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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 recites the “the particle” in line 2, whereas plural “particles” had been previously established. It is thus unclear to which particle claim 22 refers. For examination purposes, it will be interpreted as reciting --the particles--.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 11-17, 19-20, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeshita et al. (U.S. PGPub 2021/0001410, cited in IDS).
Claim 1: Takeshita discloses a cutting tool (e.g. title) comprising a base material (12 - paragraph 101) and a coating (11) disposed on the base material, wherein the coating comprises a particle layer formed from a particles (any arbitrary pieces of the layer comprising metallic compounds as discussed below), each hard particle comprises a multilayer structure (e.g. 113) in which a first unit layer and a second unit layer are alternately stacked (C and D layers - paragraph 140), the first unit layer is formed from a first compound having a cubic crystal structure (paragraph 114), the second unit layer is formed from a second compound having a cubic crystal structure (Id.), each of the first compound and the second compound consists of one or more metal elements selected from the group consisting of a periodic table group 4 element, a periodic table group 5 element, and a periodic table group 6 element (e.g. Ti - paragraphs 146 and 152), silicon (Id.), and one or more elements selected from the group consisting of carbon, nitrogen, boron, and oxygen (e.g. boron - paragraphs 150 and 156), and a percentage of the number of atoms of the silicon to a sum of the numbers of atoms of the metal element and the silicon in the first unit layer is different from a percentage of the number of atoms of the silicon to a sum of the numbers of atoms of the metal element and the silicon in the second unit layer (paragraph 159; Tables 3-4).
Regarding the above, it is noted that “particles” as claimed is not particularly described, defined, or limited such that it could simply refer to any arbitrary pieces of the particle layer having layers C and D.
Claim 2: The first unit layer and the second unit layer have the same crystal orientation (paragraph 160 discloses that “a crystal lattice can be continuous between the C layer and the D layer”, which implies a same crystal orientation, otherwise the lattice would be discontinuous at the boundary between orientations).
Claim 3: In each of the first unit layer and the second unit layer, the percentage of the number of atoms of the silicon to the sum of the numbers of atoms of the metal element and the silicon is 0.5% or more and 10% or less (paragraphs 146 and 152; Tables 3-4).
Claim 4: A thickness of the particle layer is 3 μm or more and 15 μm or less, and a thickness of the coating is 3 μm or more and 30 μm or less (paragraph 113; Tables 3-4).
Claim 11: A thickness of the hard particle layer is 5 μm or more and 10 μm or less, and a thickness of the coating is 10 μm or more and 20 μm or less (paragraph 113; Tables 3-4).
Claim 12: A difference between the percentage of the number of atoms of the silicon, Asi, to the sum of the number of atoms of the metal element, AM, and the number of atoms of the silicon, Asi, {Asi/(Asi + AM)} x 100, in the first unit layer and the percentage of the number of atoms of the silicon, Asi, to the sum of the number of atoms of the metal element, AM, and the number of atoms of the silicon, Asi, {Asi/(Asi + AM)} x 100, in the second unit layer is 0.5% or more and 10% or less (paragraph 159; Tables 3-4).
Claim 13: In the first unit layer, the percentage of the number of atoms of silicon, Asi, to the sum of the number of atoms of the metal element, AM, and the number of atoms of silicon, Asi, { Asi/(Asi + AM)} x 100, is 6.0% or more and 10% or less (paragraph 146; Tables 3-4).
Claim 14: In the second unit layer, the percentage of the number of atoms of silicon, Asi, to the sum of the number of atoms of the metal element, AM, and the number of atoms of silicon, Asi, { Asi/(Asi + AM)} x 100, is 0.5% or more and 1.0% or less (paragraph 155; Tables 3-4).
Claim 15: The coating comprises a base layer (e.g. 111) disposed between the base material and the particle layer, the base layer is formed from a third compound, and the third compound consists of one or more elements selected from the group consisting of a periodic table group 4 element, a periodic table group 5 element, a periodic table group 6 element, and aluminum (paragraphs 169-170), and one or more elements selected from the group consisting of carbon, nitrogen, boron, and oxygen (e.g. boron - paragraph 172).
Claim 16: The coating comprises a base layer disposed directly on the base material, and the base layer consists of at least one selected from the group consisting of a TiN layer, a TiC layer, a TiCN layer, a TiBN layer, and an Al2O3 layer (e.g. examples of TiC, TiN, and TiCN materials - paragraph 177).
Claim 17: The coating comprises a surface layer (protection layer - paragraphs 109-110) disposed on a topmost surface thereof, the surface layer is formed from a fourth compound, and the fourth compound consists of one or more elements selected from the group consisting of a periodic table group 4 element, a periodic table group 5 element, a periodic table group 6 element, and aluminum, and one or more elements selected from the group consisting of carbon, nitrogen, boron, and oxygen (e.g. Al2O3, Id.).
Claim 19: The coating comprises an intermediate layer (114) disposed between the base layer and the particle layer (paragraph 161; Fig. 2).
Claim 20: An average of a period width of the multilayer structure is 2 nm or more and 20 nm or less (paragraph 141 - the minimum contemplated range of thickness for each C and D layer is 5nm and 1nm, respectively, for a period as small as 6 nm). See also Tables 3-4.
Claim 22: Claim 22 recites the method by which the claimed product is made. However, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. See also MPEP 2113. The structure of Takeshita otherwise reads on the claimed product, and there is no evidence on the record to suggest that the claimed method would necessarily result in a substantially different structure. As noted above, “particles” as claimed is not particularly described, defined, or limited such that it is not necessarily distinguished from any arbitrary portion of the otherwise layered particle layer. The size, shape, and layer structure of the “particles” are not described beyond what was originally claimed.
Claim Rejections - 35 USC § 103
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshita et al. in view of Ahlgren (U.S. PGPub 2011/0188950, equivalent to WO2009128782 cited in the IDS).
Takeshita et al. discloses a cutting tool substantially as claimed except for wherein the surface layer includes a TiN layer. However, Ahlgren teaches a similar cutting tool comprising a surface layer disposed on a topmost surface thereof, wherein the surface layer includes a TiN layer (paragraph 13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the surface layer to include a TiN layer for wear detection or coloring purposes (Id.).
Claims 3, 4, and 11-14 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Takeshita et al.
Regarding claims 3, 4, and 11-14, in any case where it is determined that a cited range does not sufficiently anticipate the claimed range (i.e. by MPEP 2131.03 I-II), it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). In every instance, the cited ranges at least overlap with those claimed.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshita et al.
Takeshita discloses that the compounds may be based on TiSiTa or TiSiB, but not necessarily one of the specific compounds as claimed. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used one of these compounds since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraph 65, Applicant has not disclosed any criticality for use of any of the particular listed compounds beyond the broader criteria set forth for claim 1.
Allowable Subject Matter
Claim 21 is allowed for the reasons previously indicated and because it has been amended to incorporate the limitations of claim 1.
Response to Arguments
Applicant's arguments filed 4/14/2026 have been fully considered.
Upon further consideration and in view of the amendments, the examiner’s previous misunderstanding of claim 1 has been resolved. However, the examiner notes that the term “particle” or “particles” as disclosed and claimed is not particularly described, defined, or limited. For example, Dictionary.com defines a “particle” as simply “a minute portion, piece, fragment, or amount; a tiny or very small bit.” This then raises the question of what is considered a “particle” as claimed. Does it need to have a specific shape? Does it need to be spheroidal and coated and layered on all sides like a jawbreaker? Or could it just be a small vertical section of layers of an otherwise flat layered coating? The claims and disclosure do not limit the layered particle structure for example in terms of size, shape, aspect ratio, and/or layer structure with respect to the base, other than simply being some base layer with the claimed layers thereon. Thus, any arbitrary portion of the hard particle layer of Takeshita could be considered a “particle”, and the layers C and D can be considered to comprise plural adjacent such “particles”. The claims also do not preclude other things in the “particle layer” so long as the “particle layer” comprises a particle (or particles) of the claimed multilayer structure. Even the specification refers to inevitable impurities in the particle layer (paragraph 60 of the original filing).
With regard to the method steps of forming the particle layer, there is no evidence of record to show that the resulting structure of the claimed method would be substantially different from that of Takeshita. As noted above, the nature of the formed "particles", other than having the claimed multilayer structure, is not described. The specific nature of the structure(s) that would inherently result from the claimed method, if different from that of the prior art of what is generally claimed, is/are unclear.
Applicant’s remaining arguments rely on those addressed above, or else pertain to new claims addressed in the rejection above.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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