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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 requires performing a calculation using a value I0(hkl) which is described as a standard intensity according to “ICDD’s PDF-card No. 42-1489.” The metes and bounds of the claim can not be determined as the claim does not include the specific intensity which an artisan is meant to derive from the ICDD’s PDF-card. Moreover, the content of the card may change over time, at which point it would be unclear whether the claim requires the content of a current, former, or otherwise unknown secondary document.
In order to ensure that the metes and bounds of the claim can be accurately determined, please put all relevant limitations in the claim.
Claim 2 recites the limitation "said at least one Ti(C,N) layer having a thickness of 4.5-25 µm" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim as the only layer previously claimed to have a specific thickness is required to have a thickness of 3-25µm. Thus, as the particular thickness value is different in claim 2 than in claim 1, there is confusion over whether the recitation in claim 2 is intended to further limit the thickness of the same layer, or is referring to a different layer.
Claim 9 is directed to “the use of a cutting tool according to claim 1 in metal cutting.” This claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Similarly, claim 10 is directed to “the use of a cutting tool according to claim 9, in metal cutting in high alloyed steel, hardened steel, cast iron or stainless steel.” This claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to “the use.” It is not clear whether “use” is a process, machine, manufacture, or composition of matter. See MPEP § 2173.05(q).
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Anongsack et al.:“Microstructure, mechanical properties, and cutting performance of TiCxN1-x coatings with various x values fabricated by moderated temperature chemical vapor deposition”, Surface and Coatings Technology, vol 260, 2014-12-01, pp 139-147 (NPL Reference 1 in the IDS filed 19 October 2023)
As to claim 1, Anongsack teaches a cutting tool for metal cutting (“Coated tools used for metal cutting” (See section 1. Introduction) comprising: a substrate (the substrate is “WC–5 wt.%Co…with mirror polished surfaces” as described in lines 8-10 of section 2.1 Coating) at least partially coated with a 3-30 μm coating (Section 2.1 Coating lines 11-13 teach a coating comprised on a base layer, a bonding layer, and a final layer. Together, the layers of the coating are from 8 to 9.5 microns thick.), said substrate being cemented carbide, cermet or ceramic (Examiner notes “WC–5 wt.%Co” is a cermet), said coating having one or more layers (the coating has a base, bonding, and top layer), wherein at least one layer is a Ti(C,N) layer with a thickness of 3-25 μm (the top layer is a Ti(C,N) layer having a thickness of 7 microns), said Ti(C,N) layer being composed of columnar grains (Page 141 column 2 describes Fig 6 has showing a columnar structure. See also Fig 6 on page 145.).
The following limitations pertaining to the process by which the average grain size D422 is measured are treated as having the same patentable weight as product-by-process limitations described in MPEP § 2113. That is, the claim is interpreted as not limited to the manipulation of the recited measurement steps, only the structure which the measurement steps reveal. In other words, the claim would be met by prior art describing the same structure even if a different method of measurement were used.
Nevertheless, Anongsack teaches the same measurement process as claimed: wherein an average grain size D422 of the Ti(C,N) layer is measured with X-ray diffraction with CuKα radiation, the grain size D422 being calculated from a full width at half maximum (FWHM) of the peak according to Scherrer's equation
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wherein D422 is a mean grain size of the Ti(C,N) grains in the Ti(C,N) layer, K is a shape factor here set at 0.9, λ is a wavelength for the CuKα1 radiation here set at 1.5405 Å, B422 is a FWHM value for the reflection and θ is a Bragg angle (See the discussion of the measurement of the mean crystallite size in the first paragraph of the second column of page 140).
Anongsack does not teach: wherein D422 is ≥25 nm and ≤35 nm.
Rather, at Table 4, Anongsack teaches the crystallite size D422 to be from 39±2nm to 49±3nm. Examiner recognizes that 39±2nm is greater than 35nm because 37>35. However, the 35 and 37 are only 5.5% different from one another, and are considered to be very close.
There is legal precedent for the determination of prima facie obviousness of similar, but not overlapping ranges. See MPEP § 2144.05: “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)… ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”
In this case, it appears that the mechanical properties of the coating would be the same under the doctrine of equivalents whether the mean crystallite size D422 is 35nm or 37nm.
As to claim 2, Anongsack teaches the cutting tool according to claim 1, wherein said at least one Ti(C,N) layer having a thickness of 4.5-25 μm (the top Ti(C,N) layer in Anongsack has a thickness of 7 µm, see section 2.1 Coating).
The following limitations pertaining to the process by which the X-ray diffraction pattern TC(422) is measured are treated as having the same patentable weight as product-by-process limitations described in MPEP § 2113. See Examiner’s rationale in the rejection of claim 1… [the Ti(C,N) layer] exhibits an X-ray diffraction pattern, as measured using CuKα radiation and θ-2θ scan, wherein the TC(hkl) is defined according to Harris formula:
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where I(hkl) is a measured intensity (integrated area) of the (hkl) reflection, I0(hkl) is a standard intensity according to ICDD's PDF-card No. 42-1489, n is a number of reflections, the reflections used in the calculation being (1 1 1), (2 0 0), (2 20), (3 1 1), (3 3 1), (4 2 0) and (4 2 2), wherein TC(422)≥3.
Anongsack does not teach the TC(422)≥3. However, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP § 2112.01. In this case, as Anongsack teaches a structure substantially identical to the claimed coating, the claimed X-ray diffraction pattern property is presumed inherent.
As to claim 3, Anongsack teaches the cutting tool according to claim 2, wherein said at least one Ti(C,N) layer has a thickness of 6-25 μm (the top Ti(C,N) layer in Anongsack has a thickness of 7 µm, see section 2.1 Coating) and TC(422)≥4 (this limitation is presumed inherent. See the rationale in the rejection of claim 2, above).
As to claim 4, Anongsack teaches the cutting tool according to claim 2, wherein said at least one Ti(C,N) layer exhibits an X-ray diffraction pattern, wherein the TC(422) is the highest and TC(311) is the second highest (this limitation is presumed inherent. See the rationale in the rejection of claim 2, above).
As to claim 5, Anongsack teaches the cutting tool according to claim 1, wherein the ratio C/(C+N) in the Ti(C,N) layer is 50% to 70 (Anongsack teaches the formula TiCxN1-x. The Abstract describes values of x= 0.59-0.74. Accordingly, the ratio C/(C+N) = .59/(.59+(1-.59)) = 59%, which is within the claimed range).
As to claim 6, Anongsack teaches the cutting tool according to claim 1, wherein the coating includes an innermost layer of TiN (As shown in Table 1, the TiN is described as a “base layer.” See also section 2.1 Coating which describes a base layer, a bonding layer, and a top layer.).
As to claim 7, Anongsack teaches the cutting tool according to claim 1, wherein the Ti(C,N) layer is an outermost layer of the coating.
In one interpretation, the claimed coating refers only to titanium-based coating on the cutting tool, and the cutting tool may have other coatings. Under this interpretation, Anongsack teaches the coating in section 2.1 includes a base layer TiN, a bonding layer Ti(C,N) and a 7 micron layer at the top of Ti(CxN1-x). Anongsack teaches the cutting tool has other coatings, notable an alumina coating, but as the Al2O3 is not part of the Titanium coating, it is not relevant for the claim.
In another interpretation, the claimed coating refers to ALL the coatings of the tool, not just the Ti coatings. Under this interpretation, it is noted that the coating processes must occur sequentially. A bonding layer is coated on top of the base layer. The top Ti layer is coated on the bonding layer. The Alumina layer is coated on the top Ti layer. The claimed requirement of the Ti(C,N) layer being an outermost layer is met during the manufacturing process of the cutting tool because at some point during the manufacture (directly before the application of the Al2O3 layer) there exists a transitory product having the top Ti layer as the outermost layer.
As to claim 8, Anongsack teaches the cutting tool according to claim 1, wherein the cutting tool is a drill, a milling insert or a turning insert (section 2.1 Coating describes that the cutting tools are carbide inserts.).
As to claim 9, Anongsack teaches the use of a cutting tool according to claim 1 in metal cutting (Anongsack teaches the use of the coated tool in a metal cutting step.).
As to claim 10, Anongsack teaches the use of a cutting tool according to claim 9, in metal cutting in high alloyed steel, hardened steel, cast iron or stainless steel (section 4.2.4 Cutting Performance teaches the coated inserts were used to cut “ductile cast iron.”).
Conclusion
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 16 January 2026