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 .
The amendment filed 6/8/2026 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 Claims 12-17 have been withdrawn from consideration as being directed to non-elected inventions. 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 Rejections - 35 USC § 103
Claims 1-3, 6, 9-11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Andersson (US2012/0114436A1, hereinafter referred to as “Andersson ‘436). Andersson ‘436 teaches a nanolaminated coated cutting tool insert comprising a body (or “substrate”) of a hard alloy of cemented carbide, cermet, ceramics, cubic boron nitride based material, or high speed steel (as in instant claim 11) onto which a hard and wear resistant coating is deposited by physical vapor deposition (PVD); wherein the coating includes a PVD deposited nanolaminated structure of alternating layers A and B where layer A is (Ti,Al,Me1)N and Me1 is optionally one or more of the metal elements from group 3, 4, 5 or 6 in the periodic table; and layer B is (Ti,Si,Me2)N and Me2 is optionally one or more of the metal elements from group 3, 4, 5 or 6 in the periodic table including Al, with a thickness of the nanolaminated structure being between 0.5 and 20 µm (Abstract, Paragraphs 0001 and 0024). More particularly, Andersson ‘436 teaches that said layer A is (Ti1-xAlxMe1p)Na, where 0≤p<0.15, 0.3<x<0.95 or preferably 0.45<x<0.75, and 0.90<a<1.10 or preferably 0.96<a<1.04, such that Me1 is optional, with several working examples utilizing TiAlN, with p=0 and thus no Me1, as the layer A of the nanolaminated structure, including examples with a layer A composition reading upon the instantly claimed (Ti1-xAlx)Ny as recited in instant claims 1 and 18 (Paragraph 0016; Table 1); while “[s]aid layer B is (Ti1-y-zSiyMe2z)Nb, where 0.05<y<0.25 preferably 0.05<y<0.18, 0.l≤z<0.4, 0.9<b<1.1, preferably 0.96<b<1.04, and Me2 is one or more of the metal elements from group 3, 4, 5 or 6 in the periodic table including Al, preferably one or more of Y, V, Nb, Mo, W and Al, most preferably one or more of Y, V, Nb and Al” (Paragraph 0016), with several working examples specifically utilizing TiSiN as the layer B alternating with TiAlN as the layer A as in instant claim 1 with layer B compositions specifically reading upon the instantly claimed “(Ti(1-l)Sil)Nm” of instant claim 1; as well as other working examples specifically utilizing TiSiAlN as the layer B alternating with TiAlN as the layer A as in instant claim 18 with layer B compositions specifically reading upon the instantly claimed “Ti(1-k-l)AlkSil)Nm” as recited in instant claim 18; with all of the nanolaminated structures of the inventive examples “consisting of” said alternating layers A and B (as in instant claims 1 and 18) with a total coating thickness of about 2 µm (reading upon the claimed PVD coating thickness of at least 1.0 µm as in instant claims 1 and 18 as well as the claimed thickness of between 1 and 12 µm as in instant claim 3), and individual layer thicknesses falling within the claimed ranges of between 1 and 100 nm (as in instant claims 6, 9, and 18; Entire document, particularly as noted above and Examples, Table 1, e.g., see Examples 1-10 for instant claim 1 and Examples 20-22 for instant claim 18).
Hence, the only difference between the working examples taught by Andersson ‘436, particularly those as noted above, and the instantly claimed invention as recited in instant claims 1-3, 6, 9, 11, and 18, is that the exemplified coated cutting tool inserts do not include a chemical vapor deposition (CVD) deposited layer of titanium nitride (TiN) located between and in contact with both the substrate and the PVD deposited nanolaminated structure of alternating A and B layers as in instant claims 1 and 18, and particularly having a thickness of between 0.1 and 1.7 µm as in instant claims 2 and 18. However, Andersson ‘436 does teach that “[said] coating may comprise an inner single- and/or multilayer coating of TiN, TiC, Ti(C,N) or (Ti,Al)N, preferably (Ti,Al)N, and/or an outer single- and/or multilayer coating of TiN, TiC, Ti(C,N), (Ti,Si)N or (Ti,Al)N, preferably (Ti,Si)N or (Ti,Al)N, according to prior art, to a total coating thickness, including the thickness of the nanolaminated structure, of between 0.5 and 30 µm, preferably between 0.5 and 15 µm, and most preferably between 0.5 and 10 µm” (emphasis added, Paragraph 0023); and given that Andersson ‘436 teaches that the nanolaminated structure of alternating A and B layers has a thickness between 0.5 and 20 µm as discussed above, preferably between 0.5 and 10 µm, and most preferably between 0.5 and 5 µm (Paragraph 0015), Andersson ‘436 provides a clear teaching and/or suggestion that the inner single coating may have a thickness of up to 10 µm, preferably/most preferably up to 5 µm, thereby encompassing and hence rendering obvious the claimed TiN thickness range of between 0.1 and 1.7 µm as recited in instant claims 2 and 18. Further, given that the claimed “chemical vapor deposition” or “CVD” limitations are process limitations in the product claims (as previously discussed on the record) that as broadly recited do not provide any additional material or structural limitations to the claimed coated cutting tools to differentiate the claimed CVD deposited layer of TiN from the inner single coating of TiN taught by Andersson ‘436, the Examiner takes the position that Andersson ‘436 clearly teaches and/or suggests a coated cutting tool as recited in instant claims 1-3, 6, 9, 11, and 18, comprising a substrate and a coating that consists of layers and layer thicknesses as instantly claimed, and hence instant claims 1-3, 6, 9, 11, and 18 would have been obvious over the teachings of Andersson ‘436 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Additionally, or alternatively, given that chemical vapor deposition (CVD) is an obvious, functionally equivalent deposition technique to PVD in the art, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-3, 6, 9, 11, and 18 would have been further obvious over the teachings of Andersson ‘436 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 10, given that Andersson ‘436 teaches that the first deposited layer of the nanolaminated coating of alternating A and B layers is a layer A with working examples, particularly the above referenced working examples, specifically utilizing TiAlN as the first layer A such that when an inner single coating of TiN is incorporated as taught by Andersson ‘436 as discussed in detail above, the first TiAlN layer A of the PVD deposited nanolaminated coating of alternating A and B layers (reading upon the claimed “PVD deposited Ti,Al-based nitride layer”) would be “arranged in contact with the…deposited layer of TiN” as in instant claim 10. Hence, instant claim 10 would have been obvious over the teachings of Andersson ‘436 for the same reasons as discussed in detail above with respect to instant claim 1.
Claims 1-3, 6, 9-11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Andersson ‘436, as applied above and incorporated herein by reference, and as further evidenced by Kumar (US2020/0173012A1) and/or in further view of Ljungberg (US2010/0061812A1). The teachings of Andersson ‘436 are discussed in detail above and although the Examiner again takes the position that the claimed CVD limitations as well as the claimed PVD limitations are process limitations in the product claims that as broadly recited do not provide any additional material or structural limitations to the claimed coated cutting tool to differentiate the claimed invention from the coated cutting tool taught and/or suggested by Andersson ‘436, the Examiner further notes that Kumar as previously discussed in the prior office action (and incorporated herein by reference), supports the Examiner’s position that PVD and CVD are functionally equivalent methods in the art for vapor depositing similar inner or intermediate layers between a substrate and a PVD deposited laminate structure as in Andersson ‘436, and thus would have been obvious to one having ordinary skill in the art for depositing the inner single coating of TiN as taught by Andersson ‘436 (Kumar: Paragraphs 0053-0054). Additionally and/or alternatively, the Examiner further notes that Ljungberg, as discussed in detail in the prior office action (and incorporated herein by reference), teaches a coated cutting tool comprising a cemented carbide substrate and a deposited coating thereon, similar to the teachings of Andersson ‘436, 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 CVD coating such as a layer of TiN applied to the substrate by CVD (similar to the inner single coating of TiN of Andersson ‘436), and an outer 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 (Entire document, particularly Abstract, Paragraphs 0012, 0014, and 0016; similar to the alternating layers taught by Andersson ‘436). Hence, given that Kumar and/or Ljungberg are of the same field of endeavor as Andersson ‘436 (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 and/or suggested by Kumar for the invention taught by Andersson ‘436 such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-3, 6, 9-11, and 18 would have been obvious over the teachings of Andersson ‘436 as further evidenced by Kumar and/or in further view of Ljungberg.
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but are moot in view of the new grounds of rejection presented above.
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 6/8/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Santhanam (USPN 5,364,209) and Santhanam (USPN 5,250,367) both teach coated cutting tools having a coating provided on a substrate wherein the coating includes at least one chemical vapor deposited (CVD) layer and at least one physical vapor deposited (PVD) layer, preferably at least a CVD inner layer and a PVD outer layer.
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.
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
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