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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5, 7-9, and 13-14 of copending Application No. 18/841,675 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a coated tool of a base body of WC and a Fe-group binder, a coating layer of an adhesion layer of TixAlyMz with composition and a wear-resistant layer of TiaAlbCrcMd with composition. This is patentably indistinct of claims 3 and 13 of the ‘675 application which recites a coated tool of a base body and coating layer of at least one element of Groups 4a-6a, Al, Si, B, Y, and Mn as well as C and/or N, a difference in reflectance, a further cohesion layer, an intermediate layer of TieAlfMg with composition, and a wear-resistant layer of TiaAlbCrcMd with composition. The instant claims and those of the ‘675 application recite substantially identical coated cutting tools with layers and compositions overlapping and the courts have held that this establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 2 recites a thickness overlapping claim 7 of the ‘675 application. Instant claim 3 recites a thickness overlapping claim 5 of the ‘675 application. Instant claim 4 recites a crystallite diameter overlapping claim 8 of the ‘675 application. Instant claim 5 recites a Vickers hardness overlapping claims 4 and 13 of the ‘675 application. Instant claim 6 recites an intermediate layer with composition overlapping claim 13 of the ‘675 application. Instant claim 7 recites a thickness overlapping claim 14 of the ‘675 application. Instant claim 8 recites a holder overlapping claim 9 of the ‘675 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 8 is rejected under 35 U.S.C. 112(b) 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.
Regarding claim 8, the phrase "rod-like" renders the claim indefinite because the claim include elements not actually disclosed (those encompassed by "-like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). This rejection may be overcome by amending to “a holder having a rod shape”.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kusuda (US 2017/0333997) in view of Zheng et al. (CN106086806 – machine translation).
Considering claim 1, Kusuda teaches a cutting tool and holder (Paragraph 1) comprising a cutting insert (Paragraph 7) where the insert is formed of a cemented carbide of WC-Co (a hard phase of WC and a metal binder of an iron group element) (Paragraph 29) and may be coated with a PVD film (Paragraph 31). However, Kusuda does not teach the claimed coating layer.
In a related field of endeavor, Zheng teaches wear-resistant coatings (abstract) for use with cutting tools (Paragraph 4). The coating comprises a AlTiCrN high-temperature wear-resistant coating (Paragraph 9) and includes an AlTi bonding layer (i.e. adhesion layer), a AlTiN transition layer, and a AlTiCrN main wear-resistant layer (Paragraph 11) on a cemented carbide substrate (Paragraph 13). The AlTi bonding layer comprises in atomic percentages Ti: 33-50% and Al: 50-67% (Paragraph 11). The AlTiCrN wear-resistant layer has a composition in atomic percentages of Al: 10-30%, Ti: 10-20%, Cr: 1-30%, N: 49-60% (Paragraph 11) and when considering only the metal content this corresponds to Al: (10-30%)/(21-80%), Ti: (10-20%/(21-80%), Cr: (1-30%/21-80%). The composition of the AlTi bonding layer and AlTiCrN wear-resistant layer overlaps the claimed adhesion layer and wear-resistant layer, respectively, where Mz and Md = zero 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.
As both Kusuda and Zheng 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 Kusuda with the coating taught by Zheng as this is known to afford excellent mechanical properties, low coefficient of friction, and excellent high-temperature wear-resistance (Zheng Paragraph 9) and one would have had a reasonable expectation of success.
Considering claim 2, Zheng teaches where the thickness of the AlTi bonding layer is 0.1 nm – 1 µm, the thickness of the AlTiN transition layer 0.5-2 µm, and the thickness of the AlTiCrN wear-resistant layer is 1-3 µm (Paragraph 11) corresponding to a total thickness of about 1.5-5 µm overlapping that which is claimed. See MPEP 2144.05.
Considering claim 3, Zheng teaches where the thickness of the AlTi bonding layer is 0.1 nm – 1 µm (Paragraph 11). See MPEP 2144.05.
Considering claims 4-5, Zheng is silent regarding the claimed crystallite diameter and Vickers hardness. However, as outlined above, modified Kusuda teaches a substantially identical wear-resistant layer with composition as that which is claimed and Zheng teaches where the coating is formed by magnetron sputtering (Paragraph 11) and applicant indicates the instant coating layer may be formed by PVD techniques including sputtering (Paragraph 46). As such, one would reasonably expect the coating of modified Kusuda to possess the claimed crystallite diameter and Vickers hardness as substantially identical materials formed in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.
Considering claim 6, Zheng teaches a AlTiN transition layer between the bonding layer and wear-resistant layer with a composition in atomic percentages of Ti: 15-25%, Al: 25-35%, and N: 40-60% (Paragraph 11) and when considering only the metal content this corresponds to Ti: (15-25%/(40-60%) and Al: (25-35%)/(40-60%) which overlaps the claimed formula where Mg = zero.
Considering claim 7, Zheng teaches where the thickness of the AlTiN transition layer is 0.5-2 µm and the thickness of the AlTiCrN wear-resistant layer is 1-3 µm (Paragraph 11) overlapping the claimed range. See MPEP 2144.05.
Considering claim 8, Kusuda teaches where the holder has a rod shape and comprises a pocket at the end where the insert is mounted (Paragraph 26).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Weber (US 2006/0222891), Ishikawa (US 2006/0269788), and Gothelid et al. (US 2018/0209031) teach coated cutting tools 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.
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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