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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-9 of copending Application No. 18/574744 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a coated tool of a base body and cubic crystal coating of at least one element and Al, Si, and at least one of C and N and intensity in a positive pole figure and a I1max between 0-90° of a (111) plane of the cubic crystal and an angle region Θ1F 85% or greater of I1max occupies 90% or more in a region of 30-90°. This is patentably indistinct of claim 4 of the ‘744 application which recites a coated tool with base body and coating layer of cubic crystal of at least one element and Al, Si, and at least one of C and N with a (200) plane and intensity in a positive pole figure and a I1max between 0-90° of a (111) plane of the cubic crystal and an angle region Θ1F 85% or greater of I1max occupies 90% or more in a region of 30-90°. The instant claims and those of the ‘744 application recite overlapping (111) plane features with ranges and the courts have held that where claimed ranges overlap or lie inside a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 2 recites (111) features overlapping claim 5 of the ‘744 application. Instant claim 3 recites an inflection point overlapping claim 6 of the ‘744 application. Instant claim 4 recites a I12min overlapping claim 7 of the ‘306 application. Instant claim 5 recites an I1max overlapping claim 8 of the ‘744 application. Instant claim 6 recites a cutting tool holder overlapping claim 9 of the ‘744 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 4 and 6 are rejected under 35 U.S.C. 112(b) 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 4 recites “the I12min is 5% or greater and 20% or less of the I1max” the phrase “the I12min” lacks antecedent basis. This may be overcome by amending to depend upon claim 2.
Claim 6 recites a “rod-like” holder and the phrase “rod-like” where the term “-like” renders the claim indefinite as this is an approximate term and the public is not properly notified as to the metes and bounds of the claim. See MPEP 2173.05(III).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (WO2019146710 – cited by applicant- using US 2021/0138557 as an English language equivalent).
Considering claim 1, He teaches a coated cutting tool (abstract). The tool comprises a base member and the coating includes a cubic crystal from one or more of Groups 4-6 elements, Al, Si, etc. and one or more of C and N where the coating has first and second peaks indicated in the α axis of a pole figure regarding the (111) plane of the cubic crystal (Paragraph 4). An example of this is disclosed in Fig.4 (reproduced below) of where the maximum intensity peak (e.g. I1max) is about 60° with an intensity of about 34,000 based on the scale (Paragraphs 8 and 29). In the area bounded from 30-90° the portion with an intensity of 85% or more of the maximum intensity (e.g. Θ1F; approximately 28,900) is the majority of the area bounded from 30-90° based on the scale provided in Fig.4.
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While not expressly teaching a singular example of the claimed coated tool this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of He as this is considered a combination of a cutting tool substrate with a coating having cubic crystal of conventionally known materials and a (111) plane known to afford a balance between hardness and peeling load (Paragraph 35) and one would have had a reasonable expectation of success. Further, the maximum intensity and region occupying 85% of the maximum intensity overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, in addition to the disclosure in Fig.4 above, He teaches in Fig.6 (reproduced below) a maximum peak around 30° and a minimum in a region to the higher angle side (e.g. I11min) around 45° where the difference between the two is less than that of the maximum and the minimum on the lower angle side (e.g. I12min) where minimum in a region to the higher angle side (e.g. I11min) is approximately 85% of the maximum. See MPEP 2144.05.
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Considering claim 3, Fig.6 above of He has an inflection point at about 47°.
Considering claim 5, teaches where the first peak of the (111) plane may be in a range of 25-40° and the second peak may be in a range of 55-70° (Paragraph 39) and the Figures above depict where either may be the maximum and this overlaps the claimed range. See MPEP 2144.05.
Considering claim 6, He teaches where the cutting tool comprises a holder with a bar-shaped body (e.g. rod-like) with a pocket at the end portion where the coated tool is located in the pocket (Paragraph 80).
Allowable Subject Matter
Claim 4 may be placed in condition for allowance if a terminal disclaimer were filed over copending 18/574,744 and the 35 USC 112(b) rejection were overcome as outlined above.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of He as outlined above. He differ from the instant claims in that the minimum on the lower angle side of the maximum is ~2% of the maximum peak in either of Figs. 4 or 6 and there is no teaching to have the minimum in a range of 5-20% of the maximum as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shibata (US 2012/0128971) and Murakami (US 11,400,520) teach cutting tools similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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