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 .
Election/Restrictions
Applicant's election with traverse of Group I claims 1-8 in the reply filed on 05/15/2026 is acknowledged, however, it looks like a typo, Group I is claims 1-13. The traversal is on the ground(s) that It is respectfully submitted that the subject matter of claims 1-9 are sufficiently related that a thorough search for the subject matter of any one group would necessarily encompass a search for the subject matter of the remaining group. Thus, it is respectfully submitted that the search and examination of the entire application could be performed without serious burden. MPEP §803 clearly states that "If the search and examination of an entire application can be made without serious burden, the Examiner must examine it on its merits, even though it includes claims to distinct or independent inventions" (emphasis added). This is not found persuasive because Applicants argue that there would not be undue burden to search both groups I and II. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I-II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraph 17 of the previous Office Action.
The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claim, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/15/2026.
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.
Claim(s) 1, 5-6, 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2013/0034712) in view of Kudo et al. (WO 2012/005275).
Regarding claims 1, 5-6, 9-13 Kudoh discloses coated cBN sintered body has excellent wear resistance, fracture resistance, adhesiveness between a substrate and a coating, and a tool life of which is elongated as compared with conventional cBN sintered bodies. The coated cBN sintered body has a cBN sintered body substrate and a coating coated on the surface thereof. The cBN sintered body includes 76 to 90% by volume of cBN, and 10 to 24% by volume of a binder phase and inevitable impurities (abstract).
The binder phase of the cBN sintered body of the present invention comprises at least one selected from a metal of Ti, Zr, Hf, V, Nb, Ta, Cr, Mo, W, Co, Ni or Al, a carbide, carbonitride, nitride, boronitride, boride, or oxide of these metals, and mutual solid solutions thereof. Specifically, there may be mentioned TiN, TiCN, TiC, TiB.sub.2, TiBN, TiAlN, Ti.sub.2AlN, MN, AlB.sub.2, Al.sub.2O.sub.3, ZrC, HfC, VC, NbC, TaC, Cr.sub.3C.sub.2, Mo.sub.2C, ZrN, HfN, VN, NbN, TaN, CrN, WC, WB, W.sub.2B, CoWB, W.sub.2Co.sub.21B.sub.6, Co.sub.3W.sub.3C, W, Co, Ni, etc. Among these, in cutting of a hardened steel, it is more preferably at least one of TiN, TiCN, TiC, MN, AlB.sub.2, Al.sub.2O.sub.3, TiB.sub.2, CoWB, W.sub.2Co.sub.21B.sub.6 and WC since the tool life is improved, and among them, when it is at least one of TiN, TiCN, TiC, MN, AlB.sub.2, Al.sub.2O.sub.3 and TiB.sub.2, it is further preferred since the tool life in cutting of a hardened steel is improved (para 0011). Based on the teaching from para 11, it would be obvious to one of ordinary skill in the art to select zirconium oxide and alumina as metal oxides and vanadium nitride and niobium nitride as metal nitrides as the binder phase.
With respect to the amount of 20-100 vol% of zirconium oxide and up to 80 vol% of alumina, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
With respect to the content of metal oxide and metal nitride in the binder phase of at least 10 vol%, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
However, Kudoh fails to disclose the sintered cubic BN body is polycrystalline.
Whereas, Kudo discloses coated polycrystalline cubic boron nitride tool has base of sintered cubic boron nitride compact and coating layer. The sintered cubic boron nitride compact consists of 73-84 volume% of cubic boron nitride and 16-27 volume% of binder phase and unavoidable impurities (abstract).
It would have been obvious to one ordinary skill in the art at the time the application was filed to form cBN of Kudoh as polycrystalline cBN as taught by Kudo motivated by the desire to have excellent defect resistance, abrasion resistance, and durability.
Regarding claims 11 and 13, Kudoh discloses each of the cBN sintered bodies of Samples Nos. 1 to 6 and 8 was cut into the predetermined shape by a wire electric discharge machine, and the cBN sintered body of Sample No. 7 by a laser processing machine, and brazed to a cemented carbide substrate with the CNGA shape, and subjected to grinding process to obtain each cutting tool having a shape of an ISO standard CNGA120408 cutting insert (para 0031) and the obtained mixed powders were subjected to heat treatment at 850.degree. C. to make it a phase with brittleness. The obtained phase with brittleness was finely pulverized by using a wet ball mill comprising WC-based cemented carbide balls, an organic solvent and a pot. To the finely pulverized powders having a phase with brittleness were added the fine particle cBN powders having an average particle size of 1.0 .mu.m, and the mixture was mixed by using a wet ball mill comprising WC-based cemented carbide balls, an organic solvent and a pot for 1 hour (para 0028).
Regarding claim 12, Kudoh discloses each of the cBN sintered bodies was cut into the predetermined shape by a wire electric discharge machine, and brazed to a cemented carbide substrate with the CNGA shape, and subjected to grinding process to obtain each cutting tool having a shape of an ISO standard CNGA120408 cutting insert. The cutting tool was coated with a (Al, Cr)N film having an average film thickness of 1.3 .mu.m by the PVD method to obtain a cutting tool comprising the coated cBN sintered body (para 0055).
Claim(s) 2-3, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2013/0034712) in view of Kudo et al. (WO 2012/005275) as applied to claim 1, further in view of Ishii et al. (WO 2020/017191).
Regarding claims 2-3, 7-8 Kudoh in view of Kudo fails to disclose that the binder phase further comprises metal oxynitride such as zirconium oxynitride.
Whereas, Ishii discloses a sintered body having excellent wear resistance, a powder capable of obtaining a sintered body having excellent wear resistance when used as a material of the sintered body, and It is intended to provide a manufacturing method (page 2). The binder material compound in the sintered body exists at the interface between adjacent powder derived materials and plays a role of a binder phase. Since the binder phase can firmly bind the powder derived materials to each other, the strength of the sintered body is improved, and the sintered body can have more excellent wear resistance. In addition, by including the binder phase in the sintered body, the sintered body can have properties due to the binder phase in addition to properties due to the properties of the powder-derived material (page 7). As the binder compound (oxynitride) composed of the second metal element, oxygen and nitrogen, for example, titanium oxynitride (TiON), zirconium oxynitride (ZrON) (page 8).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include zirconium oxynitride as taught by Ishii in the binder phase of Kudoh motivated by the desire to have improved strength and excellent wear resistance.
With respect to the vol% of metal nitride and metal oxynitride in the binder phase, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 2 and 4, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2013/0034712) in view of Kudo et al. (WO 2012/005275) as applied to claim 1, further in view of Uchiumi et al. (JP 2546709).
Regarding claims 2, 4, 7-8 Kudoh in view of Kudo fails to disclose that the binder phase further comprises metal oxynitride such as aluminum oxynitride.
Whereas, Uchiumi discloses elates to a cutting tool material typified by a drill, a milling tool, a turning tool, or the like, or a wear-resistant tool material typified by a slitter, a die, or the like. The present invention relates to a suitable high-strength cubic boron nitride-containing sintered body (abstract). Uchiumi discloses when the second binder phase contains at least one of aluminum oxide, aluminum nitride, and aluminum oxynitride, it exerts a remarkably excellent effect on both wear resistance and fracture resistance.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include aluminum oxynitride as taught by Uchiumi in the binder phase of Kudoh motivated by the desire to have excellent fracture resistance and excellent wear resistance.
With respect to the vol% of metal nitride and metal oxynitride in the binder phase, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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