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 1-6 and 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-8 and 10-13 of U.S. Patent No. 12,599,971. 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 and an α-alumina layer with a portion O1 within 1 µm from the bonding layer which exhibits Schmid factors for the {0001}<11-20> slip system having >90% of an analyzed area being between 0.4-0.5 and portion B1 with grain size and thickness. This is patentably indistinct of claim 2 of the ‘971 patent which recites a cutting tool of a substrate including a Ti(C,N) layer, bonding layer, and Al2O3 layer where the Ti(C,N) layer has a thickness of 3-25 µm being composed of columnar grains with an average size D422 of 25-50 nm as measured and a portion B1 having an average grain size larger than D422 of 140-300 nm within 0.5 µm of the bonding layer and thickness.
The claims of the ‘971 patent do not expressly recite the claimed Schmid factor. However, the instant specification states where the α-alumina layer is deposited at 1000 °C and 55 mbar in two steps where the first step uses 1.2 vol.% AlCl3, 4.7 vol.% CO2, 1.8 vol% HCl and balance H2 giving a thickness of about 0.1 µm and the second step uses 1.16 vol.% AlCl3, 4.65 vol.% CO2, 2.91 vol% HCl, 0.58 vol.% H2S, and balance H2 giving a thickness of about 5 µm (Specification p.15, 1st paragraph). This method is substantially identical to that which is disclosed in the ‘971 patent (Column 9 lines 16-23). As such, one would reasonably expect the α-alumina layer of the ‘971 patent to possess the claimed Schmid factor as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02. As such, the instant claims and those of the ‘971 patent are obvious in view of one another.
Instant claim 2 recites D422 and B1 portion sizes overlapping claim 2 of the ‘971 patent. See MPEP 2144.05. Instant claim 3 recites a TC(0 0 12) range overlapping claim 7 of the ‘971 patent. Instant claim 4 recites a TC(110) range overlapping claim 8 of the ‘971 patent. Instant claim 5 recites an average thickness overlapping claim 6 of the ‘971 patent. Instant claim 6 recites a Kikuchi Diffraction expected to overlap with claim 2 of the ‘971 patent per applicant’s disclosed method of formation on pp. 13-14 of the originally filed specification being substantially identical to that of the ‘971 patent (Tables 1-3). Instant claim 8 recites a TC(422) overlapping claim 5 of the ‘971 patent. Instant claim 9 recites a TC(422) grain size overlapping claim 4 of the ‘971 patent. Instant claim 10 recites a thickness overlapping claim 10 of the ‘971 patent. Instant claim 11 recites bonding layer materials overlapping claim 3 of the ‘971 patent. Instant claim 12 recites a bonding layer thickness overlapping claim 11 of the ‘971 patent. Instant claim 13 recites an average thickness overlapping claim 12 of the ‘971 patent. Instant claim 14 recites substrate materials overlapping claim 13 of the ‘971 patent.
Claims 1-6 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-9 and 12-15 of copending Application No. 18/563,259 (reference application). Note that the ‘259 application has a notice of allowance in the file wrapper and the issue fee has been paid, but the application has not issued as a patent as of the writing of this Office action. 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 and an α-alumina layer with a portion O1 within 1 µm from the bonding layer which exhibits Schmid factors for the {0001}<11-20> slip system having >90% of an analyzed area being between 0.4-0.5 and portion B1 with grain size and thickness. This is patentably indistinct of claim 3 of the ‘259 application which recites a cutting tool of a substrate including a Ti(C,N) layer, bonding layer, and Al2O3 layer where the Ti(C,N) layer has a thickness of 3-25 µm being composed of columnar grains with an average size D422 of 25-50 nm as measured and a portion B1 having an average grain size larger than D422 of 130-300 nm and thickness of 0.5-1.5 µm.
The claims of the ‘259 application do not expressly recite the claimed Schmid factor. However, the instant specification states where the α-alumina layer is deposited at 1000 °C and 55 mbar in two steps where the first step uses 1.2 vol.% AlCl3, 4.7 vol.% CO2, 1.8 vol% HCl and balance H2 giving a thickness of about 0.1 µm and the second step uses 1.16 vol.% AlCl3, 4.65 vol.% CO2, 2.91 vol% HCl, 0.58 vol.% H2S, and balance H2 giving a thickness of about 5 µm (Specification p.15, 1st paragraph). This method is substantially identical to that which is disclosed in the ‘259 application (specification p.15, 1st paragraph). As such, one would reasonably expect the α-alumina layer of the ‘259 application to possess the claimed Schmid factor as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02. As such, the instant claims and those of the ‘259 application are obvious in view of one another.
Instant claim 2 recites D422 and B1 portion sizes overlapping claim 3 of the ‘259 application. See MPEP 2144.05. Instant claim 3 recites a TC(0 0 12) range overlapping claim 8 of the ‘259 application. Instant claim 4 recites a TC(110) range overlapping claim 9 of the ‘259 application. Instant claim 5 recites an average thickness overlapping claim 7 of the ‘259 application. Instant claim 6 recites a Kikuchi Diffraction overlapping claim 2 of the ‘259 application. Instant claim 8 recites a TC(422) overlapping claim 6 of the ‘259 application. Instant claim 9 recites a TC(422) grain size overlapping claim 5 of the ‘259 application. Instant claim 10 recites a thickness overlapping claim 12 of the ‘259 application. Instant claim 11 recites bonding layer materials overlapping claim 4 of the ‘259 application. Instant claim 12 recites a bonding layer thickness overlapping claim 13 of the ‘259 application. Instant claim 13 recites an average thickness overlapping claim 14 of the ‘259 application. Instant claim 14 recites substrate materials overlapping claim 15 of the ‘259 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Terminal Disclaimer
The terminal disclaimer filed on 14 September 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent Application 18/563,259 has been reviewed and is NOT accepted.
The filing date of 18/563,259 is incorrect. It should read November 21, 2023 rather than November 22, 2023.
The terminal disclaimer filed on 14 September 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Number 12,599,971 has been reviewed and is NOT accepted.
The first line of “In re Application of” has been left blank and the “Application No” line lists the inventor rather than the instant application number.
For further details, please see the mailing of 23 September 2026.
Allowable Subject Matter
Claims 1-6 and 8-14 may be placed in condition for allowance if terminal disclaimers over copending 18/563,259 and US 12,599,971 were filed.
Response to Arguments
Applicant’s arguments, see remarks p.6, 3rd paragraph, filed 14 September 2026, with respect to 35 USC 112(b) rejections of claims 1-14 have been fully considered and are persuasive. The rejection of claims 1-14 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks p.7 – p.8, 3rd paragraph, filed 14 September 2026, with respect to 35 USC 102/103 rejections of claims 1-14 in view of Lindahl (US 2016/0175940) have been fully considered and are persuasive. The rejection of claims 1-14 has been withdrawn. Applicant persuasively points to Examples A-B of the originally filed specification and conditions set forth on p.12 line 25 – p.13 line 3 and in Tables 1-2 that the conditions necessary to form the portion B1 are not inherent to the disclosure of Lindahl as Lindahl does not adequately teach process steps X-Y and if these conditions are not followed, portion B1 does not form as outlined in instant Table 4. As such, the prior rejection is withdrawn.
Applicant's arguments filed 14 September 2026 regarding Double Patenting Rejections of claims 1-14 have been fully considered but they are not persuasive. Applicant states the filing of the terminal disclaimers overcomes the rejections made over 18/563,259 and US 12,599,971 (remarks p.6, 2nd paragraph). As outlined above and in the mailing on 23 September 2026, the filed terminal disclaimers are deficient and therefore the prior rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
