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 .
Election/Restrictions
Newly submitted claims 21-26 are directed to an invention that is
independent or distinct from the invention originally claimed and elected for the following reasons: claim 1-11 which have originally presented and elected and newly submitted claims 21-26 are related but separately usable as
claimed.
Claims 1-11 drawn to a blade including a barrier layer disposed on
a blade body, the barrier layer disposed on the blade body, the barrier body having a second material that does not contain the primary element constituent of a first material; a carbide layer disposed on the barrier layer; and the carbide layer is harder than the blade body and the blade body is harder than the barrier layer.
Claim 26 drawn to a blade for a utility knife including a blade body
having a steel alloy iron as a primary element constituent; and a barrier layer disposed on the blade body, the barrier layer comprising a second material that does not contain iron.
2. The inventions of groups I-II are related but separately usable as
claimed. For example, invention in group I could be used without the barrier layer of the group II which does not contain iron. Conversely, the invention in groups II could be used without the carbide layer which is harder than the blade body and the blade body being harder than the barrier layer of the invention I. There is two-way patentable distinction between each group, and also each has a unique search and examination burden. See MPEP 806.05.
In addition, new claims 21-25 are patentably distinct from claim 8 which has been originally presented and elected. See below.
IA. Claim 8 drawn to a blade including the carbide layer comprises about
16.5 wt% tungsten, about 15.5 wt% chromium, about 4 wt% silicon, about 3.5
wt% iron, about 2.9 wt% boron, about 2 wt% carbon, and a balance of
nickel.
IB. Claims 21-22 drawn to a blade including a barrier layer comprises a
cobalt-chromium alloy having about 28 wt% to about 29 wt% chromium, and
about 5 wt% to about 6 wt% molybdenum.
IC. Claim 23 drawn to a blade including through a continuous separation
between a blade body and a carbide layer, a barrier layer is configured to
prevent diffusion of elements form the blade body into the carbide layer
during deposition of the carbide layer onto the barrier layer.
ID. Claims 24-25 drawn to a blade including a blade body extends from
a second edge across at least 90% of a first surface and a second surface
toward a first edge.
Claim 1 link(s) inventions IA-ID. The restriction requirement among the linked inventions is subject to the nonallowance of the linking claim(s) 1. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104 Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312. Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
The inventions are distinct, each from the other because of the following reasons:
3. The inventions of groups IA-ID are related but separately usable as
claimed. For example, invention in group 1A could be used without the features set forth in inventions of groups IB-ID. Conversely, the invention in groups IB-ID could be used without the feature in invention IA. There is two-way patentable distinction between each group, and also each has a unique search and examination burden. See MPEP 806.05.
4. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
There is a search and/or examination burden for each patentably distinct inventions II and IA-ID above due to the divergent searches involved, and the resultant divergent examination processes.
In this case, the search required for each individual invention may overlap, but the searches do not coincide completely. Therefore, the search performed for the elected invention may not be sufficient to cover the non-elected inventions. Each individual invention requires a different field of search. In addition, the text and subclass searches needed to locate particular features of one invention would not necessarily identify the different features present in the other inventions due to their divergent subject matter. In other words, each invention that includes at least one distinct feature occupies a different area of the prior art and therefore requires a separate field of search.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 102
5. 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 –
(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.
6. Claims 1-7, 9, and 11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Masanori et al. (JP 2002370192 A), hereinafter Masanori. Regarding claim 1, Masanori teaches a blade 1, comprising: a blade body (1b) comprising a first material (carbon tool steel) having a primary elemental constituent (defined by the carbon steel); a barrier layer (1c) disposed on the blade body, the barrier layer comprising a second material (nickel alloy) that does not contain the primary elemental constituent of the first material; a carbide layer (1a) disposed on the barrier layer (1c), the carbide layer comprising a carbide material (cemented carbide particles) and a binder material (defined by the metallic binder of the cemented carbide which is typically cobalt) and the carbide layer forming a cutting edge (Fig. 3) of the blade 1; wherein the barrier layer provides continuous separation between the blade body and the carbide layer. See Figs. 1-3 in Masanori.
Regarding claim 2, Masanori teaches everything noted above including that the carbide material comprises at least one of tungsten carbide, chromium carbide, titanium carbide, tantalum carbide, or niobium carbide. Masanori teaches cemented carbides as the blade material, generally composed of WC (tungsten carbide) containing Co (cobalt). This is also is evidenced by Kobayashi et al. (WO 2021256282 A1). Kobayashi teaches that cemented carbide includes tungsten carbide and cobalt. See page 3, lines 25-34 of the attached translation.
Regarding claim 3, Masanori teaches everything noted above including that the binder material (1c) comprises at least one of nickel, cobalt, chromium, iron, or molybdenum. It should be noted that the barrier layer (1c) is a nickel alloy layer, which includes nickel.
Regarding claim 4, Masanori teaches everything noted above including that the carbide layer (1a) comprises from 25 wt% to 95 wt% of carbide material and from 5 wt% to 75 wt% of binder material. It should be noted that Masanori discloses that the blade has 85%-95% by weight of tungsten carbide (WC) and 5-15% by weight of cobalt (Co). See page 5, lines 8-15 of the attached translation. The blade inherently includes the carbide layer (1a).
Regarding claim 5, Masanori teaches everything noted above including that the first material comprises a steel alloy (carbon steel) and wherein the barrier layer (1c) comprises a cobalt alloy (or nickel alloy). See claims 1-2 of the translation.
Regarding claim 6, Masanori teaches everything noted above including that the carbide layer (1a) is harder than the blade body (1b) and the blade body is harder than the barrier layer (1c; as nickel alloy . It should be noted that carbide layer or cemented carbide is much harder than the carbon tool steel or material of the blade body (1b). In addition, the carbon tool steel is harder than the barrier layer (1c), which is formed from than nickel alloy.
Regarding claim 7, Masanori teaches everything noted above including that the carbide layer (1a) has a hardness in inherently in a range from 800 HV to 1500 HV. It should be noted that the hardness of the cemented carbide is approximately 1250 HV to 2000 HV, which is within the recited range, as evidenced by Kobayashi et al. (WO 2021256282 A1, abstract).
Regarding claim 9, Masanori teaches everything noted above including that the that the blade 1 comprising a first edge, a second edge, a first surface, and a second surface, the cutting edge being the first edge (Fig. 3) and the second edge (Fig. 1A) being on an opposite side of the blade from the first edge, wherein the first surface and the second surface each extend from the first edge to the second edge, the second surface being opposite to the first surface, and wherein the first surface and the second surface define a maximum thickness of the blade, the maximum thickness being 2 mm or less. It should be noted that the maximum thickness could be within 0.3-1.5 mm (page 4, lines 27-30 of the attached translation), which is less than 2 mm.
Regarding claim 11, Masanori teaches everything noted above including that the carbide layer (1a) has a thickness in a range from 0.4 mm to 1 mm. It should be noted that Masanori teaches that the thickness of the blade is in the range of 0.3-1.5 mm (page 4, lines 27-30 of the attached translation). Accordingly, the thickness of the carbide layer (1a), which is similar to the thickness of the blade 1 (shown in Fig. 3 of Masanori), falls within the claimed range of 0.4-1 mm.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Masanori in view of Kobayashi et al. (WO 2021256282 A1), hereinafter Kobayashi.
Regarding claim 2, Masanori teaches everything noted above, but it could be argued that Masanori does not explicitly teach that the carbide material comprises at least one of tungsten carbide, chromium carbide, titanium carbide, tantalum carbide, or niobium carbide. Masanori teaches cemented carbides as the blade material, which are generally composed of WC (tungsten carbide) containing Co (cobalt). It could be argued Masanori does not explicitly teach that the carbide layer (1a) includes one of the recited wear-resistance material. However, Kobayashi teaches a blade 1 form from cemented carbide that comprises tungsten carbide, cobalt, vanadium, tantalum, chromium, and niobium. See page 3, lines 25-28 and page 4, lines 1-3 of the attached translation. It would have been obvious to one having ordinary skill in the art at the time the invention was made to select any of the recited carbide materials as wear-resistant for Masanori’s cutting blade, as taught by Kobayashi, in order to adjust the characteristics such as particle size. See page 3, lines 25-28 of the attached translation in Kobayashi.
Regarding claim 7, Masanori teaches everything noted above including that the carbide layer (1a) has a hardness in inherently in a range from 800 HV to 1500 HV. It should be noted that the hardness of the cemented carbide is approximately 1250 HV to 2000 HV, which is within the recited range. In addition, Kobayashi teaches that the cemented carbide hardness is between 1250 HV to 2000 HV. See the abstract in Kobayashi. It would have been obvious to a person of ordinary skill in the art to provide Masanori’s cemented carbide with the harness, at taught by Kobayashi, in order to ensure sufficient hardness for the blade and enhance durability.
9. Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Masanori. Regarding claim 4, Masanori teaches everything noted above including that the carbide layer (1a) comprises from 25 wt% to 95 wt% of carbide material and from 5 wt% to 75 wt% of binder material. It should be noted that Masanori discloses that the blade has 85%-95% by weight of tungsten carbide (WC) and 5-15% by weight of cobalt (Co). See page 5, lines 8-15 of the attached translation. The blade inherently includes the carbide layer (1a).
It could be argued that Masanori does not explicitly teach that the carbide layer (1a) comprises from 25 wt% to 95 wt% of carbide material and from 5 wt% to 75 wt% of binder material. However, it would have been obvious to one of ordinary skill in the art to adjust the ratio of carbide to binder to achieve desired hardness and toughness as described by Masanori, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 8, Masanori teaches everything noted above except that in an alternative embodiment the carbide layer comprises about 16.5 wt% tungsten, about 15.5 wt% chromium, about 4 wt% silicon, about 3.5 wt% iron, about 2.9 wt% boron, about 2 wt% carbon, and a balance of nickel. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select material and percentage of the materials as recited above for the carbide layer in Masanori in order to achieve desired wear resistance and mechanical properties. Because, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In addition, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
10. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Masanori in view of Wang (2019/0283262 A1) or Green (2009/0064507 A1). Regarding claim 10, Masanori teaches everything noted above except that the second edge comprises one or more notches configured to engage a blade holder of a utility knife. However, Wang teaches a utility blade 1 including a second edge having one or more notches (Fig. 1) to engage a blade holder of a utility knife. Wang also teaches that the utility blade includes a body blade 17 formed from a first material, a barrier layer 19 formed from a second material, and a harden layer 18 form from a third material (Fig. 9.). Wang also teaches that the third material is harder than first material and the first material is harder than the second material. See Figs. 1-9 in Wang. Green also teaches a utility blade 10 including a second edge 12 having one or more notches 24 to engage a blade holder of a utility knife. Green further teaches that the thickness (T) of the blade is between 0.015-0.05 inches which is less than 2 mm. See Figs. 1-9 in Green. It would have been obvious to a person of ordinary skill in the art to provide Masanori’s blade with the notches and dimensions, as taught by Wang or Green, in order to enable the user to use the blade with a utility knife and to facilitate handling of the blade and cutting of a desired workpiece.
Response to Arguments
11. Applicant arguments have been fully considered but are not persuasive. Applicant argues that Masanori et al. fails to disclose the limitation “wherein the barrier layer provides continuous separation between the blade body and the carbide layer” because the nickel alloy layer 1c is formed by diffusion of nickel into both the carbon tool steel base portion 1b and the cemented carbide blade portion 1a, allegedly resulting in a unified structure rather than a barrier layer that continuously separates the components.
This argument is not persuasive because claim 1 does not require the barrier layer to prevent diffusion between the blade body and the carbide layer, nor does claim 1 require complete chemical isolation of the blade body from the carbide layer. Rather, claim 1 merely recites a barrier layer disposed on the blade body and providing continuous separation between the blade body and the carbide layer. The claim is silent regarding diffusion prevention, metallurgical isolation, compositional purity, or maintenance of distinct compositional boundaries between adjacent layers.
Masanori expressly discloses a blade portion 1a made of cemented carbide, a base portion 1b made of carbon tool steel, and an alloy layer 1c disposed therebetween. See, e.g., Abstract; paragraphs [0007], [0010], [0014]-[0018]; and Figs. 1-3. Masanori repeatedly states that the blade portion 1a and base portion 1b are joined via alloy layer 1c. Thus, alloy layer 1c is positioned between the blade portion and the base portion and continuously extends along the interface separating those components.
Applicant further argues that the nickel alloy layer does not provide continuous separation because nickel dissolves into the carbon tool steel and cemented carbide during formation of the alloy layer. However, diffusion of constituent materials into adjacent layers does not negate the existence of an intervening layer disposed between those layers. Claim 1 does not require a sharp compositional boundary or require the barrier layer to remain compositionally distinct from adjacent materials after manufacture. Even if alloy layer 1c contains constituents derived from both the carbon tool steel and cemented carbide, the resulting alloy layer remains an intervening layer disposed between and separating the blade portion and base portion as expressly disclosed by Masanori.
Applicant additionally argues that the present application’s barrier layer is intended to prevent diffusion of iron from the blade body into the carbide layer, citing paragraph [0054] and Figure 6 of the specification. However, these features are not recited in claim 1. Limitations appearing only in the specification may not be imported into the claims. The proper inquiry under 35 U.S.C. 102 is whether the prior art discloses the limitations actually recited in the claim, not whether the prior art performs the same function or achieves the same advantages described in Applicant’s specification.
Applicant’s argument that the nickel alloy layer of Masanori is “specifically selected for the purpose of diffusing” into the adjacent materials is likewise not persuasive. The intended purpose or mechanism of operation of a prior-art structure does not avoid anticipation where the prior-art structure nonetheless satisfies the claimed structural limitations. Regardless of the purpose for which alloy layer 1c is provided, Masanori discloses an alloy layer disposed between the carbon tool steel base portion and the cemented carbide blade portion, thereby providing continuous separation between those components as required by claim 1. Furthermore, Applicant has not identified any disclosure in claim 1 requiring the barrier layer to function as a diffusion barrier, to inhibit migration of iron, or to prevent formation of brittle phases. Such limitations are absent from the claim and therefore cannot be relied upon to distinguish over the reference. Accordingly, Masanori continues to disclose a blade body comprising carbon tool steel, a barrier layer corresponding to alloy layer 1c disposed on the blade body, a carbide layer corresponding to cemented carbide blade portion 1a disposed on the barrier layer, and the barrier layer providing continuous separation between the blade body and the carbide layer. Therefore, Masanori discloses every limitation of claim 1, and the rejection under 35 U.S.C. 102(a)(1) is maintained.
Applicant’s argument appears to equate “continuous separation” with “complete prevention of diffusion.” However, the claim contains no such requirement. A layer can continuously separate two structures while still permitting diffusion or metallurgical bonding across interfaces.
With respect to claim 4, Applicant argues that Masanori does not establish that the relative amounts of carbide material and binder material are result-effective variables. However, Masanori expressly teaches cemented carbide systems comprising carbide particles and a metallic binder and further teaches that such materials are selected to provide desirable wear resistance and impact resistance. Masanori specifically discloses cemented carbide compositions containing 85-95 wt% tungsten carbide and 5-15 wt% cobalt binder. Thus, the relative amounts of carbide and binder are recognized in the art as affecting material properties such as hardness, toughness, wear resistance, and impact resistance. Accordingly, optimization of the carbide-to-binder ratio within a known cemented carbide system would have been a matter of routine experimentation within the level of ordinary skill in the art. Applicant has not provided evidence that the claimed ranges produce unexpected results.
With respect to claim 8, Applicant argues that Masanori does not disclose chromium, silicon, iron, boron, carbon, and nickel in the recited amounts. However, the rejection does not rely on an identical disclosure. Rather, the rejection relies on the well-established principle that selection of known materials and their relative proportions to obtain desired wear resistance, hardness, toughness, and other mechanical properties is within the ordinary skill of the art. The claimed composition merely recites a particular selection of known constituents commonly used in wear-resistant alloy and carbide systems. Applicant has not identified any criticality associated with the recited percentages nor provided evidence of unexpected results attributable to the claimed composition. Applicant further argues that the rejection fails to identify an intended use. However, Masanori is directed to a fiber cutting blade in which wear resistance, durability, hardness, and impact resistance are expressly recognized as important performance characteristics. The rejection relies on these same known objectives. One of ordinary skill in the art would have been motivated to adjust the composition of the carbide layer and select known wear-resistant materials to achieve the desired balance of such properties.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Matsuara et al. (JP 2006093809 A) teach a blade having at least two separate portions made from different materials.
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHASSEM ALIE whose telephone number is (571) 272-4501. The examiner can normally be reached on 8:30 am-5:00 pm EST.
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/GHASSEM ALIE/Primary Examiner, Art Unit 3724
June 24, 2026
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