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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 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 a 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. This is patentably indistinct of claim 1 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.
The claims of the ‘971 patent do not expressly recited 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 1 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 1 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 7 recites a thickness of B1 overlapping claim 2 of the ‘971 patent. 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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 12-15 of copending Application No. 18/563,259 (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 and a 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. This is patentably indistinct of claim 1 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.
The claims of the ‘259 application do not expressly recited 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 1 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 7 recites a thickness of B1 overlapping claim 3 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Instant claim 1 recites “the bonding layer” in line 3 of the claim, “the {0001}…with the normal force” in lines 4-5 of the claim (emphasis added). There is insufficient antecedent bases for these limitations. The issue at line 3 may be overcome by positively reciting a bonding layer. The issue at lines 4-5 may be overcome by amending to “a” for the objected to terms. Claims 2-14 are included in this rejection as they depend upon a rejected claim.
Claim 2 recites “includes… a layer of α-Al2O3…” and it is unclear if this is the same alumina layer recited in claim 1 or a further layer. The claim also recites “the peak” and “the reflection” and these phrases lack antecedent bases. Therefore the public is not appropriately appraised of the scope of the claim.
Claim 6 recites “the portion B1” in line 2 of the claim and “the Ti(C,N) layer” in lines 2 and 4 of the claim and these phrases lack antecedent bases. This may be overcome by amending to depend upon claim 2.
Claim 7 recites “the portion B1” in line 2 of the claim and “the Ti(C,N) layer” in line 2 of the claim and these phrases lack antecedent bases. This may be overcome by amending to depend upon claim 2.
Claim 8 recites “the Ti(C,N) layer” in line 2 of the claim and “the TC(hkl)” in line 3 of the claim and these phrases lack antecedent bases. This may be overcome by amending to positively recite a Ti(C,N) layer and “a TC(hkl).
Claim 9 recites “the grain size D422 of Ti(C,N)” and this phrase lacks antecedent basis. This may be overcome by amending to depend upon claim 2.
Claim 10 recites “the Ti(C,N) layer” and this phrase lack antecedent basis. This may be overcome by amending to depend upon claim 2.
Claims 11-12 recite “the bonding layer” and no bonding layer is positively recited in claim 1 so therefore this lacks antecedent basis. This may be overcome by amending claim 1 to positively recite a bonding layer.
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 1-14 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 (abstract) including examples of cemented carbide substrates (Paragraph 31) coated with a first TiN layer and then a MTCVD TiCN layer (Paragraph 32). This is subsequently coated with a bonding layer (Paragraph 33) and then with an α-Al2O3 layer (Paragraph 34). Lindahl does not expressly teach the claimed portion O1 of the α-Al2O3 layer exhibiting the claimed Schmid factor distribution.
However, Lindahl teaches the 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 α-Al2O3 and the second step uses 1.2-2.3 vol.% AlCl3, 4.5-4.7 vol.% CO2, 2.8-4.2 vol% HCl, 0.34-0.58 vol.% H2S, and balance H2 giving a thickness of about 5 µm (Paragraphs 34-38 and Table 3). These conditions are substantially identical to those disclosed by applicant as forming the claimed α-alumina layer (specification p.15, 1st paragraph). As such, one would reasonably expect the α-alumina layer of Lindahl to possess the claimed Schmid factor distribution 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 coated cutting tool taught by Lindahl is considered to anticipate and/or render obvious the claimed α-alumina coated cutting tool.
Considering claims 2 and 9, Lindahl does not expressly teach the claimed D422. 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 p.12 line 22 – p.13 line 3 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 2112.02.
Considering claim 3, Lindahl teaches examples of the α-alumina layer having a TC(00 12) of 7.6-7.7 (Table 4). See MPEP 2131.03 and 2144.05.
Considering claim 4, Lindahl teaches where the (00 12) of the α-alumina layer is ≥7.2 and ≥7.5 and is calculated using hkl reflections including the (110) reflection (Paragraph 7) and as the TC(00 12) 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 claim 5, Lindahl teaches where the thickness of the α-alumina layer is 2-20 µm (Paragraph 11). See MPEP 2144.05.
Considering claims 6-7, Lindahl is silent regarding the portion B1 and <211> orientation and thickness thereof. 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 features are expected to be present, absent an objective showing. See MPEP 21112.
Considering claim 8, 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 10, 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 11, Lindahl teaches where the bonding layer is a titanium carboxide and carboxynitride (Paragraph 13).
Considering claim 12, 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 13, Lindahl teaches where the thickness of the Ti(C,N) layer is 4-20 µm (Paragraph 12), the thickness of the bonding layer is 0.5-2 µm (Paragraph 13), and where the thickness of the α-alumina layer is 2-20 µm (Paragraph 11) resulting in an overall coating thickness of 6.5-42 µm. See MPEP 2144.05.
Considering claim 14, Lindahl teaches where the substrate is 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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 about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. 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.
SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
Prosecution Insights