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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on 20 October 2025 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 October 2025.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Usami et al. (US 2003/0129456).
Considering claim 1, Usami teaches a cemented carbide having high hardness and toughness suitable as a cutting tool (abstract). An embodiment is taught of a cemented carbide comprising a hard phase of WC, at least one of carbides, nitrides, and carbonitrides of Groups 4a-6a, and a binder phase (Paragraph 24). Examples are taught where the cemented carbide comprises by weight% 8.0% Co, 2.0% TiC (e.g. a compound), 1.0% NbC (e.g. a compound), and 87.0% WC (Paragraph 186; Table 1, Sample No. 1) where the WC has a mean particles size of 8.0 µm and the compound powders (e.g. TiC, NbC, etc.) have an average particle diameter of 2.0 µm (Paragraph 186) which corresponds to a A/B ratio of 100(2.0/8.0) = 25. This relationship falls within and anticipates that which is claimed. See MPEP 2131.03.
Considering claims 3-4, Usami teaches examples of TiC and NbC (Table 1) (e.g. groups 4a and 5a with carbon).
Considering claim 5, Usami does not expressly teach the claimed crack point A as recited. However, Usami teaches a cemented carbide tool of substantially identical materials having a substantially identical composition as that which is claimed. As such, the claimed crack point A is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 6, Usami teaches where the cemented carbide is a cutting tool (Paragraph 187).
Considering claim 7, Usami teaches where the cemented carbide is coated with a PVD layer of TiN (Paragraph 196). Further, the recitation of “formed by…” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art. See MPEP 2113.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Usami et al. (US 2003/0129456) as applied to claim 1 above.
Considering claim 2, the teachings of Usami as applied to claim 1 are outlined above. In addition, Usami teaches where the size of the WC powder and powder of carbide, nitride, or carbonitride may be 0.5-10 µm (Paragraph 95). While not expressly teaching a singular example of the claimed cemented carbide this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Usami as this is considered a combination of WC and hard compounds overlapping 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. Additionally, the courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close such that one skilled in the art would expect them to possess the same properties. See MPEP 2144.05 and Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). It is the examiner’s position that there is no patentable distinction between the claimed 0.4 µm or less and the lower limit of 0.5 µm of the carbide, nitride, or carbonitride taught by Usami (e.g. rounding, significant figures, etc.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kitagawa et al. (US 5,603,071), Miura et al. (US 2005/0019614), Aoki (US 2006/0134466), and Nomiyama et al. (US 2019/0061011) teach a cemented carbide anticipating and/or rendering obvious the claimed cemented carbide.
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