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
The instant application is a national stage filing under 35 USC 371 claiming priority to EP21203745.1. No copy of the priority application can be found in the file wrapper and no copy is found on the World Intellectual Property Organization (WIPO) website.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8, and 10 of copending Application No. 18/013219 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a coated cutting tool comprising a substrate and first and second stacks alternated at least twice each of nanolayers A and B having an A+B period thickness of 15-50 nm for the 1st layer stack and 2-10 for the 2nd layer stack where nanolayer A is (Ti1-a-bAlaMb)N where 0.5≤a≤0.75, 0≤b0.10 and M is one or more of Cr, Zr, Nb, Mo, Ta, and V and where nanolayer B is (Ti1-c-dSicMd)N where 0.10≤c≤0.25, 0≤d≤0.10 and M is one or more of Cr, Zr, Nb, Mo, Ta, and V. Claim 1 of the ‘219 application recites a coated cutting tool comprising a substrate with a nano-multilayer coating of alternating first and second nanolayers where the first nanolayer is Ti1-xAlxN where 0.35≤x≤0.70 and the second nanolayer is Ti1-ySiyN where 0.12≤y≤0.25 and the sequence of the 1st and 2nd nanolayers having a period thickness of less than or equal to 7 nm and the nano-multilayer has a columnar structure.
The instant claims and those of the ‘219 application recite overlapping, alternating nanolayers with a composition and thickness overlapping and the courts have held that these overlapping ranges establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 2 recites an average period thickness not expressly overlapping the claimed thickness, but the courts have held that a prima facie case of obviousness exists where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device and is therefore obvious over claim 1 of the ‘219 application. See MPEP 2144.04(IV)(A) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Instant claim 3 recites an overlapping thickness with claim 1 of the ‘219 application. Instant claims 4-7 recites a composition overlapping claims 1-3 of the ‘219 application. Instant claims 8 and 11 recite stacks overlapping claim 1 of the ‘219 application. Instant claim 9 recites a starting layer and thickness overlapping claim 10 of the ‘219 application. Instant claim 10 recites a total thickness overlapping claim 8 of the ’219 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable Andersson et al. (US 2012/0114436).
Considering claim 1, Andersson teaches a cutting tool of a substrate and coating thereon of alternating A and B layers (abstract). The alternating layers have an individual layer thickness of 1-50 nm and layer A has a composition of (Ti1-xAlxMe1p)Na where 0.3<x<0.95, 0.90<a<1.10, and 0≤p<0.15 where Me1 is groups 3-6 of the periodic table (e.g. nanolayer A), layer B is (Ti1-y-zSiyMe2z)Nb where 0.05<y<0.25, 0≤z<0.4, 0.9<b<1.1 (e.g. nanolayer B) (Paragraph 16). The thickness of the nanolaminated structure is taught to range from 0.5-20 µm (Paragraph 15).
While not expressly teaching the claimed nano-multilayer coating, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Andersson as this is considered a combination of conventionally known coatings with overlapping compositions and thicknesses known to afford wear resistant cutting tools and one would have had a reasonable expectation of success. Further, 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. Andersson teaches a plurality of alternating A and B layers and any particular group of repeating A+B layers may be considered grouped as the claimed stacks and alternating groups of these stacks as there are no particular claimed features (thickness, composition, etc.) which differ the claimed first and second stacks and therefore Andersson is considered to meet the claimed limitations.
Considering claims 2-3, Andersson teaches where the individual layers have a thickness of 1-50 nm and this encompasses where a period of A+B layers would range from 2-100 nm in thickness. See MPEP 2144.05.
Considering claims 4 and 6, Andersson teaches where layer A is (Ti1-xAlxMe1p)Na where 0.3<x<0.95, 0.90<a<1.10, and 0≤p<0.15 where Me1 is groups 3-6 of the periodic table and group 6 comprises Cr (Paragraph 16). See MPEP 2144.05.
Considering claim 5 and 7, Andersson teaches where layer B is (Ti1-y-zSiyMe2z)Nb where 0.05<y<0.25, 0≤z<0.4, 0.9<b<1.1 and where Me2 is elements of groups 3-6 of the periodic table and group 6 comprises Cr (Paragraph 16).
Considering claim 8 and 11, Andersson teaches where the thickness of the nanolaminated structure ranges from 0.5-20 µm (Paragraph 15) and where the individual layers have a thickness of 1-50 nm (Paragraph 16) overlapping the claimed number of stacks.
Considering claim 9, Andersson teaches an inner single or multilayer coating between the substrate and nanolaminated coating with a thickness of between 0.5-30 µm (Paragraph 23).
Considering claim 10, Andersson teaches where the thickness of the nanolaminated structure ranges from 0.5-20 µm (Paragraph 15). See MPEP 2144.05.
Conclusion
Ni et al. (US 8,409,695) teaches multilayer TiAlN and TiSiN coatings similar to that which is claimed. Asari et al. (US 2015/0203956), Kumar et al. (US 2018/0347027), and Hirano et al. (US 2019/0061013) teach coated cutting tools similar to that which is claimed.
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