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 .
Status of Claims
Claims 1-5, 7-11, and 13-14 are examined in this office action as claims 15-25 are withdrawn as directed to a non-elected invention.
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 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 1-5, 7, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0253459 A1 of Geoffrey.
As to claim 1, Geoffrey discloses forming a first substrate element of a polycrystalline diamond (PCD) compact was manufactured by blending together diamond particles, tungsten carbide (WC) powder and cobalt powder (Geoffrey, paragraph [0085]), meeting the claim limitation of a body of PCD material as the body is formed of diamond. Geoffrey discloses where a cemented carbide substrate is bonded to a PCD body (Geoffrey, paragraphs [0085-0089]), meeting the limitation of where a cemented carbide substrate is bonded to a body of PCD material along an interface as since there is a difference in materials, there is necessarily an interface. Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) this demonstrates that WC percentage in the substrate falls within the claim limitations of at least around 70 wt% to at most around 95 wt% tungsten carbide as if tungsten carbide particles bonded with a binder alloy of Co has a Co amount is 13 wt% with 2% organic pressing aid, this means the amount of WC is 85 wt%, meeting the claim limitations.
While Geoffrey does not explicitly disclose 0.1-3 vol% of inclusions of free carbon, SP2-hybradised carbon or SP3-hybradized carbon nor where they have a largest average size of less than around 40 microns, as Geoffrey discloses the same starting materials as laid out above and discloses a substantially identical method of manufacturing the PCD construction involving milling the powders of WC, Co and diamond with an ETC of 8.21 wt%, compacting and sintering them, placing the substrate into a canister with the diamond grains and treating it at about 5.5 GPa and 1,400 °C to form a product (Geoffrey, paragraph [0085-0089]), thereby matching the method disclosed in claim 15 of milling the carbide powder with a binder material and a mass of carbon where diamond is an amorphous carbon and where ETC is equal to or more than around 6.2 wt%, compacting the powder and sintering, placing the cemented carbide substrate into a canister and adding a mass of diamond and treating the assembly at around 6 GPa or greater at a temperature to form a PCD compact, the product of this process would have the same properties of 0.1-3 vol% of inclusions of free carbon, SP2-hybradised carbon or SP3-hybradized carbon and where they have a largest average size of less than around 40 microns. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 2-5 and 14, Geoffrey does not explicitly disclose where the inclusions in the bulk volume of the cemented carbide substrate having an average size of less than around 30 microns, where the inclusions are less than around 10 microns, where the inclusions form at least around 0.3 vol% to around 3 vol % of the bulk volume of the cemented carbide substrate, where the inclusions form at least around 0.1 vol% to around 2.5 vol % of the bulk volume of the cemented carbide substrate, nor wherein an interfacial region between the cemented carbide substrate and the body of PCD material comprises substantially no platelet-like WC grains.
However, as noted above, Geoffrey discloses the same starting material and applies the substantially identical method to this material, and therefore the same method applied to the same materials would produce the same properties of where the inclusions in the bulk volume of the cemented carbide substrate having an average size of less than around 30 microns, where the inclusions are less than around 10 microns, where the inclusions form at least around 0.3 vol% to around 3 vol % of the bulk volume of the cemented carbide substrate, where the inclusions form at least around 0.1 vol% to around 2.5 vol % of the bulk volume of the cemented carbide substrate, nor wherein an interfacial region between the cemented carbide substrate and the body of PCD material comprises substantially no platelet-like WC grains. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 7, Geoffrey discloses where the substrate has a surface region extending from the interface to a depth of at least 1 mm, the region containing diamond particles dispersed within it (Geoffrey, claim 3), meeting the claim limitation of where the inclusions are one or more of diamond or graphite.
As to claim 13, Geoffrey discloses where a second substrate element for use as a region of a substrate substantially free of diamond was manufactured in the same way and using the same raw materials as the first substrate element, except that no diamond was introduced (Geoffrey, paragraph [0086]) and Geoffrey discloses where the interfaces are opposite of one another (Geoffrey, Fig 7).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0253459 A1 of Geoffrey as applied to claim 1 above, and further in view of US 2015/0165590 A1 of Can.
As to claim 8, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the Co alloy comprises up to around 50 wt.% Fe
Can relates to the same field of endeavor of superhard polycrystalline constructions (Can, abstract). Can teaches where the binder phase may comprise, for example, cobalt, and/or one or more other iron group elements, such as iron or nickel (Can, paragraph [0018]), where if it is a Co alloy, the Fe content must be 50% or less, meeting the claim limitations. Can teaches that these binder materials are a catalyst for the formation of diamond (Can, paragraph [0052]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 50% or less of Fe as taught by Can to the binder composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
As to claim 9, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the alloy further comprises between about 0.1 to about 4 wt.% tungsten and between about 0.05 to about 5 wt.% carbon in solid solution form.
Can teaches where the binder in the substrate may additionally comprise between about 2 to 20 wt. % tungsten and between about 0.1 to 2 wt. % carbon. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the catalytic formation of diamond (Can, paragraph [0052]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add between about 2 to 20 wt. % tungsten and between about 0.1 to 2 wt. % carbon as taught by Can into the composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
As to claims 10 and 11, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the alloy in the binder material further comprises at least about 0.1 weight percent to at most about 5 weight percent of any one or more of V, Ta, Ti, Mo, Zr, Nb, Hf in the form of a solid solution or a carbide phase, nor where the alloy in the binder material further comprises at least about 0.1 weight percent and at most about 2 weight percent of any one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt in solid solution.
Can discloses where the binder material for the substrate may include at least about 0.1 weight percent to at most about 5 weight percent one or more of V, Ta, Ti, Mo, Zr, Nb and Hf in solid solution (Can, paragraph [0103]). Can also discloses where the PCD composite may include at least about 0.01 weight percent and at most about 2 weight percent of one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt (Can, paragraph [0104]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add at least about 0.1 weight percent to at most about 5 weight percent one or more of V, Ta, Ti, Mo, Zr, Nb and Hf in solid solution and at least about 0.1 weight percent and at most about 2 weight percent of any one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt in solid solution as taught by Can into the composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
Claims 1-5, 7, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0253459 A1 of Geoffrey in view of “Cemented Carbides” of Santhanam.
If milling as claimed is distinct from mixing in Geoffrey, the alternative rejection is made below.
As to claim 1, Geoffrey discloses forming a first substrate element of a polycrystalline diamond (PCD) compact was manufactured by blending together diamond particles, tungsten carbide (WC) powder and cobalt powder (Geoffrey, paragraph [0085]), meeting the claim limitation of a body of PCD material as the body is formed of diamond. Geoffrey discloses where a cemented carbide substrate is bonded to a PCD body (Geoffrey, paragraphs [0085-0089]), meeting the limitation of where a cemented carbide substrate is bonded to a body of PCD material along an interface as since there is a difference in materials, there is necessarily an interface. Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) this demonstrates that WC percentage in the substrate falls within the claim limitations of at least around 70 wt% to at most around 95 wt% tungsten carbide as if tungsten carbide particles bonded with a binder alloy of Co has a Co amount is 13 wt% with 2% organic pressing aid, this means the amount of WC is 85 wt%, meeting the claim limitations.
While Geoffrey does not explicitly disclose 0.1-3 vol% of inclusions of free carbon, SP2-hybradised carbon or SP3-hybradized carbon nor where they have a largest average size of less than around 40 microns, as Geoffrey discloses the same starting materials as laid out above and discloses a substantially identical method of manufacturing the PCD construction involving milling the powders of WC, Co and diamond with an ETC of 8.21 wt%, compacting and sintering them, placing the substrate into a canister with the diamond grains and treating it at about 5.5 GPa and 1,400 °C to form a product (Geoffrey, paragraph [0085-0089]).
Further, Santhanam teaches that cemented carbide grade powders consist of WC mixed with a finely defined metallic binder (Santhanam, pg. 951, left column, 1st full paragraph). Santhanam teaches intensive milling using ball mills or vibratory mills are used to break up the initial carbide crystallites and to blend the various components (Santhanam, pg. 951, left column, 1st full paragraph). Santhanam teaches that this produces a mixed powder where every carbide particle is coated with binder material (Santhanam, pg. 951, left column, 1st full paragraph).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add ball milling to blend the powders as taught by Santhanam into the method disclosed by Geoffrey, thereby produces a mixed powder where every carbide particle is coated with binder material (Santhanam, pg. 951, left column, 1st full paragraph).
Thus, the method disclosed in the combination of Geoffrey and Santhanam matches the method disclosed in claim 15 of milling the carbide powder with a binder material and a mass of carbon where diamond is an amorphous carbon and where ETC is equal to or more than around 6.2 wt%, compacting the powder and sintering, placing the cemented carbide substrate into a canister and adding a mass of diamond and treating the assembly at around 6 GPa or greater at a temperature to form a PCD compact, the product of this process would have the same properties of 0.1-3 vol% of inclusions of free carbon, SP2-hybradised carbon or SP3-hybradized carbon and where they have a largest average size of less than around 40 microns. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 2-5 and 14, Geoffrey does not explicitly disclose where the inclusions in the bulk volume of the cemented carbide substrate having an average size of less than around 30 microns, where the inclusions are less than around 10 microns, where the inclusions form at least around 0.3 vol% to around 3 vol % of the bulk volume of the cemented carbide substrate, where the inclusions form at least around 0.1 vol% to around 2.5 vol % of the bulk volume of the cemented carbide substrate, nor wherein an interfacial region between the cemented carbide substrate and the body of PCD material comprises substantially no platelet-like WC grains.
However, as noted above, Geoffrey discloses the same starting material and in combination with Santhanam applies the substantially identical method to this material, and therefore the same method applied to the same materials would produce the same properties of where the inclusions in the bulk volume of the cemented carbide substrate having an average size of less than around 30 microns, where the inclusions are less than around 10 microns, where the inclusions form at least around 0.3 vol% to around 3 vol % of the bulk volume of the cemented carbide substrate, where the inclusions form at least around 0.1 vol% to around 2.5 vol % of the bulk volume of the cemented carbide substrate, nor wherein an interfacial region between the cemented carbide substrate and the body of PCD material comprises substantially no platelet-like WC grains. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 7, Geoffrey discloses where the substrate has a surface region extending from the interface to a depth of at least 1 mm, the region containing diamond particles dispersed within it (Geoffrey, claim 3), meeting the claim limitation of where the inclusions are one or more of diamond or graphite.
As to claim 13, Geoffrey discloses where a second substrate element for use as a region of a substrate substantially free of diamond was manufactured in the same way and using the same raw materials as the first substrate element, except that no diamond was introduced (Geoffrey, paragraph [0086]) and Geoffrey discloses where the interfaces are opposite of one another (Geoffrey, Fig 7).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0253459 A1 of Geoffrey and “Cemented Carbides” of Santhanam as applied to claim 1 above, and further in view of US 2015/0165590 A1 of Can.
As to claim 8, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the Co alloy comprises up to around 50 wt.% Fe
Can relates to the same field of endeavor of superhard polycrystalline constructions (Can, abstract). Can teaches where the binder phase may comprise, for example, cobalt, and/or one or more other iron group elements, such as iron or nickel (Can, paragraph [0018]), where if it is a Co alloy, the Fe content must be 50% or less, meeting the claim limitations. Can teaches that these binder materials are a catalyst for the formation of diamond (Can, paragraph [0052]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 50% or less of Fe as taught by Can to the binder composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
As to claim 9, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the alloy further comprises between about 0.1 to about 4 wt.% tungsten and between about 0.05 to about 5 wt.% carbon in solid solution form.
Can teaches where the binder in the substrate may additionally comprise between about 2 to 20 wt. % tungsten and between about 0.1 to 2 wt. % carbon. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the catalytic formation of diamond (Can, paragraph [0052]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add between about 2 to 20 wt. % tungsten and between about 0.1 to 2 wt. % carbon as taught by Can into the composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
As to claims 10 and 11, Geoffrey discloses where the cemented carbide substrate comprises where WC powder and the cobalt powder had been pre-mixed, the cobalt constituting 13 weight percent of the WC-Co pre-mix (Geoffrey, paragraph [0085]) and Geoffrey discloses where alloys of Fe, Ni, Co, and Mn are used (Geoffrey, paragraph [0002]). However, Geoffrey does not disclose where the alloy in the binder material further comprises at least about 0.1 weight percent to at most about 5 weight percent of any one or more of V, Ta, Ti, Mo, Zr, Nb, Hf in the form of a solid solution or a carbide phase, nor where the alloy in the binder material further comprises at least about 0.1 weight percent and at most about 2 weight percent of any one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt in solid solution.
Can discloses where the binder material for the substrate may include at least about 0.1 weight percent to at most about 5 weight percent one or more of V, Ta, Ti, Mo, Zr, Nb and Hf in solid solution (Can, paragraph [0103]). Can also discloses where the PCD composite may include at least about 0.01 weight percent and at most about 2 weight percent of one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt (Can, paragraph [0104]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add at least about 0.1 weight percent to at most about 5 weight percent one or more of V, Ta, Ti, Mo, Zr, Nb and Hf in solid solution and at least about 0.1 weight percent and at most about 2 weight percent of any one or more of Re, Ru, Rh, Pd, Re, Os, Ir and Pt in solid solution as taught by Can into the composition disclosed in Geoffrey, thereby having an alloy that acts as a catalyst for the formation of diamond (Can, paragraph [0052]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-11 and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-12, and 14-15 of copending Application No. 17/784860 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the “860 application claims an identical polycrystalline diamond construction and claims were the binder material comprising any one or more of Co, Ni and Cr (‘860 application, claim 1) which encompasses the instant claim 1 which requires an alloy comprising cobalt. Further, the dependent claims 2-5, 7-12, and 14-15 in the ‘860 application are substantially identical to instant claims 2-5, 7-11, and 13-14, rendering them unpatentable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
With respect to the 103 rejection over Geoffrey, applicant argues that Geoffrey fails to disclose 0.1-3 vol% of inclusions of free carbon, SP2-hybridised carbon or SP3-hybridized carbon and applicant argues that there is a fundamental difference in the methods of producing the materials as the instant application requires milling and the process of milling as opposed to simple powder mixing results in breaking down of particle sizes and enables control over particle size distribution and material composition and this critically influences the behavior of materials during sintering (Applicant’s remarks, pg. 7, last three paragraphs).
However the broadest disclosures of the method in the specification and withdrawn claims does not require specific particles sizes of the materials that are added to the milling process, nor does it require control of the specific parameters of the milling process. Thus, contrary to applicant’s assertions, this is merely a conventional milling process being used to mix micron sized powders together which is conventional in the art.
Applicant argues that milling enables control over grain size and composition and mixing which is disclosed in Geoffrey does not provide such needed control. Applicant argues to achieve the claimed inclusions, this relies on tailored milling and carful control of the milled particles sizes whereas Geoffrey is silent on these tailored parameters (Applicant’s remarks, pg. 8, 1st three paragraphs).
However, there is no required control over grain size in the method disclosed in withdrawn claim 15, nor is the grain size noted in the method of manufacture in the first paragraph on page 6 of the specification. While milling can produce changes in particle size, applicant’s disclosed method in the specification and claims do not lay out these tailored milling steps that differentiate the disclosed method from Geoffrey (alone or in combination with Santhanam).
With respect to the Can reference, while applicant argues that Can does not cure the deficiencies of the Geoffrey reference (Applicant’s remarks, pg. 8 last paragraph), as the Geoffrey reference would necessarily have the claimed properties, there is no deficiency to cure and the rejection is therefore maintained.
With respect to the alternative rejection over Geoffrey in view of Santhanam, applicant argues that in contrast to Santhanam’s process of breaking up the components to produce a mixed powder where every carbide particle is coated with binder material, the instant process is tailored to produce required particle sizes and compositions in the green body and only by tailoring the milling process can one achieve the claimed properties concerning the inclusions necessary for optimal sintering and bonding (Applicant’s remarks, pg. 9, last two paragraphs).
However, as noted above, applicant does not require specific parameters for the milling process of the powders. Claim 15 merely requires milling a tungsten carbide powder with a binder material and a mass of carbon to form a milled powder, the binder material comprising Co; and the mass of carbon comprising any one or more of graphite or amorphous carbon in an amount corresponding to the equivalent carbon content (ETC) with respect to the milled WC powder of equal to or more than around 6.2 wt. %. There is no required particle size at the beginning nor end of the milling process. Neither the claim, nor the description of the method of making the PCD on pg. 6 first paragraph of the specification includes required parameters for the milling process. While applicant argues that this is a tailored milling process that produces specific results, what applicant is claiming and disclosing is merely a generic milling process. As such, the milling process in Santhanam matches the disclosed method in the specification and the same method applied to the same materials would result in the same inclusion properties. Thus, applicant’s arguments are not persuasive and the rejections are maintained.
With respect to the Double Patenting rejection, applicant does not provide an argument as to why the rejection is not proper, therefore the rejection is maintained.
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.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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