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 .
Disposition of Claims
Claims 1–7 are pending in this application. No amendments have been introduced since the most recent Office Action, dated 03 July 2025.
Based on the interview conducted on 09 September 2025 (see Interview Summary dated 15 September 2025), it was determined that the previously applied Toda reference does not cure the deficiencies of Ogata. Accordingly, all rejections relying on Toda are considered moot. Because the new grounds of rejection presented herein are not necessitated by amendment, this Office Action is made non-final.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1–7 are rejected under 35 U.S.C. 103 as being unpatentable over Ogata et al. (EP 0982276 A1, hereinafter “Ogata”, previously cited) in view of Meng (WO 2004/035197 A1, hereinafter “Meng”).
Regarding claim 1, Ogata teaches a sintered material (see generally abstract) comprising diamond grains and a binder (see paragraph 0016; the binder is referred to here as “sintering aid”). Ogata further teaches the limitation wherein a boron concentration in the binder is 0.5–40 wt.% (see paragraph 0026 teaching the binder as comprising 0.01–30 wt.% boron; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; while the data available in Specification Tables 1 and 3 do support criticality of the concentration of boron, criticality is only demonstrated for a composition comprising 90 vol.% diamond and 10 vol.% binder, whereas claim 1 does not impose any such limitations on the amount of diamond and binder; also see MPEP 716.02(d), which requires that arguments of unexpected results be commensurate in scope with the claims).
Ogata is silent as to the boron concentration in the diamond grains, and thus fails to explicitly teach the limitation wherein the boron content in the grains is between 0.001–0.9 wt.%. Meng teaches a method of synthesizing boron-doped diamond (see generally abstract) to increase their compressive fracture strength and oxidative resistance (see pg. 1, first paragraph) for use in tools (see pg. 1, third paragraph). Meng further teaches a boron concentration in the diamond grains of from about 0.1–0.5 wt.%, which falls within the claimed range of 0.001–0.9 wt.% (see Meng, pg. 4, fourth paragraph). Furthermore, Ogata explicitly discloses the goal of achieving a highly wear-resistant sintered body in order to produce strong cutting tools (see Ogata, paragraphs 0001 and 0030), which motivates the modification of Ogata by Meng, since Meng teaches boron-doped diamonds as achieving higher physical and chemical resistances than standard diamonds.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Ogata to use boron-doped diamonds as taught by Meng, because this would produce a stronger sintered diamond tool than either reference could achieve alone. This modification arrives at the claimed invention, thus rendering claim 1 prima facie obvious.
Regarding claim 2, Ogata, as modified by Meng, teaches the sintered material according to claim 1. Ogata further teaches the limitation wherein the boron concentration in the binder is more than or equal to 0.6 mass% and less than or equal to 33 mass% (see Ogata, paragraph 0026 teaching the binder as comprising 0.01–30 wt.% boron; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Meng further teaches the limitation wherein the boron concentration in the diamond grains is more than or equal to 0.005 mass% and less than or equal to 0.1 mass% (see Meng, pg. 4, fourth paragraph teaching the diamond grains as comprising 0.1–0.5 wt.%; also see MPEP 2144.05(I) regarding the obviousness of ranges with an overlapping endpoint).
Regarding claim 3, Ogata further teaches the limitation wherein an average grain size of the diamond grains is more than or equal to 0.1 µm and less than or equal to 50 µm (see paragraph 0016 teaching a size of 0.1–70 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges), and wherein a ratio of the diamond grains in the sintered material is more than or equal to 80 volume% and less than or equal to 99 volume% (see paragraph 0016 teaching a content of 80–99 volume%).
Regarding claim 4, Ogata further teaches the limitation wherein the binder includes at least one selected from the given Markush group, which comprises at least one metallic element from a second Markush group (see paragraph 0016 teaching the sintering aid [synonymous with binder in this context] as including one selected from iron, cobalt, nickel, and metallic tungsten, each of which satisfies both of the claimed Markush groups).
Regarding claim 5, Ogata further teaches the limitation wherein the binder includes at least one selected from the group consisting of a compound and a solid solution derived from the compound, wherein the compound includes at least at least one selected from the given genera, and at least one selected from the group consisting of nitrogen, carbon and oxygen (see paragraph 0016 teaching tungsten carbide [WC] in the binder; tungsten [W] is a group 6 simple metal, and carbide [C] is carbon).
Regarding claim 6, Ogata further teaches the limitation wherein the binder includes at least cobalt (see paragraph 0016 teaching the binder as comprising cobalt).
Regarding claim 7, Ogata teaches a cutting tool comprising a cutting edge portion, wherein the cutting edge portion is made of the sintered material according to claim 1 (see paragraph 0030 teaching a cutting tool prepared using sintered diamond; also see paragraph 0040 teaching the evaluation of cutting performance, which implies a cutting edge on the tool).
Response to Arguments
Applicant’s arguments, see Remarks filed 03 October 2025, with respect to the rejection under 35 U.S.C. 103 of claims 1–7 have been fully considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
During the telephonic interview conducted 09 September 2025 (see Interview Summary dated 15 September 2025), Applicants argued the criticality of the concentration ranges of boron in the diamond grains and the binder. The Examiner took the position that criticality is not supported across the entire range. As explained in the above rejection of claim 1, there is insufficient data to support arguments of criticality, as Tables 1 and 3 of Applicants’ specification only show tool breakage when boron concentrations fall outside the claimed ranges, and only when the volume ratio of diamond to binder is 90:10. This is not commensurate in scope with the claimed invention, as claim 1 does not recite a diamond:binder ratio (meaning the claimed ranges should have established criticality across all ratios, supported by data). If the ratio of diamond:binder is 80:20 or 99:1, there is insufficient data to support any arguments of criticality. Under MPEP 716.02(d), objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. Subsection II further requires a sufficient number of tests both inside and outside the claimed range to show criticality. Since Tables 1 and 3 lack data supporting the criticality of boron concentrations at all claimed diamond:binder ratios, there is insufficient evidence of criticality.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731