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 1-12 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-7, 10, and 12-14 of copending Application No. 18/288297 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a coated cutting tool with rake and flank faces and a cutting edge comprising a substrate and a (Ti,Al)N coating either single monolithic or multilayered having a composition where Al/(Ti+Al) greater than 0.67 and less than or equal to 0.85 where the (Ti,Al)N layer has a plane strain modulus at a point at least 0.5 mm from the cutting edge is at least more than 90% of the plane strain modulus at the cutting edge where the plane strain modulus is greater than 450 GPa. This is patentably indistinct of claim 7 of the ‘297 application which recites a coated cutting tool with rake and flank faces and a cutting edge comprising a substrate and a PVD (Ti,Al)N coating either single monolithic or multilayered having a composition where Al/(Ti+Al) greater than 0.67 and less than or equal to 0.85 where the (Ti,Al)N layer has a 111 distribution of misorientation angles such that greater than 60% are less than 10 degrees and a plain strain modulus of ≥ 450 GPa. As the instant claims and those of the ‘297 application recite substantially identical cutting tools with overlapping plain strain moduli, the courts have held that where ranges overlap a prima facie case of obviousness exists and therefore the claims are not patentably distinct from one another. See MPEP 2131.03 and 2144.05.
Instant claims 2 and 5 recite a plain strain modulus overlapping claim 7 of the ‘297 application. See MPEP 2144.05. Instant claims 3-4 and 6 recite a hardness overlapping claim 6 of the ‘297 application. Instant claim 7 recites a thickness overlapping claim 5 of the ‘297 application. Instant claim 8 recites a misorientation angle distribution overlapping claim 7 of the ‘297 application. Instant claim 9 recites an atomic ratio overlapping claim 7 of the ‘297 application. Instant claim 10 recites a monolithic layer overlapping claim 7 of the ‘297 application. Instant claim 11 recites a multilayer configuration overlapping claim 10 of the ‘297 application. Instant claim 12 recites a thickness overlapping claim 12 of the ‘297 application. Instant claim 14 recites materials overlapping claim 13 of the ‘297 application. Instant claim 15 recites objects overlapping claim 14 of the ‘297 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 13 is 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.
Response to Arguments
Applicant's arguments filed 06 March 2026 regarding Double Patenting Rejections have been fully considered but they are not persuasive. Applicant indicates in the 2nd paragraph of p.5 that a terminal disclaimer has been filed over copending 18/288297. However, a review of applicant’s submission does not find any copy of said terminal disclaimer. Absent a filing of a terminal disclaimer, the prior rejection is maintained.
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 15 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks pp.6-8, filed 06, with respect to 35 USC 103 in view of Kurapov in view of Tatsuoka have been fully considered and are persuasive. The rejection of claims 1-15 has been withdrawn. Applicant persuasively demonstrates the effect of total pressure of the deposition system regarding N2 and Ar and where this results in a plane strain modulus which would not have been predictable due to the non-linear relationship outlined in p.7 of the remarks based upon data from originally filed Example 1. As such, the instant claims would not have been obvious to one of ordinary skill in the art.
Conclusion
THIS ACTION IS MADE FINAL. 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