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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 18/880,695 (reference application, hereinafter “’695”; cited as US 2025/0327204 A1). Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claim 1, ‘695 discloses a coated substrate in which a substrate is coated with a film, wherein the thickness of the film is 1 nm or greater and less than 800 nm, x-ray photoelectron spectroscopic measurement of the film shows that the total percent element composition of a metal element and O (oxygen) is 70 atm% or greater, and the relative density of the film is 90% or greater (claim 1). The element composition of C (carbon) is 0.1 atm% or greater and less than 20 atm% (claim 3). While there is no disclosure from claim 1 of ‘695 regarding the film being amorphous, ‘695 discloses the maximum thickness of the film formed on an edge region of a surface of the substrate is greater than the thickness of the film formed on an inner region of the surface located inward of the edge region (claim 1), and thus the film is amorphous as presently claimed.
It is noted that ‘695 additionally requires that at least one of conditions (1) and (2) are satisfied where condition (1) is that the maximum thickness of the film formed on an edge region of a surface of the substrate is greater than the thickness of the film formed on an inner region of the surface located inward of the edge region, and where condition (2) is that the maximum thickness of the film formed on a convex portion present region of the surface of the substrate is greater than the thickness of the film formed on a convex portion absent region of the surface, while the present claims are silent with respect to these limitations. However, given the open-ended language of the present claims, nothing in the present claims precludes the film having at least one of the conditions (1) and (2), and thus the more specific coated substrate and film of ‘695 are encompassed by the coated substrate and film of the present claims, and thus one of ordinary skill in the art would have arrived at the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa et al. (JP 2020-006487 A, “Yanagisawa”) in view of Iyori (JP H11-264066 A) and the evidence provided by Kedel (Is Tungsten Carbide Conductive?). The disclosures of Yanagisawa and Iyori are based off machine translations of the references included with this action.
With respect to claims 1-2 and 5, Yanagisawa discloses a surface-coated cutting tool ([0001]) having a hard coating layer including a layer of complex nitride and another layer of an amorphous metal oxide ([0010-0011]). The metal oxide layer has a thickness of 0.1-5 µm (100-5,000 nm) and contains 0.5-10 atom% C, 0.5-20 atom% Mn, 5 atom% or more of Al, and 30 atom% or more of O ([0012], (1)(d), (2-3)). The tool (i.e., substrate) is made from tungsten carbide ([0012], (1)); as evidenced by Kedel, tungsten carbide is conductive (Kedel, page 2, “tungsten carbide conducts electricity”), and thus the substrate is conductive.
However, Yanagisawa does not disclose the relative density of the film is 90% or greater.
Iyori teaches a coated hard tool having excellent oxidation resistance and wear resistance ([0001]). The coating uses a dense oxide layer ([0006]) which has a high layer density in order to improve oxidation resistance ([0008], [0012]).
Yanagisawa and Iyori are analogous inventions in the field of coated cutting tools having an oxide coating layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the metal oxide layer of Yanagisawa to have a high layer density, including values presently claimed, as taught by Iyori in order to provide a cutting tool having improved oxidation resistance (Iyori, [0008], [0012]).
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Oishi et al. (JP H08-109480 A, “Oishi”) in view of Iyori (JP H11-264066 A) and the evidence provided by Kedel (Is Tungsten Carbide Conductive?). The disclosures of Oishi and Iyori are based off machine translations of the references included with this action.
With respect to claims 1-3 and 5, Oishi discloses a metal member using a thin film of polymer metal oxide ([0001]). The metal polymer is an amorphous inorganic polymer that has a carbon content of 0.01-4 atom% containing a small amount of C-H bonds ([0030]). The film also comprises at least 86 atom% oxygen ([0031]). The thickness of the metal oxide is, for example, 200 nm ([0115]). The metal includes, for instance, tantalum (Ta) ([0102]). Based on the amount of oxygen, the amount of metal and oxygen would necessarily meet the claimed amount. The metal member is inherently conductive since metals are known to be conductive.
However, Oishi does not disclose wherein the relative density of the polymer metal oxide film is 90% or greater.
Iyori teaches a tool having excellent oxidation resistance and wear resistance ([0001]). The coating uses a dense oxide layer ([0006]) which has a high layer density in order to improve oxidation resistance ([0008], [0012]).
Oishi and Iyori are analogous inventions in the field of coated substrates having an oxide coating layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer metal oxide layer of Oishi to have a high layer density, including values presently claimed, as taught by Iyori in order to provide a metal member having improved oxidation resistance (Iyori, [0008], [0012]).
Allowable Subject Matter
Claim 4 is 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 an examiner’s statement of reasons for indicating allowable subject matter. Claim 4 contains allowable subject matter over the “closest” prior art Yanagisawa et al. (JP 2020-006487 A, “Yanagisawa”), Iyori (JP H11-264066 A), Oishi et al. (JP H08-109480 A, “Oishi”), and the evidence provided by Kedel (Is Tungsten Carbide Conductive?). The disclosures of Yanagisawa, Iyori, and Oishi are based off machine translations of the references included with this action.
Yanagisawa discloses a surface-coated cutting tool ([0001]) having a hard coating layer including a layer of complex nitride and another layer of an amorphous metal oxide ([0010-0011]). The metal oxide layer has a thickness of 0.1-5 µm (100-5,000 nm) and contains 0.5-10 atom% C, 0.5-20 atom% Mn, 5 atom% or more of Al, and 30 atom% or more of O ([0012], (1)(d), (2-3)). The tool (i.e., substrate) is made from tungsten carbide ([0012], (1)); as evidenced by Kedel, tungsten carbide is conductive (Kedel, page 2, “tungsten carbide conducts electricity”), and thus the substrate is conductive.
However, Yanagisawa does not disclose wherein the x-ray photoelectron spectroscopic measurement of the film shows that the percent element composition of a halogen element is 0.1 atm% or greater. Instead, Yanagisawa is silent with respect to the use of halogen elements.
Iyori discloses a coated hard tool having excellent oxidation resistance and wear resistance ([0001]). The coating uses a dense oxide layer ([0006]) which has a high layer density in order to improve oxidation resistance ([0008], [0012]).
However, Iyori does not disclose wherein the x-ray photoelectron spectroscopic measurement of the film shows that the percent element composition of a halogen element is 0.1 atm% or greater. Instead, Iyori is silent with respect to the use of halogen elements.
Oishi discloses a metal member using a thin film of polymer metal oxide ([0001]). The metal polymer is an amorphous inorganic polymer that has a carbon content of 0.01-4 atom% containing a small amount of C-H bonds ([0030]). The film also comprises at least 86 atom% oxygen ([0031]). The thickness of the metal oxide is, for example, 200 nm ([0115]). The metal includes, for instance, tantalum (Ta) ([0102]). Based on the amount of oxygen, the amount of metal and oxygen would necessarily meet the claimed amount. The metal member is inherently conductive since metals are known to be conductive.
However, Oishi does not disclose wherein the x-ray photoelectron spectroscopic measurement of the film shows that the percent element composition of a halogen element is 0.1 atm% or greater. Instead, Oishi is silent with respect to the presence of halogen elements in the film.
Thus, none of the references, either alone or in combination, disclose the invention of claim 4, and therefore claim 4 contains allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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