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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 10, and 22 of U.S. Patent No. 11,292,750. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites an earth-boring tool of a cutting element and cutting table comprising inter-bonded diamond particles with thermally stable A3XZ1-n precipitate. This is patentably indistinct of claim 2 of the ‘750 patent which recites a cutting element comprising a supporting substrate and a cutting table thereon of inter-bonded diamond particles with interstitial spaces containing thermally stable κ-carbide precipitates of Co3AlC1-x where 0<x<0.5. The instant claims and those of the ‘750 patent recite substantially identical cutting elements with inter-bonded diamond particles with overlapping compositions and are obvious in view of each other.
Instant claim 2 recites a ternary κ-carbide overlapping claim 2 of the ‘750 patent. Instant claim 3 recites materials overlapping claim 2 of the ‘750 patent. Instant claim 4 recites materials overlapping those of claim 1 of the ‘750 patent. Instant claim 5 recites table features overlapping claim 10 of the ‘750 patent. Instant claim 6 κ-carbide materials overlapping claim 1 of the ‘750 patent. Instant claims 7-9 recite materials overlapping claim 2 of the ‘750 patent. Instant claims 10-11 recite recites materials overlapping claim 1 of the ‘750 patent. Instant claim 12 recites FCC precipitates overlapping claim 3 of the ‘750 patent. Instant claims 13-15 and 20 recite a supporting substrate and materials overlapping claim 22 of the ‘750 patent. Instant claim 16 recites materials overlapping claim 2 of the ‘750 patent. Instant claims 17-18 recite coverage and separation encompassed by the structure of claim 1 of the ‘750 patent. Instant claim 19 recites precipitates overlapping claim 1 of the ‘750 patent.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Montross et al. (US 2010/0199573) and claims 2-13 and 15-19 are rejected over Montross as applied to claim 1 further in view of Bird et al. (US 2017/0254153).
Considering claim 1, Montross teaches an ultrahard composite (abstract) used in rock drilling, grinding, etc. (Paragraphs 2 and 10) (e.g. an earth-boring tool) comprising a compact (Paragraph 34) (e.g. a cutting element comprising a cutting table). The ultrahard composite comprises diamond grains with a binder phase between grains of a formula MxM’yCz (e.g. inter-bonded diamond particles with carbide precipitate there between) (Paragraphs 23 and 104) where M is a transition metal preferably of Co, Fe, Ni, etc. (Paragraph 30), M’ is preferably Al, Ga, In, etc. (Paragraph 31) where x ranges from about 2.5-5.0, y ranges from about 0.5-3.0, and z ranges from about 0.1-1 (Paragraphs 27-29).
While not expressly teaching a singular example of the claimed earth-boring tool this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Montross as this is considered a conventionally known combination of diamond and binder of carbide materials known to form thermally stable diamond compacts and one would have had a reasonable expectation of success. Further, the ranges disclosed by Montross overlap 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 claim 2, Montross teaches a ternary carbide material for the binder with the diamond particles, but does not teach where it is κ-carbide.
In a related field of endeavor, Bird teaches polycrystalline diamond compacts (abstract) used in earth-boring tools (Paragraph 2) where the compact comprises a plurality of grains of diamond bonded to one another with a κ-carbide phase (Paragraph 8) and the carbide material may be between the diamond grains (Paragraph 32). The κ-carbide material is taught to be thermodynamically stable which is beneficial to the thermal stability of the tool (Paragraph 56).
As both Montross and Bird teach cutting tools 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 Montross with the κ-carbide taught by Bird as this is known to be beneficial to thermal stability and one would have had a reasonable expectation of success.
Considering claim 3, Montross teaches where M is preferably Co, Fe, Ni, Mn, and Cr (Paragraph 51) and M’ is Al, Ga, In, Ge, Sn, Pb, Tl, and Mg (Paragraph 52) with stoichiometries as outlined above. Additionally, Montross teaches examples of Co3SnC0.7 (Paragraph 104).
Considering claim 4, Montross teaches κ-carbide binder materials comprising non-Co materials (Paragraphs 51-52) and is therefore optionally free of Co.
Considering claim 5, Bird teaches where the compact may be chamfered (Paragraph 28).
Considering claim 6, Montross teaches where the carbide MxM’yCz where M is at least one metal (Paragraph 23) encompassing quaternary carbides.
Considering claims 7-8, Montross teaches where M’ is Al, Ga, In, Ge, Sn, Pb, Tl, and Mg (Paragraph 52).
Considering claim 9, Montross teaches where M is preferably Co, Fe, Ni, Mn, and Cr (Paragraph 51) and teaches M’ (i.e. X) materials overlapping that which is claimed and therefore is considered to possess the claimed enhanced stability as a material and its properties are inseparable, absent and objective showing. See MPEP 2112.01.
Considering claims 10-11, Montross teaches κ-carbide binder materials comprising non-Co materials (Paragraphs 51-52) and is therefore optionally free of Co and other catalyst materials.
Considering claim 12, Bird teaches where the carbide phase may comprise a FCC L12 materials (Paragraphs 47-48).
Considering claim 13, Montross teaches where the diamond may be joined to a backing of cemented carbide (Paragraph 81) and Bird teaches where the diamond is joined to a substrate generally of cobalt-cemented tungsten carbide (Paragraph 30) and comprises an alloy (Paragraph 53) and where the hard particles are mixed with the metals (Paragraph 41) and is considered to meet the claimed homogenized binder.
Considering claim 15, Bird teaches the use of Co for the cemented carbide (Paragraph 30) which has a melting point of 1495 °C. See MPEP 2144.05.
Considering claim 16, Montross teaches where M’ is Al, Ga, In, Ge, Sn, Pb, Tl, and Mg (Paragraph 52).
Considering claim 17, Montross teaches in Figure 5 where the diamond grains are covered by the binder which is considered to meet the claimed ‘substantially covered’ surfaces. See MPEP 2111.01.
Considering claim 18, Montross teaches where the carbides bind free solvent (Paragraph 57) which is considered to separate the solvent/catalyst from the diamond particles.
Considering claim 19, Montross teaches where the carbide is MxM’yCz (Paragraph 23) where x ranges from about 2.5-5.0, y ranges from about 0.5-3.0, and z ranges from about 0.1-1 (Paragraphs 27-29) and is optionally free of binary carbides.
Allowable Subject Matter
Claims 14 and 20 may be placed in condition for allowance if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if a terminal disclaimer were filed over US 11,292,750 as outlined above.
The following is a statement of reasons for the indication of allowable subject matter: Montross does not reasonably suggest where the binder is free of each of Co, Ni, and Fe as these are required materials and neither Montross nor Bird suggest the combination of the table with the claimed supporting substrate with composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fang et al. (US 2002/0194955), Jonker et al. (US 2011/0226532), and Zhang et al. (US 2017/0297960) teach cutting tools demonstrating the level of ordinary skill in the art.
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
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