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 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 1-11 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.
The term “substantially” in claims 1, 5, and 7 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “substantially” is used to parallelogram shape of the first surface, however, it is unclear as to what is meant by “substantially parallelogram” in terms of the degree to which the first surface has a parallelogram shape.
The term “substantially” in claims 1, 5, and 7 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “substantially” is used to trapezoidal shape of the second surface, however, it is unclear as to what is meant by “substantially trapezoidal” in terms of the degree to which the second surface has a trapezoidal shape.
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) 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagaya et al. (US 2005/0147475 A1).
Regarding claim 5, Nagaya discloses a body (21; Fig. 6) comprising a first mounting seat (24a) and second mounting seat (31a).
Note that “to which a cutting insert is mounted, the cutting insert having: a first surface having a substantially parallelogram shape and provided as one of a pair of end surfaces that face each other; second surfaces provided as a pair of side surfaces that face each other, each second surface having a substantially trapezoidal shape and serving as a surface including a rake surface; a first cutting edge formed along a side of each of the second surfaces, the side being an adjoining side that adjoins the first surface from among sides that define the second surface; and a second cutting edge formed along a side of each of the second surfaces, other than the adjoining side,” “to which the cutting insert is mounted in a first position in which the first cutting edge can be used as a cutting edge during cutting,” and ‘to which the cutting insert is mounted in a second position in which the second cutting edge can be used as a cutting edge during cutting” are recitations of the intended use, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 6, Nagaya discloses the first mounting seat (24a) and second mounting seat (31a) arranged in an axial direction (see Fig. 6).
Allowable Subject Matter
Claims 1-4 and 7-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references listed on the attached PTO-892 are cited to show cutting inserts in cutting tools.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERMIE E COZART whose telephone number is (571)272-4528. The examiner can normally be reached Monday - Friday 8:30am - 7:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’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.
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/JERMIE E COZART/Primary Examiner, Art Unit 3799
September 17, 2026
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