CTNF 18/574,043 CTNF 85956 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: The specification contains language which also appears in the claims. This language is indefinite for the reasons discussed below . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 1-8 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. Claim 1 recites: “a region from the surface of the base to a depth of 100-200 μm is a second region”. This limitation is indefinite. The claim defines the second region as a region from the surface of the base to a depth of 100-200 μm. There are infinite number of possible second regions covering a depth of 100-200 μm. Is the claimed “second region” all of these possible second regions simultaneously? Is it an arbitrary “second region” selected from the pool of possible second regions? Or is it a region covered from a depth of 100 μm to a depth of 200 μm? For purposes of examination, the latter is presumed, which appears to be consistent with the specification as filed (see [0015]). Claim 1 recites: “under conditions that a distance between adjacent pixels (step size) is 0.1 μm and a misorientation between adjacent pixels of 5° or more is regarded as a grain boundary”. This limitation is indefinite. It is unknown what a “pixel” is in the context of the claimed coated tool, or what a “step size” is with respect to a pixel. The specification does not put forth a definition for “pixel”, and the ordinary meaning of “pixel” is a minute area of illumination on a display screen. The claimed coated tool does not have a display screen. For purposes of examination, this limitation has not been considered because it is irreconcilable with the claimed invention. Claim 1 recites: “a value obtained by measuring the WC particles with electron backscatter diffraction method…is a KAM value…an average of KAM values in the first region is less than 0.4°”. Claim 3 also recites “an average of the KAM values is less than 0.3°”. These limitations are indefinite. The claim does not indicate what quantity or quality is being measured by EBSD, and neither the claims nor the specification define what a “KAM value” is. For purposes of examination, it is presumed that “KAM value” is “Kernal Average Misorientation” which measures the average local grain misorientation. As such, it is unclear what an “average” of an average refers to, and this word has not been afforded patentable weight. Claims 1, 4, and 6 recite: “a carbon content ratio”. These limitations are indefinite. The claims do not indicate whether this ratio is a weight ratio or a molar ratio. For purposes of examination, both types of ratios have been considered. Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim. 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 recites “the first carbon content is less than 1.40 times the second carbon content. This range is broader than what is recited in claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2019/0010606) . Regarding claims 1-3 and 6, Kubo discloses a coated tool comprising a base member and a coating on the base member (¶ 9). The base member comprises WC particles (¶ 11). The coating layer includes a first layer in contact with the base member and contains Ti(C x N 1-x ), where x is between 0 and 1 inclusive (¶ 12). Kubo teaches a KAM value of WC particles in a region extending to a depth of 5 μm from the surface of the base member is 1° or less, preferably 0.8° or less, as measured by EBSD (¶ 13). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Kubo does not expressly teach a carbon content of a region from the surface of the substrate to a depth of 5 μm is greater than a carbon content of a region from a depth of 100 μm to a depth of 200 μm. Kubo teaches that controlling a change in carbon content in the base member reduces strain between the base member and the coating layer (¶ 16). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to find the optimal gradient of carbon content in the base member to obtain a coated tool having low strain as this would increase resistance to separation between the base member and the coating layer. Regarding claim 4, the coating in Kubo comprises Ti(C x N 1-x ), where x is between 0 and 1 inclusive (¶ 12), which includes x=1. Kubo also teaches the first layer includes Co diffused from the base layer at a ratio of 0.2-3% mass (¶ 23), which is less than the 6% mass Co in the base member (¶ 51). Accordingly, when x=1, the C content in the first layer is expected to be larger than the second carbon content by molar ratio, absent objective evidence to the contrary. See MPEP 2112. Regarding claims 7-8, the base member contains 6% by mass cobalt and the remainder of a refractory carbide (¶ 51). This corresponds to a carbon content within the claimed range . 07-21-aia AIA Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2019/0010606), as applied to claim 1, further in view of Tatsuoka et al. (WO 2017/073787) . Regarding claim 5, the limitations of claim 1 have been addressed above. Kubo teaches the thickness of the first layer is 6-15 μm (¶ 19), but does not teach or suggest the claimed orientation of crystal particles. Tatsuoka teaches a coated tool comprising a Ti(CN) coating with an orientation difference in the crystal grains at the interface between the coating and the substrate. It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to modify the coated tool of Kubo according to the teachings of Tatsuoka because having a difference in crystal orientation between the crystals at the interface between the coating and the substrate and the remainder of the coating contributes to improved hardness and toughness of the coated tool (p. 9, ¶ 1). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST. 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. /XIAOBEI WANG/Primary Examiner, Art Unit 1784 Application/Control Number: 18/574,043 Page 2 Art Unit: 1784 Application/Control Number: 18/574,043 Page 3 Art Unit: 1784 Application/Control Number: 18/574,043 Page 4 Art Unit: 1784 Application/Control Number: 18/574,043 Page 6 Art Unit: 1784 Application/Control Number: 18/574,043 Page 7 Art Unit: 1784
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