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:
(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 1-5 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 applicant regards as the invention.
Claim 1 recites greater than 0% and 0.1% or less. This limitation is confusing since it can have multiple interpretations. It can be interpreted as greater than 0% and greater than 0.1% or less (i.e. greater than a percentage in a range between 0 and 0.1). Or, it can be interpreted as greater than 0% and less than or equal to 0.1%. For purposes of examination the latter interpretation will be used. If this is correct, the examiner recommends amending the limitation to recite: greater than 0% and less than or equal to 0.1%.
Claim 4 recites a thickness direction in each of lines 7 and 9. It is unclear if this is referring to the thickness direction introduced in claim 1, or is introducing other thickness directions.
Claims 2-3 and 5 are rejected for depending from claim 1.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2019/0160546 (“Misumi”).
Regarding claim 1, Misumi teaches a coated tool (¶ [0001]) comprising: a base body (10) (fig. 1, ¶ [0044]-[0046]), and a coating layer (20) located on the base body, wherein the coating layer comprises crystals having a cubic structure (¶ [0058]), the coating layer has a striped structure in cross-sectional observation by a transmission electron microscope (fig. 1, ¶ [0062], wherein, given the thickness of the layers 3/4, the striped structure formed by the alternate layers in a thickness direction will be noticeable by a transmission electron microscope), the striped structure has two layers (1/2) alternately located in a thickness direction (fig. 1, ¶ [0060]-[0061]), the two layers contain Si and at least one metal element (¶ [0066]-[0067], see also No. 6 in Table 1 on page 8), are different from each other in terms of a content of the metal element (see also No. 6 in Table 1 on page 8 wherein content metal elements Ti and Al are different), and contain crystals having the cubic structure, respectively (¶ [0055] & [0058]).
Claim 1 also recites 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 0.1% or less. 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 Misumi and Applicant’s invention teach producing coating layers via a physical vapor deposition process such as an ion plating method or sputter method (see ¶ [0101]-[0102] of Misumi; see ¶ [0045] & [0065] of Applicant’s originally filed specification), wherein the coating layers have a cubic crystal structure and are formed from Si, N, and at least one of Ti and Al. 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, i.e. less than 5 atom % (see Table 1 on page 8 of Misumi, specifically example 6; see ¶ [0033]-[0041], [0061] & [0095]-[0096] of Applicant’s originally filed specification). Given the substantial similarity of the structure of the coating, the differences in structure between the two alternating layers, 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 Misumi 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).
Regarding claim 3, Misumi further teaches the metal element is Ti (see ¶ [0066]-[0067] & Table 1 on page 8).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Misumi in view of USPGPub No. 2020/0189007 (“He”).
Claim 5 recites a cutting tool comprising: a rod-like holder comprising a pocket at an end portion thereof; and the coated tool according to claim 1 located in the pocket. As detailed in the 102 rejection to claim 1, above, Misumi teaches the coated tool according to claim 1. While Misumi fails to explicitly teach a rod-like holder comprising a pocket at an end portion thereof; and the cutting tool located in the pocket, this would be obvious in view of He.
He is also directed to a coated tool for a cutting tool (¶ [0002]), wherein the coated tool comprises a base 9 having a coating layer comprising a plurality of alternating layers 13 & 15 (figs. 1-3, ¶ [0022]-[0024]). He teaches the coated tool being attached to a pocket of a cutting tool having a rod-like holder 105 with the pocket 103 at an end portion (fig. 8, ¶ [0081]-[0083]).
In this case, each of Misumi and He are directed to a coated tool for a cutting tool, wherein the coated tool comprises a base having a coating layer comprising a plurality of alternating layers. While Misumi is silent as to the shape/structure of the cutting tool, He teaches such an insert can be used with the cutting tool described above. Thus, it would be obvious to modify Misumi so that the coated tool is attached to a pocket of a cutting tool having a rod-like holder—with the pocket at an end portion of the holder.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2018/0281078 (“Hirano”) in view of Misumi.
Regarding claim 1, Hirano teaches a coated tool (para. [0001]) comprising: a base body (1) (fig. 1, ¶ [0038]), and a coating layer (6) located on the base body, the coating layer has a striped structure in cross-sectional observation by a transmission electron microscope, the striped structure has two layers (3 & 4) alternately located in a thickness direction (fig. 1, ¶ [0038] & [0041], wherein, given the thickness of the layers 3/4, the striped structure formed by the alternate layers in a thickness direction will be noticeable by a transmission electron microscope), the two layers contain Si and at least one metal element, are different from each other in terms of a content of the metal element, respectively (¶ [0036]-[0037], see also Table 1 on page 8).
Hirano fails to explicitly teach the coating layer comprises crystals having a cubic structure, wherein each of the two layers contain crystals having the cubic structure. However, this would have been obvious in view of Misumi.
As detailed in the 102 rejection, above, Misumi is also directed to a similar coated cutting tool having a base with alternating coating layers, wherein each of the alternating layers comprises Si and metal elements TI and Al, and wherein each layer has a small difference in the atom % of the metal elements. Misumi teaches that the coating layers are desirably formed with a cubic crystal structure since cubic crystals result in a tool having a high hardness and longer life (¶ [0058]).
In this case, each of Hirano and Misumi teach similar coated cutting tool having a base with alternating coating layers, wherein each of the alternating layers comprises Si and at least one of the metal elements Ti and Al, and wherein each layer has a small difference in the atom % of the metal elements. While Hirano is silent as to the crystal structure of the coating layers, Misumi teaches that cubic crystals result in a coated cutting tool having a high hardness and longer life. Thus, in order to provide a coated cutting tool with a high hardness and longer life, it would be obvious to modify Hirano so that the alternating layers each comprise crystals having a cubic structure. There would be a reasonable expectation of creating the coating layers of Hirano with a cubic crystal structure since the coating layers of each of Hirano and Misumi are similar in structure (i.e. both comprise Si and metal elements such as TI and Al) and are formed via a physical vapor deposition process such as an ion plating method or sputter method (see ¶ [0048] of Hirano; see ¶ [0101]-[0102] of Misumi).
Claim 1 also recites 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 0.1% or less. 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 Hirano and Applicant’s invention teach producing coating layers via a physical vapor deposition process such as an ion plating method or sputter method (see ¶ [0048] of Hirano; see ¶ [0045] & [0065] of Applicant’s originally filed specification), wherein the coating layers have a cubic crystal structure and are formed from Si, N, and at least one of Ti, Cr, and Al. 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, i.e. less than 5 atom % (see ¶ [0036] & [0037] of Hirano; see ¶ [0033]-[0041], [0061] & [0095]-[0096] of Applicant’s originally filed specification). Given the substantial similarity of the structure of the coating, the differences in structure between the two alternating layers, 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 Hirano et al. 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).
Regarding claim 2, Hirano further teaches the metal element is Al and Cr (¶ [0037]).
Regarding claim 3, Hirano further teaches the metal element is Ti (see ¶ [0036], [0037] & Table 1 on page 8).
Claim 4 recites the coating layer comprises a first coating layer located on the base body and a second coating layer located on the first coating layer, each of the first coating layer and the second coating layer has a striped structure in cross- sectional observation by a transmission electron microscope, the striped structure of the first coating layer comprises a first layer and a second layer alternately located in a thickness direction, the striped structure of the second coating layer comprises a third layer and a fourth layer alternately located in a thickness direction, the first layer and the second layer each comprise Al, Cr, Si, and N, and the third layer and the fourth layer each comprise Ti, Si, and N. Hirano teaches repeating layers 3 & 4 hundreds of times (see Table 1 on page 8; see also ¶ [0041]-[0042]). Thus, when interpreting a first coating layer as a single repeat of layers 3 & 4, i.e. the first two layers above/on the base body 1 via lower layer 2, and the second coating layer as another repeat of layers 3 & 4 located above and on the first coating layer, this limitation will be met. Specifically, the first coating layer comprises a first layer 3 and second layer 4 that each comprise Al, Cr, Si, and N (see ¶ [0037]), and the second coating layer comprises a third layer (i.e. a repeat of layer 3) and a fourth layer (i.e. a repeat of layer 4) that each comprise Ti, Si, and N (see ¶ [0037]). The examiner also notes that the first coating layer can be interpreted as the first 5 repeats of layers 3 & 4, while the second coating layer can be interpreted as the next 5 repeats of layers 3 & 4. In addition, given the thickness of the layers 3/4, the striped structure formed by the alternate layers in a thickness direction will be noticeable by a transmission electron microscope.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hirano in view of Misumi and USPGPub No. 20200189007 (“He”).
Claim 5 recites a cutting tool comprising: a rod-like holder comprising a pocket at an end portion thereof; and the coated tool according to claim 1 located in the pocket. As detailed in the rejection to claim 1, above, Hirano in view of Misumi teach the coated tool according to claim 1. While Hirano fails to explicitly teach a rod-like holder comprising a pocket at an end portion thereof; and the cutting tool located in the pocket, this would be obvious in view of He.
He is also directed to a coated tool for a cutting tool (¶ [0002]), wherein the coated tool comprises a base 9 having a coating layer comprising a plurality of alternating layers 13 & 15 (figs. 1-3, ¶ [0022]-[0024]). He teaches the coated tool being attached to a pocket of a cutting tool having a rod-like holder 105 with the pocket 103 at an end portion (fig. 8, ¶ [0081]-[0083]).
In this case, each of Hirano et al. and He are directed to a coated tool for a cutting tool, wherein the coated tool comprises a base having a coating layer comprising a plurality of alternating layers. While Hirano is silent as to the shape/structure of the cutting tool, He teaches such an insert can be used with the cutting tool described above. Thus, it would be obvious to modify Hirano et al. so that the coated tool is attached to a pocket of a cutting tool having a rod-like holder—with the pocket at an end portion of the holder.
Conclusion
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.
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/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.”