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 .
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,467,119 in view of Kuroda et al. (US 2010/0088969).
Instant claim 1 and claim 1 of the ‘119 patent both recite a diamond sintered material (i.e. body) comprising/including diamond grains, an average grain size of 0.1 µm to 50 µm, a content ratio of the diamond grains in the diamond sintered material/body is 80% by volume to 99% by volume, and having a dislocation density.
Instant claim 1 recites the dislocation density in the portion of the flank face is 8x1015/m2 or less whereas claim 1 of the ‘119 patent recites a dislocation density is more than or equal to 8.1x1013 m-2 and less than 1.0x1016 m-2. These ranges overlap and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 1 also differs from claim 1 of the ‘119 patent insofar as reciting a cutting tool comprising a rake face, a flank face, and a cutting edge ridge line connecting the rake face and the flank face, wherein each of a portion of the rake face and a portion of the flank face adjacent to the cutting edge ridge line is made of the diamond sintered body.
In a related field of endeavor, Kuroda teaches a diamond sinter for the cutting edge of a cutting tool (paragraph 0001). The diamond sinter has a content of diamond particles of 60-98 wt% (paragraph 0010) having an average particle size (i.e. grain size) is not more than 2 µm (paragraph 0025). These features of the diamond sinter (i.e. content of diamond and average size) overlap the ranges of the ‘119 patent and of instant claim 1. See MPEP § 2144.05. Kuroda teaches the diamond sinter has high transverse rupture strength and small flank wear width such that it is suitably employed for a cutting edge of a cutting tool (paragraph 0034). Being used for the cutting edge renders as obvious that the diamond sinter makes up the portion of the rake face and flank face adjacent to the cutting edge ridge line (i.e. rake face, flank face, and cutting edge ridge line are necessarily portions of a cutting edge of a cutting tool).
As Kuroda teaches a cutting tool having a diamond sinter for the cutting edge, and wherein the diamond sinter has diamond particles with a content and size that overlaps the content and size of diamond in the diamond sintered material of the ‘119 patent, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the diamond sintered material of the ‘119 patent to include where the material is used for the cutting edge of a cutting tool as taught by Kuroda as this is considered a conventionally known application of diamond sintered material, and one would have had a reasonable expectation of success. It further would have been obvious to one of ordinary skill in the art before the effective filing date for the dislocation density recited in the diamond sintered material of the ‘119 patent to be the dislocation density for the entire diamond sintered material (i.e. including for the rake face and the flank face portions adjacent the cutting edge).
Instant claim 2 recites wherein the dislocation density is 7x1015/m2, whereas claim 2 of the ‘119 patent recites the dislocation density is more than or equal to 1.0x1015 m-2 and less than or equal to 7.0x1015 m-2 (i.e. considered to be the dislocation density for the flank portion, as outlined above). These ranges overlap. See MPEP § 2144.05.
Instant claim 3 and claim 3 of the ‘119 patent both recite wherein the diamond sintered body/material includes a binder (phase), the binder (phase) contains/includes at least one selected from the group consisting of an elemental/simple metal, an alloy, and an intermetallic compound, and (each) including at least one metal element selected from a group consisting of a group 4 element, a group 5 element, a group 6 element in a periodic table, iron, aluminum, silicon, cobalt, and nickel.
Instant claim 4 and claim 3 of the ‘119 patent both recite wherein the diamond sintered body/material includes a binder (phase), the binder (phase) contains/includes at least one selected from the group consisting of a compound and a solid solution derived/originated from the compound, the compound consists of/being composed of at least one metal element selected from the group consisting of a group 4 element, a group 5 element, a group 6 element in the periodic table, iron, aluminum, silicon, cobalt, and nickel. The binder (phase) contains/includes at least one selected from a group consisting of an elemental/simple metal, an alloy, and an intermetallic compound, and at least one selected from the group consisting of nitrogen, carbon, and oxygen.
Instant claim 5 and claim 4 of the ‘119 patent both recite wherein the binder contains/includes cobalt.
Instant claim 7 recites wherein a dislocation density in the portion of the rake face is 10x1015/m2 or less, whereas claim 1 of the ‘119 patent recites a dislocation density is more than or equal to 8.1x1013 m-2 and less than 1.0x1016 m-2 (i.e. considered to be a dislocation density for the rake face portion, as outlined above). These ranges overlap. See MPEP § 2144.05.
Allowable Subject Matter
Claims 1-5 and 7 would be allowable if Applicant overcomes the nonstatutory double patenting rejection set forth in this Office Action.
Claims 6 and 8-9 are objected to as being dependent on a rejected claim but would be allowable if Applicant overcomes the nonstatutory double patent rejection set forth above.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose the cumulative limitation of claim 1 wherein a diamond sintered body forming a cutting edge ridge line includes diamond grains having an average grain size of 0.1 to 50 µm, a content ratio of diamond grains being 80% to 99% by volume, and a dislocation density of 8x1015/m2 or less. Applicant discloses that the dislocation density is reduced after sintering by heating to a holding temperature of 1600°C to 1900°C for a holding time of 50 minutes to 190 minutes under a holding pressure of 6.5 GPa to 8 GPa (paragraphs 0087 and 0091 of the instant specification). A search was performed of non-patent literature to determine if this process for reducing dislocation density in diamond sintered bodies is known in the art, but did not yield a disclosure of this technique.
The following references are considered the closest prior art:
Kuroda et al. (US 2010/0088969) teaches a diamond sinter for the cutting edge of a cutting tool (paragraph 0001) containing 60-98 wt% of diamond particles (paragraph 0010) with an average size of less than or equal to 2 µm. The diamond sinter has a binder that is 50-80% Co (paragraph 0023) and includes tungsten and an element of group 4, 5, or 6 of the periodic table (paragraph 0006). However, Kuroda does not disclose the dislocation density or the instantly disclosed heating treatment. It is noted that the sintering temperature is lower and for less time as disclosed by Kuroda (paragraph 0056) as compared to the holding temperature and time of the instant disclosure.
Belnap et al. (US 8,567,531) teaches a cutting element incorporating polycrystalline diamond bodies (Col. 1), wherein the first region proximate the cutting edge includes an average grain size of 2-4 µm at a diamond volume fraction >93%, 4-6 µm at >94%, 6-8 µm at >95%, 8-10 µm at >95.5% or 10-12 µm at >96% (Col. 4). However, Belnap does not disclose the dislocation density or the instantly disclosed heating treatment. It is noted that the sintering temperature disclosed by Belnap is lower than the holding temperature of the instant disclosure (Belnap, Col. 10).
Ishii et al. (US 2019/0076920) teaches a sintered material excellent in heat resistance, wear resistance, and chipping resistance as improvement in performance of a cutting tool (paragraphs 0005-0006). Examples 36-39 include diamond having an average particle size of 0.5 or 5 µm, a content of 90 vol%, and a binder that includes Co, Ni, Al, and W (Table 2). However, Ishii does not disclose the dislocation density. It is noted that the sintering temperature for the diamond-containing examples is lower than the holding temperature of the instant disclosure (Table 2).
Bobrovnitchii et al. (International Journal of Refractory Metals & Hard Materials 2003, NPL attached) teaches diamond micro-powder sintering under high pressure and high temperature (HPHT) for consolidation or improvement of the processed polycrystal structure (Introduction). Diamond micro-powders of 28/20 µm mean particle size were sintered at temperatures of 1600, 1700, and 1800 °C under pressure of 6.0 and 8.0 GPa (abstract). However, sintering duration was only 5-80 s (Experimental), which is considerably less time than the instant disclosure of 50 to 190 minutes.
Higano et al. (JP 2016-097452, previously cited) is noted as disclosing that surface roughness of the rake face of a cutting edge affects the surface roughness of the finished surface of the workpiece (paragraph 0011) (i.e. relevant to instant claim 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784