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 with traverse of Invention I (claims 1-12 and 15) in the reply filed on June 4, 2026 is acknowledged. The traversal is on the ground that there is no undue burden on the examiner to consider all claims. The conclusory allegation is not found persuasive.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. Examiner noted that, at the very least, different search queries would be necessary to examine the exclusive characteristics of each species. Thus, burden has been properly established.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13 and 14 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-12 and 15 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 1 recites “a tool” in Line 4. Yet, claim 1 also sets forth “a tool” in Line 1. It is unclear whether the second recitation is to the same tool or a different tool. Appropriate correction required.
Claim 1 recites “by axially moving the tool shank” in Lines 8-9. It is unclear as to whether the shank is moved in relation to a feature or not. Appropriate correction required.
Claim 1 recites a flat surface that is radially shifted inwards from the outer radius, which has an axial flat surface side” in Lines 9-10. It is unclear whether “shifted” requires some type of action or if the flat surface is merely recessed relative to the outer radius of the tool shank. Furthermore, it is unclear as to what feature - the flat surface or the outer radius - the axial flat surface side applies to in the claim. Appropriate correction required.
Claim 1 recites “a minimum distance of the clamping surface of the axis of rotation” in Line 14. The scope of this limitation is unclear due to the grammar of the limitation. It is unclear whether the second recitation of “of” in the limitation is correctly employed or it is a typographical error. Either way, the scope of the limitation is unclear. Appropriate correction required.
Claim 1 recites “an assembly position” in Line 19. Yet, an assembly position is previously recited in Line 8. It is unclear whether this assembly position is the same as, or different from, the previous recitation. Appropriate correction required.
Claim 3 recites “the recess” in Line 1. There is insufficient antecedent basis for this limitation. Claim 2 recites to “at least one recess.” Appropriate correction required.
Claim 4 recites “measured in a direction substantially perpendicular to the axis in a plane of the clamping surface is between 1.00 mm and 10 mm or between 2.0 mm and 4.0 mm.” The metes and bounds of a plane of the clamping face is not clearly delineated to put one of ordinary skill on notice of the claim scope. That is, it is unclear how the plane of the clamping face is determined. In addition, “the axis A” lacks proper antecedent basis. Any reference characters must be in parentheses. Relative to the numerical ranges, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction required.
Claim 5 recites “is between 0.1 mm and 2.0 mm or between 0.2 mm and 0.6 mm.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “between 0.1 mm and 2.0 mm,” and the claim also recites “between 0.2 mm and 0.6 mm” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction required.
Claim 7 recites “the contact surface” in Lines 1-2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 7 recites “a minimum distance between the contact surface from the flat surface side” in Lines 1-2. It is unclear whether the two features are in the first arrangement or the second arrangement. Appropriate correction required.
Claim 8 recites “the flat surface or its contact area” in Line 3. To contact the contact area of the flat surface is to contact the flat surface. It is unclear how the “or” in the limitation further limits the claim. Perhaps the term “its” does not refer to the flat surface, but to another feature. Yet, whatever that feature is, the claim does not make clear. Appropriate correction required.
Claim 10 recites “the first flat surface side” in Line 3. There is insufficient antecedent basis for this limitation. The claims previously recite to a flat surface side and a second flat surface side. Given the presence of a second flat surface side, it would be best to set forth the flat surface side in preceding claims as the first flat surface side. Appropriate correction required.
Claim 12 recites “a drilling machine . . . or a core drilling machine” in Line 1. The difference between a drilling machine and a core drilling machine are not clearly delineated. Appropriate clarification required.
Claim 15 recites “the toolholder is a Weldon toolholder fir a milling tool or a core drill.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999). The term “Weldon” in claim 15 is used by the claim to mean “a style of known toolholder with the spring-loaded clamping jaw,” while the general meaning relates to both the tool and toolholder in combination where set screws are employed to clamp the tool relative to the holder. Yet, even if the claim were to properly set forth the general meaning, the scope of the Weldon in this case would be unclear. The term is indefinite because the specification does not clearly redefine the term. Appropriate correction required.
Claim 15 recites “a milling tool or a core drill.” It is unclear whether the tool recited in claim 1 is either of these tools or these tools are in addition to the tool recited in claim 1. Appropriate correction required.
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.
Claims 1, 8-11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clarkson et al. (US Patent No. 3,139,800).
(Claim 1) Clarkson et al. (“Clarkson”) discloses a toolholder system (Figs. 1, 2) for a tool (9) that is rotatable about a rotation axis. The toolholder system comprising: a toolholder (1) for a tool (9) rotatable about an axis of rotation; and a tool (9) with a tool shank (6), a working spindle (2) arranged on the toolholder, the working spindle extending along the axis of rotation and has an axially aligned, cylindrical receiving space (Figs. 1, 2) that includes a receiving radius into which the tool shank that is cylindrical at least in sections and has an outer radius (Figs. 1, 2), is adapted to be inserted up to an assembly position by axially moving the tool shank. The tool shank having a flat surface (14, 19) that is radially shifted inwards from the outer radius (Fig. 2), which has an axial flat surface side forming a transition of the flat surface to the cylindrical surface of the tool shank (Fig. 2). At least one radially movable clamping jaw (12, 16) with a flat clamping surface (Fig. 2). The toolholder is set up such that in a first arrangement of the clamping jaw, a minimum distance of the clamping surface of the axis of rotation is greater than or equal to an outer radius of the tool shank (set screws removed from threaded hole). In a second arrangement of the clamping jaw, the minimum distance of the clamping surface from the axis of rotation is smaller than the outer radius of the tool shank (Fig. 2). The clamping surface, in an assembly position, contacts a contact area of the flat surface and the contact area is spaced from the flat surface side (Fig. 2 - showing a gap from the transition side transition).
(Claim 8) The clamping surface has a contact surface, and the toolholder is set up for (i.e., capable of having) the contact surface in the second arrangement to contact the flat surface (Fig. 2). The contact surface is smaller than the flat surface (i.e., the surface in contact with the flat surface is smaller than said flat surface).
(Claim 9) The flat surface is rectangular in shape and has a second flat surface side opposite to the flat surface side (Figs. 1, 2).
(Claim 10) In the second arrangement (Fig. 2), the first flat surface side does not touch the clamping surface. The second flat surface side touches the clamping surface (Fig. 2).
(Claim 11) The contact area is smaller than the flat surface (Fig. 2).
(Claim 15) As best understood, the toolholder is a Weldon toolholder for a milling tool (Fig. 1).
Claims 1-3, 12 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacques (CA 211794 A).
(Claim 1) Jacques discloses a toolholder system (Fig. 1) for a tool (8) that is rotatable about a rotation axis. The toolholder system comprising: a toolholder (6) for a tool (8) rotatable about an axis of rotation (provided by spindle 2); and a tool (9) with a tool shank (Fig. 1), a working spindle (4) arranged on the toolholder, the working spindle extending along the axis of rotation and has an axially aligned, cylindrical receiving space (Figs. 3, 6) that includes a receiving radius into which the tool shank that is cylindrical at least in sections and has an outer radius (Figs. 3, 4), is adapted to be inserted up to an assembly position by axially moving the tool shank. The tool shank having a flat surface (Figs. 1, 3, 4) that is radially shifted inwards from the outer radius (Figs. 1, 3, 4), which has an axial flat surface side forming a transition of the flat surface to the cylindrical surface of the tool shank (Figs. 1, 3, 4). At least one radially movable clamping jaw (10) with a flat clamping surface (Figs. 1, 3, 4). The toolholder is set up such that in a first arrangement (Fig. 4) of the clamping jaw, a minimum distance of the clamping surface of the axis of rotation is greater than or equal to an outer radius of the tool shank. In a second arrangement (Fig. 3) of the clamping jaw, the minimum distance of the clamping surface from the axis of rotation is smaller than the outer radius of the tool shank. The clamping surface, in an assembly position, contacts a contact area of the flat surface and the contact area is spaced from the flat surface side (Fig. 1 - showing that the contact surface is axially and radially spaced from a transition surface into the cylindrical surface).
(Claim 2) The clamping jaw has at least one recess running axially in the clamping surface (Figs. 1, 3, 4, 9).
(Claim 3) The recess running axially in the clamping surface (Figs. 1, 3, 4, 9). That is, the claim does not relate the axial nature to the toolholder system, such that it may relate to the clamping jaw in isolation.
(Claim 12) A drilling machine includes the toolholder system (Fig. 1; Page 3).
(Claim 15) As best understood, the toolholder is a Weldon toolholder for a milling tool (Fig. 1).
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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Clarkson et al. (US Patent No. 3,139,800) in view of Wiard (US Patent No. 1,056,076).
Clarkson discloses that the shank is for mounting purposes (Col. 1, Lines 32-35), but the reference does not explicitly disclose the machine.
Wiard discloses a spindle (1) of a milling/drilling machine (Fig. 1). At a time prior to filing it would have been obvious to provide the toolholder system discloses in Clarkson with a machine tool as suggested by Wiard in order to provide a drive source for the toolholder system (i.e., to perform cutting operations with the tool). See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Claims 4, 5, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jacques (CA 211794 A).
(Claim 4) A width of the groove, measured in a direction substantially perpendicular to the axis, as best understood, in a plane of the clamping surface is not explicitly disclosed within the claimed range. Yet, the width of the groove is a result-effective variable that depends on the size of the tool and the corresponding mating features. As such, the result reached will be a fit upon pins (17). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the groove width within the claimed range in order to optimize the fit between the groove and pin. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”); In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (holding where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
(Claim 5) A depth of the groove, measured in a direction substantially perpendicular to the clamping surface is not explicitly disclosed within the claimed range. Yet, the depth of the groove is a result-effective variable that depends on the size of the tool and the corresponding mating features. As such, the result reached will be a fit upon pins (17). As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the groove depth within the claimed range in order to optimize the fit between the groove and pin. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”); In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (holding where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
(Claim 7) A minimum distance of the contact surface from the flat surface side is not explicitly disclosed within the claimed range. Yet, the relative relationship between surfaces is a result-effective variable because it impacts clamping force between the jaw and the tool shank. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the toolholder system disclosed in Jacques within the claimed range in order to optimize the fit between the groove and pin. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”); In Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (holding where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
(Claim 11) The contact area is not explicitly disclosed as smaller than the flat surface. Yet, the contact area being smaller than the flat surface is well-known in the art, the fact of which the examiner takes official notice. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the contact area in Jacques to be smaller than the flat surface as obvious to try leading to the predictable result of engaging the jaw and tool. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jacques (CA 211794 A) in view of Ross (US Patent No. 1,233,921).
Jacques does not explicitly disclose the recess extending through an entire height of the clamping surface.
Ross discloses a recess (6) extending through an entire height of the clamping surface (Fig. 5). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the clamping surface disclosed in Jacques with a recess extending through an entire height of the clamping surface as suggested by Ross in order to engage a rib on a drill shank.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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