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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election with traverse of Group A, claims 1-10, in the reply filed on 22 Dec. 2025 is acknowledged.
Applicant argues that a search of all the claims would not impose a serious burden on the Office.
This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups A-B do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraph 4 of the previous Office Action, mailed 22 Oct. 2025.
Given that applicant has not persuasively pointed out any errors in the restriction requirement, it is the examiner’s position that the requirement remains proper and is therefore maintained. The requirement is therefore made FINAL.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on 22 Dec. 2025.
Claim Objections
Claim 10 is objected to because of the following informalities: Claim 10 should depend on claim 9, rather than claim 10. Appropriate correction is required.
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.
Claims 2-10 recites the phrase “The cutting tool” in line 1 of each of these claims. There is insufficient antecedent basis for this limitation in the claim; the phrase should read “The cutting tool insert” based on the phrasing in claim 1.
Claim 8 recites “the binder phase” in line 2. There is insufficient antecedent basis for this limitation in the claim; the phrase should read “the metallic binder phase” based on the phrasing in claim 1.
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Toufar and Schleinkoffer (US Patent Application 2019/0024221 A1, published 24 Jan. 2019, hereinafter Toufar).
Regarding claims 1-10, Toufar teaches a cutting machining tool comprising a base material (cemented carbide) composed of cemented hard material with hard material particles embedded in a ductile metallic binder (Abstract). Toufar teaches the metallic binder is a Co-Ru alloy; the hard particles are predominantly tungsten carbide; the cemented hard material has a Co+Ru content of 5-17 wt.%; a Ru content of 6-16 wt.% of the Co-Ru content; a molybdenum content of 0.1-3.00 wt.%; a niobium content of <0.2 wt.%; and a vanadium content of <0.3 wt.% (Abstract). Toufar teaches a chromium content of 2-7.5 wt.% of the Co-Rum content (paragraph 0010). Toufar teaches a hard coating can be deposited on the base material via CVD or PVD (paragraph 0007). Toufar teaches examples with fracture toughness values of 9.6 to 11.4 MPa/(m^0.5) (Table 2).
Thus, Toufar teaches a base material (cemented carbide) containing 78.2 (100-17-3-0.2-0.075*17-0.3) to 94.8 wt.% (100-5-0.1-0.02*5-0.01) tungsten carbide, 4.2 (5*(1-0.16)) to 16 wt.% (17*(1-0.06)) cobalt, 0.10 (0.05*2) to 1.3 wt.% (0.17*7.5) chromium, the combined amounts of vanadium and niobium is 0 to 0.5 wt.%, and the combined amount of vanadium, niobium, molybdenum, and iron is 0.1 to 3.5 wt.%.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected relative amounts of cobalt, chromium, vanadium, molybdenum, and niobium, specific combined amounts of these elements, and fracture toughness from the overlapping portions of the ranges taught by Toufar because overlapping ranges have been held to be prima facie obviousness.
Toufar discloses the use of a cemented carbide containing 94.8 wt.% tungsten carbide and a HV30 values of up to 1918, while the present claims require 95.22 wt.% tungsten carbide and a HV30 value of 1960-2020.
It is apparent, however, that the instantly claimed amount of tungsten carbide and HV30 value and that taught by Toufar are so close to each other (0.44% and 2.2%, respectively) that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of tungsten carbide and HV30 value disclosed by Toufar and the amount of tungsten carbide and HV30 value disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to amount of tungsten carbide and HV30 value, it therefore would have been obvious to one of ordinary skill in the art that the amount of tungsten carbide and HV30 value disclosed in the present claims is but an obvious variant of the amount of tungsten carbide and HV30 value disclosed in Toufar, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Toufar does not disclose the coercivity of the base material of his machining tool. However, given that the base material of Toufar has the same composition of all the claimed elements and amount and composition of the metallic binder phase, within the overlapping ranges, the base material (cemented carbide) of Toufar would inherently have the same coercivity as the claimed invention, and therefore, would fall within the claimed range for coercivity.
In light of the overlap between the cutting tool insert and that disclosed by Toufar, it would have been obvious to one of ordinary skill in the art to use a cutting tool insert that is both disclosed by Toufar and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787