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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/2/2025 has been entered.
The amendment filed 10/24/2025 has been entered. Claims 4-5, 7-8, and 19 have been canceled. Claims 1-3, 6, and 9-18 are pending in the application. Claims 12-17 have been withdrawn have been withdrawn from consideration as being directed to a non-elected invention. Applicant timely traversed the restriction (election) requirement in the reply filed 8/26/2024. 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 Interpretation
As noted in the prior office actions and consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that 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. Lastly, it is again noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, 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 art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
Given the above, the Examiner again notes that the recited “PVD” and “CVD” limitations are process limitations in the product claims that as broadly recited do not provide any additional structural or material limitations to the claimed deposited layers to differentiate the claimed PVD or CVD deposited layer(s) from layers deposited by other methods. It is also again noted that although the claimed invention recites that “the CVD deposited layer of TiN is in contact with both the substrate and the PVD deposited Ti,Al-based nitride layer”, the claimed invention as recited in instant claim 1 (and similarly in instant claim 18) does not exclude the substrate from being a multilayered structure or “a body comprising a back body onto which an additional material is placed” as recited on page 4 of the specification as filed, such that “the substrate” may be a cemented carbide base with a surface layer of material X provided thereon and upon which the CVD deposited layer of TiN is applied, and although the surface layer of material X is positioned between the cemented carbide base and the CVD deposited layer of TiN, given that the surface layer of material X is part of the substrate, the Examiner takes the position that the CVD deposited layer of TiN is “in direct contact with” the substrate. In addition, given that instant claim 1 (and similarly instant claim 18) recites that “the PVD deposited Ti,Al-based nitride layer is a laminated layer having alternating layers of…” (emphasis added) and not “a laminated layer consisting of alternating layers of…”, the claimed invention does not require the PVD deposited Ti,Al-based nitride layer to consist of the recited alternating layers given that the “laminated layer” may have or comprise other layers in addition to the alternating layers, and thus, even in the case where the substrate does not include an additional material on a back body or base (e.g. is a homogeneous monolith), an additional layer(s) may be provided between the CVD deposited layer of TiN and the alternating layers when said additional layer(s) is/are considered part of the PVD deposited Ti,Al-based nitride “laminated layer” such that the CVD deposited layer of TiN would still be in direct contact with the PVD deposited Ti,Al-based nitride “laminated layer”.
Claim Rejections - 35 USC § 102
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ni (US2013/0065081A1). Ni discloses a coated wear-resistant member (Abstract), such as a coated cutting tool (Paragraphs 0003, 0005, 0019-0021, Examples), comprising a substrate (102,132) such as formed from cemented carbides (Paragraph 0020), and a coating scheme (106,136) applied by physical vapor deposition (PVD) provided on a surface (104,134) of the substrate (102,132) to provide wear resistance and including a region of alternating coating sublayers (110,140), and as an option, further comprising a bonding coating region (108,138) positioned between the substrate (102,132) and the region of alternating coating sublayers (110,140); wherein the region of alternating coating sublayers (110,140) comprises a plurality of (TiAlSiN/TiAlN) coating sets having a total thickness ranging from 1 to 6 µm (reading upon the claimed “(PVD) deposited titanium aluminium (Ti,Al)-based nitride layer having a thickness of at least 1.0 µm, wherein the PVD deposited Ti,Al-based nitride layer includes at least one layer of titanium aluminium nitride (TiAlN) wherein the PVD deposited Ti,Al-based nitride layer is a laminated layer having alternating layers…wherein a thickness of the PVD deposited Ti,Al-based nitride layer is between 1 and 12 µm” as in instant claim 18) and including one coating sublayer being TixAlySi100-x-yN with 40≤x≤80 atomic percent; 15≤y≤55 atomic percent; 4≤100-x-y≤15 atomic percent (reading upon the claimed Ti(1-k-l)AlkSil)Nm-layers with m=1 and overlapping the claimed k and l, with data points/working examples falling within the claimed k,l ranges); and the other coating sublayer being TipAl100-pN with 45≤p≤100 atomic percent (reading upon the claimed Ti1-xAlxNy-layers with y=1 and overlapping the claimed x with data points/working examples falling within the claimed x range; Entire document, particularly as noted above and Abstract, Figs. 2-3, Paragraphs 0006, 0019-0022, 0025, 0029, and 0043). Ni discloses that the thickness of the TiAlSiN coating layer of each of the plurality of coating sets (114A,114B,114C) of the region of alternating coating sublayers (110) can range between about 0.002 micrometers and 0.05 micrometers (i.e., about 2 nm to 50 nm; falling within the claimed thickness of each of the Ti(1-k-l)AlkSil)Nm-layers of between 1 to 100 nm), while the thickness of the TiAlN coating layer of each of the plurality of coating sets (114A,114B,114C) of the region of alternating coating sublayers (110) can range from between about 0.002 micrometers and about 0.05 micrometers (falling within the claimed thickness of each of the Ti1-xAlxNy-layers of between 1 to 100 nm; Paragraph 0027). Ni discloses that in the embodiment as shown in Fig. 2 (or Fig. 3), the bonding region (108 or 138) may be one of two alternatives, wherein in the first alternative, the bonding coating region is a single layer of TipAl100-pN wherein 45≤p≤100 (reading upon the claimed “deposited layer of titanium nitride (TiN) located between the substrate and the PVD deposited Ti,Al-based nitride layer” and “in contact with both the substrate and the PVD deposited Ti,Al-based nitride layer” as in instant claim 18, particularly when p=100); while in the second alternative, the bonding region comprises a plurality of bonding coating sets wherein each bonding coating set comprises alternating bonding coating sublayers of TiN and TipAl100-pN (i.e., Ti/TipAl100-pN) with 45≤p≤100 atomic percent, and a total thickness of the Ti/TipAl100-pN bonding region can range between greater than about zero micrometers and about 4 micrometers (Paragraphs 0022-0024 and 0029, thus also reading upon the claimed “deposited layer of titanium nitride (TiN) located between the substrate and the PVD deposited Ti,Al-based nitride layer” and “in contact with both the substrate and the PVD deposited Ti,Al-based nitride layer” of instant claim 18 given that the additional sublayers beyond the first TiN layer would be considered as part of the claimed “PVD deposited Ti,Al-based nitride layer that includes at least one layer of titanium aluminium nitride (TiAlN) wherein the PVD deposited Ti,Al-based nitride layer is a laminated layer having alternating layers,” emphasis added, particularly given the Claim Interpretation section above, and the combined thickness with the region of alternating coating layers, 1 to 6 micrometers as noted above, would still fall within the claimed “between 1 and 12 µm” for the PVD deposited Ti,Al-based nitride layer).
Ni specifically discloses working examples comprising alternating TiAlSiN/TiAlN sublayers having compositions that satisfy the claimed Ti(1-k-l)AlkSil)Nm and Ti1-xAlxNy equations, in thicknesses as instantly claimed, with a TiN bonding coating region provided on and in direct contact with a cemented tungsten carbide substrate, and although the working examples include a TiN bonding coating region as a first bonding region in combination with a 0.8 µm thick second bonding coating region of alternating TiN/TiAlN (Coating Nos. 8-12, Table III), or a “Ti51Al49N” bonding coating region as the only bonding coating region (Coating No. 13, Table III), given that Ni specifically discloses that the second bonding region is optional and/or that the first bonding region may be TipAl100-pN wherein 45≤p≤100 such that the use of the TiN bonding coating region of Coating Nos. 8-12 in place of the Ti51Al49N of Coating No. 13 would have been clearly envisaged and/or given that the additional alternating layers of the 2nd bonding coating region of Coating Nos. 8-12 may be considered as part of the claimed PVD deposited Ti,Al-based nitride layer such that the TiN first bonding region of Coating Nos. 8-12 would be in contact with both the substrate and the PVD deposited Ti,Al-based nitride layer, the Examiner takes the position that Ni discloses the claimed invention with sufficient specificity to anticipate instant claim 18, noting again that the claimed CVD limitation is a process limitation in the product claim that does not provide any additional structural or material limitations to differentiate the claimed invention from the invention disclosed by Ni.
Claim Rejections - 35 USC § 103
Claims 1-3, 6, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US2020/0173012A1) for the reasons recited in the office action dated 6/27/2025 and copied below.
As discussed in the prior office action, Kumar teaches “a coated cutting tool comprises a substrate [31] and a coating comprising a refractory layer [33] deposited by physical vapor deposition adhered to the substrate, the refractory layer comprising a plurality of sublayer groups [33a], a sublayer group [33a] comprising a titanium aluminum nitride sublayer [B] and an adjacent composite sublayer [A] comprising alternating nanolayers of titanium silicon nitride and titanium aluminum nitride” (Abstract, see also Fig. 3). Kumar teaches that in some embodiments, the coating further comprises one or more intermediate layers (32) provided between the PVD refractory layer (33) and the substrate (31), wherein the intermediate layer(s) (32) can be deposited by PVD and/or CVD (Paragraphs 0005, 0053-0054, see also Fig. 3). Kumar teaches that the intermediate layer (32) can be, for example, a titanium aluminum nitride layer of the formula Ti1-zAlzN where in some embodiments z ≥0.68 while in other embodiments, z can be less than 0.68, and that the PVD refractory layer comprising sublayer groups can be deposited directly on an intermediate layer comprising Ti1-zAlzN in some embodiments, wherein an intermediate Ti1-zAlzN layer can have any desired thickness, such as 0.5 µm to 2 µm in some embodiments or 2 µm to 10 µm in other embodiments (Paragraphs 0053-0054). Kumar teaches an embodiment wherein an intermediate TiAlN layer is adhered directly to the substrate, while in other embodiments, one or more inner layers (not shown in Fig. 3) can be positioned between the intermediate TiAlN layer (32) and the substate (31); wherein the “[i]nner layer(s) of the coating can comprise one or more metallic elements selected from the group consisting of aluminum and metallic elements of Groups IVB, VB and VIB of the Periodic Table and one or more non-metallic elements selected from the group consisting of nonmetallic elements of Groups IIIA, IVA, VA and VIA of the Periodic Table” such as “[f]or example, in some embodiments, one or more inner layers of TiN, TiC, TiCN or Al2O3 can be positioned between the cutting tool substrate [31] and the intermediate Ti1-zAlzN layer [32]” (emphasis added, Paragraph 0056). Hence, Kumar provides a clear teaching and/or suggestion of a coated cutting tool comprising an inner layer of TiN positioned between the cutting tool substrate (31) and an intermediate layer (32) of the coating, and given that the intermediate layer(s) (32) may be formed by PVD and/or CVD, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to also provide the additional inner layer(s) by PVD or CVD as in the claimed invention with respect to the claimed TiN layer located between the claimed substrate and the claimed “PVD deposited Ti,Al-based nitride layer”, although the Examiner again notes that the claimed PVD and CVD limitations are process limitations in the product claim that do not provide any additional material or structural limitations to differentiate the claimed layers from the layers taught by Kumar.
With respect to the composite sublayer group (A) comprising alternating nanolayers of titanium silicon nitride (TiSiN) and titanium aluminum nitride (TiAlN), Kumar teaches that each TiAlN alternating nanolayer of the composite sublayer may have a formula reading upon the instantly claimed Ti1-xAlxNy layers given that Kumar teaches a formula where x≥0.68 and y=1; while the TiSiN nanolayers are of the formula Ti1-pSipN wherein 0.05≤p≤0.3 reading upon the instantly claimed Ti(1-l)Sil)Nm – layers wherein the p range taught by Kumar fully encompasses the claimed l range of 0.05<l<0.2 and m=1 falling within the claimed range of 0.7<m<1.1 (Paragraphs 0015, 0019-0020, 0022, Table 1). Kumar also teaches that any number of sublayer groups can be deposited by PVD to provide a refractory layer of desired thickness, wherein the PVD deposited refractory layer comprising the subgroups can have a thickness from 0.1-1 µm, reading upon the claimed thickness of at least 1 µm with respect to the PVD deposited Ti,Al-based nitride layer as discussed in the prior office action, and given that the claimed invention does not require the PVD deposited Ti,Al-based nitride layer to consist of the recited alternating layers given that the “laminated layer” may have or comprise other layers such as the intermediate TiAlN layer of Kumar which may be deposited by PVD, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Kumar wherein the substrate (31) of Kumar is equated to the claimed substrate, the inner layer of TiN is equated to the claimed TiN located between the substrate and the PVD deposited Ti,Al-based nitride layer, and the laminated structure of the intermediate TiAlN layer (32), which may be deposited by PVD as noted above, and the refractory coating (33) deposited by PVD and comprising a plurality of sublayer groups (33a) are equated to the claimed “PVD deposited Ti,Al-based nitride layer is a laminated layer having alternating layers” as instantly claimed, and hence, the inner layer of TiN as taught by Kumar “is in contact with both the substrate and the PVD deposited Ti,Al-based nitride layer” as in the claimed invention.
With respect to instant claim 2, Kumar teaches that the “[i]nner layer(s) can have any desired thickness not inconsistent with the objectives of the present invention” wherein in “some embodiments, an inner layer has a thickness in the range of 100 nm to 5 µm” encompassing the claimed range and hence rendering instant claim 2 obvious over the teachings of Kumar (Paragraph 0056).
With respect to instant claim 3, Kumar teaches that the PVD refractory layer may have a thickness of 0.1-1 µm (Paragraph 0026, Table IV) and given that Kumar teaches that the coating may include the intermediate layer of Ti1-zAlzN having any desired thickness, such as 0.5 µm to 2 µm in some embodiments or 2 µm to 10 µm in other embodiments (Paragraphs 0053-0054), Kumar teaches a thickness of the “PVD deposited Ti,Al-based nitride layer” of between 1 and 12 µm as instantly claimed. Hence, instant claim 3 would have been obvious over the teachings of Kumar.
With respect to instant claim 6, Kumar teaches that the titanium silicon nitride nanolayers having formula Ti1-pSipN may have a thickness in some embodiments of less than 10 nm, for example, 1-7 nm (Paragraphs 0019-0020), and hence instant claim 6 would have been obvious over the teachings of Kumar.
With respect to instant claim 9, Kumar teaches that the titanium aluminum nitride nanolayers having formula Ti1-yAlyN wherein y≥0.68 may have a thickness in some embodiments of less than 10 nm, for example, 1-7 nm (Paragraphs 0022-0023, Claim 5), and hence instant claim 9 would have been obvious over the teachings of Kumar.
With respect to instant claim 10, in addition to the discussion above with respect to amended claim 1, Kumar clearly teaches that the coating may include an intermediate layer (32) of Ti1-zAlzN deposited by PVD in contact with the inner layer of TiN deposited on the substrate (31) and upon which the PVD refractory layer (33) is provided, thereby reading upon the claimed TiAlN “arranged in contact with the CVD deposited layer of TiN” as recited in instant claim 10. Hence, instant claim 10 would have been obvious over the teachings and/or suggestions of Kumar given again that the claimed CVD is a process limitation in the product claim that does not provide any additional material or structural limitations to differentiate the claimed invention from the coated cutting tool taught by Kumar, particularly given that Kumar provides a clear teaching and/or suggestion of utilizing CVD or PVD for the intermediate/inner layer(s) as discussed above.
With respect to instant claim 11, Kumar teaches that the cutting tool substrate can be formed of cemented carbide, carbide, ceramic, cermet or steel (Paragraph 0012), and hence instant claim 11 would have been obvious over the teachings of Kumar.
Alternatively, claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ni (US2013/0065081A1), wherein although the Examiner is of the position that the reference is anticipatory for the reasons discussed in detail above and incorporated herein by reference, particularly given the above Claim Interpretation section, the Examiner alternatively takes the position that the claimed invention as recited in instant claim 18 would have been obvious over the teachings of Ni given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ljungberg (US2010/0061812A1) in view of Ni (US2013/0065081A1). As discussed in a prior office action, Ljungberg teaches a coated cutting tool comprising a cemented carbide substrate comprising an inner 2-7 µm thick CVD coating such as a layer of TiN applied by CVD (reading upon the claimed CVD deposited layer of TiN of instant claim 18), and an outer 2-7 µm thick PVD coating deposited on the CVD coating, preferably comprising one or more PVD deposited layers of (TixAly)N where x,y>0 and x+y=1, (TixAlySiz)N where x,y,z>0 and x+y+z=1 (e.g. reading upon the claimed (Ti(1-k-l)AlkSil)Nm as recited in instant claim 18), (TixAlyCrz)N where x,y,z>0 and x+y+z=1, TiN, Ti(CxNy), and Al2O3, most preferably (TixAly)N where x,y>0 and x+y=1, as a single layer or in a multilayer structure (Abstract, Paragraphs 0012, 0014, and 0016), with an example comprising a PVD layer of (TixAly)N with the ratio of x/y close to 1 (e.g. about 0.5 for both x and y reading upon the claimed (Ti1-x Alx)Ny formula of instant claim 18 with x being about 0.5 falling within the claimed range and y being 1 falling within the claimed range, Paragraph 0025); and given that Ljungberg generally teaches that it is known in the art that “[s]everal hard layers in a multilayer structure generally build up such coatings” (Paragraph 0002), wherein the Examiner again notes that an alternating layer structure is an obvious multilayer structure in the art (as evidenced by Andersson or Kumar or Gothelid), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a multilayer structure for the PVD coating layer as taught by Ljungberg comprising alternating layers of any combination of the one or more PVD layers taught by Ljungberg such as layers of (TixAly)N where x,y>0 and x+y=1, alternating with layers of (TixAlySiz)N where x,y,z>0 and x+y+z=1, reading upon the instantly claimed “laminated layer having alternating layers of (Ti1-x Alx)Ny-layers and (Ti(1-k-l)AlkSil)Nm-layers” as in the claimed invention, utilizing any values for x, y, and z as taught by Ljungberg, and/or utilizing close to equimolar amounts as in the example, thereby reading upon and/or rendering obvious the claimed “laminated layer” as recited in instant claim 18.
Further, as discussed in detail above, Ni teaches a similar coated substrate such as a coated cutting tool, as discussed above and incorporated herein by reference, comprising a cemented carbide substrate having a PVD deposited coating scheme applied thereon to provide wear resistance to the coated member (Paragraphs 0004 and 0043; e.g., as in Ljungberg, see Paragraph 0012), wherein the PVD deposited coating scheme includes a region of alternating coating sublayers of TiAlSiN/TiAlN sublayers having compositions that satisfy the instantly claimed Ti(1-k-l)AlkSil)Nm and Ti1-xAlxNy equations (as discussed in detail above), with a total thickness of the region of alternating coating sublayers ranging from 1 to 6 µm (similar to the outer 2-7 µm thick PVD coating taught by Ljungberg which may also be formed from TiAlSiN and/or TiAlN as noted above), and individual sublayer thicknesses of about 2 to 50 nm (as discussed in detail above and falling within the claimed thickness ranges of between 1 and 100 nm), with working examples specifically reading upon the claimed PVD deposited Ti,Al-based nitride layer as recited in instant claim 18 including a laminated layer having alternating layer compositions and thicknesses as instantly claimed and within the range taught by Ljungberg, providing desirable wear properties (Ni: Entire document, particularly as noted above, and Abstract, Paragraphs 0025-0027, Examples). Hence, given that Ni and Ljungberg are of the same field of endeavor (which is the same as the instantly claimed invention), it would have been obvious to one having ordinary before the effective filing date of the claimed invention to utilize the PVD deposited alternating coating sublayers taught by Ni as providing wear resistance, as the PVD coating providing wear resistance in the invention taught by Ljungberg, thereby rendering the claimed invention as recited in instant claim 18 obvious over the teachings of Ljungberg in view of Ni given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ni, as applied above, and in further view of Ljungberg. The teachings of Ni are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the claimed CVD limitation is a process limitation in the product claim that as broadly recited does not provide any additional structural or material limitations to the instantly claimed product to differentiate the claimed coated cutting tool as recited in instant claim 18 from the coated cutting tool taught by Ni, the Examiner further notes that Ljungberg, as discussed in detail above, teaches a coated cutting tool comprising a cemented carbide substrate and a deposited coating thereon, similar to the teachings of Ni, wherein Ljungberg specifically teaches a method of producing the coated cutting tool by utilizing a combination of CVD and PVD to provide a coated cutting tool with improved toughness properties while maintaining wear resistance, and having “all the good properties of both PVD-coated tools and CVD-coated tools” including toughness comparable to PVD-tools, and coating adhesion and wear resistance comparable to CVD-coated tools (Entire document, particularly Abstract, Paragraphs 0001-0009). More specifically, Ljungberg teaches that the coating includes an inner 2-7 µm thick CVD coating such as a layer of TiN applied to the substrate by CVD (reading upon the claimed CVD deposited layer of TiN of instant claim 18 and similar to the bonding region layer taught by Ni), and an outer 2-7 µm thick PVD coating deposited on the CVD coating, preferably comprising one or more PVD deposited layers of TiAlN, TiAlSiN, TiAlCrN, TiN, TiCN, and Al2O3 in a single layer or multilayer structure, with the first two PVD layer types, e.g., TiAlN and TiAlSiN, being similar to the alternating sublayers of Ni (Entire document, particularly Abstract, Paragraphs 0012, 0014, and 0016). Hence, given that Ni and Ljungberg are of the same field of endeavor (which is the same as the instantly claimed invention), it would have been obvious to one having ordinary before the effective filing date of the claimed invention to utilize a similar combined CVD/PVD coating process as taught by Ljungberg for the invention taught by Ni, e.g., utilizing CVD for the bonding coating region (108,138) of Ni and PVD for the region of alternating coating sublayers (110,140), or stated differently, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a CVD deposited bonding coating in place of the PVD deposited bonding coating in the invention taught by Ni, thereby rendering the claimed invention as recited in instant claim 18 obvious over the teachings of Ni in view of Ljungberg given that it is prima facie obviousness to use a known technique to improve similar devices in the same way and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant’s arguments filed 10/24/2025 have been fully considered but are not persuasive with respect to Kumar (as in the Advisory Action dated 11/6/2025 and restated below), and/or moot in view of the new grounds of rejection presented above. With respect to Applicant’s previous arguments over the obviousness rejection of claims 1-3, 6, and 9-11 based upon the teachings of Kumar, the Examiner has copied her previous response below as recited in the Advisory Action dated 11/6/2025, except for the deletion of claim 4 from the response.
“With respect to the obviousness rejection of claims 1-[3], 6, and 9-11 over Kumar (US2020/0173012A1), the Applicant again argues that a “difference between Kumar and claim 1 as [previously] amended is that the laminated layer of claim 1 is adhered directly to the TiN layer” while “Kumar instead specifies an intermediate TiAlN layer typically with a thickness of 1.5 µm…is arranged between the TiN layer and the laminated layers of AlTiN and AlSiN” and that “[t]hus, previously amended claim 1 is [allegedly] not obviated by Kumar because Kumar [allegedly] does not disclose or fairly suggest that the TiN layer is in direct contact both with the substrate and the laminated layers” (see page 5, fifth and sixth paragraphs). However, the Examiner again respectfully disagrees given that as discussed in detail in the prior office action, the claimed invention does not limit the “laminated layer” or PVD deposited Ti,Al-based nitride layer to one that consists of just the alternating layers of TiAlN and TiSiN, and given that the claimed “laminated layer” may be one further “having” or comprising additional layers such as the intermediate TiAlN layer taught by Kumar, and that the Applicant fails to provide any additional arguments to address or rebut the Examiner’s position (as previously discussed in the Claim Interpretation section at paragraph 3 of the prior office action and in the Response to Arguments section at paragraphs 18-19 of the prior office action), Applicant’s arguments with respect to this alleged “difference” are not persuasive.
The Applicant also again argues that “Kumar is further silent on a TiN layer which is adhered by CVD coating” and that the “invention of claim 1 provides for a good average tool life thanks to the claimed coating structure (without the need of an additional TiAlN layer as taught by Kumar),” further arguing that “there is no teaching in Kumar as to removing the TiAlN layer” (see page 5, seventh paragraph). However, the Examiner again respectfully disagrees and again notes that the CVD limitation is a process limitation in the product claim that as broadly recited does not provide any additional structural or material limitations to the TiN layer to differentiate the instantly claimed TiN layer from the inner TiN layer as taught by Kumar, particularly given that Kumar provides a clear teaching and/or suggestion that the intermediate/inner layer(s) can be provided by PVD and/or CVD as discussed above. Further, given that the claimed invention is drafted in open transitional language, i.e. “comprising”, and that the claimed invention as currently recited does not limit the “laminated layer” to one consisting of the alternating layers as discussed above, Applicant’s repeated arguments (in the seventh paragraph of page 5 of the response filed 10/24/2025 which are the same as those recited in the fifth paragraph of page 8 of the prior response filed 3/19/2025) are again unpersuasive, especially given that the Applicant provides no additional arguments to rebut the Examiner’s position as restated above and previously recited in the prior office action (see paragraph 19 of the prior office action) nor any showing of criticality and/or unexpected results with respect to the claimed invention as currently recited over the teachings of Kumar. Hence, the Examiner maintains her position that the claimed invention as recited in amended claims 1-[3], 6, and 9-11 would have been obvious over the teachings of Kumar for the reasons of record.”
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 10/24/2025.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ardnt (US2014/0147683A1) teaches a hard nano-laminated coating system for high performance tools such as cutting tools, wherein the hard nano-laminated coating system (5) comprises alternating A and B nano-layers of (AlxTi1-x-yWy)N with 0.5≤x≤0.65 and 0≤y≤0.1 as deposited A nano-layers and (Ti1-z-uSizWu)N with 0.05≤z≤0.30 and 0≤u≤0.10 as deposited B nano-layers, provided on a surface of a substrate (1), and the coating system may include an interlayer (2) between the substrate (1) and the nano-layer coating (5), that can be selected, for example, in order to influence the texture of the nano-layered coating system and to attain reduced stress in coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787