DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 Applicant' s amendment filed on April 02, 2026 was received. Claims 13 and 18 were amended. Claims 28 and 29 were newly added.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13-14, 16-21, 23-26, and 28-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirano (US 2014/0044946 A1) as evidenced by Ruppi et al. (NPL titled: Chemical vapour deposition of k-Al2O3.
Regarding claim 13, Hirano teaches a forming tool (Abstract, [0009], [0073]), comprising a substrate with a substrate surface to be used as a functional surface, the substrate surface being coated with a coating ([0009]), wherein the coating comprises a kappa-alumina layer as a functional layer ([0046], [0061], [0075] product 8, table 1), wherein the kappa alumina layer does not comprise dopant elements (as evidenced by Ruppi et al. no sulfur no doping element was found in k-Al2O3 (Abstract, Table 3, page 57), wherein the coating further comprises a multilayered film comprising TiN layers and TiCN layers alternately deposited on each other forming a TiN/TiCN/TiN/TiCN... architecture (Abstract, [0003], [0009], [0011], [0030], [0034]) providing a stress compensation between the substrate surface and the kappa-alumina layer for enhancing toughness of the coated substrate surface ([0022], [0030]). It is the position of the examiner that disclosure the properties or function of providing a diffusion barrier effect for preventing or reducing diffusion of chemical elements from the substrate surface to the coating is expected, given the same coating substrate and material and same coating method.
Regarding claim 14, Hirano teaches wherein the coating further comprises between the substrate surface and the kappa-alumina layer one or more further layers comprising at least TiN or TiCN, providing: enhanced adhesion between the coating and the substrate surface, or stress compensation between the substrate surface and the kappa-alumina layer for enhancing toughness of the coated substrate surface (Abstract, [0003], [0009], [0011], [0022], [0030]). It is the position of the examiner that disclosure the properties or function of a diffusion barrier effect for avoiding or reducing diffusion of chemical elements from the substrate surface to the coating is expected, given the same coating substrate and material and same coating method.
Regarding claim 16, Hirano teaches wherein the coating further comprises an adhesion layer, which is a TiN layer providing the enhanced adhesion between the coating and the substrate surface (Abstract, [0003], [0009], [0011], [0022], [0030], [0035]). It is the position of the examiner that disclosure the properties or function of the diffusion barrier effect is expected, given the same coating substrate and material and same coating method.
Regarding claim 17, Hirano teaches wherein the adhesion layer TiN is deposited directly on the substrate surface and has a layer thickness is 300nm (0.3 µm) for example ([0030], Table 1).
Regarding claim 18, Hirano teaches wherein an intermediate layer is deposited between the multilayered film and the kappa-alumina layer for attaining a clamping effect of the kappa-alumina layer to the multilayered film ([0011], [0049], [0052]). It is the position of the examiner that disclosure the properties or function of a clamping effect is expected, given the same coating substrate and material and same coating method.
Regarding claim 19, Hirano teaches wherein the intermediate layer is a TiCN layer ([0050]).
Regarding claim 20, Hirano teaches a cutting tool reads on form punch or insert tool (Abstract, [0013]).
Regarding claim 21, Hirano teaches wherein the kappa-alumina layer is an outermost layer of the coating ([0043], [0044], [0061]).
Regarding claim 23, Hirano teaches wherein the kappa-alumina layer has a layer thickness is 5 µm product 8 for example ([0075], table 1 product 8).
Regarding claim 24, Hirano teaches wherein a total thickness of the coating is 15 µm product 8 for example ([0075], table 1 product 8).
Regarding claim 25, Hirano teaches comprising, between the multilayered film and the kappa-alumina layer a further layer having a clamping function for improving bond strength between the multilayered film and the kappa-alumina layer ([0022], [0049]).
Regarding claim 26, Hirano teaches comprising: providing a forming tool comprising a substrate surface to be used as a functional surface, depositing a coating on the substrate surface, wherein during coating deposition at least one kappa-alumina layer without any dopant elements is deposited by using low pressure chemical vapor deposition techniques (Abstract, [0003], [0009], [0011], [0022], [0030], [0037]).
Regarding claim 28, Hirano teaches wherein each of the TiN layers and each of the TiCN layers of the multilayered film has an individual layer thickness is 0.5 µm for example (Abstract, [0009], [0075], Table 1).
Regarding claim 29, wherein the multilayered film comprises from 10 bilayer periods of alternating TiN and TiCN layers for example ([0034], [0075], Table 1).
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 98/36029) as applied to claims 13-14, 16-21, 23-26, and 28-29.
Regarding claim 22, Hirano teaches wherein the kappa-alumina layer has a surface quality having an average roughness Ra is 0.03 µm to 0.3 µm ([0011], [0070]). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05). However, Hirano recognizes the roughness is adjusted by changing the lower and upper films ([0069]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the roughness to yield a desired product ([0069]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 98/36029) as applied to claims 13-14, 16-21, 23-26, and 28-29 and further in view of Ruppi et al. (NPL titled: Chemical vapour deposition of k-Al2O3.
Regarding claim 27, Hirano teaches wherein the kappa-alumina layer as disclosed above. Hirano does not explicitly teach the kappa-alumina layer is formed by using the following reactions, temperature and pressure being selected depending on a reactor used for deposition: 2Al(s) + 6HCl(g) + H2(g) -2AlC13(g) + 4H2(g); H2(g) + CO2(g) -H2O(g) + CO(g); 2AlC13(g) + 3H2O(g) + H2(g) -Al2O3(s) + 6HCl(g) + H2(g). However, an analogous art, Ruppi teaches a coated cutting tool comprising the kappa-alumina layer the kappa-alumina layer is formed by using the following reactions, temperature and pressure being selected depending on a reactor used for deposition: 2Al(s) + 6HCl(g) + H2(g) -2AlC13(g) + 4H2(g); H2(g) + CO2(g) -H2O(g) + CO(g); 2AlC13(g) + 3H2O(g) + H2(g) -Al2O3(s) + 6HCl(g) + H2(g) (Abstract, pages 50, 51, 1.3. Deposition of Al2O3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the kappa-alumina layer is formed by using the reactions to the coating in Hirano, because Ruppi disclosed the use of the kappa-alumina layer is formed by using the reactions to lower thermal conductivity and higher hardness (pages 50, 51)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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