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 .
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogami (JP2011224671) of which attached corresponding English translation is cited.
Regarding Claim 1, Ogami teaches a surface-coated cutting tool comprising:
a tool substrate ([0010], line 4, a tool substrate) and a coating film ([0010], line 2: a hard coating layer), wherein
the coating film has an average thickness of 0.8 to 5.0 mm ([0010], line 2), and includes a laminated structure including at least one first layer ([0010], line 6: thin layers A) and at least one second layer ([0010], line 7, thin layers B) alternately disposed ([0010], lines 5-7, the hard coating layer is configured as an alternate laminate structure of thin layers A … and thin layers B …), and
the or each first layer has an average thickness of 50 to 2000 nm ([0010], lines 7-8: 0.05 to 2 mm) and has an average composition represented by the formula: (AlxTi1-x-y-zMy)BzN ([0010], line 6, Cr, Al, Ti, and B) ([0010], lines 12, (Cr1-x-y-zAlxTiyBz)N), where M is at least one element selected from the group consisting of Groups 4, 5, and 6 elements, and lanthanide elements in the periodic table (In this case, M is Cr.), x is in a range of 0.400 to 0.65, y is in a range of 0.07 (1-0.65-0.2-0.08) to 0.585 (1-0.4-0.01-0.005), and z is in a range of 0.005 to 0.08;
the or each second layer has an average thickness of 50 to 2000 nm ([0010], lines 7-8: 0.05 to 2 mm) and has an average composition represented by the formula: (AlpCr1-p-q- rM’q)BrN ([0010], line 6, Cr, Al, Ti, and B) ([0010], lines 12, (Cr1-x-y-zAlxTiyBz)N), where M’ is at least one element selected from the group consisting of Groups 4, 5, and 6 elements, and lanthanide elements in the periodic table (In this case, M is Cr.), p is in a range of 0.400 to 0.65, q is in a range of 0.07 (1-0.65-0.2-0.08) to 0.585 (1-0.4-0.01-0.005), and r is in a range of 0.005 to 0.08.
Although Ogami does not explicitly teach the exact claimed ranges of the average thickness of the coating film, the average thickness of the each first layer and the each second layer and the atomic ratio of each element, Cr, Al, Ti, and B, the ranges taught by Ogami either overlap or lie inside the claimed ranges. According to MPEP 2144.05(I), a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness."
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the claimed ranges of the average thickness of the coating film, the average thickness of the each first layer and the each second layer and the atomic ratio of each element in order to achieve a desired wear resistance of the cutting tool.
Regarding Claim 2, although Ogami does not teach the total number of each first layer and each second layer in the coating film, based on the ranges of the thickness of the hard coating layer (0.8 to 5.0 mm) and the thickness of each layer A and B (0.05 to 2 mm), the maximum total number of each first layer and each second layer would be 100 (5 mm /0.05 mm). Since this number resides within the claimed language, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a certain total number of the first layer and the second layer including 30 to 800 in order to achieve a desired wear resistance of the cutting tool.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogami (JP2011224671) of which attached corresponding English translation is cited in view of Takeshita et al. (U.S. Patent Publication No. 2021/0001410).
Regarding Claim 2, Ogami teaches the surface-coated cutting tool set forth in claim 1, however, it does not explicitly teach the total number of each first layer and each second layer is in a range of 30 to 800.
Takeshita teaches the total number of each first layer and each second layer is in a range of 10 to 10000 ([0117]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a certain total number of the first layer and the second layer including 30 to 800 in order to achieve a desired wear resistance of the cutting tool.
According to MPEP 2144.05(I), a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness."
Conclusion
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/JUN S YOO/Primary Examiner, Art Unit 3726 12/17/2025