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 § 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shirochi et al. (US 2021/0299758) in view of Makino (JP2008132570 – machine translation provided by applicant) and claim 9 is further rejected over Shirochi and Makino in view of Tanibuchi (US 2007/0227298).
Considering claim 1, Shirochi teaches a coated cutting tool (abstract) of a cemented carbide substrate with a coating thereon (Paragraph 12) having a residual stress of the cutting edge of the cemented carbide (i.e. the surface, “b”) S1 ranging from -0.5-0.0 GPa and where the residual stress of the cemented carbide at a position 2 mm or more away from the cutting edge (i.e. the base, “a”) S2 ranges from -2.0 to -0.3 GPa where S2<S1 (Paragraphs 17-18). The cemented carbide comprises WC and Co as binder (Paragraph 21). However, Shirochi does not teach where the base comprises a solid solution of W,C, and Ti.
In a related field of endeavor, Makino teaches a cutting tool of a cemented carbide (abstract) which comprises a substrate of cemented carbides of WC, a solid-solution β-phase which improves thermal conductivity and maintains hardness, and a binder an iron group metal (Paragraphs 9 and 14). Examples of the β-phase include (W,Ti)C, etc. (Paragraph 24).
As both Shirochi and Makino teach cemented carbide 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 Shirochi and to include the β-phase solid solution optionally of (W,Ti)C taught by Makino as this is known to improve thermal conductivity and one would have had a reasonable expectation of success. Further, the residual stress taught by modified Shirochi 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 2-3, Shirochi teaches where the residual stress of the cutting edge of the cemented carbide (i.e. the surface, “b”) S1 ranging from -0.5-0.0 GPa and where the residual stress of the cemented carbide at a position 2 mm or more away from the cutting edge (i.e. the base, “a”) S2 ranges from -2.0 to -0.3 GPa where S2<S1 (Paragraphs 17-18) overlapping that which is claimed. See MPEP 2144.05.
Considering claims 4-5, Shirochi teaches compressive residual stresses overlapping that which is claimed which encompasses the claimed ratios a/b. See MPEP 2144.05.
Considering claims 6-7, Makino teaches where the β-phase comprises Nb (Paragraph 30).
Considering claim 8, Makino teaches where the coating comprises in order TiN, TiCN, Al2O3, and TiN (Paragraph 47).
Considering claim 9, Shirochi teaches where the coated cemented carbide is an insert for milling turning, etc. (Paragraph 37), but does not teach the claimed tool with holder.
In a related field of endeavor, Tanibuchi teaches a cutting tool of cemented carbide (abstract). The tool is optionally coated with a hard coating layer (Paragraph 50). The tool comprises a holder extending from a first to second end with a pocket with the cemented carbide tool fixed therein (Paragraphs 55-56; Fig. 3).
As Shirochi, Makino, and Tanibuchi teach cemented carbide cutting tools they are considered analogous. It would have been obvious to one of ordinary skill in the art to further modify the teachings of Shirochi and Makino with the tool holder and structure taught by Tanibuchi as this is considered a combination of a conventionally known cutting tool with a holder conventionally known to be used in milling and one would have had a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Saito et al. (US 5,145,505), Isobe et al. (US 5,577,424), and Holzschuh et al. (US 2011/0045283) teach cemented carbides with residual stress features 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
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