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 § 102
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 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.
Claim(s) 1-2, 4-5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ASM Handbook Vol 16: Machining ASM Handbook Committee pg 761-804 “Machining of Aluminum and Aluminum Alloys” (c) 1989 ASM International ®; hereafter ASM).
Claim 1: ASM teaches a method of applying a coating (such as built up edge) to a cutting tool (see, for example, pg 761 1st column) , comprising:
receiving a premachining workpiece (Aluminum Alloy article), the premachining workpiece formed of a coating material including a soft metal (such as Aluminum) (see, for example, pg 761 1st column);
and machining the premachining workpiece with the cutting tool such that a layer of the coating material (built up edge) adheres to a cutting surface of the cutting tool in a solid state (See, for example, pg 761 1st col).
Claim 2: ASM further teaches wherein machining the premachining workpiece includes at least one turning pass (see, for example, pg 761-762, Table 5, Table 7, Fig 14; inclusive of full part turning, thus reading on at least one pass).
Claim 4: ASM further teaches wherein the coating material is Aluminum-silicon alloy (See, for example, pg 761 1st column).
Claim 5: ASM further teaches wherein the layer of coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece (see, for example, pg 761 1st column; wherein the layer comprises the aluminum alloy, the limitation as presently recited does not actively claim a step of machining a product workpiece, but only that the coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product, thus as the aluminum alloy possesses a melting point it would be capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece under suitable operating conditions (article chemistry, machining speed / force / temperature/ etc). Additionally / alternatively as the same material (aluminum / aluminum alloy) is recited by ASM as that taught by Applicant to be “capable” of meeting the claimed limitations, ASM would inherently teach the capability limitation since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 7: ASM further teaches following machining the premachining workpiece, machining a target workpiece with the cutting tool (such as subsequent article) (see, for example, pg 764, Table 7, Fig 16, pg 797, Fig 33-34, wherein the production rate of a single cutting tool is based on a plurality of pieces per hour and life on a plurality of pieces, thus an initial work piece is interpreted as a premachining workpiece and a subsequent workpiece as the target workpiece). ASM further teaches wherein the layer of the coating material forms a plurality of tribofilms (see, for example, pg 761 1st col, as the total coating is formed over a period of time it can be interpreted as comprising a plurality of layers / films (or alternatively separate portions of the coating along the edge can be interpreted as distinct spatial films) and further as they reside at the interface / edge between the tip and workpiece they would read on tribofilms as they would be at a point of wear / friction between the two surfaces and as described in the rejection of claim 5 above are capable of providing lubricity (tribological involves wear, friction and lubrication of interacting surfaces in relative motion). Additionally / alternatively as the same material for the coating layer (aluminum / aluminum alloy) is recited by ASM as that taught by Applicant to form tribofilms and the step of formation of both are equated to a machining operation, ASM would inherently teach the limitation of the coating forming a plurality of tribofilms since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim(s) 1-2, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagata et al (JP 2013-146819; hereafter Nagata).
Claim 1: Nagata teaches a method of applying a coating (such as bonded built up edge protective film) to a cutting tool (see, for example, abstract, [0005], [0007], [0021] Fig 5-6) , comprising:
receiving a premachining workpiece (Aluminum Alloy article), the premachining workpiece formed of a coating material including a soft metal (such as Aluminum) (see, for example, [0017]);
and machining the premachining workpiece with the cutting tool such that a layer of the coating material (built up edge) adheres to a cutting surface of the cutting tool in a solid state (See, for example, [0005], [0007], [0021] Fig 5-6)
Claim 2: Nagata further teaches wherein machining the premachining workpiece includes at least one turning pass ( used on lathe processing of an article, thus reading on turning pass) (see, for example, [0010], [0015], Fig 5})
Claim 5: Nagata further teaches wherein the layer of coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece (see, for example, [0004], [0017]; wherein the layer comprises the aluminum alloy, the limitation as presently recited does not actively claim a step of machining a product workpiece, but only that the coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product, thus as the aluminum alloy possesses a melting point it would be capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece under suitable operating conditions (article chemistry, machining speed / force / temperature/ etc). Additionally / alternatively as the same material (aluminum / aluminum alloy) is recited by Nagata as that taught by Applicant to be “capable” of meeting the claimed limitations, Nagata would inherently teach the capability limitation since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 7: ASM further teaches following machining the premachining workpiece, machining a target workpiece with the cutting tool (such as subsequent article) (see, for example, pg 764, Table 7, Fig 16, pg 797, Fig 33-34, wherein the production rate of a single cutting tool is based on a plurality of pieces per hour and life on a plurality of pieces, thus an initial work piece is interpreted as a premachining workpiece and a subsequent workpiece as the target workpiece). ASM further teaches wherein the layer of the coating material forms a plurality of tribofilms (see, for example, pg 761 1st col, as the total coating is formed over a period of time it can be interpreted as comprising a plurality of layers / films (or alternatively separate portions of the coating along the edge can be interpreted as distinct spatial films) and further as they reside at the interface / edge between the tip and workpiece they would read on tribofilms as they would be at a point of wear / friction between the two surfaces and as described in the rejection of claim 5 above are capable of providing lubricity (tribological involves wear, friction and lubrication of interacting surfaces in relative motion). Additionally / alternatively as the same material for the coating layer (aluminum / aluminum alloy) is recited by ASM as that taught by Applicant to form tribofilms and the step of formation of both are equated to a machining operation, ASM would inherently teach the limitation of the coating forming a plurality of tribofilms since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
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 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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over ASM.
Claim 3: Although ASM is silent as to specific duration of premachining, any portion of the entire machining can be interpreted as premachining, and further machining duration in itself is influenced and influences the machining speed, size of the article and area / volume to remove, materials involved, etc. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of pre-machining for less than three seconds since “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagata.
Claim 3: Although Nagata is silent as to specific duration of premachining, any portion of the entire machining can be interpreted as premachining, and further machining duration in itself is influenced and influences the machining speed, size of the article and area / volume to remove, materials involved, etc. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of pre-machining for less than three seconds since “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 1-3, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2503544Y2 (hereafter ’544) in view of Nagata.
Claim 1: ‘544 teaches a method of machining an article comprising distinct volumes of aluminum and cast iron including receiving a premachining workpiece (Aluminum / cast iron mixed article), the premachining workpiece formed of a coating material including a soft metal (such as Aluminum) (see, for example, abstract);
and machining the premachining workpiece with a cutting tool
‘544 does not explicitly teach wherein the machining of the premachining workpiece with the cutting tool proceeds such that a layer of the coating material adheres to a cutting surface of the cutting tool in a solid state. Nagata teaches a method of turning / machining metal articles including aluminum and stainless steel (see, for example, abstract, [0005], [0007], [0021] Fig 5-6. Nagata further teaches that during such machining, retention and enhanced bonding of a built up edge of workpiece material on the cutting tool enhances protective properties and suppresses wear (See, for example, [0007]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated machining of the premachining workpiece with the cutting tool so that a layer of the coating material adheres to a cutting surface of the cutting tool in a solid state as such retention of the built up edge material would predictably enhance protective properties and suppresses wear.
Claim 2: ‘544 and Nagata further teaches wherein machining the premachining workpiece includes at least one turning pass (used on lathe processing of an article, thus reading on turning pass) (see, for example, pg 1 and Fig 2-5 of ‘544 and [0010], [0015], Fig 5} of Nagata).
Claim 3: Although ‘544 and Nagata are silent as to specific duration of premachining, any portion of the entire machining can be interpreted as premachining, and further machining duration in itself is influenced and influences the machining speed, size of the article and area / volume to remove, materials involved, etc. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of pre-machining for less than three seconds since “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 5: ’544 in view of Nagata further teaches wherein the layer of coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece (see, for example, ‘544 pg 1; [0004], [0017] of Nagata; wherein the layer comprises the aluminum alloy, the limitation as presently recited does not actively claim a step of machining a product workpiece, but only that the coating material is capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product, thus as the aluminum alloy possesses a melting point it would be capable of melting and functioning as an in-situ liquid lubricant when the cutting tool is applied in machining a product workpiece under suitable operating conditions (article chemistry, machining speed / force / temperature/ etc). Additionally / alternatively as the same material (aluminum / aluminum alloy) is recited by ‘544 and Nagata as that taught by Applicant to be “capable” of meeting the claimed limitations, ‘544 in view of Nagata would inherently teach the capability limitation since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 6: ‘544 further teaches following machining the premachining workpiece, machining a second premachining workpiece formed of a second coating material including a plurality of spherical graphite particles such that a layer of the second coating material adheres to the cutting surface of the cutting tool in a solid state (see, for example, pg 1, Fig 3-5 wherein an initial volume of the aluminum portion of W is interpreted as the premachining workpiece, and volume of the cast iron portion of W is interpreted as a second premachining workpiece (alternatively it would have been obvious to one of ordinary skill in the art at the time of invention to have processed more than singular article as it would save on materials and tooling to process more than a singular object; in which scenario the first article could be interpreted as the first premachining workpiece and a subsequent as the second) and as Nagata has taught the benefit of retaining machined material on the edge; cast iron naturally consists of spheroidal graphite particles in ferrite / pearlite matrix and is the same material attributed to providing graphite particles in applicant’s invention so as the same material cast iron is recited by ‘544 as that taught by Applicant to for the second coating of spherical graphite: ‘544 in view of Nagata would inherently teach this second coating comprising graphite since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 7: ‘544 further teaches following machining the premachining workpiece, machining a target workpiece with the cutting tool (such as a down-stream portion of the same article or a subsequent article (it would have been obvious to one of ordinary skill in the art at the time of invention to have processed more than singular article as it would save on materials and tooling to process more than a singular object) (see, for example, pg 1 , Fig 3-5). Nagata further teaches wherein the layer of the coating material forms a plurality of tribofilms (see, for example, [0007] of Nagata; and Fig 3-5 of ‘544 as the total coating is formed over a period of time it can be interpreted as comprising a plurality of layers / films; or alternatively separate portions of the coating along the edge can be interpreted as distinct spatial films; or alternatively as both aluminum and cast iron are processed in sequence distinct laminar chemistry differences would equate to films) and further as they reside at the interface / edge between the tip and workpiece they would read on tribofilms as they would be at a point of wear / friction between the two surfaces and as described in the rejection of claim 5 above are capable of providing lubricity (tribological involves wear, friction and lubrication of interacting surfaces in relative motion). Additionally / alternatively as the same material for the coating layer (aluminum / aluminum alloy) is recited by ‘544 in view of Nagata as that taught by Applicant to form tribofilms and the step of formation of both are equated to a machining operation, ‘544 in view of Nagata would inherently teach the limitation of the coating forming a plurality of tribofilms since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,589,437. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1: recited steps of receiving and machining are explicitly taught by claim 1 of US12,589,437.
Claim 2: see claim 2 of US12,589,437.
Claim 3: Although claim 1 of US12,589,437 is silent as to specific duration of premachining, any portion of the entire machining can be interpreted as premachining, and further machining duration in itself is influenced and influences the machining speed, size of the article and area / volume to remove, materials involved, etc. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a duration of pre-machining for less than three seconds since “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 4: see claim 1 of US12,589,437.
Claim 5: see claim 1 of US12,589,437.
Claim 6: see claim 3 of US12,589,437.
Claim 7: see claim 1 of US12,589,437. As the same material for the coating layer (aluminum / aluminum alloy) is recited by claim 1 of US12,589,437 as that taught by Applicant to form tribofilms and the step of formation of both are equated to a machining operation, claim 1 of US12,589,437 would inherently teach the limitation of the coating forming a plurality of tribofilms since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
