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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 28-52, in the reply filed on 12 February 2026 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 53-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 without traverse in the reply filed on 12 February 2026.
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 41-52 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. This is patentably indistinct of claims 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. 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 41 recites a carbon concentration overlapping claim 30 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 § 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 28-30, 34-35, and 42-45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. (US 2019/0076920).
Considering claim 28, Ishii teaches a sintered material of hard particles and a metallic binder (abstract). 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). These values fall within and anticipate that which is claimed. See MPEP 2131.03.
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 34, Table 3 teaches where the ratio of Al:Ni is about 0.11. See MPEP 2131.03.
Considering claim 35, Table 3 teaches a Co content of about 7.7% when using the values disclosed. See MPEP 2131.03.
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 2131.03.
Considering claim 43, Ishii teaches where the WC particles have an average size of 1 µm (Table 3). See MPEP 2131.03.
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 2131.03.
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.
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 31 is rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (US 2019/0076920) as applied to claim 29 above.
Considering claim 31, in addition to the disclosure as outlined in claim 29 above, Ishii teaches where the intermetallic may comprise (Co,Ni,Cr)3(Al,W,V,Ti) (Paragraph 30).
While not specifically teaching a singular example of the claimed cemented carbide material with intermetallic phase this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Ishii as this is considered a combination of conventionally known intermetallic materials known to afford a sintered material with both hardness at high temperature and chipping resistance (Paragraph 22) and one would have had a reasonable expectation of success.
Claims 28, 32-33, 35, and 41-44 are rejected under 35 U.S.C. 103 as being unpatentable over Lindholm (US 4,497,660).
Considering claim 28, Lindholm teaches cemented carbide alloys of WC-Ni and a binder (abstract). The alloy comprises 55-95 vol.% hard material of WC and metals and 8-40 vol.% of a binder phase which comprises a minimum of 50 vol.% Ni and an optional maximum 5 vol.% Al (Column 3 lines 15-30). The aluminum is taught to prevent the formation of brittle phases and have a stabilizing influence (Column 3 lines 56-62).
While not expressly teaching a singular example of the claimed cemented carbide this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Lindholm as this is considered a combination of WC with a binder of Ni and Al known to prevent the formation of brittle phases and one would have had a reasonable expectation of success. While not disclosed as weight percentages the volume values taught by Lindholm are expected to overlap those which are claimed due to the scope of the claimed ranges (e.g. “greater than”) and those disclosed by Lindholm. See MPEP 2144.05.
Considering claims 32-33, Lindholm teaches where Al and/or W (Column 3 lines 26-41) and Ni (Column 12 lines 3-5) are dissolved in the binder phase.
Considering claim 35, Lindholm teaches where Co may be present in a maximum of 30% of the binder and where the binder is present from 4-45% (Column 3 lines 15-30). See MPEP 2144.05.
Considering claim 41, Lindholm teaches where the carbon content is present in a weight amount w/o C = A1-Bi where A1 is pure WC (e.g. stoichiometric) and A1 = 6.13 and Bi is 0.061 ± 0.008 for Cr+Mo 3-15% and 0.058 ± 0.007 for Cr+Mo 16-35% (Column 4 lines 4-15) overlapping the claimed range. See MPEP 2144.05.
Considering claim 42, Lindholm teaches where the content of Cr ranges from 2-25% and Mo from 1-15% and is silent regarding Nb, Ti, Ta, and V (Column 3 lines 26-32). See MPEP 2144.05.
Considering claim 43, Lindholm teaches a WC mean grain size of 1.5-2.0 µm (Table 2). See MPEP 2144.05.
Considering claim 44, Lindholm teaches a maximum Fe content of 20% (Column 3 lines 26-32). 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) as applied to claim 28 above further in view of Allgaier et al. (US 2018/0223660).
Considering claim 48, the teachings of Ishii as applied to claim 28 are outlined above. Ishii teaches cemented WC materials for cutting tools (Paragraphs 7-8), but does not 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 both Ishii 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 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 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 Ishii and Allgaier. Neither reference recognizes the use of a pick tip and plural segments where one segment has an increased intermetallic phase content of the claimed structural formula.
Claims 46-47 may be placed in condition for allowance if a terminal disclaimer were filed over 18/286431 as outlined above. Ishii teaches where Al2O3 is precipitated in the binder by absorbing and reacting with oxygen in the binder phase to improve heat resistance (Paragraph 19) and where lower limit of oxygen is 6 wt.% (Paragraph 32) which is significantly greater than that which is claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kassel et al. (US 2005/0224958), Garcia et al. (US 2021/0138546), and Hamaki et al. (US 2022/0048213) teach cemented carbide materials similar to that which is claimed.
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