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 .
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 4-5 that the prior art Britun discloses a dislocation density substantially greater than 1 x 10^15 /m2. Applicant argues the passage on Pg. 774 of Britun referring to ripples in the electron microscope images would make it impossible to divide the dislocations because they would be saturated. Applicant argues the accurate dislocation density of Britun is indeterminable and that the disclosure of Britun amounts to a theoretical or estimated value.
However, a complete reading of the disclosure of Britun provides on Pg. 774 “In the second case, separate defects, dislocation groups, and complicated dislocated tangles (these often form sub boundaries) can be clearly distinguished in the grains. Analysis of the image shows that in the areas with the minimum defect density the dislocations are distributed mainly in {iii} basal planes and are not split. Split dislocations were found only in a small number of cases.”
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[AltContent: textbox (Figure 1. Reproduced passage from Pg. 774 describing two cases of defects occurring in the cubic boron nitride taught by Britun.)]Accordingly, Examiner maintains the disclosure of Britun as a whole, when considering the second case described by Britun, clearly provides a dislocation density overlapping the range required by the claim and that a skilled artisan viewing the disclosure of Britun could not reasonably come to a different conclusion. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Britun (greater than or equal to 1 x 10^15 m-2) overlaps with the claimed range (less than or equal to 6.64 x 10^15/m2). Therefore, the range in Britun renders obvious the claimed range.
Applicant argues on Pg. 6 that the prior art Britun arrives at polycrystalline cubic boron nitride by a different method of manufacturing. Applicant argues that conventional routes to prepare cubic boron nitride are likely to have lattice defects and coarse grains such that a skilled artisan would expect the disclosure of Britun to have a dislocation density substantially greater than 1 x 10^15/m2. Applicant argues example 10 of the instant invention in Table 1 is like the disclosure of Britun and produces a dislocation density of 1.093 x 10^16/m2.
However, the instant claims are not claimed in a product-by-process fashion regarding the dislocation density such that the method of manufacturing provides structure to the claims such that the claims require process steps. Secondly, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, Britun disclosing a dislocation density of cubic boron nitride that overlaps the claimed range meets the limitation required by the claim.
Examiner further notes that the comparison of Example 10 and Britun are not clearly equivalent, where Britun uses 8 GPa pressure and temperatures of 1900-2300 K (i.e. 1626-2026 °C) and the entry for Example 10 in Table 1 of the instant specification uses 12 GPa and a temperature of 2200 °C. Applicant argues Ishida describes the minimum grain size greater than 100 nm as “coarse” and that a skilled artisan would have concluded the short diameter of the plate-like grains are less than 100 nm. Applicant asserts the plate-like grains have an aspect ratio greater than or equal to 5. Applicant argues that if the median diameter d50 of Ishida is greater than or equal to 0.1 µm and less than or equal to 0.5 µm, the area ratio of coarse cBN grains of Ishida is at least 50 area%. Applicant submits that assuming half of coarse cBN grains are plate-like grains, Ishida’s area rate S2 of plate-like grains is at least 25 area%.
However, Examiner notes that Ishida explicitly discloses the plate-like polycrystalline cubic boron nitride grains have an aspect ratio of 3 or more, which is determined by viewing a polished surface observed at a magnification of 1,000 to 100,000 times (Pg. 4, par. 7-10). The claims require “the plate-like grains have an aspect ratio of greater than or equal to 4…observed with a scanning electron microscope at magnification of 10,000.” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Ishida (plate-like grains aspect ratio of 3 or more) overlaps with the claimed range (plate-like grains have aspect ratio greater than or equal to 4). Therefore, the range in Ishida renders obvious the claimed range.
Further, Examiner maintains the interpretation of the term “area rate S2” as described in the 103 rejection. The instant specification describes the area rate S2 as “preferably being greater than or equal to 0 area%” ([0073]), which would make the area% equivalent to being a single point on the crystal grains when set to 0 area%. In the scenario where the area% is 0, this limitation which would necessarily be met by Ishida who measures the aspect ratio and would therefore have to be observing at least one point of the crystal grains. Applicant’s arguments regarding measurements in Ishida are selective and do not address Examiner’s statement of measuring a single point being equivalent to 0 area%, which is within the claimed range of “less than or equal to 5 area% at a cross section of the polycrystalline cubic boron nitride.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C.
102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis for the rejection will not be considered a new ground of rejection if the prior art
relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (JP2016141609A English Translation) in view of Britun et al. (Poroshkovaya Metallurgiya, Kiev, 1989, 10, 40-3), as evidenced by Scardi et al. (J. App. Cryst. 2004, 37, 381-390) and as applied to claim 1.
Regarding claim 1, Ishida teaches a polycrystalline cubic boron nitride material which can include 0.01 volume% or more and 80 volume% or less wurtzite boron nitride and 0.01 volume% or more and 0.5 volume% or less hexagonal boron nitride (Abstract; Claims), where the content of cubic boron nitride (cBN) in the material is preferably 98% or more (Pg. 4, par. 22). Ishida teaches the polycrystalline cubic boron nitride material includes plate-like crystal grains that have an average major axis of 50 nm or more and 10,000 nm or less, and where at least one granular cubic boron nitride has a particle size exceeding 100 nm with an average particle size of 1,000 nm or less (Pg. 2, Description). Ishida further teaches the plate-like polycrystalline cubic boron nitride grains have an aspect ratio of 3 or more, which is determined by viewing a polished surface observed at a magnification of 1,000 to 100,000 times (Pg. 4, par. 7-10).
The equivalent circle diameter described in the instant specification ([0006]) is defined as meaning “the diameter of a circle having the same area as that of the crystal grains at the cross section.” Ishida teaching the granular cubic nitride crystal grains having a particle size exceeding 100 nm (i.e. 0.1 µm) would require the median crystal grains to be greater than 0.1 µm, which would also make the equivalent circle diameter greater than or equal to 0.1 µm, meeting the limitation “the plurality of crystal grains having a median diameter d50 of the equivalent circle diameter greater than or equal to 0.1 μm and less than or equal to 0.5 μm.” In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Ishida (granular cubic nitride crystal grains having a particle size exceeding 100 nm (i.e. 0.1 µm)) overlaps with the claimed range (plurality of crystal grains having a median diameter d50 of the equivalent circle diameter greater than or equal to 0.1 μm and less than or equal to 0.5 μm). Therefore, the range in Ishida renders obvious the claimed range.
The claim further requires the area rate S2 is “less than or equal to 5 area% at a cross section of the polycrystalline cubic boron nitride as observed with a scanning electron microscope at a magnification of 10,000.” The instant specification describes the area rate S2 as “preferably being greater than or equal to 0 area%” ([0073]), which would make the area% equivalent to being a single point on the crystal grains. In the scenario where the area% is 0, this limitation which would necessarily be met by Ishida who measures the aspect ratio and would therefore have to be observing at least one point of the crystal grains.
The claim further requires “the polycrystalline cubic boron nitride having a dislocation density less than or equal to 6.64 x 10^15m2, the dislocation density being calculated based on a line profile of an X-ray diffraction peak from each orientation plane of the cubic boron nitride's major orientations (111), (200), (220), (311), (400), and (331) ” to which Ishida is silent.
Britun teaches the manufacture of polycrystalline cubic boron nitride that displays dislocation densities of greater than or equal to 10^11 cm-2, with an example displaying a defect density of as low as 10^9 cm-2 (Fig 1.; Pg. 774; Abstract; Title). Converting the units of Britun to m-2 provides a general range of greater than or equal to 1 x 10^15 m2. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Britun (greater than or equal to 1 x 10^15 m-2) overlaps with the claimed range (less than or equal to 6.64 x 10^15/m2). Therefore, the range in Britun renders obvious the claimed range.
It is noted Britun describes the dislocation density as being calculated based on transmission electron microscopy (TEM) analysis of specimens (Pg. 773; Fig. 1-4) while the claim requires “the dislocation density being calculated based on a line profile of an X-ray diffraction peak from each orientation plane of the cubic boron nitride's major orientations (111), (200), (220), (311), (400), and (331).” However, it can be shown the method of determining the dislocation density of Britun is substantially equivalent to the method required by the claim, as evidenced by Scardi and explained below: The method of calculating dislocation density described by Britun is equivalent with TEM analysis of samples to determine lattice strain effects in crystalline materials and are often compared in the art with lattice strains measured by X-ray diffraction, which, as evidenced by Scardi are commonly deployed methods in the art and operate by using waveform analysis of X-ray diffraction line broadening to provide a degree of lattice strains (i.e. dislocation density) in crystalline materials (Pg. 381-382, 2.1. Scherrer formula and Williamson-Hall plots). The determination of lattice strains by X-ray diffraction analysis are normally performed by deploying the conventional Williamson-Hall (cWH) and Warren-Averbach (cWA) methods, which are fast and easily performed analysis and as such are very commonly used (Pg. 382, right col.). Since the discovery of the cWH and cWA methods in the 1950s, researchers have also developed the modified Williamson-Hall (MWH) and modified Warren-Averbach (MWA) methods in order to account for strain anisotropy effects that are not captured in the cWH and cWA methods due to approximations the cWH and cWA methods make about crystallite size and shape and from approximations of Lorentzian or Gaussian line fittings (Pg. 382, left and right col.; Pg 382-383, 2.2. Modified Williamson-Hall methods). In order to perform the modified version of the Williamson-Hall and Warren-Averbach methods, conventional analysis by harmonic analysis and approximation of half-width of the physical profile of X-ray peaks is performed with an additional analysis of the orientation planes (111), (222), (220), (200), (331), (311), (400) and (420) derived from X-ray diffraction studies which are then inputted into mathematical models to eventually output a dislocation density (Figure 5; Pg. 382-384, 2.2. Modified Williamson-Hall methods; Pg. 385-388, 4. Application of WH methods). Therefore, the claim limitation “the dislocation density being calculated based on a line profile of an X-ray diffraction peak from each orientation plane of the cubic boron nitride's major orientations (111), (200), (220), (311), (400), and (331)” is equivalent with performing the MWH and MWA methods for dislocation density calculation.
Scardi further teaches that results obtained from the MWH and MWA methods as compared to results obtained by TEM analysis do not lead to sensibly different results of lattice strain (i.e. dislocation density) (Pg. 385, 4. Application of WH methods). This negligible difference between TEM and MWH and MWA based methods is depicted in Figure 4.
In summary, the prior art Britun obtains the dislocation density parameter by TEM analysis while the instant invention performs the modified Williamson-Hall (mWH) and Warren-Averbach (mWA) methods (see [0052]-[0065] in the instant specification). As evidenced by the prior art Scardi, comparison of lattice strain parameters calculated by TEM methods against MWH and MWA methods do not lead to sensibly different results (Pg. 385, 4. Application of WH methods).
Accordingly, the dislocation density taught by Britun of greater than or equal to 1 x 10^15 m-2 would be expected to be effectively equivalent to the dislocation density as calculated in the instant invention, where the differences between the methods of analysis (i.e. TEM vs. modified WH/WA) as compared to the instant invention would not be expected by a skilled artisan to adjust the dislocation density to a value that no longer made obvious the claimed value of “less than or equal to 6.64 x 10^15/m2.”
Advantageously, dislocation densities play a role in improved compacting of the cubic boron nitride material while providing formation of an almost pore-free polycrystal (i.e. for increased hardness) (Pg. 775, par. 6).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a polycrystalline cubic boron nitride material with a dislocation density of greater than or equal to 1 x 10^15 m-2 in the product of Ishida in order to provide a material with improved compacting and almost pore-free polycrystals, as taught by Britun.
Regarding claims 3 and 4, Ishida further teaches the plate-like polycrystalline cubic boron nitride grains have an aspect ratio of 3 or more, which is determined by viewing a polished surface observed at a magnification of 1,000 to 100,000 times (Pg. 4, par. 7-10). The claim further requires “the polycrystalline cubic boron nitride has an area rate S1 of crystal grains, having an equivalent circle diameter greater than or equal to 1 μm which is less than or equal to 20 area% at a cross section of the polycrystalline cubic boron nitride as observed with a scanning electron microscope at a magnification of 10,000.”
The instant invention further describes the area rate S1 as “preferably less than or equal to 15 area%” ([0017]; [0066]), which, in the scenario where the area rate is 0%, would make the area% equivalent to being a single point on the crystal grains, which would necessarily be met by Ishida who measures the aspect ratio and would therefore have to be observing at least one point of the crystal grains. This position is further supported by Ishida teaching crystal grains of overlapping dimensions as those required by the instant invention (plate-like crystal grains that have an average major axis of 50 nm or more and 10,000 nm or less, and where at least one granular cubic boron nitride has a particle size exceeding 100 nm with an average particle size of 1,000 nm or less (Pg. 2, Description)) which, when observed by a microscope with similar magnification, would provide substantially similar equivalent circle diameters (i.e. area rate S1).
Regarding claim 12, Ishida teaches the polycrystalline cubic boron nitride material includes 0.01 volume% or more and 80 volume% or less wurtzite boron nitride and 0.01 volume% or more and 0.5 volume% or less hexagonal boron nitride (Abstract; Claims), where the content of cubic boron nitride (cBN) in the material is preferably 98% or more (Pg. 4, par. 22). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Ishida (0.01 volume% or more and 80 volume% or less wurtzite boron nitride and 0.01 volume% or more and 0.5 volume% or less hexagonal boron nitride) overlaps with the claimed range (a total content rate of a compressed hexagonal boron nitride and a wurtzite boron nitride in the polycrystalline cubic boron nitride is greater than or equal to 0% by volume and less than or equal to 1.5% by volume). Therefore, the range in Ishida renders obvious the claimed range.
Regarding claim 13, Ishida in view of Britun as evidenced by Scardi teaches the polycrystalline cubic boron nitride of claim 1 where Britun teaches a dislocation density greater than or equal to 1 x 10^15 m-2 (Fig 1.; Pg. 774; Abstract; Title), which overlaps the range required by claim 13. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Britun (greater than or equal to 1 x 10^15 m-2) overlaps with the claimed range (less than or equal to 5.31 x 10^15m-2). Therefore, the range in Britun renders obvious the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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/J.W.T./Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738
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