about which the cutting insert is rotatable.
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In regards to claim 5, either interpretation of Kawashima discloses the cutting apparatus of claim 2, Kawashima also discloses that the groove (70A) is generally conical in shape (see Figure 1).
In regards to claim 8, either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that each of the at least one cutting side is configured to define a flute (80A) and a second wall positioned between the flute (80A) and the groove (70A) (see annotated of either interpretations on Figure 1 above).
In regards to claim 9, either interpretation of Kawashima discloses the cutting apparatus of claim 8, Kawashima also discloses that the groove (70A) is positioned between the first wall and the second wall (see annotated Figure 1 above), the groove having a first wall edge (see annotated Figure 1 above) that extends linearly from a first end of the first end mouth to a first end of the second end mouth along a pre-selected angle, the first wall edge being positioned between the first wall and the groove (see annotated Figure 1 above); and the groove also having a second wall edge (see annotated Figure 1 above) that extends linearly from a second end of the first end mouth to a second end of the second end mouth along the pre-selected angle, the second wall edge being positioned between the second wall and the groove (see annotated Figure 1 above).
In regards to claim 10, either interpretation of Kawashima discloses the cutting apparatus of claim 9, Kawashima also discloses that the pre-selected angle at which the first wall edge extends linearly is between 0° and 60° and the pre-selected angle at which the second wall edge extends linearly is between 0° and 60° (see annotated Figure 6 below, which angle is about 45 degrees).
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In regards to claim 11, the second interpretation of Kawashima discloses the cutting apparatus of claim 9, Kawashima also discloses that the first wall edge (annotated on Figure 1, second interpretation) is defined such that a portion of the first wall extends over a first portion of the groove closest to the first wall to enclose the first portion of the groove (in the same way as Applicant’s groove “encloses” the first portion of the groove), the first portion of the groove being in fluid communication with a central portion of the groove, the central portion of the groove being in direct fluid communication with the gap (annotated on Figure 1, second interpretation).
In regards to claim 12, the second interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that the groove is defined to have a first wall edge (annotated on Figure 1, second interpretation) adjacent the first wall such that a portion of the first wall extends over a first portion of the groove closest to the first wall to enclose the first portion of the groove (in the same way as Applicant’s groove “encloses” the first portion of the groove), the first portion of the groove being in fluid communication with a central portion of the groove, the central portion of the groove being in direct fluid communication with the gap (annotated on Figure 1, second interpretation).
In regards to claim 13, either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that the first wall extends linearly from the back shoulder edge to the gap.
In regards to claim 14, either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses that the at least one cutting side is configured to define a flute and a second wall positioned between the flute and the groove, the second wall extending upwardly away from the groove and the flute being curved as the flute extends from the second wall to a transition side of the body of the cutting insert (see Figure 1).
In regards to claim 15, either interpretation of Kawashima discloses the cutting apparatus of claim 1, Kawashima also discloses a projection (20) extending from an end of the body of the cutting insert, the projection sized and configured to be received within a hole of a moveable member (102).
In regards to claim 16, either interpretation of Kawashima discloses the cutting apparatus of claim 15, Kawashima also discloses that the moveable member (102), the moveable member having a first portion that is moveable relative to a second portion such that the moveable member is adjustable between an open position and a closed position (in the same way as presented by Applicant’s first and second portion, refer to Figure 12 of Kawashima), the moveable member having the hole (120) and the projection (20) being insertable into the hole, the moveable member being rotatable.
In regards to claim 17, either interpretation of Kawashima discloses the cutting apparatus of claim 16, Kawashima also discloses that the at least one cutting side is configured for undercutting of a workpiece.
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.
Claim(s) 4, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima US 2023/0321733 as applied to claim 1 above.
In regards to claim 4, either interpretation of Kawashima discloses the cutting apparatus of claim 3, Kawashima discloses that the offset distance has an extent.
However, Kawashima fails to disclose that the extent of the distance is between 0.1 mm and 1 mm.
However, it would have been obvious to one having ordinary skill in the art at the time the applicant’s invention was filed to have the offset distance as desired, such as between 0.1 mm and 1 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routing skill in the art. In re Aller, 105 USPQ 233.
In regards to claim 6 and 7, either interpretation of Kawashima discloses the cutting apparatus of claim 5, Kawashima discloses that the groove (70A) is generally cone shape.
However, Kawashima fails to disclose that the groove is sized to be between half of a cone in shape to a quarter of a cone in shape and that the groove is sized to be a third of a cone in shape.
Nevertheless, the disclosure of the instant invention fails to provide criticality to having the “the groove is sized to be between half of a cone in shape to a quarter of a cone in shape and that the groove is sized to be a third of a cone in shape” and it would have been obvious matter of design choice to further modify the invention of Kawashima by having the groove be sized to be “between half of a cone in shape to a quarter of a cone in shape” and “a third of a cone in shape”, since applicant has not disclosed that having the groove be sized to be “between half of a cone in shape to a quarter of a cone in shape and that the groove is sized to be a third of a cone in shape” solves any stated problem and it appears that the conical shape of the groove of Kawashime would perform equally well. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container as significant).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
