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 and 3-7 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° and a I12min ratio to I1max. This is patentably indistinct of claims 4 and 5 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° and a I12min ratio to I1max. 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 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 claims 4-5 and 9 of the ‘744 application. Instant claim 7 recites a I12min ratio to I1max overlapping claims 4-5 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 the first paragraph 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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In the amendment filed 01 July 2026, claims 1 and 6 recite the I12min is 5% or greater and in the remarks filed the same date indicate support is found in Paragraph 48 of the originally filed specification. However, Paragraph 48 states “I12min may be 5% or greater and 20% or less of I1max” and this does not provide support for any and all values greater than 5% as claimed, but is limited to an upper bound of 20% of I1max. As such, the recitation of any and all values greater than 5% is considered new matter. Claim 7 is included in this rejection as it depends upon a rejected claim.
Allowable Subject Matter
Claim 4 may be placed in condition for allowance if a terminal disclaimer were filed over copending 18/574,744.
The following is a statement of reasons for the indication of allowable subject matter: Please see the reasons for allowance set forth in the Office action dated 01 April 2026.
Response to Arguments
Applicant's arguments filed 01 July 2026 have been fully considered but they are not persuasive. Applicant states that a terminal disclaimer over 18/574,744 has been filed (remarks pp.5-6). However, a review of the submission dated 01 July 2026 does not find said terminal disclaimer, no record of said disclaimer is found within the electronic acknowledgement receipt, and no fee for said terminal disclaimer appears either. Absent the filing of said terminal disclaimer, the prior double patenting rejection is maintained.
Applicant’s arguments, see remarks p.6, 1st section, filed 01 July 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 4 and 6 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks pp.7-8, filed 01 July 2026, with respect to 35 USC 103 have been fully considered and are persuasive. The rejection of claims 1-3 and 5-6 in view of He (WO2019146710 corresponding to US 2021/0138557; both references previously of record) has been withdrawn. Applicant has amended the claims to recite subject matter of the I12min being 5% or greater of I1max which is not disclosed by He.
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 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 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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