CTNF 18/704,932 CTNF 85956 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: The specification as originally filed at [0029] states: “The content of W in the hard phase W H may be higher than the content of W in the binder phase W B ” but goes on to say “when W H is smaller than W B , the wear resistance of the cermet tool 1 on the whole can be improved”. These statements are contradictory. Furthermore, the examples in the specification all exhibit W H > W B (see Fig. 9) . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Claim 3 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. Claim 3 recites: “a content W in the hard phase WH is smaller than a content of W in the binder phase WB”. This limitation contains new matter. The specification as originally filed only discloses examples where WH is larger than WB (see ¶ 29 & Fig. 9). 07-30-02 AIA 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. 07-34-01 Claims 1-7 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 cermet tool…has a strength…and a ratio of the strength I800 to a strength Ir at room temperature”. This limitation is indefinite. There are many different kinds of strength, e.g., tensile strength, yield strength, fracture strength, etc. The claim does not specify what kind of strength is being measured, rendering the claim indefinite. For purposes of examination, it is presumed the claimed strength is a flexural strength, also known as transverse rupture strength, based on the three-point bending test performed to measure strength (see Spec., [0052]). Claim 6 recites: “at least one metal element selected from the group consisting of Group 4A elements, Group 5A elements, and Group 6A elements of the periodic table as well as Al and Si”. This limitation is indefinite. Groups 4A, 5A, and 6A can refer to either Groups 14, 15, and 16, or Groups 4, 5, and 6, depending on IUPAC or CAS conventions. The claim does not specify which numbering convention is used, rendering the claim indefinite. For purposes of examination, it is presumed that 4A, 5A, and 6A refer to groups 4, 5, and 6 (i.e., in accordance with IUPAC conventions, see Spec., [0020]). Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim. 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites: “a content Cr in the binder phase CrB may be less than a content of Cr in the hard phase CrH”. The additional limitation recited in claim 4 is optional given the phrase “may be”. Accordingly, claim 4 fails to further limit claim 1 because the relationship between Cr contents does not necessarily exist. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim 1 is rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Yasui (JP H05-195136) . Regarding claim 1, Yasui teaches a cermet tool (¶ 1). The cermet contains hard phase carbonitrides of group 4A, 5A, or 6A elements, as well as TiCN, and a binder phase containing one or more iron group metals including at least Ni (¶ 14). Yasui teaches W and Cr are present and dissolve in the binder phase (¶ 33). Yasui teaches examples of cermets where the ratio of the transverse rupture strength at 900°C to the transverse rupture strength at room temperature to also be above 0.9 (Table 7, Ex. F-3a has a ratio of 0.912 & F-3g has a ratio of 0.940). One of ordinary skill in the art would expect the claimed ratio of transverse rupture strength at 800°C to the transverse rupture strength at room temperature for these examples is also above 0.9, absent objective evidence to the contrary, because strength decreases as temperature increases (hence the strength at 800°C should be higher than the reported strength at 900°C, resulting in a ratio greater than 0.912 and 0.940, respectively). See MPEP 2112 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yasui (JP H05-195136), as applied to claim 1 . Regarding claim 2, the limitations of claim 1 have been addressed above. Yasui teaches the hard phase is a carbonitride of a Group 4, 5, or 6 element given by the formula (4 x 5 y 6 z ) a (C v N w ) b where Cr is a Group 6 element whose molar ratio (as part of z) is 0.2 or less (¶ 14). This is expected to overlap with the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Regarding claims 4-5, the limitations of claim 1 have been addressed above. Yasui teaches that Cr dissolves readily in the binder phase (¶ 33) and this is desired to improve strength, heat cracking resistance, plastic deformation resistance, and wettability of the hard phase (¶ 34). Accordingly, it would have been obvious at the effective time of filing for one of ordinary skill in the art to ensure Cr B > Cr H . Furthermore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to determine, through routine optimization, the ideal dissolution rate of Cr in the hard phase into the binder for the purposes of obtaining the desired strength, heat cracking resistance, plastic deformation resistance, and wettability properties. See MPEP 214405 II . 07-21-aia AIA Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yasui (JP H05-195136), as applied to claim 1, further in view of Sawada et al. (JP H04-289003) . Regarding claim 6, the limitations of claim 1 have been addressed above. Yasui teaches the cermet tool can be used as a cutter (¶ 1). Yasui does not teach one or more coating layers on the cermet tool. Sawada teaches a titanium carbonitride cermet cutting tool having a surface coating (¶ 1). The coating contains carbides and nitrides of metals such as Ti, Ta, W, Mo, Nb, and Zr (¶ 14, see Tables 2-3). It would have been obvious at the effective time of filing for one of ordinary skill in the art to provide the cermet cutting tool of Yasui with the surface coating of Sawada because Sawada teaches its coatings provide excellent toughness and prevent chipping of the cermet cutting tool (¶ 4) . 07-21-aia AIA Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yasui (JP H05-195136), as applied to claim 1, further in view of Ri et al. (US 2022/0134445) . Regarding claim 7, the limitations of claim 1 have been addressed above. Yasui teaches the cermet tool can be used as a cutter (¶ 1). Yasui does not teach the structure of a cutting tool having the claimed cermet tool. Ri teaches a cutting tool including a cutting insert (¶ 8). The tool includes an elongated body having a pocket at one end for holding the cutting insert (¶ 53). It would have been obvious at the effective time of filing for one of ordinary skill in the art to include the cermet tool of Yasui as a cutting insert for the cutting tool of Ri because Ri teaches a conventional cutting tool for holding cutting inserts such as the one described by Yasui . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nomiyama et al. (CN 107002186) discloses a TiCN cermet cutting tool and measures a 3 point bend strength test, but the ratio of I 800 /I r is less than 0.9 (see Table 5) . Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST. 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, 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. 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. /XIAOBEI WANG/Primary Examiner, Art Unit 1784 Application/Control Number: 18/704,932 Page 2 Art Unit: 1784 Application/Control Number: 18/704,932 Page 3 Art Unit: 1784 Application/Control Number: 18/704,932 Page 4 Art Unit: 1784 Application/Control Number: 18/704,932 Page 5 Art Unit: 1784 Application/Control Number: 18/704,932 Page 6 Art Unit: 1784 Application/Control Number: 18/704,932 Page 7 Art Unit: 1784 Application/Control Number: 18/704,932 Page 8 Art Unit: 1784
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