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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 04/20/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/20/2026 was filed with the Request for Continued Examination on 04/20/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner except where lined through.
No legible copy of item 37 in the non-patent literature publication of the Information Disclosure Statement filed on 04/20/2026, i.e. “ISO:11562: “Geometrical Product Specifications (GPS) – Surface Texture: Profile method – Metrological Characteristics of Phase Correct Filters,” 01 December 1996, 3 pages” has been provided/filed.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
There is no support in the original disclosure of the present Application under examination for a “single crystalline” refractory material which would have “a fraction of sp3 hybridization and a fraction of sp2 hybridization”. The original claims provide each of these limitations in distinct dependent claims, wherein each independently depended on claim 1. The original specification of the present Application under examination provides support for diamond-like carbon containing a fraction of sp3 hybridization and a fraction of sp2 hybridization, not for all types of single crystalline refractory materials.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2001-038506 to Nokimori et al. (hereinafter Nokimori).
Nokimori teaches a diamond tool comprising a single-crystal diamond tip having a sharp cutting edge for cutting, wherein the single-crystal diamond tip has a rake face and a flank face; the cutting edge is formed at the intersection of the front flank and the rake face (claim 1, page 2 and [0004] in page 4). The single crystal diamond can be a natural or artificial one ([0005] in page 4).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CA 2 766 636 to Inspektor et al. (hereinafter Inspektor).
Inspektor, directed to cutting tools and coatings which would contribute to making such tools more wear resistance, discloses a substrate of a cutting tool comprising one or more cutting edges formed at a juncture of a rake face and flank faces, wherein the substrate material is cemented carbide such as WC or some other materials (abstract, page 7, lines 5-17, and Figure 1). The reference discloses a substrate of a coated cutting tool can comprise an insert, drill bit, saw blade, or other cutting apparatus (page 7, lines 18-19). The substrate is part of the cutting tool.
Additionally, the reference generally teaches cemented carbide cutting tools, whether coated or uncoated, have been known; the reference discloses if the cutting tools are coated, the coating material is of refractory materials such as TiC, TiCN, TiN, Al2O3 (page 1, lines 8-13). Thus, the reference recognizes that the cemented carbide cutting tools have been known. Also, as taught by the reference, cutting tools comprise cutting edges comprising a rake face and flank face(s) (page 11, lines 3-5 as well as page 7).
It is important to note that “flank face being formed of a refractory material” is interpreted to mean that the flank face comprises a refractory material. The phrase “being formed” is not a closed transitional phrase.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PEGAH PARVINI whose telephone number is (571)272-2639. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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