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 .
The preliminary amendment filed 1/15/2025 has been entered. Claims 1-10 are pending in the application.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are 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. Claim 1 recites, “the base comprises a coating adhesion phase comprising at least one kind of metal compound selected from carbide, nitride, and carbonitride, each of which comprises Ti and W, and Co,” (emphasis added) on lines 4-6, however, it is unclear as to what constitutes the “at least one kind of metal compound” given the recitation of “each of which comprises Ti and W, and Co.” For example, is the “at least one kind of metal compound” required to be a mixed or composite metal compound of both Ti and W, i.e., a tungsten titanium carbide or WxTiyC; or can the coating adhesion phase contain TiC and WC as separate components? Can the “at least one kind” be a titanium carbide, a titanium nitride, and/or a titanium carbonitride such that the tungsten carbide, tungsten nitride and/or tungsten carbonitride is/are not required? If both a Ti compound and a W compound are required, can the “at least one kind of metal compound…each of which comprises Ti and W” be satisfied by a titanium carbide with a tungsten nitride, or a titanium carbide with a tungsten nitride, or similar combinations where the Ti and W compounds are not both a carbide, or both a nitride, or both a carbonitride? And is the Co meant to also be present as at least one metal carbide, nitride and/or carbonitride, and/or at least one metal compound or is meant to be a separate component from the “at least one” limitation, e.g., wherein the comma after W is interpreted as a semi-colon? Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-10 do not remedy the above and hence are indefinite for the same reasons.
Claim 2 is (further) 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. Claim 2 recites, “wherein the base is cemented carbide comprising a hard phase comprising W and C, a solid solution phase comprising W, C, and Ti, and a binding phase comprising an iron group metal, and the coating adhesion phase has a larger content of each of a β component and Co than the binding phase” (emphasis added), however, given that the specification as filed recites in Paragraph 0018 that “the content of each of the β component and Co in the coating adhesion phase 9 may be 50-95% by mass” and the “content of the β component in the binding phase 15 may be 20-60% by mass” wherein the “term ‘content of each of the β component and Co’ means a sum of the content of the β component and the content of the Co” (emphasis added), it is unclear whether the “larger content” refers to all β components and Co in the coating adhesion phase in comparison to all β components and Co in the binding phase, or to only one or select similar β component(s) and Co in each phase, and under what basis the “larger content” is determined, e.g., % by mass based upon the entire mass of said respective phase or relative to some other basis. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 3 is (further) 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. The term “wavy” in claim 3 is a relative term which renders the claim indefinite. The term “wavy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, particularly given that whether a given phase, layer, interface, etc., is considered “wavy” or straight (i.e., non-wavy) in a cross section vertical to a surface is dependent upon the viewing magnification, e.g., a phase, layer, or interface may appear non-wavy when viewed with the naked eye but wavy when viewed at 100X magnification. Hence, given that the claims nor the specification clearly specify how said “wavy” limitation is determined, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
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 1, 3, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kodama (JP2018/079539A, please refer to the machine translation submitted with the IDS filed 1/15/2025, for the below cited sections). Kodama discloses a coated cutting insert (1) as well as a cutting tool (101) comprising a holder (105) extending from a first end toward a second end and comprising a pocket (103) on a side of the first end wherein the coated cutting insert (1) is positioned in the pocket (103) as shown in Figs. 4-5 (as in instant claim 10; Paragraphs 0046-0049). Kodama discloses that the cutting insert (1) (reading upon the claimed “coated tool”) comprises a base (7) having first particles (3) containing WC as a hard phase, and a binder phase (5) preferably containing Co as a main component that may also contain other components including Cr and Ta (Paragraphs 0009-0011); a coating layer (9) positioned on a surface of the base (7) (Paragraph 0013); and an intermediate layer (11) located between the base (7) and the coating layer (9) that covers at least a part of the base (7) (Paragraphs 0009 and 0013); wherein the coating layer (9) may be composed of a plurality of layers, particularly a first layer (21) containing Ti such as TiN and/or TiCN, and a second layer (23) located on the first layer (21) and containing substantially no Ti such as a layer of alumina (Al2O3) (Paragraph 0016) with working examples specifically including, in order from the surface of the base (7), a layer of TiN (25), a layer of TiCN (27,29), and a layer of Al2O3 (33 as 23) (as in instant claims 8 and 9 given that the claims do not exclude the incorporation of additional intervening coating layers; Paragraphs 0016 and 0036-0043). Kodama discloses that the intermediate layer (11) located between the base (7) and the coating layer (9) does not need to be located across the entire space between the base (7) and the coating layer (9), such that the base (7) and the coating layer (9) may be in partial contact resulting in the intermediate layer (11) becoming less prone to deformation and suppressing uneven wear (Paragraph 0020); and that from the standpoint of hardness and increase strength, the intermediate layer (11) contains WC particles (11a) which have a relatively high hardness as well as TiC particles (11b) (Paragraph 0025), and hence, Kodama clearly discloses an intermediate layer (11) reading upon the claimed “coating adhesion phase” located at an interface between the base (7) and coating layer (9) that comprises TiC, WC and Co as in instant claim 1; and given that the intermediate layer (11) as disclosed by Kodama appears to have a “wavy” shape in a cross section vertical to the surface of the base (7) as shown in Figs. 2-3 (as in instant claim 3), Kodama anticipates instant claims 1, 3, and 8-10.
Claims 1-2 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Usami (US2003/0129456A1). Usami discloses a cemented carbide and a cutting tool formed from the cemented carbide (Abstract) having a hard coating provided thereon (Paragraphs 0017-0020), wherein the cemented carbide may be one of four embodiments (Paragraphs 0021, 0031, 0039, and 0057); and the coating in each of the four embodiments may be a single layer or two or more layers, and may be composed of at least one selected from metal carbide, metal nitride, metal carbonitride, TiAlN, TiZrN, TiCrN, a diamond and Al2O3 (Paragraphs 0030, 0038, 0049, and 0075), with working examples including a coating having a multilayer structure containing, in order from the cemented carbide surface, a layer of TiN, a layer of TiCN layer, a layer of Al2O3, and a layer of TiN (as in instant claims 8-9 given that the claims do not exclude the incorporation of additional intervening or overlying layers; Examples, see particularly Paragraph 0248).
Usami discloses that for the first embodiment, the first cemented carbide consists of a hard phase and a binder phase, wherein the hard phase consists of 100 to 85% by weight of WC, and 0 to 15% by weight of carbides, nitrides, or carbonitrides of metals of the group 4a, 5a, and 6a in the periodic table, wherein a B1 type solid solution phase (i.e., β phase) formed in case material other than WC are blended as hard phase materials consists of a carbide solid solution composite or a carbonitride solid solution composite; with the binder phase containing iron-group metals such as Co, as a main component, at 5-15% by weight of the whole quantity (Paragraph 0082). Usami discloses that the first cemented carbide has a surface region having 90-98% of the minimum hardness as compared with the hardness in an inside, wherein the surface region is formed by surface toughening without nitrogen addition (Paragraph 0084-0086). Usami discloses an example of the first cemented carbide that as shown by a metallic element distribution of Fig. 2, “has, to the surface portion, a region that the ratio of Zr occupied to metals selected from the group 4a, 5a and 6a in the periodic-table is high as compared with the inside of cemented carbide” and that “[m]oreover, in a surface region, many of metals of the groups 4a, 5a, and 6a in the periodic-table except for Zr reduce quantity, and the quantity of a binder phase increases corresponding to this” (Paragraphs 0087-0089). Usami discloses that in the cemented carbide, two or more B1 type solid solution phases may exist in an inside, and at least one of these may be a B1 type solid solution phase with high Zr contents as compared with other B1 type solid solution phases (Paragraphs 0090-0091); and given working Example 1 corresponding to the first cemented carbide, wherein several inventive examples of the cemented carbide are formed from a composition as shown in Table 1 including WC, TiC, TaC, NbC (as in instant claim 6), ZrC, and Co, and has a surface region as noted in Table 1, and is then coated with a TiN coating layer, Usami clearly discloses a coated tool comprising a base and a coating layer located on a surface of the base, wherein the base comprises a surface region (reading upon the claimed “coating adhesion phase”) comprising WC, TiC, and Co, and located at an interface between the base and the coating layer (as in instant claim 1), wherein the base comprises a hard phase comprising WC, a solid solution phase comprising W, C, and Ti, and a binding phase comprising Co (an iron group metal as in instant claims 2 and 7) with a β phase as in instant claim 7 with the Nb contained in the β phase and/or binding phase as in instant claim 7; and the surface region as the claimed “coating adhesion phase” has a larger content of Zr as a β component and Co than the binding phase as evidenced by Fig. 2 (as in instant claim 2, Examples, Table 1), thereby anticipating instant claims 1-2 and 6-7.
With respect to instant claims 8-9, as noted above, Usami discloses that the coating in each of the four embodiments may be two or more layers, and may be composed of at least one of the materials noted above, and given that Usami specifically discloses examples wherein the coating is a multilayer coating containing, in order from the cemented carbide surface, a layer of TiN, a layer of TiCN layer, a layer of Al2O3, and a layer of TiN, the Examiner takes the position that Usami discloses the claimed invention with sufficient specificity to anticipate instant claims 8-9, especially given that the 4th cemented carbide upon which said multilayer coating is applied in the examples similarly has a surface region as the claimed “coating adhesion phase” that “is located at an interface between the base and the coating layer” and comprises TiC, WC, and Co (Paragraphs 0154-0155, 0166-0175, and 0178; Example V). Hence, Usami anticipates instant claims 8-9.
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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama. The teachings of Kodama are discussed in detail above and incorporated herein by reference. With respect to instant claim 4, Kodama teaches that the thickness of the intermediate layer (11) is not particularly limited and a maximum value thereof can be set to about 0.1 to 5 µm (Paragraph 0022), thereby overlapping the claimed range of 0.05-0.5 µm and hence rendering the claimed invention as recited in instant claim 4 obvious over the teachings of Kodama.
With respect to instant claim 5, Kodama teaches that the intermediate layer (11) does not need to be located across the entire space between the base (7) and the coating layer (9) such that the base (7) and the coating layer (9) are in partial contact, as noted above, and further teaches that in producing the coated insert (1), the metal powder containing cobalt for forming intermediate layer (11) is provided to cover at least half (i.e., ≥50%) of the surface of a first molded body for forming the base (7) making it possible to make the area in contact between the substrate (7) and the intermediate layer (11) larger than the area in contact between the coating layer (9) and the substrate (7) (Paragraphs 0033-0034). Hence, Kodama clearly teaches that the intermediate layer (11) as the claimed “coating adhesion phase” is formed over at least 50% but less than 100% of the interface between the base and the coating layer in the cross section vertical to the surface of the base, thereby overlapping the claimed range of 20-70%, and given that one skilled in the art would have been motivated to utilize any percentage ≥ 50% as taught by Kodama, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the claimed 20-70% range, the claimed invention would have been obvious over the teachings of Kodama.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama, as applied above to claim 1, and in further view of Shibamura (JP2004-100004A, please refer to the machine translation submitted with the IDS filed 1/15/2025, for the below cited sections). The teachings of Kodama are discussed in detail above and incorporated herein by reference, wherein Kodama teaches a tool insert (1) comprises a base (7) having first particles (3) containing WC as a hard phase, and a binder phase (5) preferably containing Co (an iron group metal) as a main component as discussed above (Paragraphs 0009-0011). Kodama teaches that the binder phase (5) may contain a component other than Co, for example, Cr and Ta (Paragraph 0011), and although Kodama teaches that the intermediate layer (11) contains WC particles (11a) and TiC particles (11b) such that it would have been obvious to one having ordinary skill in the art to reasonably expect the cemented carbide base (7) to comprise a solid solution phase comprising W, C, and Ti in addition to the WC hard phase and Co binder phase, Kodama does not teach that the composition of the base (7) further comprises Nb as in instant claim 6 and/or further comprises a β phase wherein the Nb is contained in the β phase or the binder (binding) phase or both as in instant claim 7. However, Shibamura teaches a similar coated cemented carbide tool wherein adhesion between the cemented carbide base and a coating layer provided thereon can be improved by the presence of a coating adhesion phase of a complex carbide comprising at least one metal selected from the group consisting of Al, Si, Zr, Hf, V, Nb, Ta, Cr, and Mo, in addition to Ti and W (reading upon the claimed β phase), with specific examples including Nb as discussed in Paragraphs 0007-0009, 0012, and 0019, and at least one working example including Nb in the form of a complex carbide providing improved adhesion (Examples), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a coating adhesion or β phase containing Nb as in instant claims 6-7 in the cemented carbide base taught by Kodama to (further) improve adhesion between the cemented carbide and the coating provided thereon as taught by Shibamura, thereby rendering the claimed invention as recited in instant claims 6-7 obvious over the teachings of Kodama in view of Shibamura given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
Further, given that Kodama clearly teaches that the Co binder/binding phase may comprise a component other than Co, such as Cr and Ta, and that Shibamura provides a clear teaching and/or suggestion that Nb is a functionally equivalent component to Cr and Ta based upon the above list of metal components that can be further incorporated into the cemented carbide, the Examiner further takes the position that the claimed invention as recited in instant claims 6-7, particularly with respect to the Nb in the “binding phase or both of them” as in instant claim 7, would have been obvious over the teachings of Kodama in view of Shibamura given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Usami. The teachings of Usami are discussed in detail above and incorporated herein by reference. With respect to instant claim 3, although Usami does not teach that the surface region as the claimed “coating adhesion phase” has a “wavy” shape in a cross section vertical to the surface of the base as instantly claimed, given the lack of clarity of the claimed “wavy” shape limitation and that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the interface between the surface region and the inside portion of the cemented carbide in a cross section vertical to the surface of the cemented carbide base to be non-straight or uneven or “wavy” due to the hard WC phases, and more particularly, the B1 type solid solution phase(s), with mean particle diameters as taught by Usami (Entire document, particularly Paragraphs 0027, 0091, 0137, Examples), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Usami.
With respect to instant claim 10, although Usami clearly teaches that the coated cemented carbide or tool may be utilized for a cutting tool, Usami does not specifically teach that said cutting tool has a structure as instantly claimed comprising a holder extending from a first end toward a second end and comprising a pocket on a side of the first end; and the coated cemented carbide or tool is located in the pocket, e.g., is a cutting insert. However, given that said structure is an obvious structure in the art for a cutting tool wherein the coated cemented carbide is a cutting insert located in a pocket of a holder as in the claimed invention (as evidenced by Kodama, discussed in detail above, see particularly Paragraphs 0046-0049, Figs. 4-5; Ito, WO2019/189774A1, also printed as US2021/0016362A1, Abstract, Fig. 3; or Ito, WO2019/189775A1, also printed as US2021/0017632A1, Abstract, Fig. 3; or Tanibuchi, US2009/0223333A1, Abstract, Figs. 2-4; each of which is assigned to Applicant; or Moriguchi, USPN, 6,187,421, see particularly, Abstract, Fig. 1, and Examples utilizing conventional holder PCLNR 2525-43, also discussed previously below), the claimed invention as recited in instant claim 10 would have been obvious over the teachings of Usami given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moriguchi (USPN 6,187,421) discloses a coated tool of cemented carbide, particularly a coated cutting tool insert such as one that can be incorporated into a conventional holder, comprising a substrate comprising a matrix of WC and a binder phase of an iron group such as Co, and a plurality of coated layers provided on a surface of the substrate including an innermost coating layer of TiN which is coated with a layer of TiCN and further coated with at least one alumina layer; wherein the sintering conditions of the cemented carbide may be controlled to provide a β-free layer at a surface of the cemented carbide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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, Callie 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights