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
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, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/230166 A1 (referenced below using its English-language counterpart publication 2021/0162510 A1, “Fuwa”).
Considering claims 1 and 2, Fuwa discloses a coated cutting tool comprising a multilayered hard coating deposited on a base material 31, the coating having a base material side single layer 33 and a surface side single layer 35, each of which having respective compositions as represented by (AlxCr1-x-yBy)N1-e-fCeOf , wherein x, 1-x-y, y, 1-e-f, e, and f are numbers that respectively represent the atomic ratios of Al, Cr, B, N, C, and O, and wherein 0.5≤x≤0.75, 0.01≤y≤0.1, 0≤e≤0.03, and 0≤f≤0.0101. (Fuwa ¶¶ 0045-0047 and 0051; and Fig. 2). It is noted that in the multilayered coating, there is only one base material side single layer and only one surface side single layer. Fuwa is analogous art, for it is directed to the same field of endeavor as that of the instant application (hard coating for cutting tools).
Fuwa discloses its base material side single layer to have thickness t1 of 1.2 to 5.0 µm, and that its surface side single layer to have thickness t3 of 0.5 to 4.5 µm, and further discloses that ratio of t3 to t1 at 0.2 to 1.2 (or 17% to 55%). (Id. ¶¶ 0073, 0075, and 0078). This ratio overlaps ratio of T2/T; furthermore, total thickness of T1 and T3 also overlaps range for claimed total thickness. 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).
It is readily apparent from the foregoing that (AlxCr1-x-yBy)N1-e-fCeOf overlaps the composition for each of the first and second layer. With boron mapping onto an unclaimed element, it is readily apparent that various ratios of Al to Cr (when sum of those two elements is normalized to 100%) satisfy the requirement that 0.25≤b/a≤1. For instance, 60% Al and 38% Cr for base material side single layer has ratio of 0.63, and the same is true for the composition of surface side single layer. (Fuwa Tables 4 and 7). With the dopant being optional in claim 1, (AlxCr1-x-yBy)N in which neither C nor O is contained reads on the claimed AlaCrbαcN. As Fuwa allows inclusion of a small amount of C, 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, Fuwa discloses that a ratio of I(200)/I(111) is between 0.2 and 0.37 inclusive. (Id. ¶ 0083).
Fuwa thus renders obvious claims 1 and 2.
Considering claims 4 and 5, re: the identity of the dopant, these claims only further define said optional element, but neither is considered to require presence of the dopant. Furthermore, the component B present in the surface side single layer is considered to map onto merely an unrecited component. As such, Fuwa reads on claims 4 and 5.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/230166 A1 (referenced below using its English-language counterpart publication 2021/0162510 A1, “Fuwa”), as applied to claim 1 above, and further in view of WO 2023/022230 A1 (referenced below using its English-language counterpart publication U.S. 2024/0352572 A1, “Sasaki”).
Considering claims 6 and 7, Fuwa differs from the claimed inventions, as it is silent re: inclusion of a dopant. However, inclusions of dopants from Groups 4a-6a of the periodic table to an AlCr based coating is known in the art of hard coatings, as the presence of 5 at% or less of these metallic elements can improve coating proberties. (Sasaki ¶ 0027). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included dopants from Groups 4a-6a at 5 at% or less, to improve various coating properties.
Response to Arguments and Additional Comment
In view of amendments to claim 1, the previously instated 35 U.S.C. 112(b) rejection has been withdrawn.
In view of amendments to claim 1, the previously instated prior art rejection over JP ‘303 has been withdrawn.
The rejections above can be overcome by requiring the second layer to consist of the AldCreCfN component.
Concluding Remarks
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
1 Though ¶ 0051 of Fuwa contains a typographical error for the formula, both Table 4 of Fuwa and ¶ 0031 of WO 2019/230166 A1 show the correct formula).
Prosecution Insights