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 28-35 and 42-52 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 28, 33-39, 42-44, and 47 of copending Application No. 18/286431 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 28 recites a cemented carbide material of 70-95 wt.% WC and a binder of greater than 25 wt.% Ni, greater than 4 wt.% Al, and cobalt, and a substoichiometric or stoichiometric carbon content. This is patentably indistinct of claims 30, 39 and 42 of the ‘431 application which recite a cemented carbide material comprising dispersed WC from 70-95 wt.% and a binder of 1-28 wt.% which comprises Co and an intermetallic phase as well as more than 25 wt.% Ni, more than 4 wt.% Al, and the balance of the binder phase being Co and elements dissolved therein and a stoichiometric carbon content range. The instant claims and those of the ‘431 application recite overlapping cemented carbide materials with compositions thereof and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 29 recites an intermetallic phase overlapping claim 39 of the ‘431 application. Instant claim 30 recites a L12 crystal structure overlapping claim 35 of the ‘431 application. Instant claim 31 recites further materials overlapping claim 24 of the ‘431 application. Instant claim 32 recites dissolved materials overlapping claim 39 of the ‘431 application. Instant claim 33 recites dissolved materials overlapping claim 44 of the ‘431 application. Instant claim 34 recites a ratio Al/Ni overlapping claim 43 of the ‘431 application. Instant claim 35 recites a Co range overlapping claim 39 of the ‘431 application. Instant claim 42 recites materials overlapping claim 28 of the ‘431 application. Instant claim 43 recites grain sizes overlapping claim 33 of the ‘431 application. Instant claim 44 recites a Fe content overlapping claim 34 of the ‘431 application. Instant claim 45 recites a maximum size overlapping claim 36 of the ‘431 application. Instant claim 46 recites a further phase overlapping claim 37 of the ‘431 application. Instant claim 47 recites grain sizes overlapping claim 38 of the ‘431 application. Instant claims 48-52 recites tools overlapping claim 47 of the ‘431 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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 28-35 and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (US 2019/0076920 – previously cited) in view of Blomqvist et al. (WO2020/002664).
Considering claim 28, Ishii teaches a sintered material of hard particles and a metallic binder (abstract) for cutting tools (Paragraph 6). The sintered material comprises hard particles of WC, etc. and a metallic binder of Ni, Al, etc. (Paragraph 10). Examples are taught of the WC as the hard particle and the binder of Co, Ni, Al, and W being sintered (Paragraphs 87-90) where the resulting cemented carbide material comprises by mass 80% WC and the binder by mass comprising 36.1% Ni and 4.2% Al (Table 3, Examples 40 and 41). However, Ishii does not teach the claimed carbon content.
In a related field of endeavor, Blomqvist teaches a cutting tool of a cemented carbide (abstract). The tool comprises a metallic binder (p.3 lines 5-9) of one or more of Ni, Al, etc. (p.3 lines 12-15) and at least 50 wt.% WC and 3-20 wt.% of metallic binder (p.6 lines 11-13). The cutting tool may have a substoichiometric carbon content (SCC) with a range of -0.13wt.%≤SCC<0 wt.% or -0.30wt.%≤SCC≤-0.16 wt.% (p.6 lines 7-10) which prevents large agglomerates of a brittle eta phase (p.8 lines 1-6 and line 25 – p.9 line 4).
As both Ishii and Blomqvist teach 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 Ishii with the substoichiometric carbon content taught by Blomqvist as this is known to prevent large agglomerates of a brittle eta phase and one would have had a reasonable expectation of success. Further, the amounts of WC, Ni, Al, and carbon disclosed by modified Ishii overlaps 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 exists. See MPEP 2144.05.
Considering claim 29, Ishii teaches where the metallic binder contains an intermetallic phase of (Co,Ni)3(Al,W,V,Ti) (Paragraph 18).
Considering claim 30, Ishii teaches where the intermetallic has a precipitated phase of a L12 structure (Paragraph 18).
Considering claim 31, Ishii teaches where the intermetallic may comprise (Co,Ni,Cr)3(Al,W,V,Ti) (Paragraph 30).
Considering claim 32, modified Ishii does not specify the claimed dissolved Ni and Al. However, Ishii teaches a cutting tool comprising binder of Co, Ni, and Al with the hard phase of WC sintered at 1400 °C (Table 3) in amounts and conditions substantially identical to that which is disclosed in p.23 of the originally filed specification which applicant discloses as forming the claimed dissolved Ni and Al in the first paragraph of p.26 of the originally filed specification. Blomqvist teaches where W and C are dissolved in the binder (p.6 lines 17-20). Accordingly, modified Ishii is expected to possess the claimed dissolved Ni and Al as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.01.
Considering claim 33, Blomqvist teaches where W and C are dissolved in the binder (p.6 lines 17-20).
Considering claim 34, Table 3 of Ishii teaches where the ratio of Al:Ni is about 0.11. See MPEP 2144.05.
Considering claim 35, Table 3 of Ishii teaches a Co content of about 7.7% when using the values disclosed. See MPEP 2144.05.
Considering claims 42 and 44, the composition set forth by Ishii in Table 3 is silent regarding the presence of Nb, Ti, Ta, Mo, V, Cr, and Fe and therefore considered absent these materials (e.g. ~0%) overlapping the instantly claimed ranges due to the recitation of “or less”. See MPEP 2111.01 and 2144.05.
Considering claim 43, Ishii teaches where the WC particles have an average size of 1 µm (Table 3). See MPEP 2144.05.
Considering claim 45, Ishii teaches where the intermetallic phase has a size of 0.03-1.0 µm (Paragraph 43) (e.g. 30-1000 nm). See MPEP 2144.05.
Claims 48-52 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (US 2019/0076920) in view of Blomqvist et al. (WO2020/002664) as applied to claim 28 above further in view of Allgaier et al. (US 2018/0223660).
Considering claim 48, the teachings of Ishii and Blomqvist as applied to claim 28 are outlined above. Ishii teaches cemented WC materials for cutting tools (Paragraphs 7-8) as does Blomqvist (p.6 lines 11-13), but neither Ishii nor Blomqvist teach the claimed tool.
In a related field of endeavor, Allgaier teaches cutting devices (abstract) for earth working or road milling (Paragraph 1). The tool comprises a base part with a cutting insert of a cutting component (e.g. working element attached to a working area) comprising a shank and a head formed of a metal carbide material (Paragraph 49) where the shank is attached to the body with an inter-material bond, such as solder (Paragraph 50).
As Ishii, Blomqvist, and Allgaier teach 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 include the cutting tool taught by Ishii and Blomqvist with the tool structure taught by Allgaier as this is considered a combination of conventionally known cutting element portions to form a cutting tool and one would have had a reasonable expectation of success.
Considering claim 49, Allgaier teaches where the tool is a road milling machine (Paragraph 1).
Considering claim 50, Allgaier teaches where the cutting insert comprises a tip (Paragraph 49).
Considering claims 51-52, Allgaier teaches where the tool is cutting device including a road milling machine (Paragraph 1) where the device comprises an insert of a conical head connected to a shank portion (e.g. a milling pick comprising a pick head) where the insert is held at the interface of the head and shank (Paragraph 50; Fig. 2).
Allowable Subject Matter
Claims 36-40 are allowed.
Claims 46-47 would be allowable if a terminal disclaimer were filed over 18/286431 as outlined above
The following is a statement of reasons for the indication of allowable subject matter: Please see the rationale set forth in the Office action dated 24 March 2026.
Response to Arguments
Applicant’s remarks regarding holding double patenting rejections in abeyance (p.8, last paragraph) filed 15 June 2026 are noted, but cannot be accommodated. As outlined above, the instant claims and those of copending 18/286,431 are patentably indistinct necessitating said rejection.
Applicant’s arguments, see remarks p.9, filed 15 June 2026, with respect to 35 USC 102 rejections in view of Ishii have been fully considered and are persuasive. The rejection of claims 28-30, 34-35, and 42-45 has been withdrawn. Applicant has incorporated subject matter not anticipated by Ishii.
Applicant’s arguments, see remarks pp. 10-11, filed 15 June 2026, with respect to the rejection(s) of claim(s) 28, 32-33, 35, and 41-44 under 35 USC 103 in view of Lindholm have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Applicant persuasively shows that Lindholm does not teach the claimed carbon content. However, upon further consideration, a new ground(s) of rejection is made in view of Ishii in view of Blomqvist as outlined above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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
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