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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/274589 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a surface coated cutting tool with a coating thickness of 0.1-10.0 microns where the coating is alternating 1st and 2nd sublayers where the first sublayer has a thickness of 0.5-100.0 nm and has an average composition of (AlxTi1-x-y-zMy)BzN where M is groups 4-6 and lanthanoid elements where x=0.100-0.640, y=0.001-0.100, z=0.060-0.400 and the 2nd sublayer has an average thickness of 0.5-100.0 nm and an average composition of (AlpCr1-p)N where p=0.650-0.900, and the coating layer includes a B content of the edge to the flank.
This is patentably indistinct of claim 1 of the ‘589 application which recites a surface coated cutting tool with a coating thickness of 0.2-10.0 microns where the coating is alternating 1st and 2nd sublayers where the first sublayer has a thickness of 0.5-100.0 nm and has an average composition of (AlxTi1-x-y-zMy)BzN where M is groups 4-6 and lanthanide elements where x=0.100-0.640, y=0.001-0.100, z=0.060-0.400 and the 2nd sublayer has an average thickness of 0.5-100.0 nm and an average composition of (AlpCr1-p-qM’q)BrN where p=0.650-0.900, q=0.000-0.100, and r=0.000-0.050. The instant claim and that of the ‘589 application recite cutting tools with overlapping sublayers and compositions thereof and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshita et al. (US 2018/0099335).
Considering claim 1, Takeshita teaches a surface-coated cutting tool with a base material and a coating of alternating layers (abstract). The base material comprises a substrate of cemented carbide, etc. (Paragraph 43) and the coating comprises first and second alternating layers (Paragraph 9). The first alternating layer comprises 1st and 2nd alternating layers of AlaCrbM11-a-b and AlcTidM21-c-d, respectively (Paragraph 9) and the entire thickness of the coating is 0.5-15 µm (Paragraph 31). The first layer is AlaCrbM11-a-b where 0.5≤0.9, 0≤b≤0.4, and 0≤1-a-b≤0.1 (Paragraph 63). The second layer is AlcTidM21-c-d where 0.35≤c≤0.7, 0.3≤d≤0.7, and 0≤1-c-d≤0.1 (Paragraph 70) where M2 may comprise one or more of B, Si, Zr, groups 4-6 elements, etc. (Paragraph 74) (e.g. M2 may be B and another group 4-6 element, etc.). The thickness of the first and second layer range from 0.005-2 µm (e.g. 5-2000 nm) and each may be within that range (Paragraph 29). The cutting tool has an edge ridgeline formed by the meeting of rake and flank faces (Paragraph 46). There is no teaching indicating where M2 (e.g. encompassing boron) differs at any point in the coating (e.g. a B content being the same throughout the coating overlaps that which is claimed as it necessarily is ~100%).
While not expressly teaching a singular example of the claimed cutting tool this would have been obvious to one of ordinary skill in the art before the effective filing date as this is considered a combination of conventionally known materials for alternating first and second layers and one would have had a reasonable expectation of success. Further, the thickness and ratios of elements taught by Takeshita overlap those which are 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 exists. See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ikeda et al. (US 5,318,840), Asari et al. (US 2015/0203956), and Tanaka et al. (US 2021/0086268) 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.
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, 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
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