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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-18 are rejected under 35 U.S.C. 112(a) 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. In the preliminary amendment filed 20 June 2024, applicant amended claims 1, 10, 12 and 18 to recite a TiB2 ratio as a ratio of a net peak height to a net peak height of TiCN and α-alumina as a ratio of a net peak height to a net peak height of TiCN. However, applicant’s originally filed disclosure is to TiB2 ratio as a ratio of a net peak height of TiB2 (101) to a net peak height of TiCN (200) and α-alumina as a ratio of a net peak height of α-alumina (116) to a net peak height of TiCN (200) (originally filed claims; p.3 lines 24-32). No support is found for any and ratios encompassing any and all peaks of TiB2, TiCN, and/or α-alumina. As such, applicant’s amended claim scope is considered new matter. Claims 2-9, 11, and 13-17 are included in this rejection as they depend upon a rejected claim. This rejection may be overcome by amending to recite the originally filed peaks.
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 1-3, 5, 10, 12-13, 15-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (JPH07-018415 – machine translation).
Considering claims 1, 10, 12, and 18, Tajima teaches a coated cutting tool of cBN and method of forming thereof (abstract) used in the machining of steel (Paragraph 3). The tool comprises a substrate of cubic boron nitride (cBN) and a binder phase (Paragraphs 5-6) where the binder comprises TiCN, etc. (Table 1) and is subjected to ion etching to secure adhesion of a hard coating where the etching removes the binder phase to a depth of 0.5-5 µm (e.g. 500-5,000 nm) (Paragraph 6). The hard coating layer comprises one or more of TiC, TiN, Al2O3, etc. (Paragraph 5). Tajima does not expressly teach where the impurities satisfy the claimed one or more of aluminum net intensity ratio, tungsten net intensity ratio, TiB2 expressed as a ratio, and/or α-alumina ratio. However, as outlined above, Tajima teaches a substantially identical cutting tool of cBN and binder subjected to ion etching substantially identical to that which is claimed and disclosed. As such, one would reasonably expect the cutting tool of Tajima to possess the claimed one or more ratios as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.01-2112.02.
While not expressly teaching a singular example of the claimed cutting tool and method of forming thereof this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tajima as this is considered a combination of conventionally known coated substrate of cBN and binder materials etched to a depth overlapping that which is claimed by conventionally known etching methods and one would have had a reasonable expectation of success. Further, the depth disclosed by Tajima overlaps that which is claimed and 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.
Considering claims 2 and 13, Tajima does not expressly teach the claimed degree of surface coverage of cBN. However, as outlined above, Tajima teaches a substantially identical etching process as that which is claimed and disclosed with a depth thereof overlapping that which is claimed and therefore the surface coverage of cBN is expected to be the same as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.01-2112.02.
Considering claim 3, Tajima teaches where the binder content in the substrate is 20-50 vol.% (Paragraph 5) and therefore the remaining material is considered cBN with an amount of 50-80 vol.% overlapping that which is claimed. See MPEP 2144.05.
Considering claim 5, Tajima does not expressly teach the claimed adhesion as measured by a Calo test. However, as outlined above, Tajima teaches a method of ion etching the cBN substrate to improve adhesion substantially identical to that which is claimed and disclosed and therefore this is expected to be present, absent an objective showing. See MPEP 2112.01-2112.02.
Considering claim 15, Tajima does not expressly teach the claimed etching time. However, as outlined above, Tajima teaches an etching depth substantially overlapping that which is claimed and therefore one would reasonably expect the etching time of Tajima to overlap that which is claimed. See MPEP 2112.02.
Considering claim 16, Tajima teaches where the binder is removed to a depth of 0.5-5 µm (e.g. 500-5,000 nm) (Paragraph 6). See MPEP 2144.05.
Claims 4, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (JPH07-018415 – machine translation) as applied to claim 1 further in view of Derflinger et al. (US 2019/0226075).
Considering claim 4, the teachings of Tajima as applied to claim 1 are outlined above. Tajima teaches a cBN cutting tool, but does not teach where a further ZrN layer is included.
In a related field of endeavor, Derflinger teaches a coated body for a cutting tool (Paragraph 1) for machining steel and cast iron (Paragraph 2). The body is provided with a coating to improve service life (Paragraph 12) and the coating comprises a main layer of a nitride of Al as well as Ti, Cr, etc. (Paragraph 13) and a cover layer of oxynitride and nitride (Paragraph 14). A further outermost layer of ZrN may be included to make it possible to discern wear on a cutting edge of the tool (Paragraph 28).
As Tajima and Derflinger teach cutting tools for machining steel they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Tajima and to further include the ZrN layer taught by Derflinger as this is known to allow for the discernment of wear on the cutting edge and one would have had a reasonable expectation of success.
Considering claim 11, Derflinger teaches where the hard layer may comprise AlTiN (Paragraph 19).
Considering claim 17, Derflinger teaches where the hard coating is deposited by HIPIMS, etc. (Paragraph 30).
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (JPH07-018415 – machine translation) as applied to claim 1 further in view of Kunimori et al. (US 2001/0051076).
Considering claim 6, the teachings of Tajima as applied to claim 1 are outlined above. Tajima teaches a cBN cutting tool, but does not teach where it is attached to a supporting body.
In a related field of endeavor, Kunimori teaches a ball end mill with a cutting blade made of sintered cBN (abstract) used in the machining of iron-based metals (Paragraph 2). The end mill comprises cemented carbide or superheavy alloy for the ball end mill body and a collet holder for the blade portion (Paragraph 12) where the blade portion comprises the cutting edge (Paragraph 9) and is attached to the collet (Paragraph 23).
As both Tajima and Kunimori teach tools for machining iron materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the cBN cutting tool of Tajima with the support structure taught by Kunimori as this is considered a combination of conventionally known cutting tool structures known to afford a tool for machining iron-based materials and one would have had a reasonable expectation of success.
Considering claims 7-8, Kunimori teaches where the blade is brazed to the end mill body (Paragraph 23) which necessitates a joint area between the two as the braze exists to bond the blade and body.
Considering claim 9, Kunimori teaches where the Rz roughness of the cutting blade (e.g. substrate) is 0.1-1 µm to achieve excellent finished surface roughness and high-precision machining (Paragraph 25). See MPEP 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (JPH07-018415 – machine translation) as applied to claim 12 further in view of Kobayashi et al. (US 2013/0260165).
Considering claim 14, the teachings of Tajima as applied to claim 12 are outlined above. Tajima teaches a cBN cutting tool treated by ion etching to improve adhesion (Paragraph 4). However, Tajima does not teach where ion etching is plasma ion etching.
In a related field of endeavor, Kobayashi teaches a cBN sintered body (abstract) used as a cutting tool (Paragraph 4). To improve adhesion to the joining surface with the cutting tool body the cBN sintered body is subjected to surface treatment to remove a portion of the binder phase and this may be done by plasma treatment, electron beam treatment, etc. (Paragraph 75) where the plasma utilizes Ar gas (i.e. plasma ions) (Paragraph 82).
As both Tajima and Kobayashi teach methods of removing binder of cBN cutting tools they are considered analogous. It would have been obvious to one of ordinary skill to modify the teachings Tajima with the plasma ion etching taught by Kobayashi as this is considered a combination of conventionally known elements according to known methods and one would have had a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohtomo (US 2011/0014426), Tsukihara et al. (US 2016/0068449), and Maekawa et al. (US 2019/0017162) teach cBN substrates which are ion etched 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.
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.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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