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 .
EXAMINER’S COMMENT
Claim 2 is interpreted to require the presence of a combination of three reinforcement additives of Co particles, TiCN particles, and cobalt alloy particles. Claim 2 is not interpreted to require only “one” of the claimed reinforcement additives.
Election/Restrictions
Applicant's election with traverse of claims 1-2, and 4-13 in the reply filed on 04/24/2026 is acknowledged.
It is noted that although two groups of claims 1-17 and 18-20 have been presented, there also has been presented a species election. For this reason, based on Applicant’s election, claims 1-2 and 4-13 have been elected for the purpose of examination. As such, claims 3 and 14-20 are withdrawn from further examination.
The traversal is on the ground(s) that (1) with respect to 18-20, Applicant has asserted the Office has failed to provide any evidence to support the assertion that the process can be used to produce the product as the Office has alleged, and further Applicant has asserted a search of all the claims would not impose a serious burden on the Office, and (2) with respect to the species election, Applicant has asserted for specie restriction to be proper, there must be a patentable distinction between the species, and Applicant has, additionally, asserted the burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to the patentable distinction. This is not found persuasive because the process as claimed can be used to make a materially different product such as one where the reinforcement additives are larger than 35 microns. Also, the species as presented in the Restriction Requirement, are in fact distinct from each other; this is because claim 2 requires the combination of three reinforcement additives, namely Co particles, titanium carbonitride particles, and cobalt alloy particles; whereas, claim 3 requires only a cobalt-chromium alloy (Co21-C) and claim 4 requires only boron nitride compound as reinforcement additive. Also, claim 12 and its dependent claims require TiCN and h-BN; whereas, claim 14 and its dependent claims require Co and h-BN. Claim 16 and its dependent claims require Co212-C and h-BN. Thus, each of claims 2, 3, 4, 12, 14, and 16 require a combination of reinforcement additive which is distinct from the others.
The requirement is still deemed proper and is therefore made FINAL.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by “Design and Development of Nova α-SiAlON/Co and α-SiAlON/TiCN composites for Cutting Tool Inserts” by Alotaibi et al. (hereinafter Alotaibi) as a proceeding of ASME 2022 (see attached for a copy).
The applied reference has a common Applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With respect to claim 1, Alotaibi teaches α-SiAlON-4%Co and α-SiAlON-20%TiCN ceramic composites, which are functionally graded, and present desirable properties tailored for enhance high-cutting tool performance (see page 1, Abstract; page 2, Introduction). Alotaibi teaches that by functionally grading the ceramic composite tool, the tool life is increased and an enhanced cutting performance is achieved (see page 2, Introduction). The cutting tool of Alotaibi comprises a cutting surface having a ceramic composite having been manufactured using SiO2, AlN, Si3N4, Al2O3, Yb2O3, cobalt, and TiCN (page 4, Experimental Details).
It is noted that the limitation of “wherein FG SiAlON composite is obtained by sintering one or more powder compositions and wherein one or more powder compositions comprise SiO2 particles having a particle size of 20-50 nanometers (nm), AlN particles having a particle size of up to 100 nm, Si3N4 particles having a particle size of 300 to 500 nm, Al2O3 particles having a particle size of up to 100 nm, Yb2O3 particles having a particle size of up to 100 nm, and one or more reinforcement additives selected from the group consisting of cobalt (Co) particles, titanium carbonitride (TiCN) particles, cobalt alloy particles, and a boron nitride compound; and wherein the one or more reinforcement additives of the one or more powder compositions have an average particle size in a range of 50 nm to 35 micrometers (µm)” is a process limitation in a product claim. Therefore, the limitations drawn to the step of sintering and the starting powder composition especially the particle size of the starting composition powders, are not seen to add patentable weight to the examination of the product claim unless the specifically claimed particle sizes impart a functional distinction. There is no evidence that the specifically claimed particle sizes impart any functional distinction.
Assuming the above is not found persuasive, Alotaibi, additionally, teaches SiO2 powder having a particle size of 20-50 nm, AlN powder having a size of less than 100 nm, Si3N4 powder having a size of 300-500 nm, Al2O3 powder having a size of less than 100 nm, Yb2O3 powder having a size of less than 100 nm, cobalt powder having a size of 2 microns, and TiCN powder having a size of 1.45 micron (see page 4, Experimental Details). All of the disclosed starting powder composition and the disclosed particle sizes read on the claimed ones.
Allowable Subject Matter
Claims 2, and 4-13 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 prior art do not disclose or suggest the cumulative limitations of claims 1 and 2; additionally, the prior art do not disclose the cumulative limitations of claims 1 and 3. Furthermore, the prior art do not disclose or suggest the cumulative limitations of claims 1 and 4. In addition, the prior art do not disclose or suggest the cumulative limitations of claims 1 and 6.
Claim 2, as clarified under “Claim Interpretation”, requires the presence of all Co particles having an average particle size of about 2 microns, TiCN particles having an average particle size of about 1.45 microns, and cobalt alloy particles having an average particle size of about 32 microns. The prior art do not disclose the use of combination of Co, cobalt alloy, and TiCN.
The prior art do not disclose any cobalt alloy or boron nitride used in the production of SiAlON.
Although Alotaibi discloses a functionally graded SiAlON, said reference does not disclose the specifically claimed layer orders, as claimed in claim 6, with the claimed thicknesses.
Further search did not result in any references anticipating or rendering the claims obvious.
“Spark Plasma Sintering of SiAlON Ceramics Synthesized via Various Cations Charge Stabilizers and Their Effect on Thermal and Mechanical Characteristics” by Falak et al. (see attached) discloses an oxygen-rich SiAlON ceramics having been synthesized using nanosized starting powder precursors comprising Si3N4, AlN, Al2O3, and SiO2 along with oxides of some other material including an oxide of Yb as a charge stabilizer. The reference discloses utilizing an ultrasonic probe sonication to develop a homogeneous mixture of the initial powder followed by spark plasma sintering at a temperature of 1500˚C coupled with 30 min of isothermal treatment. The reference, additionally, discloses that SiAlON samples synthesized using Er and Yb charge stabilizers have been found to have the highest fracture toughness. The materials used as charge stabilizers in the form of oxides are Ba, Y, Mg, La, Nd, Eu, Dy, Er and Yb. The reference, also, discloses that among them, Dy-SiAlON had the lowest thermal conductivity of 5.79 W/m.K and Er-SiAlON showed the highest value of thermal conductivity of 6.91 W/m.K. Moreover, the reference discloses the particle size for at least, some of the starting powders: 50nm for SiO2, less than 100 nm for AlN, 300-500nm for Si3N4 (page 4 of 15). Also, in Table 2, the reference teaches the use of Yb2O3 powder in a size of 100 nm. There is no disclosure of the size of Al2O3 starting powder; however, as noted above, because the limitations in lines 4-12 of claim 1 are directed to the process, the particle size of the starting powder would not have added patentable weight to the examination of the product claim unless there was evidence showing the specifically claimed powder sizes would have imparted any functional distinction which would not have been observed in using the same starting materials in different powder. Thus, the particle size of Al2O3 was not critical in rejecting the claim. However, the reference does not read on claim 1 or render claim 1 obvious because the reference does not disclose any of the claimed “reinforcement additives”. It is important to note the size of the reinforcement additive particles does not add patentable weight to the examination of the SiAlON, but the reference does not even disclose the use of any of the claimed compounds claimed as “reinforcement additives”. For this reason, Falak et al. do not render claim 1, and as such, its dependent claims obvious.
“Cutting performance and wear mechanism of Sialon-Si3N4 graded nano-composite ceramic cutting tools” by Zheng et al. discloses Sialon-Si3N4 nano-composite ceramic too materials which are fabricated using hot-pressing technique (see abstract). The reference discloses that materials such as TiCN strengthen and toughen the Sialon ceramic (see Introduction). The ceramic tool is graded as shown in Figure 1 (see Figure 1, Table 2). The 2nd, 4th, and 3rd layer do not contain any Al2O3 and AlN (Table 2 and Table 1). However, claim 1 does not claim any layered structure; thus, in order to reject claim 1, there is a need to a Sialon structure containing the claimed starting powders: SiO2, AlN, Si3N4, Al2O3, Yb2O3, and one or more additive selected from the group consisting of cobalt, titanium carbonitride, cobalt alloy, and a boron nitride compound. As noted above, the claimed particle size is not seen to impart a specific functional distinction which cannot be drawn from using other particle size ranges. Therefore, in order to reject claim 1, the reference needs to disclose the starting powder materials, not necessarily the particle sizes, in the formation of a functionally graded Sialon. Zheng et al. teach the use of Co (see Table 4) and even though it is not required to disclose the particle sizes, for the purpose of rejection, the reference discloses some of the particle sizes (see Experimental Method). However, Zheng et al. do not disclose Yb2O3. For this reason, Zheng et al. do not disclose or render obvious claim 1.
“Gradient Structures in SiAlON’s for Improved Cutting Performance” by Bulic et al. Bulic et al. discloses a functionally graded SiAlON presenting a good cutting performance, hardness and fracture roughness. Bulic et al. disclose the use of starting materials of Si3N4, Al2O3, AlN, and Y2O3. The functionally graded SiAlON has a hardness that gradually increases from the center of the bulk material to the surface but its fracture toughness decreases from the center to the surface. However, Bulic et al. do not disclose Yb2O3 nor any of the claimed reinforcement additives. Thus, the reference does not disclose or render obvious the claimed SiAlON of either claim 1.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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