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 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 1-8 and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsuoka et al. (US 2017/0297117 – previously cited) as evidenced by Tatsuoka et al. (JP 2017-113835 machine translation previously provided; hereafter Tatsuoka’835).
Considering claim 1, Tatsuoka teaches a surface coated cutting tool (abstract). The hard coating comprises (Ti1-xAlx)(CyN1-y) having a NaCl typed face-centered cubic structure (abstract). The hard coating layer has a general composition of (Ti1-xAlx)(CyN1-y) where X average of Al ranges from 0.60-0.95 (Paragraphs 15 and 17) and specific examples where (Ti1-xAlx)(CyN1-y) has a composition of X average of Al being 0.68, 0.71, 0.75, 0.78, 0.83, etc. (Table 7). When analyzed in a longitudinal direction of the layer by EBD, an inclined angle frequency of angles of normal {111} lines with respect to a normal direction of the surface of the tool body has a highest peak between 0-10° and a proportion thereof is 45% or higher of the total frequencies in the inclined angle distribution (Paragraph 17) with specific proportions of frequencies of 0-10° in inclined angle frequency distribution in which the highest peak is present from 0-5.25° is 65.0-80.0% in the examples (Table 7) (e.g. a distribution of 111 misorientation angles normal to the surface such that greater than 60% of the angles are less than 10 degrees). However, Tatsuoka does not expressly teach the claimed rake face, flank face, and cutting edge therebetween.
Tatsuoka’835 teaches a surface-coated cutting tool (abstract) comprising tool having a rake and flank face (Paragraph 11) where the flank face and rake face have a cutting edge between them (Paragraph 19; Figure 2) and an example of the substrate is a WC-based cemented carbide tool body insert shape according to ISO standard SEEN1203AFSN (Paragraph 28).
As both Tatsuoka and Tatsuoka’835 teach WC-based cemented carbide tool bodies with insert shape according to ISO standard SEEN1203AFSN this is considered to evidence where Tatsuoka possesses the claimed structure.
While not expressly teaching a singular example of the claimed coated cutting tool with the (Ti,Al)N layer being a PVD layer, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tatsuoka as this is considered a combination of a conventionally known cutting tool with coating composition and (111) misorientation overlapping 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. While Tatsuoka teaches CVD hard coatings, the recitation of “is a PVD layer” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed coated cutting tool. See MPEP 2113.
Considering claim 2, Tatsuoka teaches where 75.0% of frequencies are within 0-0.25° and 80.0% are within 5-5.25° (Table 7, Ex.7-8). See MPEP 2144.05.
Considering claim 3, Tatsuoka teaches where 75.0% of frequencies are within 0-0.25° (Table 7, Ex.7). See MPEP 2144.05.
Considering claim 4, Tatsuoka teaches where 75.0% of frequencies are within 0-0.25° (Table 7, Ex.7).
Considering claim 5, in addition to the disclosure above, Tatsuoka teaches where the hard coating layer has a thickness of 1-20 µm (Paragraph 24).
Considering claims 6-7, Tatsuoka does not expressly teach the claimed hardness or plain strain modulus. However, as outlined above, Tatsuoka teaches a substantially identical coated cutting tool as that which is claimed and therefore these properties are expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 8, Tatsuoka teaches examples where (Ti1-xAlx)(CyN1-y) has a composition of X average of Al being 0.71, 0.75, 0.78, etc. (Table 7).
Considering claims 10-11, Tatsuoka teaches in Fig.3 where the (Ti1-xAlx)(CyN1-y) layer has periodic changes in Ti and Al and alternating configuration and where the change in X between minimum and maximum is 0.03-0.25 and as X average of Al ranges from 0.60-0.95 (Paragraph 17) which is considered to teach where the layers may have an aluminum content of 0.35-0.92 overlapping that which is claimed. See MPEP 2144.05.
Considering claim 12, Tatsuoka teaches where the period thickness is 3-100 nm (Paragraph 29). See MPEP 2144.05.
Considering claims 13-14, Tatsuoka teaches where the substrate comprises cemented WC and is an insert (Paragraph 60).
Considering claim 15, in addition to the disclosure as outlined above, Tatsuoka teaches where the coating may be a single layer (Paragraph 19) with composition and (111) misorientation overlapping that which is claimed. See MPEP 2144.05.
Considering claim 16, in addition to the disclosure as outlined above, Tatsuoka teaches where the coating may be multilayered having sub-layers with different compositions (Paragraph 53) with composition and (111) misorientation overlapping that which is claimed. See MPEP 2144.05.
Terminal Disclaimer
The terminal disclaimer filed on 06 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Application Number 18/288609 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments, see remarks p.5, 2nd paragraph, filed 06 March 2026, with respect to Double Patenting Rejections have been fully considered and are persuasive. The rejection of claims 1-8 and 10-14 has been withdrawn. Applicant has filed the requisite terminal disclaimer obviating said rejection.
Applicant’s arguments, see remarks p.5, 3rd paragraph, filed 06 march 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claim 14 has been withdrawn. Applicant has amended the claim to remove indefiniteness.
Applicant’s amendment to claim 1 has necessitated the change of the grounds of rejection of claims 1-4, 6-8, and 13-14 from previously under 35 USC 102(a)(1) to 35 USC 103 in view of Tatsuoka. Applicant’s arguments regarding art rejections submitted 06 March 2026 have been fully considered and are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that Tatsuoka teaches where the highest proportion of frequencies 0-10° in inclined angle for a multilayer TiAl coating is 83% per Table 13 (remarks p.6, 2nd full paragraph) whereas the comparative examples are of single monolithic layers (remarks p.6, last paragraph) with proportions of frequencies up to 35% (remarks p.7, 1st paragraph), but that Tatsuoka does not teach higher texture purity of 75% for a single monolithic layer nor 90% for a multilayer TiAlN film (e.g. claims 15 and 16, respectively) and that the ranges disclosed by Tatsuoka are aspirational without data across all subranges, correlation between parameter change and performance, and any working examples in the claimed sub-ranges.
This is not persuasive a Tatsuoka is not limited to examples alone, but positively teaches where the total frequencies in the range of 0-10° is less than 40% (Paragraph 21) overlapping that which is claimed and teaches where the coating may be a single layer or multiple layers (Paragraphs 19 and 53) and prior art is relevant for all that it disclosed and is not limited to examples alone. See MPEP 2123. The total frequency range disclosed by Tatsuoka and composition of the coating overlaps that which is claimed establishing a prima facie case of obviousness. Applicant has not submitted nor argued any secondary considerations to rebut the prima facie case. Applicant also appears to be arguing that the disclosure of Tatsuoka is insufficient to establish operability (e.g. lack of working examples, etc.). This is not persuasive as prior art is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See MPEP 2121 (I). As of the writing of this Office action no objective evidence or technical reasoning has been provided as to inoperability of Tatsuoka.
Applicant argues that reliance on Tatsuoka would require routine optimization (remarks p.7, last paragraph). This is not persuasive as the range of misorientation of the (111) direction disclosed by Tatsuoka overlaps that which is claimed. See MPEP 2144.05(I). No argument regarding routine optimization has been made. Absent an objective showing or technical reasoning as to how the instantly claimed ranges afford a patentable distinction, the prior rejection is maintained.
Applicant argues that PVD coatings (e.g. claim 1) differ from CVD coatings (e.g. coatings of Tatsuoka) due to stress differences, etc. (remarks p.8, 2nd full paragraph). This is not persuasive as instant claim 1 merely recited the nominal product-by-process limitation of “is a PVD layer” and applicant is reminded that product-by-process limitations are not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed coated cutting tool. See MPEP 2113. No objective evidence or technical reasoning has been submitted as of the writing of this Office action. It is further noted that the no process parameters or process claims are currently under consideration and therefore applicant’s arguments are not commensurate with that which is claimed. See MPEP 2145 (VI).
Applicant argues that the CVD process conditions of Tatsuoka are different than the (unclaimed) PVD conditions, such as temperature, which afford fundamentally different microstructure, coarsening, faceting, tensile residual stress, frequency of cracks, etc. in maintaining a cubic phase for an Al content of >0.67 (remarks p.8, 3rd paragraph – p.9 continuing paragraph). This is not persuasive as none of these features are claimed. See MPEP 2145 (VI). Further, applicant has not provided objective evidence or technical reasoning that these argued, unclaimed issues are inherent to Tatsuoka and applicant is reminded that argument alone is insufficient to rebut the prima facie case. See MPEP 2145 (I).
Applicant argues that Tatsuoka’835 differs from Tatsuoka’117 regarding (111) misorientations (remarks p.9, 1nd full paragraph). This is not persuasive as Tatsuoka’835 is relied only upon for the structure of the cutting tool (e.g. flank face, rake face, and cutting edge therebetween) and not for any particular coating teachings. Further, one cannot show non-obviousness by attacking references individually where the rejection is made in combination. See MPEP 2145 (IV).
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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784