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 § 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 5 and 10-11 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.
Claims 5 and 10 are indefinite because it is not clear if the applicant is claiming an actual feature of the coating cutting tool or claiming just the use and set up of a measuring technique. The coating cutting technique possesses a texture whether or not it is measured as such.
Claim 11 should depend upon either claim 5 or claim 10, as the intensity ratio is produced based upon the measurement and equation in claim 5 or 10. Without this dependency, there is no antecedent basis in the claim for intensity ratio.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires 60 to 90 wt% Ni in a binder. Claim 2 appears to be putting this requirement in the alternative and broadens the claim. Thus claim 2 is not further limiting claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4, 6-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (US 2013/0216777 A1) in view of Toller et al. (Int. J. of Refractory Metals and Hard Materials, 62, 2017, pp 225-229).
As to claim 1, Jiang teaches a coated cutting tool comprising: a substrate; and a coating, wherein the substrate is made of cemented carbide composed of hard constituents in a metallic binder and wherein the metallic binder comprises Ni (para 0014), and wherein the coating includes an inner TiN layer, a TiCN layer and a A1203 layer located between the TiCN layer and an outermost surface of the coated cutting tool (Fig. 2) and, wherein the TiCN is composed of crystal grains and wherein the grain size of the TiCN layer as measured along a line in a direction parallel to the surface of the substrate at a position of 1 m from the TiN layer is about 0.10-0.30 micron (para 0016-0017 and 0020 with the actual grain size measured parallel to the layer being larger than 100 nm). Jiang does not teach that the binder comprises 60 to 90 wt% Ni.
Toller et al. teaches a similar cemented carbide substrate with similar CVD coatings that is composed of 60 to 90 wt% Ni in Table 2. Therefore, it would have been obvious to one ordinary skill in the art at the time of filing to modify Jiang et al. to include the grain size taught by Toller et al. as Toller et al. teaches the art recognized suitability and utility of such.
As to claim 2, Toller et al. teaches the claimed amounts in Table 2.
As to claim 3, Jiang et al. teaches the claimed amount of binder in para 0014.
As to claim 4, Jiang et al. teaches the claimed thickness of TiN in para 0015.
As to claim 6, the thickness of the TiCN layer is taught in Jiang paras 0015-0018. Jiang teaches multiple TiCN layers stacked with different thicknesses. It would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed thickness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claim 7, Jiang et al. teaches other layers as shown in the Figures.
As to claim 8, Jiang et al. teaches the claimed thickness in para 0019.
As to claim 12, Jiang et al. teaches the alumina layer thickness in para 0018.
Claim(s) 5 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (US 2013/0216777 A1) in view of Toller et al. (Int. J. of Refractory Metals and Hard Materials, 62, 2017, pp 225-229) and in further view of Stylianou et al. (Surface Coatings and Technology, 359, 2019, pp 314-322.)
As to claim 9, Jiang et al. and Toller et al. do not teach alpha alumina. Stylianou et al. teaches alpha aluminum on cemented carbide cutting tools due to their excellent wear resistance, thermal stability and chemical inertness. Therefore, it would have been obvious to one of ordinary skill in the art to modify Jiang et al. and Toller et al. to include their alumina as alpha alumina as taught by Stylianou for the coatings’ excellent wear resistance, thermal stability and chemical inertness.
As to claims 5 and 10-11, Stylianou et al. teaches the art recognized suitability and utility of using the Harris equation to distinguish the texture of the preferred alpha alumina coating (p316). Though Stylianou et al. teaches the claimed ICDD card but different hkl reflections, it is unclear how this is relevant to the product being claimed other than manipulating a measurement method/equation. Regardless, the intensity ratio and hkl reflections are considered obvious based upon differing measurements: “Thus, texture coefficients are displayed with a variation of (i) presumable non-textured X ray intensities (sample origin), (ii) the reflection intensity metrics (height vs. integral area), and (iii) a variation of device precision (Panalytical vs. synchrotron)” (Stylianou p 326, column 2). The coating texture itself may be modified in order to achieve optimal control of the crystallographic properties of the alpha alumina in the abstract.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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