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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites wherein the complex carbonitride further contains at least one metallic component selected from the group consisting of Hf and Ta. However, claim 1 recites metal components Ti, V, Zr, and Nb where the total atomic fraction of the metal components in the layer is 1. This limitation appears to close the composition of metal components as it recites that the total sum of atomic fractions of Ti, V, Zr, and Nb equal to 1 which would exclude additional elements because a sum of atomic fractions cannot exceed one. Therefore, claim 2 does not include all the limitations of the claim upon which it depends
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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.
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 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 115093233A, machine translation attached).
Claim 1: Wang teaches a high-purity ultra-fine transition metal carbonitride high-entropy ceramic powder suitable for cutting tool material and may be as a coating (paragraph 0011) (i.e. a coating for a cutting tool is considered to also teach a surface coated cutting tool which would have a substrate and a coating layer on the substrate with the transition metal carbonitride high-entropy ceramic powder (i.e. a complex carbonitride) forming the coating layer. Wang teaches as embodiment 7 where the carbonitride is Ti0.2Zr0.2Hf0.2V0.2Nb0.2C0.7N0.3 (paragraph 0069). This formula equates to having Ti, V, Zr, Nb, and Hf as metal components, whose atomic fractions (i.e. a1, a2, a3, a4, etc.) are each within the instantly claimed ranges (i.e. each are 0.2) and their total sums to 1. See MPEP § 2131.03. Additionally, C and N (i.e. the non-metallic components) have atomic fractions (i.e. b1 and b2) that are each within the instantly claimed ranges (i.e. b1 for C is 0.7 and b2 for N is 0.3) and their total sums to 1. The instantly claimed limitation of containing inevitable impurities would be understood by one of ordinary skill in the art due to being inevitable. Wang does not specify the crystal structure of the ceramic powder of Embodiment 7. However, Wang teaches that the ceramic powder of Examples 1, 2, and 3 are each single-phase face-centered cubic structure (paragraphs 0039, 0048, and 0057) and that the steps and parameters of Embodiment 7 was the same as in Embodiment 1 but using Ti, V, Zr, Nb, and Hf (in Embodiment 7; paragraph 0069) instead of Ti, V, Nb, Ta, and Mo (in Embodiment 1; paragraph 0032), instead of Ti, V, Nb, Mo, and W (in Embodiment 2; paragraph 0041), and instead of Ti, V, Nb, Ta, and Mo (with a different ratio of C and N in Embodiment 3; paragraph 0050). Therefore one of ordinary skill in the art would expect the other embodiments to also be single-phase face-centered cubic structure (i.e. NaCl-type face-centered cubic crystal grains). Furthermore, the crystal structure is dependent on the material and Wang teaches a substantially identical material, as outlined, and therefore has substantially identical properties. See MPEP 2112.01. Wang teaches the ceramic powder as a high-entropy ceramic powder (paragraph 0011) but does not quantify the entropy (i.e. Sconfig). However, placing the coefficients of each of the elements except for that of Hf into the equation for Sconfig results in Sconfig equal to about 0.95R, and for all coefficients including Hf results in Sconfig equal to about 1.11R. Each of these values of Sconfig lies within the instantly claimed range. See MPEP § 2131.03. Wang teaches that the ceramic powder is suitable for coating (paragraph 0011), but does not teach specifically an average thickness of the complex carbonitride layer. However, coating layer thickness is a matter of size or proportion that does not patentably distinguish from the prior art absent an objective showing of a nonobvious difference in performance. See MPEP § 2144.04(IV)(A).
While not teaching a singular example of the instantly claimed surface coated cutting tool, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the coating (i.e. for a cutting tool) taught by Wang to include a coating layer thickness as an obvious design choice to obtain desired performance characteristics of a cutting tool, and one would have had a reasonable expectation of success.
Claim 2: The teachings of Wang regarding claim 1 are outlined above. Wang teaches more generally that transition metal oxide is weighed in molar ratio according to the chemical formula (A0.2B0.2C0.2D0.2E0.2)(CxN1-x) where A, B, C, D, and E are an element of Ti, Zr, Hf, V, Nb, Ta, Cr, Mo, and W (paragraph 0006) (i.e. five of the nine listed transition metal elements are selected and included). This teaching renders as obvious that one of ordinary skill in the art may choose not to select Ta and Hf, which would be where the atomic fractions Hf and of Ta are substantially zero percent. However, Hf is a common impurity found with Zr and Ta is a common impurity found with Nb, and therefore these Hf and Ta are commonly present in small amounts when Zr and Nb are contained. This amount overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. As outlined above, a complex carbonitride having the general formula of (A0.2B0.2C0.2D0.2E0.2)(CxN1-x) with x being 0.3 or 0.7 as indicated by the specific examples results in Sconfig equal to about 1.11R, which overlaps the instantly claimed range. See MPEP § 2144.05.
While not teaching a singular example of the instantly claimed surface coated cutting tool (i.e. having Ti, Zr, V, Nb, and less than 0.01 mole fraction each of Hf and Ta), it would have been obvious to one of ordinary skill in the art before the effective filing date to select from the nine transition metal elements taught by Wang to fulfill the complex carbonitride having five transition metal elements, and in so choosing it is within the level of ordinary skill in the art that Hf and Ta is not required to be selected (i.e. has an atomic fraction near 0 but is positively present when Zr and Nb are selected) because these elements are considered to be substantial equivalents for the purpose of forming the complex carbonitride, and one would have had a reasonable expectation of success.
Claim 3: Wang teaches that the starting materials are transition metal oxide and carbon black that are prepared into a slurry with absolute ethanol, subjected to ball-mill mixing and spray drying, and then subjected to carbothermal reduction and nitridation (paragraphs 0005-0010). None of these materials specifically include chlorine, and therefore the transition metal carbonitride high-entropy ceramic powder (i.e. the complex carbonitride) is considered to have substantially zero (i.e. about 0 atomic percent) of Cl.
Conclusion
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/KIM S. HORGER/Examiner, Art Unit 1784
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