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 .
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 “planar surface area SA’c” of the first insert centering surface; “planar surface area SA’D” of the first insert drive surface and “planar surface area SA’D of the insert drive surface is from 50 to 135% of the planar surface area SA’c of the first centering surface” as 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 Objections
Claim 5 is objected to because of the following informalities: the insert drive surface “with” as recited in line 4 of claim 5, should be –width--. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8, 10 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-30 of copending Application No. 18/120,943 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the difference between application claim 1 and copending Application No. 18/120,943 claim 22 is that copending Application No. 18/120,943 claim 22 recites an additional element “the pocket drive walls project unobstructed across the diameter of the pocket”. Thus, the invention of copending Application No. 18/120,943 claim 22 is in effect a “species” of the generic invention recited in application claim 1. It has been held that the generic invention is “anticipated” by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claims 2-8 and 9 are identical to copending Application No. 18/120,943 claims 23-29 and 30 and claim 10 of Application is claimed in copending Application No. 18/120,943 claim 22.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 11 is 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 11 recites in lines 1-2 “the pin” which has insufficient antecedent basis as no “pin” has been previously introduced in claim 1, from which claim 11 directly depends on. Further clarification is needed.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frota de Souza et al. US 2018/0169771 (hereafter—Frota de Souza--).
In regards to claims 1, 2 and 10, Frota de Souza discloses a cutting insert (614/714) of a modular rotary cutting tool (10/610) having a central longitudinal axis (A) and comprising a head (736) and a pin (735) extending rearwardly from the head (see Figure 7A) (claim 10), the head comprising: first and second insert centering surfaces (623 and corresponding centering surfaces in Figure 7A); first and second torque transmission insert drive surfaces (622 and 722); and a rear face (in the same way as presented by Applicant), wherein the first insert centering surface defines a plane, the first insert drive surface defines another plane, the first insert centering surface plane and the first insert drive surface plane intersect at an insert intersection point (P’ as in annotated Figure 6 below) located in a plane of the rear surface at an insert surface angle (D in Figure 6) measured at the intersection point (P’ annotated Figure 6 below), and wherein each of the first and second insert drive surfaces are disposed in planes parallel with the longitudinal axis of the shank.
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However, Frota de Souza fails to disclose that the insert surface angle (D) is greater than 90° to less than 155° (claim 1) and from 130 to 150° (claim 2).
Nevertheless, Frota de Souza does disclose in paragraph [0050] that it is well known in the art of modular rotary cutting tools, to have an insert surface angle D, be disposed between about 75° and about 120° degrees, or preferably between about 85° and about 100° degrees; most preferably, angle, D, can be approximately 90° degrees. It should be appreciated, in this vein, that a workable balance can preferably be found in choosing angle, D, in that larger angles will tend reduce to stresses on insert 614 and increase stresses on the pocket (defined via centering walls of the shank 612), while smaller angles will tend to reduce stresses on the pocket (of the shank 612) and increase stresses on the cutting insert 614. See paragraph [0040].
Since Frota de Souza disclose the insert surface angle (D); the insert surface angle (D) constitutes a defined value of the modular rotary cutting tool. Therefore, the insert surface angle (D), is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that a workable balance can preferably be found in choosing angle, D, in that larger angles will tend reduce to stresses on insert and increase stresses on the pocket (defined via centering walls of the shank), while smaller angles will tend to reduce stresses on the pocket (of the shank) and increase stresses on the cutting insert, (paragraph [0050]). Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined insert surface angle (D), were disclosed in the prior art by Frota de Souza in Figure 6 and paragraph [0050], it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide Frota de Souza’s insert surface angle (D) to be within a desired range such as greater than 90° to less than 155° (claim 1) and from 130 to 150° (claim 2). In re Aller, 105 USPQ 233.
In regards to claims 3 and 4, Frota de Souza as modified discloses the cutting insert for the modular rotary cutting tool of claims 1 and 3 respectively, Frota de Souza as modified also discloses that the intersection point (P’ see annotated Figure 4 above) is located at an insert offset distance (Y’ annotated in Figure 4 above) measured at the place of the rear surface in a direction in the first insert centering surface plane from a plane in which the longitudinal axis of the shank is located, and that the head has a diameter.
However, Frota de Souza as modified fails to disclose that the range to which the insert offset distance Y’ is disposed is from 1% to 20% of the diameter Dh of the head (claim 3); and from 3% to 15% of the diameter Dh of the head (claim 4).
Since Frota de Souza disclose the pocket offset distance Y and that the shank has a diameter; each of the pocket offset distance in relation to the diameter of the shank constitutes a defined value of the modular rotary cutting tool. Therefore, the percentage of the pocket offset distance in relation to the diameter of the shank, is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the offset will depend on the desired angle to which the torque walls are disposed, and size of the workpiece being machined. Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined pocket offset distance and shank diameter, were disclosed in the prior art by Frota de Souza, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide Frota de Souza’s range to which the pocket offset distance Y is disposed in relation to the diameter D of the shank to be within a desired range such as from 1% to 20% of the diameter of the shank (claim 3) and from 3% to 15% of the diameter D of the shank (claim 4). In re Aller, 105 USPQ 233.
In regards to claims 5 and 6, Frota de Souza as modified discloses the modular rotary cutting tool of claims 1 and 5 respectively, Frota de Souza as modified also discloses that the first and second insert centering surfaces define an insert centering width (Wc’ see annotated Figure 6 above) measured in a plane of the rear surface, the first and second insert drive surfaces define an insert drive surface width (WD’ see annotated Figure 6 above) measured at the pocket floor.
However, Frota de Souza fails to disclose that the insert drive surface width WD’ is at least 10% of the insert centering surface width Wc’ (claim 5); and the insert drive surface width WD’ is from 25% to 75% of the insert centering surface width Wc’ (claim 6).
Since Frota de Souza does however disclose that there is an insert centering surface width Wc’ and that there is an insert drive surface width WD’ (see annotated Figure 6 above), each of the values of the width Wc’ and WD’ constitutes a defined value of the modular rotary cutting tool. Therefore, the values to which the width Wc’ of the insert centering surface and the width WD’ of the insert drive surface, is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the width will depend on the desired clamping and tight fit between the shank pocket and the cutting head. Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined insert drive surface width WD’ and insert centering surface width Wc’, were disclosed in the prior art by Frota de Souza, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide Frota de Souza’s insert centering surface width Wc’ and insert drive surface width WD’ to be within a desired range such as to have the insert drive surface width WD’ be greater than 10% of the insert centering surface width Wc’ (claim 5); and have the insert drive surface width WD’ be from 25% to 75% of the insert centering surface width Wc’ (claim 6). In re Aller, 105 USPQ 233.
In regards to claims 7 and 8, Frota de Souza as modified discloses the modular rotary cutting tool of claims 1 and 7 respectively, Frota de Souza as modified also discloses that each of the first and second insert centering surfaces are disposed at a seating angle (S as in annotated Figure 5 above, which corresponds to the same angle of the insert) measured from the longitudinal axis of the insert.
However, Frota de Souza fails to disclose that seating angle S greater than 0.5° (claim 7); and from 1 to 4° (claim 8).
Since Frota de Souza does however disclose that there is a seating angle S (see annotated Figure 5 above), the seating angle S constitutes a defined value of the modular rotary cutting tool. Therefore, the values to which the seating angle S, is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the seating angle S depending on the desired elastic deformation of the centering walls as the insert is pulled against the pocket floor and desired clamping action (see paragraph [0047]). Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined seating angle S, were disclosed in the prior art by Frota de Souza, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide Frota de Souza’s seating angle S to be within a desired range such greater than 0.5° (claim 7); and from 1 to 4° (claim 8). In re Aller, 105 USPQ 233.
In regards to claim 9, Frota de Souza as modified discloses the modular rotary cutting tool of claim 1, Frota de Souza as modified also discloses that the first insert centering surface (623 and corresponding centering surfaces in Figure 7A) has a planar surface area SA’C and the insert drive surface (622/722 as in Figures 6, 7A-7C) has a planar surface area SA’D.
However, Frota de Souza fails to disclose that the planar surface area SA’D of the insert drive surface is from 50 to 135% of the planar surface area SA’c of the first centering surface.
Since Frota de Souza does however disclose that there is a first planar centering surface and planar insert drive surface, each of the values of the surface areas of the first planar centering surface and planar insert drive surface constitutes a defined value of the modular rotary cutting tool. Therefore, the values of the first insert centering surface planar surface area SA’C and the insert drive surface planar surface area SA’D are recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the surface areas will depend on the desired contact between the shank pocket and the cutting head. A larger surface area, increases contact surface area and thus, increases securing of the cutting insert to the shank. Therefore, since the general conditions of the claim, i.e. that the cutting tool is made up of a defined first insert centering surface planar surface area SA’C and defined insert drive surface planar surface area SA’D, were disclosed in the prior art by Frota de Souza, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to provide Frota de Souza’s first insert centering surface planar surface area SA’C and the insert drive surface planar surface area SA’D to be within a desired range such as having the planar surface area SA’D of the insert drive surface be from 50 to 135% of the planar surface area SA’c of the first centering surface. In re Aller, 105 USPQ 233.
In regards to claim 11, Frota de Souza as modified discloses the modular rotary cutting tool of claim 1, Frota de Souza as modified also discloses that the pin (735) has a substantially constant inner diameter along an axial length of the pin (735).
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
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