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 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 claims indefinite because the claim extends the scope of the claim such that it is unclear what is encompassed by the claim (e.g. what is and what is not ‘rod-like’), thereby rendering the scope of the claims unascertainable and the public is not appropriately appraised of the invention. See MPEP § 2173.05(d). This rejection may be overcome by amending to “rod-shaped”.
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 1-2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Waki (JP2010-099769 – machine translation) and claim 8 is rejected over Waki as applied to claim 1 further in view of Hasegawa (US 2018/0161886).
Considering claim 1, Waki teaches a surface coated tool having improved wear and chipping resistance (abstract). The coating comprises a lower layer of first thin layers of Ti1-aMa(C1-xNx) where M is at least one of Mo, Ta, etc. and 0.35 ≤ a ≤ 0.55 and 0 ≤ x ≤ 1 alternated with second thin layers of Ti1-bMb(C1-yNy) where M is at least one of Mo, Ta, etc. and 0.40 ≤ b ≤ 0.60 and 0 ≤ y ≤ 1, and b>a and an upper layer of a third thin layer of Ti1-cMc(C1-xNx) where M is at least one of Mo, Ta, etc. and 0.40 ≤ c ≤ 0.60 and 0 ≤ x ≤ 1 alternated with fourth thin layers of Ti1-dMd(C1-yNy) where M is at least one of Mo, Ta, etc. and 0.45 ≤ d ≤ 0.65 and 0 ≤ y ≤ 1, and d>c (Paragraph 7; Claim 1). Each of the lower layer and upper layer may be considered the claimed multilayered Ta- and Mo-containing multilayer structures as no particular configuration of layers is claimed. See MPEP 2111.
While not expressly teaching a singular example of the claimed 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 Waki as this is considered a combination of conventionally known Ta- and Mo-containing layers with different compositions for Ta and Mo known to afford wear resistant tools and one would have had a reasonable expectation of success. Further, the difference in Mo and Ta contents overlaps 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, Waki teaches where the thin layers are alternately layered (Paragraph 7).
Considering claim 7, Waki teaches where the coating has an overall thickness of 0.8-10 µm (Paragraph 17) and where the thickness of the lower layer TA and upper layer TB has a ratio of 0.8 ≤ TB/TA ≤ 1.2 (Paragraph 7) indicating where each section may have a thickness of 0.4-5 µm when the ratio equal 1 overlapping that which is claimed as well as where the thickness of the first thin layer is 10-20 nm, the thickness of the second thin layer is 12-45 nm, the thickness of the third thin layer is 2-15 nm, and the thickness of the fourth thin layer is 10-40 nm (Paragraph 8) overlapping that which is claimed. See MPEP 2144.05.
Considering claim 8, Waki teaches where the coated tool may be a cutting tool (Paragraph 12), but does not teach the claimed holder and pocket.
In a related field of endeavor, Hasegawa teaches a cutting tool and holder (abstract; Paragraph 5). The holder comprises a body having a rod shape (Fig. 6A-6C) with the cutting insert affixed therein (Paragraph 18) where the cutting insert is has a coating layer (Paragraph 4). The coating is at least one of TiMN where M is at least one of Groups 4-6 of the periodic table (Paragraph 33).
As both Waki and Hasegawa 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 Waki with the tool structure taught by Hasegawa as this is considered a combination of a conventionally known tool and coating have wear resistance known to machine parts and one would have had a reasonable expectation of success.
Allowable Subject Matter
Claims 3-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Waki does not teach or suggest the claimed compositions with relative amounts of the materials.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Selinder et al. (US 6,103,357, Yamamoto et al. (US 2005/0170162), Sakamoto (US 2015/0343535), Tanaka (US 2018/0281079), and Wang (US 2021/0310130) teach coated cutting tools with a multilayer coating 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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