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 Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Standke et al., U.S. Patent Application Publication No. 2008/0187673 for the reasons outlined previously.
Applicant has alleged that the Examiner’s holding of the claimed composition as “at once envisaged” was improper but the Examiner respectfully disagrees. Standke at paragraphs [0033] and [0041] recite the most-preferred embodiments of the alkoxysilane and organoalkoxysiloxane components referenced both in the abstract, and also in claim 1. These are summarized as follows:
TrialkoxySilane
Organoalkoxy(poly)siloxane
n-propyltri(m)ethoxysilane
n-propyl(m)ethoxysiloxane
n-butyltri(m)ethoxysilane
n-butyl(m)ethoxysiloxane
i-butyltri(m)ethoxysilane
i-butyl(m)ethoxysiloxane
n-octyltri(m)ethoxysilane
n-octyl(m)ethoxysiloxane
i-octyltri(m)ethoxysilane
i-octyl(m)ethoxysiloxane
Vinyltri(m)ethoxysilane
vinyl(m)ethoxysiloxane
There are six total unique trialkoxysilanes and alkoxysiloxanes, unique in terms of the non-hydrolyzable alkyl group attached. It is the Examiner’s position that any one of the above-named trialkoxysilanes is suitably used in combination with any one of the above-named alkoxysiloxanes…. any of the 36 possible combinations being at once envisaged. Moreover, whereas the Examiner appreciates that Standke embraces compositions that contain the alkoxysilane compound alone, the organoalkoxysiloxane alone, and combinations of these, paragraphs [0034-0035] both point a skilled practitioner of that invention in the direction of using both together with the stated benefits being an increase in the flash point and boiling point of the discontinuous oil phase and also enhanced stability of the emulsion when the organoalkoxysiloxane is included as evidenced by the smaller droplet sizes achievable when it is present.
The Examiner infers from Applicants remarks that a holding of a combination as “at once envisaged” is inapplicable since arriving at the anticipatory combination(s) entails making a selection of a species from a first genus and a species from a second genus. Rather, they appear to intimate that the “at once envisaged” standard is only appropriately invoked where a species is being chosen from a (single) sufficiently limited genus. The Examiner disagrees and invites Applicant to review the summary of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) cited in MPEP 2131.02 under the heading, III. A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE.
In an inter partes reexamination before the Patent Trial and Appeal Board (PTAB) that preceded the US CAFC ruling, Appellee proposed that the Examiner should have included a finding of anticipation of a claim that disclosed:
1. A cutting tool, comprising:
a cemented carbide substrate, wherein the substrate comprises hard particles and a binder, and
the binder comprises ruthenium; and
at least one physical vapor deposition coating on at least a portion of the substrate.
citing to U.S. Patent # 6,554,548 which included the following to claims:
A coated cutting insert comprising:
a rake face and a flank face, a cutting edge
at the juncture of the rake face and the flank face;
the cutting insert having a hard refractory
coating and a substrate wherein the coating
is adherently bonded to the substrate;
the substrate comprising a tungsten carbide-based
material comprising a bulk composition of at least
about 70 weight percent tungsten and carbon, between
about 3 weight percent and about 12 weight percent
cobalt, and at least 0.09 weight percent chromium;
the cobalt and the chromium forming a binder alloy:
wherein the binder alloy content being enriched in a
surface zone of binder alloy enrichment beginning near
and extending inwardly from a peripheral surface of the
substrate; and
wherein the bulk composition of the substrate further
comprises tantalum in an amount up to about 10 weight percent,
niobium in an amount up to about 6 weight percent, and
titanium in an amount up to about 10 weight percent.
5. The coated cutting insert of claim 1 wherein the binder alloy further includes
one or more of tungsten, iron, nickel, ruthenium, and rhenium.
The Board had noted that, among the five claimed metals that could additionally be formulated into the binder alloy was ruthenium but, at the same time, it was conceded that the coating was not indicated as having been introduced by a physical vapor deposition, or PVD, technique in either of prior art claims 1 or 5. However, elsewhere in Grab, the following was stated about the different suitable means of introducing a coating layer:
“Generally speaking, one or more of the coating layers of the coating schemes are applied by chem ical vapor deposition (CVD) and moderate temperature chemical vapor deposition (MTCVD). However, applicants also contemplate that one or more layers of a coating scheme may be applied by physical vapor deposition (PVD).”
The Board held that the combination of five metals to be used (in addition to cobalt and chromium in the coating layer) with three distinct coating approaches “leads to only fifteen possibilities” which constitutes “a sufficiently definite and limited class so that each member of the class was anticipated”.
The CAFC affirmed the PTAB decision having identified no errors in their reasoning.
The Examiner believes this to be a very salient case because it disproves Applicants’ assertion that the “at once envisaged” standard is improperly applied. Indeed, in holding the Kennemetal claims as anticipated by the teachings of Grab, the Board did just as the Examiner has done here having chosen a species from two separate genera to rationalize a holding of anticipation. In fact, the Examiner would argue that the current rejection is even stronger insofar as a finding of anticipation in the case synopsized infra required the selection of one metal from one list/genus of 5 and one coating method from one list/genus of 3 so that the anticipatory combination represented one among 15 possibilities. By contrast, of the 36 possible combinations of a trialkoxysilane and an organoalkoxy(poly)siloxane, TWELVE of them, or fully 33% of the total, are anticipatory of the invention as claimed.
Of course, to the extent that the claims are properly rejected under 35 U.S.C. 102, the other considerations highlighted by Applicant as of no real consequence.
THIS ACTION IS MADE FINAL. 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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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October 5, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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