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 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/574306 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 4 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°. This is patentably indistinct of claim 1 of the ‘306 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 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°. Instant claim 4 and claim 1 of the ‘306 application recite overlapping (111) features and the courts have held that where claimed regions overlap or lie inside a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 5 recites (111) features overlapping claim 2 of the ‘306 application. Instant claim 6 recites an inflection point overlapping claim 3 of the ‘306 application. Instant claim 7 recites a I12min overlapping claim 4 of the ‘306 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 7 and 9 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 7 recites “the I12min” and this phrase lacks antecedent basis. This rejection may be overcome by amending the dependency to claim 5.
Claim 9 recites “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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (US 2012/0128971) and claim 9 is rejected further in view of Onodera (US 2015/0075338).
Considering claim 1, Shibata teaches a coating film for cutting tools (abstract; Paragraph 1). The tool comprises a substrate with a cubic metallic compound hard film thereon (Paragraph 7). The coating film comprises at least one element of Groups 4-6 of the periodic table, A, Si, etc. and at least one of C, N, and O having a maximum intensity of an α-angle in the range of 60-80° for a (200) plane in a pole figure measurement (Paragraph 8) and specific compounds of (AlTiSi)N, etc. are disclosed (Paragraph 30). Fig. 4 (reproduced below) depicts the pole figure of the (200) plane (Paragraphs 13 and 25) having a maximum value at about 70° and a difference between 70° (e.g. I2max) and 75° (e.g. I23min) on the higher angle side (e.g. a third region) is smaller than a difference between the maximum at 70° minimum value at about 25° (e.g. I24min) on the lower angle side (e.g. a fourth region) where the intensity of the 75° peak (~37) is about 97% of the intensity of the 75° peak (~38) based upon the scale of the figure.
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While not expressly teaching a singular example of the claimed coated tool with elemental materials and (200) plane features this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Shibata as this is considered a conventionally known combination of coating materials with (200) features known to afford hard films with improved wear resistance and one would have had a reasonable expectation of success. Further, the ranges disclosed by Shibata overlap those which are 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, Fig. 4 of Shibata above depicts where the minimum at ~25° has an intensity of about 17 and is about 44% of the intensity of the 75° peak (~38) based upon the scale of the figure. See MPEP 2144.05.
Considering claim 3, Fig. 4 of Shibata above depicts the maximum at about 75°. See MPEP 2144.05.
Considering claim 4, Fig. 3 of Shibata (reproduced below) depicts the pole figure for the (111) plane of the hard film (Paragraph 12) has a maximum (e.g. I1max) at about 60° with an intensity just below 24.5 and where 85% of this value encompasses the large majority of the region overlapping that which is claimed. See MPEP 2144.05.
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Considering claim 5, Fig.3 of Shibata above depicts where the difference between the maximum at 60° and the minimum from the higher angle side at 90° (e.g. a first region) is smaller than the difference the maximum at 60° and the minimum at 20° on the lower angle side (e.g. a second region) and the higher side region is about 85% of the maximum overlapping that which is claimed. See MPEP 2144.05.
Considering claim 6, Fig. 3 of Shibata above depicts and inflection point between about 75-80°.
Considering claim 9, Shibata teaches cutting inserts for tools (Paragraphs 1 and 37), but does not teach the claimed holder structure.
In a related field of endeavor, Onodera teaches cutting tools (abstract) including a cutting insert (Paragraph 29) with a coating thereon (Paragraph 30). The tool comprises a holder with a length (e.g. a rod-like holder) with a pocket at the end where the insert is fixed to the pocket (Paragraphs 81-82).
As both Shibata and Onodera teach cutting tools they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the tool of Shibata and to include the tool holder taught by Onodera as this is considered a combination of a conventionally known insert and tool holder known to make cutting tools and one would have had a reasonable expectation of success.
Allowable Subject Matter
Claims 7-8 may be placed in condition for allowance if rewritten in independent form including all of the limitations of the base claim and any intervening claims, if the 112(b) rejection were overcome, and if the requisite terminal disclaimer were filed over copending 18/574306.
The following is a statement of reasons for the indication of allowable subject matter: Fig.3 of Shibata above is the closest prior art to claims 7-8 and differs in that Shibata teaches a (111) lower side minimum (e.g. 15°) and a maximum (e.g. 60°) well outside of instant claim 8 and the ratio of the intensities of 15°/60° is about 61% significantly outside that which is recited in instant claim 7.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. He et al. (US 2021/0138557) 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.
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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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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