DETAILED ACTION
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Johansson et al. (WO 2009/105024 A1).
Regarding applicants’ claim 1, Johansson et al. disclose a cutting tool including a hard wear resistant coating formed of metal nitride compounds including layers of cubic structured (Ti1-xAlx)N with x being 0.3 to 0.95 (page 5 lines 8-14 and page 6 lines 5-16). While Johansson et al. do not appear to disclose the exact range of proportions claimed one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the disclosed proportions including proportions that fall within applicants’ claimed ranges. Johansson et al. disclose the TiAlN layer to have a compressive stress between 3.0 and 6.0GPa (page 5 lines 24-27). Johansson et al. disclose a cubic structure but do not appear to explicitly disclose a 90% or more fcc cubic phase, however substantially identical materials treated in a substantially identical meaner are expected to have substantially identical structures and properties.
Applicants disclose the use of a cathodic arc evaporation coating technique with a target comprising 70-90% aluminum in a nitrogen gas atmosphere at a pressure less preferably less than 1.5 Pa, a deposition temperature less than 360°C, and a bias of -30 to -250V (applicants’ specification page 3).
Johansson et al. disclose a cathodic arc evaporation coating process using cathodes with a competition between 70 and 95% aluminum in a N2 atmosphere at a pressure of 0.5 to 9.0 Pa with a bias of -10 to -300V, and a deposition temperature between 350 and 700°C (page 6 lines 5-16). While Johansson et al. do not appear to teach the exact ranges as applicants, one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the disclosed parameters including values which fall within applicants’ disclosed ranges.
Given that Johansson et al. disclose the treatment of substantially identical materials in a substantially identical manner to that disclosed by applicants, the coating of Johansson et al. would be expected to have a substantially identical microstructure, including 90% or more of an fcc cubic phase.
Regarding applicants’ claims 2 and 3, given that Johansson et al. disclose the treatment of substantially identical materials in a substantially identical manner to that disclosed by applicants (as discussed above with respect to claim 1), the coating of Johansson et al. would be expected to have a substantially identical properties, including a Young’s modulus and hardness that falls within, or at least overlaps, applicants’ claimed ranges.
Regarding applicants claims 4 and 5, Johansson et al. disclose an aluminum content corresponding to a coefficient of 0.3 to .95 (page 4 line 14), one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to form coatings having a coefficient within the disclosed range, including values that fall within applicants’ claimed ranges.
Regarding applicants’ claims 6 and 7, Johansson et al. disclose the TiAlN layer to have a compressive stress between 3.0 and 6.0GPa (page 5 lines 24-27).
Regarding applicants’ claims 8-18, applicants’ requirements are product-by-process requirements. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See MPEP 2113.
Absent evidence of criticality regarding the presently claimed process and given that Johansson et al. disclose a substantially identical process to that disclosed by applicants (as discussed above with respect to claim 1), the coating of Johansson et al. would be expected to satisfy any structural requirements imposed by the claimed process.
Further, Johansson et al. disclose a cathodic arc evaporation coating process using cathodes with a competition between 70 and 95% aluminum in a N2 atmosphere at a pressure of 0.5 to 9.0 Pa with a bias of -10 to -300V and a deposition temperature between 350 and 700°C (page 6 lines 5-16). With regards to the overlapping parameters, one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from within the disclosed ranges, including values that fall within applicants’ claimed ranges
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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, 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.
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.
/Adam Krupicka/Primary Examiner, Art Unit 1784
Prosecution Insights