DETAILED ACTION1
ELECTION/RESTRICTION
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant's election without traverse of Group II, claims 10-25 in the reply filed on April 8, 2026 is acknowledged.
CLAIM OBJECTIONS
Claims 15-16 are objected to because of an informality. Claim 15 recites the intermediate layer is formed from a carbonitride a metal. The word ‘of’ (or some other word) is grammatically required after the word carbonitride. Claim 16 is objected to based on its dependence. Appropriate correction is required.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 10 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/025629 to Kurapov in view of Applicant Admitted Prior Art (AAPA).
Claim 10 recites a coated body having a substrate and a coating arranged on the substrate. Kurapov relates to such a coated body. See pg. 1, ln. 21 to pg. 2, ln. 5. Kurapov teaches a drill (1) formed of a substrate (2) with a coating (3). See Kurapov pg. 3, ll. 15-18. Kurapov teaches the coating is formed from a base layer applied to the substrate and at least one metal carbide-containing layer arranged over the base layer. See Kurapov pg. 2, ll. 1-8. Kurapov teaches that the base layer is formed from a nitride of aluminum…[plus] Ti, Cr, Si, Zr. Specifically, Kurapov teaches (AL, Cr)N. Id. Kurapov then teaches the metal carbide-containing layer [is a]..carbide of…titanium. See Kurapov pg. 2, ll. 16-26.
Claim 10 further recites that the metal carbide-containing layer has a carbon content in a range of 40-65 atom%. Kurapov is silent on the specific carbon concentration of its titanium carbide layer. But one of ordinary skill would look to the relevant prior art for a suitable material. Applicant’s specification teaches a method for producing TiC/a:C coatings having 55-60% carbon atom%. See Specification [0013]. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious and predictable to modify Kurapov to use the titanium carbide coating of AAPA.
Finally, claim 1 recites the body [is] obtained by means of [the] method of claim 1. This is a product-by-process limitation. Such limitations do not further modify an apparatus claim, absent evidence that the method of fabrication results in a product with unique material properties. No such evidence has yet been presented. As such, a coated tap drill, as taught by Kurapov, coated with AAPA titanium carbide renders claim 1 obvious.
Regarding claim 20, Kurapov teaches the metal carbide-containing layer is a titanium carbide containing layer. Regarding claim 21, AAPA teaches the titanium carbide coating has a hardness of 24-29 GPa, which overlaps the recited range. Claim 22 recites that the titanium carbide-containing layer has an elasticity modulus in a range from 200 to 500 GPa. AAPA is silent as to the elasticity of the taught layer (as is the underlying reference). Given this large range, it would have been obvious to create an elasticity within the recited range as a mere design choice. If applicant can demonstrate that a titanium carbide layer with a 40-60 carbon% is only possible via the method of claim 1, this will be considered a patentable feature.
Claims 10-12, 15-16, & 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2022/0395909 to Kobayashi in view of AAPA.
Claim 10 recites a coated body having a substrate and a coating arranged on the substrate. Kobayashi relates to such a coated body. See Kobayashi [0030]-[0035] and Figs. 1 & 5. Kobayashi teaches a cutting tool (1) formed of a substrate (10) with a coating (14). See Kobayashi [0052]-[0057] and Figs. 1 & 5. Kobayashi teaches the coating is formed from a base layer (11) applied to the substrate and at least one metal carbide-containing layer (13) arranged over the base layer. See Kobayashi [0052]-[0057], [0137], and Fig. 5. Kobayashi teaches that the base layer is formed from a nitride of aluminum…[plus] Ti, Cr, Si, Zr. Specifically, Kurapov teaches AlTiCN. Id. While later claims make a distinction between a nitride and a cardonitride of aluminum, claim 10 does not. The AlTiCN of Kobayashi may be defined to be a nitride of aluminum since the broadest reasonable interpretation of a nitride of aluminum is any material having both aluminum and nitrogen. Kobayashi then teaches the metal carbide-containing layer [is a]..carbide of…titanium. See Kobayashi [0137].
Claim 10 further recites that the metal carbide-containing layer has a carbon content in a range of 40-65 atom%. Kobayashi is silent on the specific carbon concentration of its titanium carbide layer. But one of ordinary skill would look to the relevant prior art for a suitable material. Applicant’s specification teaches a method for producing TiC/a:C coatings having 55-60% carbon atom%. See Specification [0013]. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious and predictable to modify Kurapov to use the titanium carbide coating of AAPA.
Finally, claim 1 recites the body [is] obtained by means of [the] method of claim 1. This is a product-by-process limitation. Such limitations do not further modify an apparatus claim, absent evidence that the method of fabrication results in a product with unique material properties. No such evidence has yet been presented. As such, a coated tap drill, as taught by Kobayashi, coated with AAPA titanium carbide renders claim 1 obvious.
Claim 11 recites an intermediate layer…between the metal carbide-containing layer (13) and the base layer. This is taught in either of two ways. First, Kobayashi teaches the aluminum nitride layer (11) may have a first and second region having different grains sizes, stacked on each other. See Kobayashi [0038]-[0044]. The second grain size layer may be defined as the intermediate layer. Alternately, Kobayashi explicitly teaches a three-layer embodiment in figure 5. In this embodiment, the base layer applied to the substrate is layer (12), while the AlTiCN layer becomes an intermediate layer (11). Kobayashi does not go into much detail about the material of base layer (12) in this embodiment beyond stating one exemplary material could be TiN. But other materials would also have been viewed as possible. AAPA teaches that it was known to coat substrates with AlCrN and then a metal carbide. See Specification [0010]. This is a similar arrangement to that of Kobayashi. Thus, it would have been obvious to use AlCrN as the base layer (12) followed by the AlTiCN layer (11) and metal carbide layer (13) as taught in figure 5 of Kobayashi. See MPEP 2143(D). Regardless both of these options further teach that the intermediate layer (11) is formed of AlTiCN, which is a carbonitride of aluminum and…Ti. See Kobayashi [0052]-[0057]. This further teaches claim 12.
Claim 15 recites an intermediate layer…formed from a carbonitride [of] a metal, with claim 16 reciting TiCN specifically. Kobayashi teaches a three-layer coating with an intermediate layer. See Kobayashi Fog. 5. Both of the two options for defining the base and intermediate layer from claim 11 apply here to claim 15. Kobayashi teaches embodiments in which the aluminum carbonitride is combined with TiCN. See Kobayashi [0080]. Thus, in both interpretations (from claim 11) the intermediate layer can be a combination of AlTiCN and TiCN. Such a combination layer meets the broadest reasonable interpretation of being formed of TiCN as recited in claims 15-16.
Regarding claim 20, Kobayashi teaches the metal carbide-containing layer is a titanium carbide containing layer. See Kobayashi [0137]. Regarding claim 21, AAPA teaches the titanium carbide coating has a hardness of 24-29 GPa, which overlaps the recited range. Claim 22 recites that the titanium carbide-containing layer has an elasticity modulus in a range from 200 to 500 GPa. AAPA is silent as to the elasticity of the taught layer (as is the underlying reference). Given this large range, it would have been obvious to create an elasticity within the recited range as a mere design choice. If applicant can demonstrate that a titanium carbide layer with a 40-60 carbon% is only possible via the method of claim 1, this will be considered a patentable feature.
Regarding claim 23, Kobayashi relates to a cutting insert as shown in figure 1. Claims 24-25 recite specific structures of the substrate. While Kobayashi does not explicitly teach such structures, examiner takes Official Notice that ship holding tools for holding a cutting insert, such as that shown in figure 1, exist. Such tool holders have the structures and surfaces defined in claims 24-25. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). Kobayashi teaches a generic coating process for any surface needing it. It therefore would have been obvious to create a coating, such as taught by Kobayashi, onto the described tool subtrate.
ALLOWABLE SUBJECT MATTER
Claims 13-14 and 17-19 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.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
Prosecution Insights