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 .
Applicant's election with traverse of Group I, claims 1-9, in the reply filed on 8/4/25 is acknowledged. The traversal is on the ground(s) that the groups are sufficiently related and a thorough search for the subject matter of any one group would necessarily encompass a search for the subject matter of the remaining group. This is not found persuasive because the issues that arise in prosecuting method and product claims is diverse as well as the required search for one would not be required by the other.
The requirement is still deemed proper and is therefore made FINAL.
Hence, claims 1-12 remain in the application with claims 10-12 having been withdrawn from consideration as being directed toward a non-elected invention detailed in paper filed 6/4/25. Claims 1-9 remain in the application for prosecution thereof.
Considering the response filed 3/16/26, the 35 USC 112 rejections have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1,3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688).
Hale (3,914,473) teaches a method of making a coated cemented carbide product whereby a dense alpha aluminum oxide coating having a thickness of 1-20 microns is applied by vapor deposition at a temperature of from 900-1250C (abstract). Hale (3,914,473) teaches the process gases to include aluminum halide (AlCl3), water vapor (H2O2) and hydrogen gas (H2).
Hale (3,914,473) fails to teach the claimed volume ratio of AlCl3/H2O to be 0.5-2.5 and volume ratio of AlCl3/H2 to be 200-3000.
Pauli et al. (5,061,474) teaches method of forming amorphous alpha aluminum oxides by reacting water vapor and aluminum trichloride at a molar ratio of 1:5 to 10:1 (abstract).
Tanibuchi (10,202,688) teaches coated cutting tool whereby alpha aluminum oxide coating is formed using hydrogen (H2) and aluminum trichloride having a volume ratio of 0.5-5% by volume of aluminum trichloride, 0.5-3.5% volume of HCL and the rest of the volume being H2 (col. 8, lines 40-50).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Hale (3,914,473) process to include the volume ratios of H2O/AlCl3 of 0.5-2.5 and H2/AlCl3 of 200-3000 as evidenced by Pauli et al. (5,061,474) and Tanibuchi (10,202,688) with the expectation of forming an alpha aluminum oxide coating having a surface area/and average particle size with controlled growth rates
Regarding the claimed volume ratios of H2O/AlCl3 of 0.5-2.5 and H2/AlCl3 of 200-3000, these would be met by the claimed ratios in the references or at least be suggestive thereof absent a showing of criticality and unexpected results garnered therefrom.
Claims 5,6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) further in combination with Ljungberg et al. (6,902,764).
Features detailed above concerning the teachings of Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) are incorporated here.
Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) fails to teach inclusion of H2S and HCl to the process gas as well as forming a Ti compound layer underneath the alpha alumina layer.
Ljungberg et al. (6,902,764) teaches a similar process in forming an alpha aluminum oxide coating on a cemented carbide cutting tool whereby the process gases include HCl and H2S (col. 3, lines 13-30 and claims 1,4) and an inner layer between the cemented carbide substrate and the alpha aluminum oxide coating including a titanium compound (col. 5, lines 32-50).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) process to include the claimed process gases (HCl and/or H2S) as well as including an inner layer of titanium compound as evidenced by Ljungberg et al. (6,902,764) with the expectation of providing an alpha aluminum oxide coating and adhesion layer of titanium compound for the cutting tool.
Claims 2,5,7,8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) further in combination with Ljungberg et al. (7,306,636).
Features detailed above concerning the teachings of Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) are incorporated here.
Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) fails to teach inclusion of H2S to the process gas, an oxidation step prior to forming alpha alumina layer as well as forming a Ti compound layer underneath the alpha alumina layer.
Ljungberg et al. (7,306,636) teaches oxide cutting tool whereby CVD coating of alpha aluminum oxide coating is formed over a first layer of TiCNO with an intermediate oxygen treatment prior to the coating of the alpha aluminum oxide. Ljungberg et al. (7,306,636) also uses HCl as a process gas in the formation of the alpha aluminum oxide coating (abstract).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Hale (3,914,473) in combination with Pauli et al. (5,061,474) and Tanibuchi (10,202,688) process to include the claimed process gas of H2S as well as including an inner layer of titanium compound and oxidizing prior to forming the alpha aluminum oxide layer as evidenced by Ljungberg et al. (7,306,636) with the expectation of providing an alpha aluminum oxide coating and adhesion layer of titanium compound for the cutting tool.
Regarding claim 2, the pressure of the coating is from 40-300 mbar (abstract).
Regarding claim 9, the coating temperature is from 625-800C (col. 4, lines 10-30).
Response to Amendment
Applicant's arguments filed 3/16/26 have been fully considered but they are not persuasive.
Applicant argued the ratios are different than what is claimed regarding eh volume ratios of the H2O and H2 with ALCL3.
The Examiner disagrees. As detailed in the rejection above, Pauli et al. (5,061,474) teaches method of forming amorphous alpha aluminum oxides by reacting water vapor and aluminum trichloride at a molar ratio of 1:5 to 10:1 (abstract) and Tanibuchi (10,202,688) teaches coated cutting tool whereby alpha aluminum oxide coating is formed using hydrogen (H2) and aluminum trichloride having a volume ratio of 0.5-5% by volume of aluminum trichloride, 0.5-3.5% volume of HCL and the rest of the volume being H2 (col. 8, lines 40-50).
Applicant argued Pauli et al. (5,061,474) is non-analogous art while Tanibuchi (10,202,688) fails to disclose water in the process gas.
Applicant attacking individual references for what they fail to teach versus the collective teaching of the references is pointing out the differences between the reference and each individual reference is not sufficient to overcome a rejection based on a combination of the references. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 231 USPQ 375 (Fed. Cir. 1986). The references must be taken collectively as the test of obviousness is not express suggestion of the claimed invention in any or all references but rather what the references taken collectively would suggest to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 146 USPQ 183 (CCPA 1965); In re Hedges, 783 F.2d 1038.
Applicant argued both Ljungberg et al. (6,902,764) and Ljungberg et al. (7,306,636) fail to teach the claimed H2/AlCl3 and H2O/AlCl3 ratios.
The Examiner agrees as these references were relied upon for teaching inclusion of H2S and/or HCl as well as forming an underneath layer and not for the claimed ratios which are taught by Pauli et al. (5,061,474) and Tanibuchi (10,202,688) as detailed above.
THIS ACTION IS MADE FINAL. 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 BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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/BRIAN K TALBOT/Primary Examiner, Art Unit 1712
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