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 .
Response to Arguments
The 35 U.S.C. 112(b) rejections have been withdrawn except as noted herein:
A) Applicant alleges that a ‘pixel’ would have been understood to a person having ordinary skill in the art based on the original disclosure of the present application because the specification states (at [0057]) that EBSD divides a measurement region into rectangular regions, also known as pixels (see Remarks, p. 4). This argument is not persuasive. The specification does not describe how the measurement region is divided into rectangles. The specification does not describe what a rectangle is (i.e., what are the dimensions of this rectangle? Are the rectangles all the same size? Are they different? If so, how are the rectangles determined?). The use of ‘pixel’ in the claims remains indefinite.
B) Applicant alleges that the specification indicates what a ‘KAM value’ is, and what an “average of KAM values’ is (see Remarks, p. 5). It is agreed that the specification provides an explanation for these claim terms. However, the specification does not clearly define these terms, and the claims lack this explanation. The claim language remains indefinite.
The 35 U.S.C. 112(d) rejection is moot in view of Applicant’s amendments.
Applicant’s arguments, see Remarks, filed 9/2/2026, with respect to the 35 U.S.C. 103 rejection over Kubo have been fully considered and are persuasive in view of Applicant’s arguments and amendments. The rejection has been withdrawn.
Specification
The disclosure is objected to because of the following informalities: The specification contains language such as “a region from the surface of the base to a depth of 100-200 μm is a second region” (see abstract, Spec., [0007] & [0015]). Similar language appeared in the claims and was subject to a 112(b) rejection in the previous Office Action. Appropriate corrections are required.
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.
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.
Claims 1, 4-6 and 7-8 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: “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. Although the specification states “EBSD…was used to divide a measurement region into rectangular regions (pixels)” (see Spec., [0057]), this does not suffice for a definition and the disclosure is so vague that a person having ordinary skill in the art would not understand the metes and bounds of the statement. For instance, how is the measurement region divided into rectangular regions (e.g., is it a grid system or are rectangular regions arbitrarily designated over the measurement region?) What are the dimensions of the rectangular regions? Are the rectangular regions all the same size, or are they different? If they are different, how are the rectangles determines? For purposes of examination, this limitation has not been considered because the Office is unable to qualify how the pixels are designated within the context of the claims or the specification.
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°”. This limitation is indefinite. The claim does not clearly indicate what quantity or quality is measured by the “KAM value”, or how an “average value of KAM values” is taken when “KAM” already stands for “Kernal Average Misorientation” which measures the average local grain misorientation.
In the specification, a single ‘KAM value’ is considered to represent an average misorientation between pixels present in a crystal grain and adjacent pixels present not exceeding the crystal boundary (i.e., not exceeding a misorientation of 5° or more) ([0058]). The claim language does not limit the measuring of ‘KAM value’ in this way, and appears to specify the opposite. As for “average value of KAM values”, the specification appears to give two separate and distinct descriptions: “an average value of KAM values was determined as an average value of all pixels constituting an entire measurement area” and “arbitrary three eye sights in the first region were measured, and an average value thereof was evaluated” (see Spec., [0058]). Which description applies to the claimed “average value of KAM values”? For purposes of examination, any of the descriptions in the specification will be considered.
Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
Conclusion
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 XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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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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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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