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 Objections
Claim 4 is objected to because of the following informalities: Claim 4 misspells “tatitanium” and is likely “a titanium”. Appropriate correction is required.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-14 of copending Application No. 18/563,571 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an Al2O3 layer, where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 130-300 nm. This is patentably indistinct of claim 2 of the ‘571 application which recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an α-Al2O3 layer including a portion O1 exhibiting a <001> within 15° ≥80%, where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 130-165 nm. The instant claims and those of the ‘571 application recite substantially identical cutting tools with overlapping thickness and grain sizes and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 2 recites a <211> content overlapping claim 6 of the ‘571 application. Instant claim 3 recites a thickness of B1 overlapping claim 7 of the ‘571 application. Instant claim 4 recites bonding layer materials overlapping claim 11 of the ‘571 application. Instant claim 5 recites a grain size overlapping claim 9 of the ‘571 application. Instant claim 6 recites a TC(422) overlapping claim 8 of the ‘571 application. Instant claim 7 recites an α-Al2O3 thickness overlapping claim 5 of the ‘571 application. Instant claim 8 recites TC(0012) overlapping claim 3 of the ‘571 application. Instant claim 9 recites a TC(110) overlapping claim 4 of the ‘571 application. Instant claim 10 recites a grain size overlapping claim 2 of the ‘571 application. Instant claim 11 recites an O1 portion overlapping claim 2 of the ‘571 application. Instant claims 12-14 recites thicknesses claims 10, 12, and 13 of the ‘571 application. Instant claim 15 recites materials overlapping claim 14 of the ‘571 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-14 of copending Application No. 18/563,612 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an Al2O3 layer, where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 130-300 nm. This is patentably indistinct of claim 2 of the ‘612 application which recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an α-Al2O3 layer where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 130-165 nm. The instant claims and those of the ‘612 application recite substantially identical cutting tools with overlapping thickness and grain sizes and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 2 recites a <211> content overlapping claim 6 of the ‘612 application. Instant claim 3 recites a thickness of B1 overlapping claim 7 of the ‘612 application. Instant claim 4 recites bonding layer materials overlapping claim 11 of the ‘612 application. Instant claim 5 recites a grain size overlapping claim 9 of the ‘612 application. Instant claim 6 recites a TC(422) overlapping claim 8 of the ‘612 application. Instant claim 7 recites an α-Al2O3 thickness overlapping claim 5 of the ‘612 application. Instant claim 8 recites TC(0012) overlapping claim 3 of the ‘612 application. Instant claim 9 recites a TC(110) overlapping claim 4 of the ‘612 application. Instant claim 10 recites a grain size overlapping claim 2 of the ‘612 application. Instant claims 12-14 recites thicknesses claims 10, 12, and 13 of the ‘612 application. Instant claim 15 recites materials overlapping claim 14 of the ‘612 application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-10, and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/563,474 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an Al2O3 layer, where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 130-300 nm. This is patentably indistinct of claim 1 of the ‘474 application which recites a cutting tool of a substrate coated with a Ti(C,N) layer with a thickness of 3-25 µm composed of columnar grains, a bonding layer, and an Al2O3 layer where the D422 average grain size of the Ti(C,N) layer of 25-50 nm according to Scherrer’s equation, and a portion B1 adjacent to the bonding layer having an average grain size D422 of 140-300 nm. The instant claims and those of the ‘474 application recite substantially identical cutting tools with overlapping thickness and grain sizes and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 3 recites a thickness of B1 overlapping claim 2 of the ‘474 application. Instant claim 4 recites bonding layer materials overlapping claim 3 of the ‘474 application. Instant claim 5 recites a grain size overlapping claim 4 of the ‘474 application. Instant claim 6 recites a TC(422) overlapping claim 5 of the ‘474 application. Instant claim 7 recites an α-Al2O3 thickness overlapping claim 6 of the ‘474 application. Instant claim 8 recites TC(0012) overlapping claim 7 of the ‘474 application. Instant claim 9 recites a TC(110) overlapping claim 8 of the ‘474 application. Instant claim 10 recites a grain size overlapping claim 9 of the ‘474 application. Instant claims 12-14 recites thicknesses claims 10-12 of the ‘474 application. Instant claim 15 recites materials overlapping claim 13 of the ‘474 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. While a notice of allowance is in the file wrapper of the ‘474 application, the application has not issued as of the writing of this Office action.
Claim Rejections - 35 USC § 102/103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lindahl et al. (US 2016/0175940).
Considering claim 1, Lindahl teaches a coated cutting tool for machining of metals (abstract). The cutting tool comprises a substrate coated with a MTCVD TiCN layer of columnar crystals and a thickness of 4-20 µm (Paragraph 12), a bonding layer of a HTCVD coating (Paragraph 13), and a textured α-Al2O3 layer (Paragraphs 6 and 11). Lindahl does not teach the claimed grain size D422 of the Ti(C,N) layer or of the B1 portion according to Scherrer’s equation.
However, Lindahl teaches where the inserts are coated with a first TiN-layer of about 0.4 µm thickness and a 7 µm thick TiCN layer with a pressure of 55 mbar, and conditions changing as follows: a H2 volume of 59→81.5%, a N2 volume of 7.8→37.6%, a HCl volume of 0→7.8%, a TiCl4 volume of 2.95→2.38%, and a CH3CN volume of 0.45→0.65% (Paragraph 32; Table 1). These conditions are substantially identical to those which applicant discloses on pp.12-13 and Table 1 of the originally filed specification including process steps X and Z.
As such, one would reasonably expect the coating of Lindahl to possess the claimed grain size D422 of the Ti(C,N) layer and of the B1 portion according to Scherrer’s equation as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112. As such, Lindahl is considered to anticipate and/or render obvious the instantly claimed cutting tool.
Considering claims 2-3, Lindahl does not teach the claimed <211> orientation or thickness of the B1 portion. However, as outlined above, Lindahl teaches a substantially identical coated cutting tool formed by a substantially identical manner as that which is claimed and disclosed and therefore these are expected to be present, absent an objective showing. See MPEP 2112.
Considering claim 4, Lindahl teaches where the bonding layer is TiCN (Paragraph 33).
Considering claim 5, Lindahl does not teach the claimed D422 grain size. However, as outlined above, Lindahl teaches a substantially identical coated cutting tool formed by a substantially identical manner as that which is claimed and disclosed and therefore this is expected to be present, absent an objective showing. See MPEP 2112.
Considering claim 6, Lindahl teaches where the TC(422) of the TiCN layer is ≥3 (Paragraph 15) overlapping that which is claimed. See MPEP 2131.03 and 2144.05.
Considering claim 7, Lindahl teaches where the thickness of the α-Al2O3 layer is 2-20 µm and preferably 2-10 µm (Paragraph 11). See MPEP 2131.03 and 2144.05.
Considering claim 8, Lindahl teaches where the TC(0012) of the α-Al2O3 layer is ≥7.2 and ≥7.5 (Paragraph 7). See MPEP 2131.03 and 2144.05.
Considering claim 9, Lindahl teaches where the TC(0012) of the α-Al2O3 layer is ≥7.2 and ≥7.5 and is calculated using hkl reflections including the (110) reflection (Paragraph 7) and as the TC(0012) is taught to have an open-ended value greater than 7.2, etc. this is considered to teach where the other reflections used in the calculation may be as minimal as possible (e.g. approaching zero) and therefore is considered to overlap the claimed TC(110). See MPEP 2144.05.
Considering claims 10-11, Lindahl does not teach the claimed B1 portion grain size or portion O1. However, as outlined above, Lindahl teaches a substantially identical coated cutting tool formed by a substantially identical manner as that which is claimed and disclosed and therefore these are expected to be present, absent an objective showing. See MPEP 2112.
Considering claim 12, Lindahl teaches where the thickness of the Ti(C,N) layer is 4-20 µm (Paragraph 12). See MPEP 2131.03 and 2144.05.
Considering claim 13, Lindahl teaches where the thickness of the bonding layer is 0.5-2 µm (Paragraph 13). See MPEP 2131.03 and 2144.05.
Considering claim 14, Lindahl teaches where the thickness of the Ti(C,N) layer is 4-20 µm (Paragraph 12), where the thickness of the bonding layer is 0.5-2 µm (Paragraph 13), and where the thickness of the α-Al2O3 layer is 2-20 µm (Paragraph 11) resulting in an overall coating thickness of 6.5-42 µm. See MPEP 2144.05.
Considering claim 15, Lindahl teaches where the substrate is a cemented carbide, cermet, or ceramic (Paragraph 16).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ruppi (US 6,221,469), Fukano et al. (US 2006/0222885), and Fukunaga et al. (US 2014/0017469) teach coated cutting tools demonstrating the level of ordinary skill in the art.
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