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.
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 limitations are: “fastening portion” in claim 1; and “fastening component” in claim 1.
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 Objections
Applicant is advised that should claim 1 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-9 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 “at least a part of the flow path is at respective distances from the insert mounting seat, from the fastening portion, and from a periphery of the body, in a cross-section perpendicular to an axial direction of the body, wherein each of the distances is equal to or greater than a predetermined size.” It is unclear whether there are plural distances relative to each feature (seat, fastening portion, and periphery) or if there is a respective (singular) distance required to meet the limitation. Furthermore, the metes and bounds of the distances being equal to or greater than a predetermined size are unclear. That is, the claim lacks description of how the predetermined size is set. Appropriate correction required.
Claim 3 recites “the distance from [each recited feature] . . . are almost the same.” The boundary of where each distance is considered almost the same and not so considered is not clearly delineated. Appropriate correction required.
Claim 5 recites “in a cross-section perpendicular to the axial direction” in Lines 2-3. Yet, claim 1 sets forth antecedent basis for said cross-section. As such, it is unclear whether the cross-section recited in claim 5 is the same cross-section or a different cross-section. Appropriate correction required.
Claim 5 recites “a substantially fan-like shape” in Line 3. The metes and bounds of what is considered fan-like, let alone, substantially fan-like, are not clearly delineated. Specifically, it is unclear when something is considered like a fan, especially substantially like a fan in shape. Appropriate correction required.
Claim 6 recites “in a cross-section perpendicular to the axial direction” in Lines 2-3. Yet, claim 1 sets forth antecedent basis for said cross-section. As such, it is unclear whether the cross-section recited in claim 6 is the same cross-section or a different cross-section. Appropriate correction required.
Claim 9 recites “[a] cutting tool comprising a body according to claim 1.” Yet, claim 1 requires a cutting insert mounted to the insert pocket. As such, it is unclear how claim 9 further limits claim 1 as it is already a combination that reads upon a cutting tool. Appropriate correction required.
Claim 9 recites “[a] cutting tool comprising a body according to claim 1.” Yet, claim 1 already sets forth antecedent basis for the “body.” Likewise, claim 1 already sets forth antecedent basis for “a cutting tool.” Appropriate correction required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Because claim 1 requires a cutting insert mounted to the insert pocket, the body recited in claim 1 is a combination of body and cutting insert, which is a cutting tool. As such, claim 9 does not further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sung et al. (KR 101014122 B1).
(Claims 1 and 9) Sung et al. (“Sung”) discloses a body of a cutting tool (140, 110; Fig. 1). The body (and cutting tool) includes an insert mounting seat (141, 142) on which a cutting insert (210, 220) is mounted (Fig. 1); a fastening portion (140) in which a fastening component (Fig. 2 showing bolt) for fastening the cutting insert onto the insert mounting seat is inserted; and a flow path (150, 160, 151, 161b, 152, 162b181, 182, 171b, 172b) for allowing fluid to be discharged through a discharge port that is open at a leading end of the body (Fig. 5). At least a part of the flow path is at respective distances from the insert mounting seat, from the fastening portion, and from a periphery of the body, in a cross-section perpendicular to an axial direction of the body (Figs. 2, 5, 6, 9). As best understood, each of the distances is equal to or greater than a predetermined size. That is, neither the respective distances nor the predetermined size is not defined in any explicit manner. The combination of body and cutting insert qualifies as a cutting tool (100; Figs. 1-9).
(Claim 2) The distance from the insert mounting seat, the distance from the fastening portion, and the distance from the periphery of the body are each 0.1 mm or more and 0.5 mm or less. Again, the manner in which these distances is measured is not clearly delineated. As such, a part of the coolant channel may meet the claimed range. This also depends on the diameter of the body.
(Claim 3) As best understood, the distance from the insert mounting seat, the distance from the fastening portion, and the distance from the periphery of the body are almost the same size (Figs. 2, 5, 9).
(Claim 6) The discharge port is different in shape from at least a part of the flow path in a cross-section perpendicular to the axial direction (Figs. 3, 5, 9).
(Claim 7) A part of the flow path that continues to the discharge port is curved along a periphery of the fastening portion (Figs. 5, 9).
(Claim 8) Another flow path (161a, 162a, 171a, 172a) is open at a base end side of the insert mounting seat (Figs. 1, 5, 9).
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Streigl (GB 2143446 A).
(Claims 1 and 9) Streigl discloses a body of a cutting tool (Fig. 1). The body (and cutting tool) includes an insert mounting seat (Figs. 1-3) on which a cutting insert (13) is mounted (Figs. 1-3); a fastening portion (Fig. 2) in which a fastening component (19) for fastening the cutting insert onto the insert mounting seat is inserted; and a flow path (14, 16) for allowing fluid to be discharged through a discharge port that is open at a leading end of the body (Fig. 3). At least a part of the flow path is at respective distances from the insert mounting seat, from the fastening portion, and from a periphery of the body, in a cross-section perpendicular to an axial direction of the body (Figs. 2, 3). As best understood, each of the distances is equal to or greater than a predetermined size. That is, neither the respective distances nor the predetermined size is not defined in any explicit manner. The combination of body and cutting insert qualifies as a cutting tool (Figs. 1-3).
(Claim 2) The distance from the insert mounting seat, the distance from the fastening portion, and the distance from the periphery of the body are each 0.1 mm or more and 0.5 mm or less. Again, the manner in which these distances is measured is not clearly delineated. As such, a part of the coolant channel may meet the claimed range. This also depends on the diameter of the body. Here, the cutting tool is described as being able to cut holes as small as 12 mm (Page 1, Lines 25-28). As such, the body may be less than 12 mm. With the fastening portion being broadly construed to be the portion opposite the shank, the body here reads upon the claim as the smallest distance to each feature would be well less than half the overall diameter.
(Claim 3) As best understood, the distance from the insert mounting seat, the distance from the fastening portion, and the distance from the periphery of the body are almost the same size (Figs. 1-3).
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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sung et al. (KR 101014122 B1) in view of Grunsky (US Patent No. 4,826,364) or Takai (US Pub. No. 2015/0321267 A1).
Sung discloses that at least a part of the periphery of the body has a circular-arc-shaped portion in a cross-section perpendicular to the axial direction (Figs. 1-9). Yet, Sung does not explicitly disclose at least a part of the flow path has a substantially triangular shape in a cross-section perpendicular to the axial direction, and at least a part of the flow path has a substantially fan-like shape in the cross-section, the fan-like shape including a circular-arc-shaped portion that conforms to the periphery of the body. It is worth noting that the claim requires a part of the flow path to have the claimed shape, which is different than a cross-sectional shape of a flow path channel. Nevertheless, examiner will address the claim with what Applicant likely intends to further prosecution.
Grunsky discloses at least a part of the flow path has, as best understood, a substantially triangular shape in a cross-section perpendicular to the axial direction, and at least a part of the flow path has, as best understood, a substantially fan-like shape in the cross-section, the fan-like shape including a circular-arc-shaped portion that conforms to the periphery of the body (Fig. 8). At a time prior to filing it would have been obvious to provide the body disclosed in Sung with at least a part of the flow path having the claimed shape that conforms to the periphery of the body as suggested by Grunsky in order to adequately cool the front end portion of the body and form the shape during extrusion instead of an extra machining step (Col. 8, Lines 1-5).
Takai discloses at least a part of the flow path has, as best understood, a substantially triangular shape in a cross-section perpendicular to the axial direction, and at least a part of the flow path has, as best understood, a substantially fan-like shape in the cross-section, the fan-like shape including a circular-arc-shaped portion that conforms to the periphery of the body (Figs. 3-5). At a time prior to filing it would have been obvious to provide the body disclosed in Sung with at least a part of the flow path having the claimed shape that conforms to the periphery of the body as taught by Takai in order to increase a cross-sectional area of a cutting fluid supply hole without reducing rigidity of the body (¶¶ 0004-0006).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil 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.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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