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 Amendment
The reply filed on November 21, 2025 has been entered into the prosecution for the application. Currently, claims 1-4 and 6-7 are pending. Claim 1 has been amended. Claim 5 has been cancelled.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 598140 A1 to Ueda et al. (hereinafter “Ueda”) in view of Wen et al., “Synthesis and characterization of the ternary metal diboride solid-solution nanopowders,” J. American Ceramic Soc. 102 (2019), pp. 4956-4962 (hereinafter “Wen”), with evidence, as to claims 1 and 2, from EP 3088126 A1 to Igarashi et al. (hereinafter “Igarashi”).
Regarding claim 1, Ueda discloses a cubic boron nitride sintered material (p. 2, line 7) comprising cubic boron nitride particles and a binding phase (p. 3, lines 13-14; “bonding phase” is equivalent to binding phase), wherein the cubic boron nitride particles account for 20 vol% or more and 80 vol% or less in the cubic boron nitride sintered material (p. 3, lines 17-20, teaching that cubic boron nitride or c-BN accounts for at least 52 vol% and no more than 80 vol% of the sintered material; see also Table 1, p. 4), a volume percentage of the binding phase is, when the volume percentage of the cubic boron nitride sintered material is 100 vol%, a numerical value obtained by subtracting a volume percentage of the cubic boron nitride particles from the 100 vol% (see p. 3, lines 16-20, wherein the volume percentage of the “bonding phase” is equal to 100 vol% minus the vol% of the c-BN; see also examples in Table 1, p. 4).
Ueda teaches wherein the binding phase includes one or more components selected from the group consisting of compounds and solid solutions (p. 3, lines 27-28 and 31-33, teaching compounds making up the bonding phase), each of the compounds and the solid solutions includes a first element and a second element, the first element is one or more selected from the group consisting of nitrogen, carbon, boron, and oxygen, the second element is one or more selected from the group consisting of Group 4 elements, Group 5 elements, Group 6 elements, and aluminum in the periodic table (p. 3, lines 31-32, teaching TiC, TiN, TiCN, Al2O3, AlN, and TiB2 as compounds making up the bonding phase; Ti being an element from Group 4 in the periodic table).
Ueda does not explicitly disclose that the binding phase includes a first region and a second region, the first region accounts for 1.0 vol% or more in the binding phase, a volume percentage of the second region is, when the volume percentage of the binding phase is 100 vol%, a numerical value obtained by subtracting a volume percentage of the first region from the 100 vol%, and that the first region includes a plurality of needle crystals, each of the plurality of needle crystals includes a boride, and each of the plurality of needle crystals has an aspect ratio of 1.5 or more in a cross-section image of the cubic boron nitride sintered material. Nevertheless, where the claimed and prior art products are identical or substantially identical in composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I), first paragraph). Here, Ueda discloses a cubic boron nitride sintered material that is sintered under a substantially identical process as set forth for in the present Specification for the described embodiments of the claimed invention. Ueda teaches that the pressed powdered mixture is sintered at a pressure of 6.2 GPa and a temperature of 1500 °C (p. 4, lines 5-9); these conditions are substantially the same as the sintering conditions specified for preparing the Samples described in the present application (see Specification at ¶ 0097, describing sintering at 6.2 GPa and 1550 °C) and well within the range of sintering parameters described in the present Specification (see ¶ 0084, teaching that “pressure during sintering may be, for example, 5.5 GPa or more and 8 GPa or less” and that “temperature during sintering may be, for example, 1200°C or more and less than 1800°C”). Further, Ueda teaches that the bonding phase of Specimen 7 comprises TiCN, Al2O3, AlN, and TiB2 (see Table 3, p. 6), which is substantially identical to the composition of the binding phase of Samples 1 and 3-10 of the present claimed invention (see Specification at Table 1, p. 27).
Because the bonding phase of Ueda is substantially identical in composition to the binding phase of example embodiments of the claimed invention, and the sintered material of Ueda is prepared by substantially the same process, it is to be expected that the cubic boron nitride sintered material of Ueda would inherently possess physical characteristics of the cubic boron nitride sintered material of the claimed invention, including a binding phase that comprises a first region and a second region, the first region accounting for 1.0 vol% or more in the binding phase, wherein a volume percentage of the second region is, when the volume percentage of the binding phase is 100 vol%, a numerical value obtained by subtracting a volume percentage of the first region from the 100 vol%, and wherein that the first region includes a plurality of needle crystals, each of the plurality of needle crystals includes a boride, and each of the plurality of needle crystals has an aspect ratio of 1.5 or more in a cross-section image of the cubic boron nitride sintered material. In particular, it is reasonable to presume that, in a binding phase prepared with substantially identical components and prepared under substantially the same sintering conditions, the binding phase would include needle crystals, even if not mentioned explicitly in Ueda.
Thus, because the claimed cubic boron nitride sintered material and the cubic boron nitride sintered material of Ueda are substantially identical in composition and are produced by substantially identical sintering processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph). The evidence of Igarashi lends support to this prima facie case. Igarashi discloses a composite material comprising a cubic boron nitride sintered material (¶ 0025) and a Ti-containing bonding part (¶¶ 0026-0027) positioned adjacent to the cubic boron nitride sintered grains and reacted with the cubic boron nitride sintered grains (¶ 0035 and Fig. 2). Igarashi teaches that reaction between the bonding part and the cubic boron nitride sintered grains leads to the formation of needle crystals (¶¶ 0020, 0030; Fig. 2), that the needle crystals include boron and titanium (¶ 0050), and that the needle crystals have an average aspect ratio of 5 or more (¶ 0050). Igarashi thus provides evidence to support the expectation that, when a Ti-containing binding phase is reacted with cubic boron nitride, needle crystals that include boride and titanium are a predictable result.
Ueda does not explicitly teach wherein the boride included in the plurality of needle crystals includes titanium, and the boride included in the plurality of needle crystals further includes one or more selected from the group consisting of niobium, molybdenum, hafnium, tantalum, and tungsten.
Wen, in the closely related field of sintered boride composite ceramics, teaches the synthesis of ternary MeB2 solid solutions, including (Hf1/3Zr1/3Ti1/3)B2 (HZTB) and (Ta1/3Nb1/3Ti1/3)B2 (TNTB) (Abstract). Wen teaches that these ternary MeB2 solid solutions exhibit desirable chemical stability, high electrical and thermal conductivities, and advantageous resistance to erosion and corrosion (p. 4957, col. 1).
One of ordinary skill in the art would have found it obvious to modify Ueda by including a ternary MeB2, as taught by Wen, in place of TiB2 in the binding phase; a predictable consequence of this would be that the plurality of needle crystals would comprise, in the case of TNTB, tantalum and niobium in addition to titanium and boron; in the case of HZTB, plurality of needle crystals would comprise hafnium and zirconium in addition to titanium and boron. Thus, the boride included in the plurality of needle crystals includes titanium, and the boride included in the plurality of needle crystals further includes either (1) tantalum and niobium, or (2) hafnium. Motivation to include one of the ternary transition-metal diborides taught by Wen would come from a desire to take advantage of the chemical stability, high electrical and thermal conductivities, and resistance to erosion and corrosion offered by those materials (see Wen at p. 4957, col. 1).
Although Wen is not strictly in the same field of endeavor as Ueda, nevertheless it would have been obvious to one of ordinary skill in the art to look to the teachings of Wen because both Wen and Ueda are concerned with sintered materials that include borides and titanium. Design incentives, such as a desire to produce a material resistant to wear from erosion and corrosion (see Ueda at p. 3, line 20), would have prompted one of ordinary skill in the art to adapt the teachings of Wen to improve the properties of the sintered material of Ueda. See MPEP 2143(I)(F).
Thus, in view of Ueda as modified by Wen, a cubic boron nitride sintered material reading on every limitation of claim 1, as amended, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, since the cubic boron nitride sintered material of Ueda as modified by Wen is substantially identical in composition to the cubic boron nitride sintered material of example embodiments of the claimed invention, and the sintered material of Ueda as modified by Wen is prepared by substantially the same process, it is to be expected that the cubic boron nitride sintered material of Ueda as modified by Wen would also inherently exhibit needle crystals with an average value of the aspect ratios that is 3.0 or more and 10.0 or less. Significantly, the present Specification indicates that all of the example embodiments, prepared according to the sintering conditions specified in ¶ 0097, exhibit needle crystals with an average value of the aspect ratios in the claimed range (see Table 1, p. 27, col. 5). Where the claimed and prior art products are identical or substantially identical in composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I), first paragraph). Igarashi provides evidence supporting this case, disclosing needle crystals with an average aspect ratio of 6 (see Igarashi, Table 5, p. 14, Example 3, column 20), within the claimed range of claim 2.
Regarding claim 3, since the cubic boron nitride sintered material of Ueda as modified by Wen is substantially identical in composition to the cubic boron nitride sintered material of example embodiments of the claimed invention, and the sintered material of Ueda as modified by Wen is prepared by substantially the same process, it is to be expected that the cubic boron nitride sintered material of Ueda as modified by Wen would also inherently exhibit a first region (i.e., a needle crystal region) that accounts for 3 vol% or more and 10 vol% or less in the binding phase. Where the claimed and prior art products are identical or substantially identical in composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 4, Ueda as modified by Wen discloses the cubic boron nitride sintered material wherein cubic boron nitride particles account for 52 vol% or more and 80 vol% or less in the cubic boron nitride sintered material (Ueda, p. 3, lines 17-20, and p. 4, Table 1), which substantially overlaps the 35 vol% or more and less than 75 vol% recited in claim 4. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 6, Ueda as modified by Wen teaches a cutting tool comprising the cubic boron nitride sintered material (Ueda, p. 3, line 45).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ueda in view of Wen as applied to claim 1 above, and further in view of Jiang, W., “Bio-inspired self-sharpening cutting tool surface for finish hard turning of steel,” CIRP Annals – Manufacturing Technology 63 (2014), pp. 517-520 (hereinafter “Jiang”).
Regarding claim 7, Ueda as modified by Wen discloses a cutting tool according to claim 6, as described above (see p. 7), but Ueda as modified by Wen does not explicitly teach wherein the cutting tool is a coated cutting tool, and the coated cutting tool includes a covering film, wherein the covering film covers at least a part of the surface of the cubic boron nitride sintered material.
Jiang, in the same field of endeavor, teaches a cutting tool (p. 518, col. 1, line 10) that comprises cubic boron nitride particles situated in a TiN binder phase matrix (p. 518, col. 2, subsection 3.1). Jiang teaches wherein the cutting tool is a coated cutting tool, and the coated cutting tool includes a covering film (p. 518, col. 2, subsection 3.1, teaching a coating surface with a capping layer of soft phase TiN, about 3 μm thick). Jiang teaches wherein the covering film (capping layer) covers at least a part of the surface of the cubic boron nitride (p. 518, col. 2, subsection 3.1; see also Fig. 3, p. 519).
One of ordinary skill in the art before the effective filing date of the claimed invention, equipped with the teachings of Jiang, could readily have added a covering film of TiN to the cubic boron nitride sintered material taught by Ueda as modified by Wen. One would be motivated to do so by a desire to impart to the cutting tool a “self-sharpening” aspect, whereby during an abrading process, the TiN soft phases are worn away more quickly, leaving behind hard cubic boron nitride particles near the surface, resulting in sharp interfaces (Jiang, p. 518, col. 2, subsection 3.1). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention use the teachings of Jiang to further modify Ueda as modified by Wen with in order to produce a cutting tool reading on every limitation of claim 7.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Demirskyi et al., “Fracture and property relationships in the double diboride ceramic composites by spark plasma sintering of TiB2 and NbB2,” J. American Ceramic Soc. 102 (2019), pp. 4259-4271 (“Demirskyi”) teaches titanium diboride–niobium diboride ceramic composites produced by spark plasma sintering (SPS) (Abstract).
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731