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 Objections
Claims 6 and 13 are objected to because of the following informalities:
In reference to claims 6 and 13, the limitation “(excluding Cr)” is recited in each of the claims. The parenthetical is improper. Only reference characters that are in the drawing should be included in parenthesis in the claims. See MPEP 608.01(m). It is suggested to amend “(excluding Cr)” to “, excluding Cr,”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-14 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.
In reference to claim 1, the limitation “the coating layer contains at least one element selected from Group 4a, 5a and 6a elements under the periodic table, Al, Si, B, Y, and Mn, and at least one element selected from C and N” is recited in lines 4-6. Group 4a includes C and Si and Group 5a includes N, it is unclear if the repetition of Si, C and N is intentional. Further, while limitations form the Specification are not read into the claims, claims are interpreted in light of the Specification. The Specification discloses using coatings including Ti, Al, Cr, W, Nb, and Si. Group 4 of the periodic table includes Ti, Group 5 includes Nb and Group 6 includes Cr and W. It is unclear if Group 4a, 5a and 6a are indented to refer to the specific elements of Group 4, 5 and 6 of the periodic table disclosed in the original disclosure.
Additionally, it is unclear from the claim language if the coating layer is meant to contain (a) at least one element selected from Group 4a, 5a and 6a elements under the periodic table, (b) at least one selected from Al, Si, B, Y and Mn and (c) at least one element or the coating layer is meant to contain (a) at least one element selected from Group 4a, 5a and 6a elements under the periodic table, Al, Si, B, Y and Mn and (b) at least one element selected from C and N. For the purpose of compact prosecution, the limitation will be interpreted as the coating layer contains at least one element selected from Si, Ge, Sn, Pb, Fl, P, As, Sb, Bi, Mc, O, S, Se, Te, Po, Lv, Al, Si, B, Y and Mn and at least one element selected from C and N. However, clarification is requested.
Regarding dependent claims 2-14, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
In reference to claim 9, the limitation “rod-like” is recited in line 2. The limitation “rod-like” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “like”), thereby rendering the scope of the claim unascertainable. Terms such as “-like” are similar to terms such as “or the like” or “and the like” which have been held to be indefinite in a claim since they extend the otherwise definite scope of terms to an indefinite scope. See Ex parte Caldwell, 1906 CD 58 (Commr. Pats. 1905); Ex parte Remark, 15 USPQ2d 1498 (BPAI 1990). Also similar to the use of “-type” which has been held to be indefinite in a claim for these reasons. See Ex parte Copenhaver, 109 USPQ 118. See MPEP 2173.05(b)(E).
In reference to claims 6 and 13, the limitation “at least one selected from Group 4a, 5a, and 6a elements (excluding Cr) in the periodic table” is recited in each of the claims. The inclusion of “excluding Cr” in the claims makes it unclear if Group 6a is meant to refer to Group 6 (alternatively, Group 6b) of the periodic table given that Groups 4a, 5a and 6a do not include Cr. For the purpose of compact prosecution, the limitation will be interpreted as M does not include Cr. However, clarification is requested.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18/841,677 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
In reference to claims 1-3, 6 and 10-14, copending Application No. 18/841,677 claims a coated tool comprising a base body and a coating layer located on the base body (claim 1, lines 1-4) (corresponding to a coated tool comprising: a base body; and a coating layer located on a surface of the base body). The coating layer comprises an adhesion layer in contact with the base body and wear-resistant layer located on the adhesion layer (claim 1; lines 5-6) (corresponding to the coating layer comprises a cohesion layer in contact with the base body and a wear-resistant layer, and the wear-resistant layer is a single layer). The adhesion layer is an alloy layer containing TixAlyMz-, wherein M is at least one selected from Group 4a, 5a and 6a elements in the periodic table and Si, and 40 ≤ x ≤ 80 and 0 ≤ y ≤ 55, provided that x+y+z = 100, in atomic ratio (claim 1; lines 7-9).
Copending Application No. 18/841,677 further claims the wear-resistant layer contains TiaAlbCrcMd and at least one nonmental selected from carbon, nitrogen and oxygen, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, and 15 ≤ a ≤ 40, 55 ≤ b ≤ 75, 10 ≤ c ≤ 20, and 0 ≤ d ≤ 15, provided that a+b+c+d = 100, in atomic ratio (claim 1; lines 10-13) (corresponding to the coating layer contains at least one element selected from Group 4a, 5a, and 6a, elements under the periodic table, Al, Si, B, Y, and Mn, and at least one element selected from C and N; the wear-resistant layer contains: TiaAlbCrcMd, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, and 15 ≤ a ≤ 40, 55 ≤ b ≤ 75, 10 ≤ c ≤ 20, and 0 ≤ d ≤ 15, provided that a+b+c+d = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen).
Copending Application No. 18/841,677 further claims the coating layer comprises an intermediate layer between the adhesion layer and the wear-resistant layer (claim 6, lines 1-3) (corresponding to the coating layer comprises the cohesion layer in contact with the base body, an intermediate layer in contact with the cohesion layer, and a wear-resistant layer in contact with the intermediate layer). The intermediate layer contains TieAlfMg and at least one nonmetal selected from carbon, nitrogen and oxygen, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, and 0 ≤ e ≤ 55 and 40 ≤ f ≤ 80, provided that e + f + g = 100, in atomic ratio (claim 6, lines 4-7) (corresponding to the intermediate layer contains: TieAlfMg, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, and 0 ≤ e ≤ 55 and 40 ≤ f ≤ 80, provided that e + f + g = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen). The intermediate layer has a thickness not greater than the thickness of the wear-resistant layer (claim 7) (corresponding to a thickness of the intermediate layer is less than a thickness of the wear-resistant layer).
Given that the coated tool of copending Application No. 18/841,677 is substantially identical to the present claimed coated tool in composition and structure, it is clear that coated tool of copending Application No. 18/841,677 would inherently have a first difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 1500 nm or less is 15% or less of the maximum value, the first difference is 8% or less of the first maximum value, the reflectance of the coating layer in the wavelength range of 400 nm or more and 1500 nm or less is greater after use of the coated tool than before use, and a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 800 nm or less is a second difference, a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 800 nm or more and 1500 nm or less is a third difference, and the second difference is smaller than the third difference.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01)
While the copending claims further includes the base body comprises a hard phase containing at least WC and a metal binder phase containing an iron group element. In light of the open language of the present claims, i.e., “comprising”, it is clear that the present claims are open to the inclusion of the additional limitation of the copending claims.
In reference to claim 4, copending Application No. 18/841,677 claims the wear-resistant layer has a Vickers hardness of 28 GPa or more (claim 5) (corresponding to the wear-resistant layer has a Vickers hardness of 28 GPa or more).
In reference to claim 5, copending Application No. 18/841,677 claims the adhesion layer has a thickness of 2 nm or more and 8 nm or less (claim 3) (corresponding to the cohesion layer has a thickness of 2 nm or more and 8 nm or less).
In reference to claim 7, copending Application No. 18/841,677 claims the coating layer has a thickness of 2.5 µm or more and 10 µm or less (claim 2) (corresponding to the coating layer has a thickness of 2.5 µm or more and 10 µm or less).
In reference to claim 8, copending Application No. 18/841,677 claims the wear-resistant layer includes a crystallite having a diameter of 200 Å or less (claim 4) (corresponding to the coating layer has a crystallite diameter of 200 Å or less).
In reference to claim 9, copending Application No. 18/841,677 claims a cutting tool comprising: a holder having a rod-like shape and comprising a pocket at an end portion thereof; and the coated tool according to claim 1 located in the pocket (claim 8) (corresponding to a cutting tool comprising: a holder having a rod-like shape and comprising a pocket at an end portion thereof; and the coated tool according to claim 1 located in the pocket).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/842,022 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
In reference to claims 1-2 and 10-12, copending Application No. 18/842,022 claims a coated tool comprising a base body and a coating layer located on the base body (claim 1, lines 1-3; claim 2, lines 1-3) (corresponding to a coated tool comprising: a base body; and a coating layer located on a surface of the base body). The coating layer comprises cubic crystal composed of at least one element selected from Group 4a, 5a, and 6a elements under the periodic table, Al, Si, B, Y, and Mn, and at least one element selected from C and N (claim 1, lines 4-6; claim 2, lines 4-6)
(corresponding to the coating layer contains at least one element selected from Group 4a, 5a, and 6a, elements under the periodic table, Al, Si, B, Y, and Mn, and at least one element selected from C and N).
Given that the coated tool of copending Application No. 18/842,022 is substantially identical to the present claimed coated tool in composition and structure, it is clear that coated tool of copending Application No. 18/842,022 would inherently have a first difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 1500 nm or less is 15% or less of the maximum value, the first difference is 8% or less of the first maximum value, the reflectance of the coating layer in the wavelength range of 400 nm or more and 1500 nm or less is greater after use of the coated tool than before use, and a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 800 nm or less is a second difference, a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 800 nm or more and 1500 nm or less is a third difference, and the second difference is smaller than the third difference.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01)
While the copending claims further includes the coating layer having a distribution of X-ray intensity. In light of the open language of the present claims, i.e., “comprising”, it is clear that the present claims are open to the inclusion of the additional limitation of the copending claims.
In reference to claims 3 and 4, copending Application No. 18/842,022 claims the coating layer comprises a cohesion layer in contact with the base body and a wear-resist layer located on the cohesion layer, and the wear-resistant layer has a Vickers hardness of 28 GPa or more (claim 5; claim 11) (corresponding to the coating layer comprises a cohesion layer in contact with the base body and a wear-resistant layer, and the wear-resistant layer is a single layer; the wear-resistant layer has a Vickers hardness of 28 GPa or more).
In reference to claims 3 and 5, copending Application No. 18/842,022 claims the coating layer comprises a cohesion layer in contact with the base body and a wear-resist layer located on the cohesion layer, and the cohesion layer has a thickness of from 2 nm to 8 nm (claim 6; claim 12) (corresponding to the coating layer comprises a cohesion layer in contact with the base body and a wear-resistant layer, and the wear-resistant layer is a single layer; the cohesion layer has a thickness of 2 nm or more and 8 nm or less).
In reference to claim 6, copending Application No. 18/842,022 further claims the coating layer comprises a cohesion layer in contact with the base body, an intermediate layer in contact with the cohesion layer, and a wear-resistant layer in contact with the intermediate layer, and the intermediate layer comprises: TieAlfMg, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, 0 ≤ e ≤ 55, 40 ≤ f ≤ 80, provided that e + f + g = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen (claim 7; claim 13) (corresponding to the coating layer comprises the cohesion layer in contact with the base body, an intermediate layer in contact with the cohesion layer, and a wear-resistant layer in contact with the intermediate layer, and the intermediate layer comprises: TieAlfMg, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, 0 < e <55, 40 < f < 80, provided that e + f + g = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen).
In reference to claim 7, copending Application No. 18/842,022 claims the coating layer has a thickness from 2.5 µm to 10 µm (claim 3; claim 9) (corresponding to the coating layer has a thickness of 2.5 µm or more and 10 µm or less).
In reference to claim 8, copending Application No. 18/842,022 claims a crystallite diameter of the cubic crystal is 200 Å or less (claim 4; claim 10) (corresponding to the coating layer has a crystallite diameter of 200 Å or less).
In reference to claim 14, copending Application No. 18/842,022 claims a cutting tool comprising a holder having a rod-like shape, the holder comprising a pocket at an end portion thereof; and the coated tool according to claim 2 located in the pocket (claim 14) (corresponding to a cutting tool comprising a holder having a rod-like shape, the holder comprising a pocket at an end portion thereof; and the coated tool according to claim 1 located in the pocket).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 6 and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Setoyama et al. (US 2014/0193623) (Setoyama).
In reference to claims 1-3, 6 and 10-13, Setoyama discloses a surface-coated cutting tool having a coating film formed on a base material ([0001]; [0010]; [0020]) (corresponding to a coated tool comprising: a base body; and a coating layer located on a surface of the base body). The coating film includes at least a wear-resistant layer and an adhesion-resistant layer ([0010]). The coating can include the wear-resistant layer, a first adherent layer, a second adherent layer and the adhesion-resistant layer formed in this order as the coating film on the base material by an arc ion plating method ([0066]-[0073]; [0096]; [0131]) (corresponding to the coating layer comprises a cohesion layer in contact with the base body and a wear-resistant layer; the coating layer comprises the cohesion layer in contact with the base body, an intermediate layer in contact with the cohesion layer, and a wear-resistant layer in contact with the intermediate layer).
The adhesion-resistant layer is located at an outermost surface of the coating film and is composed of a nitride expressed by (AlaCrb-Ti1-a-b)N, wherein a+b<0.99, b>0.01, and 0.2b+0.7<a ([0029]-[0031]) (corresponding to the coating contains at least one element selected from Group 4a, 5a and 6a elements under the periodic table, Al, Si, B, Y, and Mn, and at least one element selected from C and N; a wear-resistant layer, and the wear-resistant layer is a single layer; the wear-wear resistant layer contains: TiaAlbCrcMd, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, 15 ≤ a ≤ 40, 55 ≤ b ≤ 75, 10 ≤ c ≤ 20, 0 ≤ d ≤ 15, provided that a + b+ c + d = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen). For example the composition of the adhesion-resistant layer is Al0.75Cr0.1Ti0.15N (i.e., TiaAlbCrcMd, where a = 15, b = 75, c = 10, d = 0) (Table 1, Example 11).
Setoyama further discloses the adherent layer comprises the first adherent layer and the second adherent layer between the wear-resistant layer and the adhesion-resistant layer ([0066]-[0067]) (corresponding to an intermediate layer). The first adherent layer has a composition of Ti0.3Al0.7N ([0072]; Table 3) (corresponding to the intermediate layer contains: TieAlfMg, wherein M is at least one metal selected from Group 4a, 5a and 6a elements (excluding Cr) in the periodic table and Si, 0 ≤ e ≤ 55, 40 ≤ f ≤ 80, provided that e + f + g = 100, in atomic ratio; and at least one nonmetal selected from carbon, nitrogen and oxygen).
Given that the coating film of Setoyama is substantially identical to the present claimed coating layer in composition, structure and produced by a substantially identical process (i.e., arc ion plating), the coating film of Setoyama would inherently have a first difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 1500 nm or less is 15% or less of the maximum value, the reflectance of the coating layer in the wavelength range of 400 nm or more and 1500 nm or less is greater after use of the coating and a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 400 nm or more and 800 nm or less is a second difference, a difference between a maximum value and a minimum value of a reflectance of the coating layer in a wavelength range of 800 nm or more and 1500 nm or less is a third difference and the second difference is smaller than the third difference.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
In reference to claim 4, Setoyama discloses the limitations of claim 3, as discussed above. The adhesion-resistant layer is located at an outermost surface of the coating film and is composed of a nitride expressed by (AlaCrb-Ti1-a-b)N, wherein a+b<0.99, b>0.01, and 0.2b+0.7<a ([0029]-[0031]). For example the composition of the adhesion-resistant layer is Al0.75Cr0.1Ti0.15N (i.e., TiaAlbCrcMd, where a = 15, b = 75, c = 10, d = 0) (Table 1, Example 11).
Given that the adhesion-resistant layer of Setoyama is substantially identical to the present claimed coating layer in composition and produced by a substantially identical process (i.e., arc ion plating), the adhesion-resistant layer of Setoyama would inherently have a Vickers hardness of 28 GPa or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
In reference to claim 14, Setoyama discloses the limitations of claim 6, as discussed above. Setoyama further discloses a thickness of the adhesion-resistant layer has a thickness of 0.5 to 8 µm ([0038]). The adherent layer comprising the first adherent layer having a thickness of 30 nm to 0.1 µm and the second adherent layer having a thickness of 10 nm to 0.2 µm ([0066]-[0070]). Thus, it is clear the thickness of the adherent layer is less than the thickness of the adhesion-resistant layer (corresponding to a thickness of the intermediate layer is less than a thickness of the wear-resistant layer).
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 5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Setoyama.
In reference to claim 5, Setoyama discloses the limitations of claim 3, as discussed above. Setoyama further discloses the wear-resistant layer has a multilayer structure in which an A layer and a B layer are alternately stacked ([0039]-[0041]). The A layer has a thickness of 1 to 10 nm ([0049]) (corresponding to the cohesion layer has a thickness of 2 nm or more and 8 nm or less). Setoyama teaches a range which overlaps the presently claimed range.
Setoyama differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
In reference to claim 7, Setoyama discloses the limitations of claim 1, as discussed above. Setoyama further discloses the coating film has a thickness of 2 µm to 30 µm ([0012]; [0026]) (corresponding to the coating layer has a thickness of 2.5 µm or more and 10 µm or less). Setoyama teaches a range which overlaps the presently claimed range.
Setoyama differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
In reference to claim 8, Setoyama discloses the limitations of claim 1, as discussed above. Setoyama further discloses the adhesion-resistant layer has an average gran size equal to or smaller than 40 nm (i.e., 400 Å) (claim 19; [0034]; Table 21) (corresponding to the coating layer has a crystallite diameter of 200 Å or less). Setoyama teaches a range which overlaps the presently claimed range.
Setoyama differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Setoyama as applied to claim 1 above, and further in view of He et al. (WO 2019/146710) (He).
It is noted that when utilizing WO 2019/146710, the disclosures of the reference are based on US 2021/0138557 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/1467101 are found in US 2021/146710.
In reference to claim 9, Setoyama teaches the limitations of claim 1, as discussed above. Setoyama teaches the surface-coated cutting tool is a coated cutting insert for machining or milling ([0001]; [0021]) (corresponding to a cutting tool).
Setoyama does not explicitly teach the cutting tool includes a rod-like holder comprising a pocket at an end portion thereof; and the coated cutting insert is located in the pocket, as presently claimed.
He teaches a coated tool for use in a cutting process such as milling and a cutting tool including the coated tool ([0001]; [0085]). The cutting tool includes a holder which extends from a first end toward a second end and includes a pocket located at a side of the first end, and the coated tool located in the pocket ([0004]; [0080]-[0084]; FIG. 10) (corresponding to a rod-like holder comprising a pocket at an end portion thereof; and the coated tool located in the pocket). The pocket is a part that permits attachment of the coated tool ([0081]).
In light of the motivation of He, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the coated cutting insert of Setoyama be in the cutting tool including a holder which extends from a first end toward a second end and includes a pocket located at a side of the first end, and the coated cutting insert located in the pocket, in order to permit attachment of the coated cutting insert and provide a cutting tool for used in a milling process, and thereby arriving at the presently claimed invention.
Conclusion
The prior art made of record and not relied upon, namely Zhu et al. (US 2008/0075543), Waki et al. (US 2010/0129168), Rutten et al. (US 2019/0161849) and Yamasaki (WO 2020/196631 English equivalent US 2022/0176462), is considered pertinent to applicant's disclosure. However, the rejections using these references would be cumulative to the rejections of record set forth above.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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