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 .
Priority
Applicant’s filing date of March 15, 2024 is acknowledged.
Response to Restriction Election
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on May 20, 2026 is acknowledged.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventive group, there being no allowable generic or linking claim.
Claim Status
This Office Action is in response to Applicant’s Claims filed March 15, 2024 and Restriction Election filed May 20, 2026.
Claims Filing Date
March 15, 2024
Pending
1-18
Withdrawn
15-18
Under Examination
1-14
Drawings Objections
The drawings are objected to because
In Fig. 1 Reference Numerals 2 and 5 are not mentioned in applicant’s specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Applicant’s specification at [0024] defines “gamma phase” as a phase constituted of metal carbides, optionally metal nitrides, and/or optionally metal carbonitrides, which is advantageous for grain refinement of the gamma phase with respect to the hard WC containing phase, which optionally may include metal carbides, metal nitrides, and/or metal carbonitrides of any one of or a combination of Ti, Ta, V, Nb, Zr, and Hf.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cinca I Luis (US 2022/0098710).
Regarding claim 1, Cinca I Luis discloses a sintered cemented carbide punch composition ([0002], [0007]-[0008], [0042]), comprising:
a carbide hard phase ([0011]), comprising
tungsten carbide (WC) in an amount of from about 67 weight percent (wt.%) to about 76 wt.% based on a total weight of the sintered cemented carbide punch composition (50 to 70 wt%) ([0011], [0017], [0024], claim 1), and
a gamma phase including at least titanium (Ti) and niobium (Nb) as gamma phase constituents in an amount of from about 10 wt.% to about 17 wt.% based on a total weight of the sintered cemented carbide punch composition (18-26 wt% TiC+NbC; 10-14 wt% TiC, 8-12 wt% NbC) ([0011]-[0012], [0026], [0019]-[0020], [0025]-[0029]);
a binder phase including at least cobalt (Co) and chromium (Cr) in an amount of from about 12 wt.% to about 13 wt.% based on a total weight of the sintered cemented carbide punch composition (0.1-0.7 wt% Cr, 10-20 wt% Co+Ni) ([0016], [0018]); and
a balance of carbon ([0011]-[0029]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 2, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein HV30 Vickers hardness of the cemented carbide punch composition ranges from about 1520 HV30 to about 1570 HV30 (1300-1500 HV30) ([0075]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 3, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein fracture toughness of the cemented carbide punch composition ranges from about 10.2 MPa √m to about 10.6 MPa √m (10-11 MPa √m) ([0075]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 4, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein density of the cemented carbide punch composition ranges from about 11.2 g/cm3 to about 12.5 g/cm3 (less than 14 g/cm3) ([0008]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 5, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein the WC has a grain size when sintered from about 0.3 um to about 0.8 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 6, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 5 as cited above, wherein the WC has a grain size when sintered from about 0.4 um to about 0.8 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 7, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 6 as cited above, wherein the WC has a grain size when sintered from about 0.5 um to about 0.8 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 8, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 7 as cited above, wherein the WC has a grain size when sintered from about 0.6 um to about 0.8 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 9, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 8 as cited above, wherein the WC has a grain size when sintered from about 0.7 um to about 0.8 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 10, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 0.85 um to about 1.65 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 11, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 10 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.00 um to about 1.65 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 12, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 11 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.15 um to about 1.65 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 13, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 12 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.30 um to about 1.65 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 14, Cinca I Luis discloses the sintered cemented carbide punch composition of claim 13 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.45 um to about 1.65 um (0.5-2 um) ([0014]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pauty (US 7,490,502).
Regarding claim 1, Pauty discloses a sintered cemented carbide composition (1:13-67, 2:35-42), comprising:
a carbide hard phase (2:43-65, 3:5-67), comprising
tungsten carbide (WC) in an amount of from about 67 weight percent (wt.%) to about 76 wt.% based on a total weight of the sintered cemented carbide punch composition (70-90 wt%) (3:10-12), and
a gamma phase including at least titanium (Ti) and niobium (Nb) as gamma phase constituents in an amount of from about 10 wt.% to about 17 wt.% based on a total weight of the sintered cemented carbide punch composition (3-16 wt% total of 2-6 wt% TiC, 1-9 wt% NbC, 0-1 wt% TaC) (3:12-13);
a binder phase including at least cobalt (Co) and chromium (Cr) in an amount of from about 12 wt.% to about 13 wt.% based on a total weight of the sintered cemented carbide punch composition (5-20 wt% binder of 10-98 wt% Co and 2-15 wt% Cr) (2:14-18); and
a balance of carbon (2:5-18).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 2, Pauty discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein HV30 Vickers hardness of the cemented carbide punch composition ranges from about 1520 HV30 to about 1570 HV30 (1500-1800 HV30) (3:27-28). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 3, Pauty discloses the sintered cemented carbide punch composition of claim 1 as cited above. Fracture toughness of the cemented carbide punch composition ranging from about 10.2 MPa √m to about 10.6 MPa √m has been considered and determined to recite a property of the claimed sintered cemented carbide composition. The prior art renders obvious the claimed sintered cemented carbide composition (Pauty 2:35-65, 3:5-67), such that the claimed fracture toughness property ranging from about 10.2 MPa √m to about 10.6 MPa √m naturally flows.
Regarding claim 4, Pauty discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein density of the cemented carbide punch composition ranges from about 11.2 g/cm3 to about 12.5 g/cm3 (12.5-12.7 g/cm3) (4:1-2, Table 2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 5, Pauty discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein the WC has a grain size when sintered from about 0.3 um to about 0.8 um (< 2 um, preferably 0.3-1.5 um) (2:24-25). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 6, Pauty discloses the sintered cemented carbide punch composition of claim 5 as cited above, wherein the WC has a grain size when sintered from about 0.4 um to about 0.8 um (< 2 um, preferably 0.3-1.5 um) (2:24-25). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 7, Pauty discloses the sintered cemented carbide punch composition of claim 6 as cited above, wherein the WC has a grain size when sintered from about 0.5 um to about 0.8 um (< 2 um, preferably 0.3-1.5 um) (2:24-25). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 8, Ouchterlony discloses the sintered cemented carbide punch composition of claim 7 as cited above, wherein the WC has a grain size when sintered from about 0.6 um to about 0.8 um (< 2 um, preferably 0.3-1.5 um) (2:24-25). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 9, Pauty discloses the sintered cemented carbide punch composition of claim 8 as cited above, wherein the WC has a grain size when sintered from about 0.7 um to about 0.8 um (< 2 um, preferably 0.3-1.5 um) (2:24-25). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 10, Pauty discloses the sintered cemented carbide punch composition of claim 1 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 0.85 um to about 1.65 um (0.5-5 um) (2:26). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 11, Pauty discloses the sintered cemented carbide punch composition of claim 10 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.00 um to about 1.65 um (0.5-5 um) (2:26). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 12, Pauty discloses the sintered cemented carbide punch composition of claim 11 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.15 um to about 1.65 um (0.5-5 um) (2:26). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 13, Pauty discloses the sintered cemented carbide punch composition of claim 12 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.30 um to about 1.65 um (0.5-5 um) (2:26). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 14, Pauty discloses the sintered cemented carbide punch composition of claim 13 as cited above, wherein the gamma phase constituents have a grain size when sintered from about 1.45 um to about 1.65 um (0.5-5 um) (2:26). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,276,011 (US ‘011).
Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘011 discloses a cemented carbide with an overlapping WC amount of grain size, binder phase composition and amount, gamma phase amount and grain size, fracture toughness (claims 1-6) for use as a punch for metal forming (claim 8).
Related Art
Ouchterlony (US 2005/0211016).
Ouchterlony discloses a sintered cemented carbide composition ([0001], [0010]), comprising: a carbide hard phase ([0025]-[0035]), comprising tungsten carbide (WC) in an amount of from about 67 weight percent (wt.%) to about 76 wt.% based on a total weight of the sintered cemented carbide punch composition (about 76-81 wt%) ([0028]), and a gamma phase including at least titanium (Ti) and niobium (Nb) as gamma phase constituents in an amount of from about 10 wt.% to about 17 wt.% based on a total weight of the sintered cemented carbide punch composition (TaC+TiC+NbC about 8-13 wt%) ([0014]-[0016], [0025]-[0027], [0029]); a binder phase including at least cobalt (Co) and chromium (Cr) in an amount of from about 12 wt.% to about 13 wt.% based on a total weight of the sintered cemented carbide punch composition (10-12 wt% Co, < 1 wt% Cr) ([0013], [0024], [0030]); and a balance of carbon ([0024]-[0030]).Ouchterlony also discloses 1450 to 1650 HV ([0036]) and a WC grain size when sintered from about 0.4-1.5 um ([0035]).
Carpenter (US 2013/0247641)
Carpenter discloses a sintered cemented carbide punch composition ([0001]-[0008], [0010], [0034]-[0035]), comprising: a carbide hard phase ([0008]-[0014]), comprising tungsten carbide (WC) in an amount of from about 67 weight percent (wt.%) to about 76 wt.% based on a total weight of the sintered cemented carbide punch composition (50 to less than 70 wt%) ([0011], [0016], [0029]), and a gamma phase including at least titanium (Ti) as a gamma phase constituent in an amount of from about 10 wt.% to about 17 wt.% based on a total weight of the sintered cemented carbide punch composition (15 to 30 wt% TiC) ([0008], [0011], [0015], [0029]); a binder phase including at least cobalt (Co) and chromium (Cr) in an amount of from about 12 wt.% to about 13 wt.% based on a total weight of the sintered cemented carbide punch composition (12 to 20 wt% Co+Ni with Cr) ([0008], [0011], [0017]-[0021], [0025]-[0026], [0029]); and a balance of carbon ([0008], [0011], [0029]). Carpenter also discloses 1250-1550 HV30 ([0043]), a WC grain size when sintered suitably of 0.8-1.5 um and in one embodiment a size less than 1 um ([0013]), and gamma phase constituents having a grain size when sintered from 1-5 um ([0014]).
Wakashima (JP H03-258424 machine translation)
Wakashima discloses a cemented carbide with 4-12% Co, 0.16-0.48% Cr, 6-20% TaC (gamma phase), and balance WC, where the WC and TaC have an average grain size of 2 um or less (pp. 1-2).
Shimada (US 5,068,149)
Shimada discloses a cemented carbide with 4 to 35% binder phase of Co having a crystal grain size of 5 to 400 um, a hard dispersed phase, and a WC balance having an average crystal grain size of 0.2 to 1.5 um (1:40-68).
Wang (CN 111378860 machine translation)
Wang discloses a WC-Co cemented carbide having a WC average grain size of 0.2 to 0.6 um ([0002]) of 83 to 96%, 3 to 15% Co binder phase, and grain growth inhibitor of 0.3 to 3% Cr3C2, 0.15 to 0.35% VC, and 0.04 to 0.20% Ti(CN) ([0030]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735
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