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 cutting tool with holder and composition overlapping claims 3, 9, and 13 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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (US 2006/0269788 – previously cited) and claim 8 is further rejected over Ishikawa in view of Kusuda (US 2017/0333997 – previously cited).
Considering claim 1, Ishikawa teaches a hard-coated member comprising a hard coating for a cutting tool (abstract; Paragraph 1). The tool comprises a substrate (i.e. base body) of a cemented carbide of WC and a binder of Co (e.g. an iron group element) (Paragraphs 6 and 62). The coating comprises an intermediate layer of alternately laminated A and B layers having different compositions (Paragraph 8). The coating depicted in Fig.1 has alternating A and B layers where a lower B layer is closer to and in contact with the substrate with a further A layer thereon (Paragraph 26). The composition of the B layer is AlwCrxTiySiz where W+X+Y+Z=100 and in atomic percent 30≤Y≤100, 0<W≤50, 0<X<20, and Z≤20 (Paragraph 38) and is considered the instantly claimed adhesion layer where M comprises Cr and Si. The composition of layer A is AlwCrxTiySiz where W+X+Y+Z=100 and in atomic percent 0<Y≤30, 30≤W≤70, 20≤X≤60, and Z≤10 (Paragraph 37) and is considered the instantly claimed wear-resistant layer where M comprises Si.
While not expressly teaching a singular example of the claimed coated tool this would have been obvious to one of ordinary skill in the art in view of the teachings of Ishikawa as this is considered a conventionally known combination of layers for cutting tools and one would have had a reasonable expectation of success. Further, the compositions disclosed by Ishikawa overlap those which are 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, Ishikawa teaches where the thickness of the intermediate layer is 0.1-5 µm (Paragraph 49). See MPEP 2144.05.
Considering claim 3, Ishikawa teaches where the thickness of the A and B layers is 1-70 nm for each individual layer (Paragraph 39). See MPEP 2144.05.
Considering claim 4, Ishikawa is silent regarding the claimed crystallite diameter. However, as outlined above Ishikawa teaches a substantially identical intermediate layer and with composition as that which is claimed and disclosed and where the coating is formed by sputtering and AIP (Paragraph 54) and applicant indicates the instant coating layer may be formed by PVD techniques including sputtering and ion plating (Specification Paragraph 46). As such, one would reasonably expect the coating of modified Kusuda to possess the claimed crystallite diameter 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 5, Ishikawa teaches where the hardness of the intermediate layer is 30-50 GPa (Paragraph 51). See MPEP 2144.05.
Considering claim 6, Ishikawa teaches a lowermost layer between the substrate and intermediate layer (Paragraph 26) where the composition of the lowermost layer is a nitride of Al, Cr, Ti, and Si preferably containing 50 at.% or more Al (Paragraph 45) and examples including Al52Ti48N, etc. are disclosed (Table 3). See MPEP 2144.05.
Considering claim 7, Ishikawa teaches where the thickness of the A and B layers is 1-70 nm for each individual layer (Paragraph 39) overlapping the claimed thickness not being greater. See MPEP 2144.05.
Considering claim 8, Ishikawa teaches a cutting tool with layering and composition overlapping that which is claimed as outlined above. See MPEP 2144.05. However, Ishikawa does not teach the claimed tool structure of holder with a rod shape and pocket.
In a related field of endeavor, 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). The tool structure is taught to have improved durability (Paragraph 56).
As both Ishikawa and Kusuda teach coated 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 Ishikawa with the tool structure disclosed by Kusuda as this is considered a combination of a conventionally known coated tool and cutting tool structure known to have improved durability and one would have had a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 04 June 2026 regarding Double Patenting Rejections have been fully considered but they are not persuasive. Applicant argues that the double patenting rejection should be held in abeyance until the rejection becomes non-provisional (remarks p.5, 1st section). This is not persuasive as outlined above, the instant claims and those of the ‘675 application overlap in scope necessitating said rejection. Therefore, the double patenting rejection is maintained.
Applicant’s arguments, see remarks p.5, last section, filed 04 June 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claim 8 has been withdrawn. Applicant has amended the claim to remove indefiniteness.
Applicant’s arguments, see remarks pp.6-7, filed 04 June 2026, with respect to the rejection(s) of claim(s) 1-8 in view of Kusuda in view of Zheng under 35 USC 103 have been fully considered and are persuasive. Zheng does not teach the amended adhesion and wear layer compositions of d greater than zero. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ishikawa and Kusuda as outlined above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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