Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention
Claims 1 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 5 each state the coating layer has a first coating layer and a second coating layer alternately located in a thickness direction, wherein each of the first and second coating layers have two layers also alternately located in the thickness direction. While Applicant’s originally filed disclosure teaches each of the first and second coating layers have two layers alternately located in the thickness direction, Applicant’s originally filed disclosure does not teach the first and second coating layers also alternately located in the thickness direction (wherein “alternately” is interpreted in line with its standard meaning in the art, and also as used in Applicant’s originally filed disclosure, i.e. the layers are repeatedly positioned/stacked one after the other). Contrarily, Applicant’s originally filed disclosure teaches one first coating layer 23 and one second coating layer 24 on the first coating layer (see e.g. fig. 3 & ¶ [0019] of Applicant’s originally filed specification).
The following is a quotation of 35 U.S.C. 112:
(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.
Claim 6 is 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 applicant regards as the invention.
Claim 6 recites a composition of (TixSi100-x)/N. In light of Applicant’s originally filed disclosure it is unclear how the composition can be divided by N. For purposes of examination, this limitation will be interpreted as: (TixSi100-x)N. This is supported by Applicant’s figure 7 and ¶ [0051] & [0096] of Applicant’s originally filed specification.
Rejections under 35 USC 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2021/0001410 (“Takeshita”).
Regarding claim 6, Takeshita discloses a coated tool (¶ [0001]), comprising: a base body (12) (fig. 1, ¶ [0099] & [0101]), and a coating layer (11) located on the base body (fig. 1, ¶ [0099]), wherein the coating layer comprises crystals having a cubic structure (¶ [0074] & [0114]), the coating layer has a striped structure in cross-sectional observation by a transmission electron microscope (fig. 1, ¶ [0117]-[0118] & [0140]-[0141], wherein given the thicknesses of the layers the striped structure formed by the layers will be noticeable by a transmission electron microscope), the striped structure of the coating layer comprises two layers which have a composition of (TixSi100-x)N, are different from each other in terms of content x of Ti, and contain crystals having the cubic structure (¶ [0146], [0152] & [0159]; see also Table 3 on page 16).
Claim 6 also recites when a lattice constant of a crystal having the cubic structure in one layer of the two layers is referred to as a first lattice constant and a lattice constant of a crystal having the cubic structure in the other layer of the two layers is referred to as a second lattice constant, a difference between a magnitude of the first lattice constant and a magnitude of the second lattice constant is greater than 0%, and less than or equal to 0.1%. This is either inherent and/or one of skill in the art would reasonably infer this limitation to be met.
With respect to inherency, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
In this case, each of Takeshita and Applicant's invention teach producing coating layers via a physical vapor deposition process such as an ion plating method or sputter method (see ¶ [0077]-[0079] of Takeshita; see ¶ [0045] & [0065] of Applicant's originally filed specification), wherein the coating layers have a cubic crystal structure and have the composition (TixSi100-x)N. In addition, each of the two layers are formed from the same elements with a small difference in the ratio of the number of atoms, e.g. 5 atom % difference (see ¶ [0159] of Takeshita; see ¶ [0033]-[0041], [0061] & [0095]-[0096] of Applicant's originally filed specification). Given the substantial similarity of the structure of the coating and the method to apply the layers, the lattice constant limitation is inherent.
Assuming arguendo that the lattice constant limitation is not inherent, one of skill in the art would reasonably infer that Takeshita teaches the lattice constant limitation due to the structure of the two layers, the method of applying the two layers, and the minor structural differences between the two layers (see MPEP 2144.01). Takeshita also teaches that the crystal lattice can be continuous between the C and D layers due to the similarity of the layers (see ¶ [0160]).
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
In the alternative, claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshita in view of USPGPub No. 2018/0281078 (“Hirano”).
Regarding claim 6, as detailed in the 102 rejection above, Takeshita teaches all the limitations. Assuming arguendo that Takeshita fails to teach when a lattice constant of a crystal having the cubic structure in one layer of the two layers is referred to as a first lattice constant and a lattice constant of a crystal having the cubic structure in the other layer of the two layers is referred to as a second lattice constant, a difference between a magnitude of the first lattice constant and a magnitude of the second lattice constant is greater than 0%, and less than or equal to 0.1%, this would be obvious in view of Hirano.
Hirano is also directed to a coated cutting tool have a coating with two alternating layers, and wherein the two layers contain the same elements with different atom %’s, wherein the elements include Ti and Si (fig. fig. 1, ¶ [0001], [0036] & [0038]). The atom % difference between Ti and Si can be less than .05 (¶ [0033] & [0036]-[0037]; see also Tables 1-2 on page 8). This structure allows for the suppression of peeling-off of the layers since there is greater adhesion, therefore the fracture resistance of the coated cutting tool is improved (¶ [0034]).
In this case, each of Takeshita and Hirano are directed to a coated tool having a coating that includes two layers alternately stacked on each other, wherein the two layers comprise the same elements (both comprising Ti and Si) with a small difference in the atom % of each element. While Takeshita teaches the atom % difference is >= .05 (see ¶ [0159]), Hirano teaches that it is known and predictable for the atom % difference to be less than .05, and that this can improve fracture resistance and suppress peeling-off of the layers as detailed above. Thus, it would be obvious to modify Takeshita so that the atom % difference between Ti and Si in the two alternating layers is less than .05.
Given the above modification, the limitation at issue is either inherent and/or one of skill in the art would reasonably infer this limitation to be met.
With respect to inherency, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
In this case, each of Takeshita and Applicant's invention teach producing coating layers via a physical vapor deposition process such as an ion plating method or sputter method (see ¶ [0077]-[0079] of Takeshita; see ¶ [0045] & [0065] of Applicant's originally filed specification), wherein the coating layers have a cubic crystal structure and have the composition (TixSi100-x)N. In addition, each of the two layers are formed from the same elements with a small difference in the ratio of the number of atoms, e.g. less than 5 atom % difference. Given the substantial similarity of the structure of the coating and the method to apply the layers, the lattice constant limitation is inherent.
Assuming arguendo that the lattice constant limitation is not inherent, one of skill in the art would reasonably infer that Takeshita teaches the lattice constant limitation due to the structure of the two layers, the method of applying the two layers, and the minor structural differences between the two layers (see MPEP 2144.01). Takeshita also teaches that the crystal lattice can be continuous between the C and D layers due to the similarity of the layers (see ¶ [0160]).
Response to Arguments
Applicant's arguments filed July 16, 2026 (“the remarks”) have been fully considered. The examiner agrees that the previous prior art rejections no longer teach claims 1 and 5, thus the previous prior art rejections have been withdrawn.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
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