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 1-2, 9-14, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-14 of U.S. Patent No. 12,569,917. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a cutting tool of a base and coating layer of hard particles including Ti, Si, C, and N where in the hard particles the concentration of Si periodically changes in a first direction set, and the hard particle layer is a (422) orientation. This is patentably indistinct of claim 1 of the ‘917 patent which recites a cutting tool of a base and coating of a hard particle layer including Ti, Si, C, and N where the concentration of Si periodically changes in a first direction set, and the hard particle layer is a (311) orientation being larger than orientations including a (422) plane, etc. (e.g. having a (422) orientation). The instant claims and those of the ‘917 patent recite overlapping contents and (422) orientations and this overlap establishes a prima facie case of obviousness.
Instant claim 2 recites a ASi content overlapping claim 2 of the ‘917 patent. Instant claim 9 recites the ASi content overlapping claim 3 of the ‘917 patent. Instant claims 10-11 recite an average period width overlapping claims 4-5 of the ‘917 patent, respectively. Instant claim 12 recites a thickness overlapping claim 6 of the ‘917 patent. Instant claim 13 recites a composition overlapping claim 7 of the ‘917 patent. Instant claim 14 recites a difference of ASi values overlapping claim 8 of the ‘917 patent. Instant claim 16 recites a base layer overlapping claim 10 of the ‘917 patent. Instant claim 17 recites an outer layer overlapping claim 11 of the ‘917 patent. Instant claim 18 recites a thickness overlapping claim 12 of the ‘917 patent. Instant claims 19-20 recites a Si/Ti ratios overlapping claims 13-14 of the ’917 patent.
Claims 1-2, 9-14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 9-14, and 16-20 of copending Application No. 18/279,617 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a cutting tool of a base and coating layer of hard particles including Ti, Si, C, and N where in the hard particles the concentration of Si periodically changes in a first direction set, and the hard particle layer is a (422) orientation. This is patentably indistinct of claim 21 of the ‘617 application which recites instant claim 1 recites a cutting tool of a base and coating layer of hard particles including Ti, Si, C, and N where in the hard particles the concentration of Si periodically changes in a first direction set, and the hard particle layer is a (220) orientation being larger than orientations including a (422) plane, etc. (e.g. having a (422) orientation). The instant claims and those of the ‘617 application recite overlapping contents and (422) orientations and this overlap establishes a prima facie case of obviousness.
Instant claim 2 recites a ASi content overlapping claim 2 of the ‘617 application. Instant claim 9 recites the ASi content overlapping claim 9 of the ‘617 application. Instant claims 10-11 recite an average period width overlapping claims 10-11 of the ‘617 application, respectively. Instant claim 12 recites a thickness overlapping claim 12 of the ‘617 application. Instant claim 13 recites a composition overlapping claim 13 of the ‘617 application. Instant claim 14 recites a difference of ASi values overlapping claim 14 of the ‘617 application. Instant claim 16 recites a base layer overlapping claim 16 of the ‘617 application. Instant claim 17 recites an outer layer overlapping claim 17 of the ‘617 application. Instant claim 18 recites a thickness overlapping claim 18 of the ‘617 application. Instant claims 19-20 recites a Si/Ti ratios overlapping claims 19-20 of the ‘617 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2, 9-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ahlgren (US 2011/0188950) in view of Sjolen et al. (US 2006/0292399).
Considering claim 1, Ahlgren teaches a cutting tool with a Ti-Si-C-N layer having a gradient (abstract). The tool comprises a substrate of cemented carbide, cubic boron nitride, etc. (Paragraph 9) and the coating comprises a compositional gradient where the Si/(Si+Ti) atomic ratio incrementally increases or decreases in the layer (Paragraph 22). As the deposited coating is a solid it is considered comprised of particles of Ti, Si, C, and N as claimed. However, Ahlgren does not teach the claimed (422) orientation.
In a related field of endeavor, Sjolen teaches cutting tools with at least one layer of a (Me,Si)X phase where Me is one or more of Ti, etc. and X is one or more of N, C, O, or B (abstract). The coating is applied to a base of cubic boron nitride (Paragraph 13) and the (Me,Si)X phase may be mixed with grains of other phases (Paragraph 15). The coating comprises phases having orientations of (200), (422), etc. (Paragraph 60). The coating has excellent adhesive strength for machining hardened steel or cast iron (Paragraph 13).
As both Ahlgren and Sjolen teach coated cutting tools they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Ahlgren with the coating phases and orientations taught by Sjolen as this is known to afford a coating with improved adhesion and one would have had a reasonable expectation of success.
Considering claims 2 and 9, Ahlgren teaches where the average Si/(Si+Ti) content ranges from 0.03-0.20 (Paragraph 15) overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness. See MPEP 2144.05.
Considering claims 10-11, Ahlgren teaches where the coating may comprise alternating sublayers successively increasing or decreasing the Si content with thickness of the sublayers being 1-100 nm (Paragraph 23). See MPEP 2144.05.
Considering claim 12, Ahlgren teaches where the thickness of the coating is 1-10 µm (Paragraph 11). See MPEP 2144.05.
Considering claim 13, Ahlgren teaches an example of a base material of WC with 10 wt.% Co (Paragraphs 44 and 52). See MPEP 2144.05.
Considering claim 14, Ahlgren teaches an embodiment of a first sub layer with a Si/(Si+Ti) from greater than zero to 0.07 followed by a second sublayer of greater than 0.07-0.20 (Paragraph 43). See MPEP 2144.05.
Considering claim 16, Ahlgren teaches a TiN adhesive layer between the substrate and TiSiCN layer (Paragraph 52).
Considering claim 17, Ahlgren teaches an outermost coating of TiN, etc. (Paragraph 13).
Considering claim 18, Ahlgren teaches where the thickness of the coating is 1-10 µm (Paragraph 11). See MPEP 2144.05.
Considering claims 19-20, Ahlgren teaches an embodiment of a first sub layer with a Si/(Si+Ti) from greater than zero to 0.07 (e.g. a minimum) followed by a second sublayer of greater than 0.07-0.20 (e.g. a maximum) (Paragraph 43). See MPEP 2144.05.
Allowable Subject Matter
Claims 15 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Ahlgren and Sjolen as outlined above. The prior art does not adequately teach the (422) orientation value or the (422) orientation being larger than the other planes according to expression (1) and this would not have been obvious to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Inspecktor et al. (US 2012/0237792), Endler et al. US 2014/0370309), and Sakamoto (US 2015/0343535) teach coated cutting tools demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784