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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 6, and 8 of copending Application No. 18/851061 (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 and coating of cubic crystals what displays a Ih(100)/Ih(002) relationship after heating for 0.5 hours in a non-oxidizing atmosphere. This is patentably indistinct of claims 4 and 6 of the ‘061 application which recite a coated tool of a base body and coating layer of Ta-containing multilayer structures comprising (AlaTibTac)N where 0.35≤a0.65, 0.3≤b≤0.5, 0.02≤c≤0.2 and a+b+c=1, and Mo-containing multilayer structures comprising (AldCreSifMog)N where 0.35≤d≤0.65, 0.2≤e≤0.45, 0.03≤f≤0.15, 0.02≤g≤0.2 where d+e+f+g=1. Instant claim 1 and claims 4 and 6 of the ‘061 application do not expressly overlap. However, applicant states in Paragraphs 49 and 57 of the originally filed specification where the coating which displays the claimed cubic crystal structure and XRD spectrum after heating is AlaTibTac)N where 0.35≤a0.65, 0.3≤b≤0.5, 0.02≤c≤0.2 and a+b+c=1 or (AldCreSifMog)N where 0.35≤d≤0.65, 0.2≤e≤0.45, 0.03≤f≤0.15, 0.02≤g≤0.2 where d+e+f+g=1. As such, instant claim 1 is considered patentably indistinct of claims 4 and 6 of the ‘061 application as a material and its properties are inseparable, absent an objective showing.
Instant claims 2 and 4-5 recites a XRD relationship overlapping claims 4 and 6 of the ‘061 application for the same rationale as set forth above. Instant claim 3 recites a cutting tool overlapping claim 8 of the ‘061 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 3 is 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.
Regarding claim 3, the phrase "rod-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "-like"), thereby rendering the scope of the claim(s) unascertainable. 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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 2018/0281077) and claim 3 is rejected over Tanaka as applied to claim 1 above further in view of Kusuda (US 2017/0333997 – previously cited).
Considering claim 1, Tanaka teaches a coated cutting tool (abstract) comprising an indexable insert, drill, etc. (Paragraph 67). The tool comprises a substrate (i.e. base body) and coating (Paragraph 10). The coating comprises (AlxTiyM1-x-y)N where M is one or more of Ta, Mo, Cr, Si, etc. and where 0.60≤0.85, 0≤y≤0.40, and where 0.60≤x+y≤1.00 (Paragraph 12) and comprises cubic crystals (Paragraph 39). Tanaka does not expressly teach the claimed XRD spectrum after heating. However, applicant states in Paragraph 49 of the originally filed specification where the coating may be (AlaTibTac)N where 0.35≤a0.65, 0.3≤b≤0.5, 0.02≤c≤0.2 and a+b+c=1. As Tanaka teaches a substantially identical cubic crystal coating of substantially identical materials as that which applicant claims and discloses and therefore one would reasonably expect the coated tool of Tanaka to display the claimed XRD spectrum after heating as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
The instantly claimed coated tool would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tanaka as this is considered a combination of a conventionally known substrate and coating with materials known to afford cutting tools and one would have had a reasonable expectation of success.
Considering claims 2 and 4, Tanaka is considered to meet the claimed spectrum and phase transformation. However, as outlined above, these features are expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 3, Tanaka teaches a coated cutting tool and where the tool may be an insert, but does not teach the claimed holder 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 (Paragraph 29) and may be coated with a PVD film of hard materials, including carbides and nitrides (Paragraph 31). The tool structure is taught to have improved durability (Paragraph 56).
As both Tanaka 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 Tanaka 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.
Considering claim 5, as outlined above, Tanaka teaches a substantially identical coating as that which is claimed and is expected to possess the claimed cubic an hexagonal crystals after heating, absent an objective showing. See MPEP 2112.01. In addition, Tanaka teaches where the coating may comprise cubic and hexagonal crystals (Paragraph 39).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Horling et al. (US 2004/0110039), Waki et al. (US 2013/0022420), Sato et al. (US 2018/0071830), Nishizawa et al. (US 2018/0369927), Fukunaga et al. (US 2019/0177839) teach coatings for 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.
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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