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 .
DETAILED ACTION
Election/Restriction
Applicant's election with traverse of Group I in the reply filed on 27 January 2026 is acknowledged. Although the previous breaking of Unity of Invention is withdrawn, a new breaking of Unity of Invention is implemented, either over JP 2012/097303 A as discussed below.
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 1 recites “the (111) plane” and “the (200) plane”. Although not per se indefinite if the entire coating system has only one peak attributable to a (111) plane and only one peak attributable to a (200) plane, this cannot assumed to be the case in the context of the Instant Application, as changing the relative ratio of Al and Cr in a AlCrN/ AlCrCN layer changes the respective 2 theta value for respective (111) and (200) planes. (See, e.g. Fig. 1 of U.S. 2008/0233374 A1, cited in IDS). As such, given that it is possible to have two (111) peaks and two (200) peaks in a XRD of the claimed hard coating, reciting “the (111) plane” and “the (200) plane” lacks sufficient antecedent basis. For claim interpretation, the (111) plane can be any (111) plane, and the (200) plane can be any (200) plane.
As claim 2 depends on claim 1, and as the respective limitations of the dependent claim does not resolve the aforementioned issue in claim 1, claim 2 is also held to be rejected.
Claim Interpretation
The transitional phrase “is constituted by” is not a standard transitional phrase. Although colloquially it is equivalent to “composed of” or “consist of”, as “composed of” is not technically the same as “consist of” in view of Case Law, “constituted by” cannot be used as a stand-in for either “composed of” or alternatively for “consist of”. As such, it is presently interpreted as an open transitional phrase, as long as manifestations thereof do not conflict with the provisos re: composition. For instance, an AlCrN layer that additionally contains Si and/or B is considered to read on the first layer as long as other stipulated requirements are met. Applicant is required to state Applicant’s position on this interpretation in Applicant’s next response.
Allowable Subject Matter
Claim 1 would be allowable if a) amended to recite “consisting of” in lieu of “is constituted by” and b) rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth above.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012/097303 A (referenced below using its machine translation “JP ‘303”).
Considering claims 1 and 2, JP ‘303 discloses a multilayered hard coating for a cutting tool, the coating having a first set of layers A and a second set of layers B, wherein layers A and layers B alternate. (JP ‘303 ¶¶ 0010 and 0018). JP ‘303 is analogous art, for it is directed to the same field of endeavor as that of the instant application (hard coating for cutting tools). It is noted that claim 1 is phrased as to include a first layer and a second layer. As such, the first layer as recited means one or more first layers, and the same is true for the second layer. With JP ‘303 disclosing that either layer A or layer B can be the lowest layer, it is clear that each layer B is located above a respective one of layer A. (Id. ¶ 0035).
JP ‘303 discloses that the total thickness of the two layers is 1 to 5 µm, with ratio of total layers A thickness to total layers B thickness ranging from 1:5 to 5:1. (Id. ¶¶ 0035 and 0066). As such, the claimed total thickness and the claimed thickness ratio are both overlapped. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
JP ‘303 discloses that layer A has the composition of TiaCrbAlcSidYe(BuCvNw), with only Ti, Cr, Al, Si, and N being the necessary elements included. (JP ‘303 ¶¶ 0020-0026 and Table 1).With “constituted of” being interpreted as open transitional phrase, the presence of Si does not prevent the composition above from reading on the composition of AlaCrbαcN, with Ti mapping onto α and Si mapping onto an unclaimed element. Furthermore it is readily apparent from both the broader disclosure and the specific examples that ratio of Cr to Al exceeds 0.25. (Id. ¶¶ 0020-0021 and Table 1).
JP ‘303 discloses that layer B has the composition of TifCrgAlh(BxCyNz), with only Cr, Al, and N being the necessary elements included. (Id. ¶¶ 0027-0032). It is readily apparent from both the broader disclosure and the specific examples that ratio of Cr to Al exceeds 0.25. (Id. ¶ 0029and Table 1). Furthermore, JP ‘303 expressly names CrAlCN as a possible material. With the claim never reciting ratio of (Al + Cr + C) to N, and with JP ‘303 disclosing g + h = 1, y + z = 1, and y≤0.3, it is readily apparent that the inclusion of a small amount of C, with the rest of inorganic element being N, reads on AldCreCfN.
Lastly, JP ‘303 discloses (111) × 2 ≤ (200), with specific ratios of ~0.2 to 1.2. (Id. ¶ 0038 and Table 4). As such, the claimed ratio of peak intensity is overlapped.
JP ‘303 thus renders obvious claims 1 and 2.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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