Patent Application 17802536 - CUTTING TOOL - Rejection

Patent Application 17802536 - CUTTING TOOL

Title: CUTTING TOOL

Application Information

• Invention Title: CUTTING TOOL
• Application Number: 17802536
• Submission Date: 2025-05-16T00:00:00.000Z
• Effective Filing Date: 2022-08-26T00:00:00.000Z
• Filing Date: 2022-08-26T00:00:00.000Z
• National Class: 428
• National Sub-Class: 336000
• Examiner Employee Number: 77565
• Art Unit: 1787
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 4
• 103 Rejections: 3

Cited Patents

No patents were cited in this rejection.

Office Action Text

    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 .
Specification
The disclosure is objected to because of the following informalities: Paragraph 0032 of the specification as filed recites, “In the present specification, the term ‘hard carbon film’ means what is commonly referred to by names such as diamond-like carbon (DLC), amorphous carbon, and diamond-like carbon” (emphasis added) with “diamond-like carbon” repeated and no clear indication as to how the second “diamond-like carbon” is different from the first “diamond-like carbon”.
Appropriate correction is required.
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.


Claim 4 is 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.  Although alternative expressions are permissive in the claims, they should be drafted in proper alternative format, i.e. “selected from A, B, or C”, “one of A, B, and/or C", or in proper Markush claim format, i.e. “selected from the group consisting of A, B, and C”, or in similar alternative format such that there is no uncertainty or ambiguity with respect to the question of scope or clarity of the claims.  In the instant case, claim 4 recites, “wherein the interface layer contains: at least one selected from the group consisting of a material made of a single element selected from a first group consisting of Group 4 elements, Group 5 elements, Group 6 elements, Group 13 elements, and Group 14 elements excluding carbon in the Periodic Table, an alloy containing at least one element selected from the first group, first compound containing at least one element selected from the first group, and a solid solution derived from the first compound; or one or both of a second compound composed of at least one element selected from the first group and carbon, and a solid solution derived from the second compound” (emphasis added) on lines 4-11, such that is unclear as to which elements or materials are meant to be alternatives to the other(s), particularly given the use of only commas on lines 4-8 to separate the different materials or groups of materials.  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 15 is 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 15 recites the limitation "the nanoindenter method" in line 14.  There is insufficient antecedent basis for this limitation in the claim, and given that all nanoindenter methods are not necessarily the same, 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.
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 7 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 7 recites, “The cutting tool according to claim 1, wherein the area proportion of black regions is 0% or more and 0.7% or less” (emphasis added), however, given that claim 1 already recites that “an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less” (emphasis added) which is interpreted as the same “0% or more and 0.7% or less” range given that the area proportion cannot be less than 0%, claim 7 does not further limit 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 10 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 10 recites, “The cutting tool according to claim 1, wherein the hard carbon film has a hydrogen content of 0 atom% or more and 5 atom% or less” (emphasis added), however, given that claim 1 already recites that “the hard carbon film has a hydrogen content of 5 atom% or less” (emphasis added) which is interpreted as the same “0 atom% or more and 5 atom% or less” range given that the content cannot be less than 0 atom%, claim 10 does not further limit 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 § 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 (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 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, 5, 7-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Falabella (Fabrication of amorphous diamond films, Entire document).  Falabella discloses amorphous diamond (a:D) films and a method of producing the a:D films on a substrate using a filtered cathodic arc system wherein the produced a:D films demonstrate Vickers hardness above 8000 Hv (e.g. about 78.5 GPa), hydrogen content below 0.1% (as in instant claims 1 and 10-12), density of 2.7 ± 0.3 g/cc, and adhesion on tungsten carbide and silicon substrates above 70 MPa (Abstract).  Falabella discloses that the fine structure of a:D was characterized by transmission electron microscopy (TEM) which showed no evidence of any ordered structure down to 1 nm (Abstract).  Falabella produces films up to 8 µm thick on cemented tungsten carbide tool bits (as in instant claim 5) and polished silicon wafers (Abstract, Experimental details) with a tungsten carbide tool bit coated with 8 µm of a:D exhibiting a hardness of 10,000 Hv ± 10%, although the value “may be an overestimate of the hardness of the coating” given the discussion on page 84, first column, noting that the measured hardness may be affected by various parameters, with other results showing a hardness of 35.2 GPa for an indenter radius of 2 µm and load of 50 mN (page 84, as in instant claim 14).  Falabella also discloses that with respect to the fine structure of a:D, the TEM indicated its amorphous nature and lack of any order as evident in the uniform random pattern, wherein as evidenced by the bright field TEM image shown in Fig. 2, there are no contrast regions with an equivalent circle diameter of 10 nm or more (Section 3.5, Fig. 2), and hence, the Examiner takes the position that “when a cross section of the hard carbon film [disclosed by Falabella] is observed using a high angle annular dark field scanning transmission electron microscope, an area proportion of black regions with an equivalent circle diameter of 10 nm or more” would inherently be “0.7% or less” as recited in instant claim 1, or 0%-0.7% as in instant claim 7, 0%-0.5% as in instant claim 8, or 0%-0.3% as in instant claim 9 such that Falabella anticipates instant claims 1 and 7-9, as well as instant claims 5, 10-12, and 14, the limitations of which are discussed in detail above, especially given that the sample areas may be arbitrary selected and the determination of “black” regions is not specifically defined or limited by the instant claims.
With respect to instant claim 2, Falabella discloses that the produced films or coatings were up to 8 µm thick, fully encompassing the claimed range, and given that Falabella specifically discloses analyzing a film having a thickness of 2.4 µm falling within the claimed range (page 85), the Examiner takes the position that Falabella discloses the claimed thickness range with sufficient specificity to anticipate instant claim 2.
With respect to instant claim 3, Falabella provides a:D films coated directly on the substrates, particularly cemented carbide tool bits and polished silicon wafers (Experimental details), and hence Falabella anticipates instant claim 3.
Claim Rejections - 35 USC § 102/103
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 1-3 and 7-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oda (JP2003147508A, please refer to the attached machine translation for the below cited sections). 
 Oda discloses a high-hardness carbon film, a method for forming the same, and a member coated with the carbon film, which is applicable to coating tools such as drills as in the examples (Paragraph 0001, Examples), wherein the carbon film has a density of 2.8 to 3.3 g/cm3; a spin density of 1x1018 to 1x1021 spins/cm3 which corresponds to the density of unpaired electrons and thus the number of dangling bonds or defects in the carbon film; a carbon concentration of 99.5 atomic% or more (as in instant claim 13), a hydrogen concentration of 0.5 atomic% or less (as in instant claims 10-12), and a rare gas element concentration of 0.5 atomic% or less; and a Knoop hardness of 2000 to 6000 measured when a carbon film coated on a Si wafer with a thickness of 1.0 µm to 2.0 µm (as in instant claim 2) is applied with a load of 50 g or more and 100 g or less (Paragraphs 0010-0011, and 0014-0018).  Oda discloses that the carbon film is formed using a solid carbon as a raw material by a cathodic arc ion plating method or a laser ablation method (Paragraph 0012), wherein the solid carbon “may be, for example, isotropic graphite that has been subjected to a high-purity treatment, pyrolytic carbon synthesized by a CVD method, glassy carbon obtained by carbonizing thermosetting resins, sintered diamond, resin, etc.” (Paragraph 0019), with working examples utilizing either glassy carbon or isotropic graphite (Examples).  Oda discloses that the process is preferably conducted without actively introducing hydrogen, rare gas elements, or materials containing hydrogen during film formation, wherein if a rare gas such as argon is used during the synthesis of the carbon film, rare gas atoms are likely to be incorporated into the film and are likely to cause defects which can reduce hardness and heat resistance (Paragraph 0017).
Oda also discloses that a carbon concentration of less than 99.5 atomic% is not preferable because it increases defects caused by impurities and reduces hardness and heat resistance (Paragraph 0017), and hence, discloses that the carbon film is made substantially of only carbon, and contains hydrogen and rare gas elements only at impurity levels (Paragraph 0017).  Oda further discloses that in terms of hardness and heat resistance, the carbon film preferably has a Knoop hardness of 2000 or more and 6000 or less (i.e. ~ 19.6 GPa or more and 58.8 GPa or less), and that the heat resistance of a carbon film generally decreases as the graphite content (i.e. sp2 content) increases, and thus in order to have a small amount of graphite (i.e. an amorphous film as in instant claim 13), it is preferable that the Knoop hardness is 2000 or more, and given that a Knoop hardness exceeding 6000 is practically difficult to obtain at low temperatures of a few hundred degrees Celsius, it is undesirable (Paragraph 0018).  Oda specifically discloses various examples produced by the cathodic arc ion plating (Examples 2, 3, 5, 8, 9, and 11) as well as various examples produced by laser ablation utilizing glassy carbon as the raw material (Examples 1, 4, 6, 7, and 10), with the properties thereof as noted in the tables, including densities in the range of 2.9-3.25 g/cc, spin densities of 5.0x1019 to 9.0x 1020 spins/cc, a carbon concentration of 99.5at% or more, hydrogen and rare gas element concentrations of 0.5at% or below, and hardness values of 2800-5300; as well as two examples wherein amorphous DLC films were coated on aluminum alloy drills by cathodic arc ion plating with one conducted at a degree of vacuum of 0.001 Pa without introducing any particular gas, and the other with argon introduced at 10 mTorr to compare the properties and lifespans of the resulting carbon films with the latter (control) having a density of 2.44 g/cc, a spin density of 3 x 1021 spins/cm3, a carbon concentration of 99.5at% or more, and a rare gas element concentration of 0.5 at% or less, while the former (inventive) has a density of 3.05 g/cc, a spin density of 4 x 1020 spins/cm3, a carbon concentration of 99.5at% or more, a hydrogen concentration and rare gas concentration of 5 ppm or less, and a lifespan that was more than five times longer than the control film (Example 15, Paragraphs 0004-0005, and 0039).  
Hence, with respect to the instantly claimed invention, Oda discloses a cutting tool (e.g. drill) comprising a base body (e.g. substrate) and a hard carbon film arranged on the base body, wherein the hard carbon film has a hydrogen content of 5 atom% or less (i.e. 0.5 atomic% or less), and although Oda does not specifically disclose that “when a cross section of the hard carbon film is observed using a high angle annular dark field scanning transmission electron microscope, an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less”, given that Oda does disclose that the carbon film has a carbon concentration of 99.5at%, a density of 2.8 to 3.3 g/cm3, a spin density of 1x1018 to 1x1021 spins/cm3 with working examples as noted above, formed by essentially the same method as utilized in the instant invention with Oda specifically disclosing the use of glassy carbon as a raw material for forming the carbon film, the Examiner takes the position that the hard carbon film disclosed by Oda would inherently exhibit an area proportion percentage of black regions as recited in instant claims 1 and 7-9 when a cross section thereof is observed using a high angle annular dark field scanning transmission electron microscope as in the claimed invention, and thus instant claims 1 and 7-9 are anticipated by Oda, especially given that the sample areas may be arbitrary selected and the determination of “black” regions is not specifically defined or limited by the instant claims.  Alternatively, given the teachings of Oda as discussed in detail above wherein Oda clearly teaches that the hard carbon film having the above properties can be formed by essentially the same method as utilized in the instant invention, particularly utilizing a glassy carbon target as a raw material in an arc method, 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 hard carbon film taught by Oda to exhibit an area portion percentage of black regions as instantly claimed when a cross section thereof is observed using a high angle annular dark field scanning transmission electron microscope as in the claimed invention, thereby alternatively rendering instant claims 1 and 7-9 obvious over Oda.
With respect to instant claim 2, Oda discloses that the carbon film has a thickness of usually 10 nm to 3 µm (Paragraph 0021), encompassing the claimed range, and given that Oda discloses examples with a coating thickness of 0.8 to 1.1 µm (Examples), instant claim 2 is anticipated by, or alternatively, rendered obvious over Oda.
With respect to instant claim 3, given that Oda provides the coating directly on the substrate in the examples, instant claim 3 is anticipated by, or alternatively, rendered obvious over Oda (Examples).
With respect to instant claims 10-13, as noted above, Oda discloses that the hard carbon film or DLC film is amorphous with a carbon concentration of 99.5 atomic% or more (as in instant claim 13) and a hydrogen concentration of 0.5 atomic% or less (as in instant claims 10-12), and hence, instant claims 10-13 are anticipated by, or alternatively, rendered obvious over Oda.
With respect to instant claims 14-15, as noted above, Oda discloses that the carbon film preferably has a Knoop hardness of 2000 or more and 6000 or less, i.e. ~ 19.6 GPa to 58.8 GPa, with at least one example having a hardness within the claimed range of 35 GPa or more and 75 GPa or less of instant claim 14, and particularly within the claimed hardness range of 45 GPa to 73 GPa as recited in instant claim 15, thereby anticipating instant claim 15; and although Oda does not specifically disclose a hardness “measured by the nanoindenter method” as recited in instant claim 14, given the Knoop hardness values disclosed by Oda and that the carbon film disclosed by Oda is produced by essentially the same method as in the instant invention, the Examiner takes the position that the hard carbon films disclosed by Oda, particularly as in the examples, would inherently exhibit a hardness within the range as recited in instant claim 14 when “measured by the nanoindenter method”, particularly given the lack of clarity thereof as discussed above.  Alternatively, instant claims 14-15 would have been obvious over the teachings of Oda for the same reasons as discussed above with respect to instant claim 1.
Claims 1-3 and 7-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto (Analysis on microstructure of interface layer in DLC/SI structures produced by FIB-CVD).  Sakamoto discloses a coated substrate comprising an amorphous diamond-like carbon (DLC) coating film produced by a focused ion-beam chemical vapor deposition (FIB-CVD) method on a crystalline silicon (Si) substrate wherein the microstructure thereof, particularly that of an interface layer formed between the DLC coating and the Si substrate, is analyzed by high-resolution transmission electron microscopy (HRTEM), studying the DLC/Si interface broadly by observing bright field images of a cross-sectional specimen, and to evaluate composition and distribution of constituent atoms, energy dispersion spectroscopy (EDS) was measured in high-angle annular dark-field scanning transmission electron microscopy (HAADF-STEM) mode (Entire document, particularly Abstract, Sections 2-4).  Sakamoto discloses that DLC films were deposited with a film size of 20 µm x 20 µm x 0.7 µm onto the Si substrate, wherein as found from a bright field image, a transition layer is formed at the DLC/Si interface as evident from the different contrast from both the DLC film and the Si substrate, with a thickness of the transition layer being about 50 nm based upon the bright filed image but about 100 nm when utilizing EDS line profiles which show that the transition layer consists mainly of C and Si including a crystalline Si-C layer of about 3 nm adjacent the substrate, a clustered Si-C layer of about 50nm on the substrate side, and an amorphous Si-C layer on the DLC film side (Entire document, particularly Sections 2, 3, 4.2, and 5).  Based upon the DLC coated substrates and analysis results disclosed by Sakamoto, particularly the HAADF-STEM images and the concentration line profiles, Sakamoto discloses a DLC coated substrate comprising a base body and a hard carbon film arranged directly on the base body (as in instant claim 3), wherein the hard carbon film has a hydrogen content of 5 atom% or less as in instant claim 1, particularly 0at% to 5at% as in instant claim 10 or 0at% to 4at% as in instant claim 11, and more particularly 0at% to 2at% as in instant claim 12, and given the images provided by Sakamoto, with uniform color/contrast for the DLC film outside of the transition layer, the Examiner takes the position that “when a cross section of the hard carbon film is observed using a high angle annular dark field scanning transmission electron microscope, an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less” as in instant claim 1 and similarly in instant claim 7, as well as 0 to 0.5% as in instant claim 8 or 0 to 0.3% as in instant claim 9, particularly given that any arbitrary areas may be selected, and hence Sakamoto anticipates instant claims 1, 3, and 7-12 given that the coated substrate disclosed by Sakamoto is capable of being a “cutting tool” of some sort.
With respect to instant claim 2, Sakamoto discloses that the DLC films were deposited on the substrate to a thickness of 0.7 µm (Experiments), thereby anticipating instant claim 2.
With respect to instant claim 13, Sakamoto discloses that the DLC film is amorphous with a carbon content as claimed (Sections 3.1 and 4.1), thereby anticipating instant claim 13.
Claims 1-2, 4-5 and 7-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oda (US2006/0246290A1, hereinafter referred to as “Oda ‘290”).  Oda ‘290 discloses an amorphous carbon film of high hardness used to coat tools (Abstract, Paragraph 0001) and a method of forming the same, wherein the carbon film has a density of 2.8 to 3.3 g/cm3; a spin density of 1x1018 to 1x1021 spins/cm3  which corresponds to the density of unpaired electrons and thus the number of dangling bonds or defects in the carbon film (Paragraph 0041); a carbon concentration of at least 99.5 atomic% (as in instant claim 13), a hydrogen concentration of no more than 0.5 atomic% (as in instant claims 1 and 10-12), and an inert gas element concentration of no more than 0.5 atomic%; and a Knoop hardness of 3000 to 7000, measured when a carbon film coated on a Si wafer with a thickness of 1.0 µm to 2.0 µm (as in instant claim 2) is applied with a load of 50 g or more and 100 g or less (Entire document, particularly Abstract, Paragraphs 0001, 0041, and 0046).  Oda ‘290 discloses that the amorphous carbon film is formed from a solid carbon as a raw material (e.g. glassy carbon as evidenced by examples of Oda which are identical to Oda ‘290) using sputtering, cathodic arc ion plating, or laser ablation (Abstract), with working examples utilizing a solid carbon target as the raw material in each of the above methods (Examples) including example films of about 1 micrometer thickness (as in instant claim 2) coated onto substrates of tool steel, stainless steel, cemented carbide, alumina, sapphire, glass, and silicon nitride via mixed layers of various metals and the substrate material as summarized in Table 5 reading upon the claimed interface layer of instant claim 4 including the composition and thickness thereof (Examples, Table 5).  Oda ‘290 discloses that the mixed layer provides increases adhesion between the coating and the substrate (Abstract).  Oda ‘290 discloses that the process is preferably conducted without actively introducing hydrogen, rare gas elements, or materials containing hydrogen during film formation, wherein if a rare gas such as argon is used during the synthesis of the carbon film, rare gas atoms are likely to be incorporated into the film and are likely to cause defects which can reduce hardness and heat resistance (Paragraphs 0030, 0036, and 0043-0045).
Oda ‘290 also discloses that a carbon concentration of less than 99.5 atomic% is not preferable because it increases defects caused by impurities and reduces hardness and heat resistance (Paragraphs 0042-0044), and hence, discloses that the carbon film is preferably formed essentially only from carbon, and contains hydrogen and rare gas elements only at impurity levels (Paragraph 0045).  Oda ‘290 further discloses that in terms of hardness and heat resistance, the carbon film preferably has a Knoop hardness of 3000 or more and 7000 or less (i.e. ~ 29.4 GPa or more and 68.6 GPa or less), and that the heat resistance of a carbon film generally decreases as the graphite content (i.e. sp2 content) increases, and thus in order to have less graphite, it is preferable that the Knoop hardness is 3000 or greater, and given that a Knoop hardness exceeding 7000 is difficult to obtain at low temperatures of a few hundred degrees Celsius, it is not desirable (Paragraph 0046).  
Oda ‘290 specifically discloses an example comprising a cemented carbide drill coated with a carbon film by cathodic arc ion plating wherein the film has a density of 3.11 g/cc, a spin density of 2.0x1020 spins/cm3, a carbon concentration of 99.9at% or greater, hydrogen and rare gas element concentrations below the detection limit, and a Knoop hardness of 3,800 (Paragraph 0087); as well as two examples wherein amorphous carbon films were coated on aluminum alloy drills by cathodic arc ion plating with one conducted at a degree of vacuum of 0.001 Pa without introducing any particular gas, and the other with argon introduced at 10 mTorr to compare the properties and lifespans of the resulting carbon films with the latter having a density of 2.44 g/cc, a spin density of 3 x 1021 spins/cm3, a carbon concentration of 99.5at% or more, a rare gas element concentration of 0.5 at% or less, and a Knoop hardness of 1800 (control), while the former (inventive) has a density of 3.05 g/cc, a spin density of 4 x 1020 spins/cm3, a carbon concentration of 99.5at% or more, a hydrogen concentration and rare gas concentration of 5 ppm or less, a Knoop hardness of 4500, and a lifespan over 5 times longer than the control film (Examples, Paragraphs 0093-0094).
 Hence, with respect to the instantly claimed invention, Oda ‘290 discloses a cutting tool (e.g. drill) comprising a base body (e.g. substrate) and a hard, amorphous carbon film arranged on the base body via an interlayer having a composition and thickness as recited in instant claim 4, wherein the hard, amorphous carbon film has a hydrogen content of 5 atom% or less (i.e. 0.5 atomic% or less), and although Oda ‘290 does not specifically disclose that “when a cross section of the hard carbon film is observed using a high angle annular dark field scanning transmission electron microscope, an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less”, given that Oda ‘290 does disclose that the hard, amorphous carbon film has a carbon concentration of 99.5at% (as in instant claim 13), a density of 2.8 to 3.3 g/cm3, a spin density of 1x1018 to 1x1021 spins/cm3 with working examples as noted above, formed by essentially the same method as utilized in the instant invention with Oda ‘290 specifically disclosing the use of solid (glassy) carbon as a raw material for forming the carbon film, the Examiner takes the position that the hard, amorphous carbon film disclosed by Oda ‘290 would inherently exhibit an area proportion percentage of black regions as recited in instant claims 1 and 7-9 when a cross section thereof is observed using a high angle annular dark field scanning transmission electron microscope as in the claimed invention, and thus instant claims 1, 4, 7-9, and 13 are anticipated by Oda ‘290, especially given that the sample areas may be arbitrary selected and the determination of “black” regions is not specifically defined or limited by the instant claims.  Alternatively, given the teachings of Oda ‘290 as discussed in detail above wherein Oda ‘290 clearly teaches that the hard carbon film having the above properties can be formed by essentially the same method as utilized in the instant invention, particularly utilizing a solid (glassy) carbon target as a raw material in an arc method, 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 hard carbon film taught by Oda ‘290 to exhibit an area portion percentage of black regions as instantly claimed when a cross section thereof is observed using a high angle annular dark field scanning transmission electron microscope as in the claimed invention, thereby alternatively rendering instant claims 1, 4, 7-9, and 13 obvious over Oda ‘290.
With respect to instant claim 2, given that Oda ‘290 discloses that the Knoop hardness of the amorphous carbon films is based upon a thickness of 1 to 2 µm (Paragraph 0046) as noted above, falling within the claimed range, and given that Oda ‘290 discloses examples with a coating thickness of 0.8 to 1.5 µm (Examples), instant claim 2 is anticipated by, or alternatively, rendered obvious over Oda ‘290.
With respect to instant claims 10-12, as noted above, Oda ‘290 discloses that the hard, amorphous carbon film has a hydrogen concentration of 0.5 atomic% or less (as in instant claims 10-12), and hence, instant claims 10-12 are anticipated by, or alternatively, rendered obvious over Oda ‘290.
With respect to instant claims 14-15, as noted above, Oda ‘290 discloses that the amorphous carbon films preferably have a Knoop hardness of 3000 or more and 7000 or less, i.e. ~ 29.4 GPa or more and 68.6 GPa or less, with at least one example having a hardness within the claimed range of 35 GPa or more and 75 GPa or less of instant claim 14, and particularly within the claimed hardness range of 45 GPa to 73 GPa as recited in instant claim 15, thereby anticipating instant claim 15; and although Oda ‘290 does not specifically disclose a hardness “measured by the nanoindenter method” as recited in instant claim 14, given the Knoop hardness values disclosed by Oda ‘290 and that the amorphous carbon film disclosed by Oda is produced by essentially the same method as in the instant invention, the Examiner takes the position that the hard, amorphous carbon films disclosed by Oda ‘290, particularly as in the examples, would inherently exhibit a hardness within the range as recited in instant claim 14 when “measured by the nanoindenter method”, particularly given the lack of clarity thereof as discussed above.  Alternatively, instant claims 14-15 would have been obvious over the teachings of Oda ‘290 for the same reasons as discussed above with respect to instant claim 1.
Claim Rejections - 35 USC § 103
Claims 4, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Falabella as applied above to claims 1-3, 5, 7-12, and 14, and further discussed below.  The teachings of Falabella are discussed in detail above wherein with respect to instant claim 4, Falabella further teaches that it is known that adhesion between a substrate and a:D coating can be improved by forming an adherent interface such as by depositing “a thin layer of carbide-forming metal” before coating with a:D, and given that Falabella teaches that a mixed Si-C interlayer of about 2 nm may be formed by carbon penetrating the substrate surface such that “[o]n carbide-forming materials the adhesion is sufficient to produce thick coatings without the compressive stress causing delamination of the coating as long as the bias voltage is kept above 120 V during deposition” (Introduction, Sections 3.4-3.5), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a thin carbide-forming metal interlayer as taught by Falabella, having a similar thickness as the Si-C interlayer of about 2 nm, falling within the claimed range, to improve adhesion between the a:D coating and the substrate material based upon the substrate material to be coated as taught by Falabella, wherein metals or elements as recited in instant claim 4 are obvious carbide-forming metals in the art and hence would have been obvious to one having ordinary skill in the art such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 4 would have been obvious over the teachings of Falabella given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claim 13, Falabella teaches that the a:D films are amorphous diamond or hard carbon films containing less than 0.1% hydrogen, with some films purposely produced to include impurity atoms, such as nitrogen at a content of 7%, to reduce intrinsic stress in the a:D films, and hence 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 a:D films taught by Falabella that are produced without added impurity atoms to have a carbon content within the claimed range of 95% or more, particularly given the a:D film properties taught by Falabella as noted above, thereby rendering instant claim 13 obvious over the teachings of Falabella.
With respect to instant claim 15, as noted above, Falabella teaches that the produced a:D films having a hydrogen content below 0.1% exhibit a Vickers hardness above 8000 Hv (~78.5 GPa), and given that Falabella also teaches that in general, hardness of DLC drops as the percentage of hydrogen increases and that measured hardness values are dependent on the measurement technique, indenter size, load, coating thickness, and substrate material, with hardness results of one of the produced a:D films ranging from 26.1 GPa to 35.2 GPa when using an ultramicrohardness tester under different loads and indenter sizes, with hardness values measured by this technique typically being lower than those measured by other methods, the claimed hardness range of 45 GPa or more and 73 GPa or less would have been obvious over the teachings of Falabella, particularly given that the claimed invention does not require the recited hardness to be measured by any particular measurement technique and/or under any particular measurement parameters such that any hardness value between and/or close to the values taught by Falabella would have been obvious to one skilled in the art before the effective filing date of the claimed invention (Entire document, particularly Abstract, Section 3.3).
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.
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Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,992,882 in view of Oda (JP2003147508A), Bhushan (Chemical, mechanical and tribological characterization of ultra-thin and hard amorphous carbon coatings as thin as 3.5 nm: recent developments), and/or Neuville (New application perspective for tetrahedral amorphous carbon coatings).  Patented claim 1 is directed to a “cutting tool comprising a base body and a hard carbon film arranged on the base body, wherein the hard carbon film includes an amorphous phase and a graphite phase, a density of the hard carbon film is no less than 2.5 g/cm3 and no more than 3.5 g/cm3, a degree of crystallinity of the hard carbon film is no more than 6.5%, and an average coordination number of the amorphous phase is no less than 2.5 and no more than 4” (e.g. sp2 corresponds to a coordination number of 3, while sp3 corresponds to a coordination number of 4 such that an amorphous phase with an average coordination number of 4 refers to tetrahedral amorphous carbon, ta-C), and although patented claim 1 does not recite that the hard carbon film has a hydrogen content of 5 atom% or less and “when a cross section of the hard carbon film is observed using a high angle annular dark field scanning transmission electron microscope [HAADF STEM], an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less” as recited in instant claim 1, given that one having ordinary skill in the art before the effective filing date of the claimed invention would have readily understood that the instantly claimed properties of the hard carbon film are interrelated with the recited properties of the hard carbon film of patented claim 1, e.g. an increase in hydrogen content reduces the coordination number, the density, and the hardness of the a hard carbon film (as taught by Oda, Neuville and/or Bhushan, Entire documents), while density variations as well as an increase in graphite phase and degree of crystallinity within the amorphous phase result in contrast differences when observed by HAADF STEM given that it is well established in the art that in HAADF STEM, images are formed by collecting scattered electrons wherein heavier elements or higher Z elements appear brighter and lighter elements or lower Z elements appear darker, and given that a crystalline material exhibits a characteristic lattice-like pattern of dark and bright spots due to its repeating atomic structure while an amorphous material which lacks long-range order appears more diffuse with no distinct spots or patterns (as evidenced by Sohlberg, Insights into the physical chemistry of materials from advances in HAADF-STEM, Entire document, particularly Abstract, and Introduction on pp. 3982-3989), 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 hard carbon film of patented claim 1 to have a hydrogen content of 5 atom% or less (with patented claim 3 specifically reciting a hydrogen content of 5 atom% or less) and a cross section thereof that exhibits an area portion of black regions within the percentage ranges as recited in instant claims 1 and 7-9 when viewed by HAADF STEM given that the hard carbon film of patented claim 1 may consist essentially of amorphous carbon with almost no or a very low degree of crystallinity, with an average coordination number of 4 such that no or substantially no hydrogen is present and the density thereof is substantially uniform with only a very minor amount of a graphite phase that may be present at the coating surface and/or may be on the order of angstroms in size and thus would not exhibit any black regions (i.e. 0% as in instant claims 1 and 7-9) with an equivalent circle diameter of 10 nm or more, such that lines 3-6 of instant claim 1 merely represent another manner for characterizing the same hard carbon film as recited in patented claim 1.  Further, it would have been well within the skill level of one having ordinary skill in the art to determine the optimum production method and process parameters to provide a hard carbon film having the desired properties, such as hardness, wear resistance, and heat resistance, for a particular end use of the hard carbon film, wherein defects such as dangling bonds, impurities, pores, etc. which can reduce said properties are controlled and/or minimized.  Hence, absent any clear showing of criticality and/or unexpected results, instant claims 1 and 7-9 would have been obvious over patented claim 1 in view of Oda, Neuville and/or Bhushan, or alternatively, over patented claim 3 which specifically recites a hydrogen content of no more than 5 atom %, in view of Oda, Neuville and/or Bhushan.
With respect to instant claims 2-6, patented claims 2 and 4-7, respectively, recite the same limitations and hence instant claims 2-6 would have been obvious over patented claims 2 and 4-7, respectively, for the same reasons as discussed above with respect to instant claim 1 over patented claim 1 in view of Oda, Neuville and/or Bhushan.
With respect to instant claims 10-12, as noted above, patented claim 3 specifically recites a hydrogen content of no more than 5 atom % while patented claim 15 recites a hydrogen content of no less than 0 atom % and no more than 5 atom %, such that either patented claim 3 or patented claim 15 render obvious the atom % ranges as recited in instant claims 10-12, and hence instant claims 10-12 would have been obvious over patented claim 3 or patented claim 15 for the same reasons as discussed above with respect to instant claim 1 over patented claim 1 or patented claim 3, in view of Oda, Neuville and/or Bhushan.
With respect to instant claim 13, patented claim 1 recites that the hard carbon film incudes an amorphous phase and given the density, degree of crystallinity, and average coordination number as recited in patented claim 1 and more particularly the hydrogen content of no more than 5 atom % as recited in patented claim 3, a carbon content of 95 atom% or more would have been obvious over patented claim 1 or 3 given that such hard carbon films typically consist essentially of carbon and hydrogen, thereby rendering instant claim 13 obvious over patented claim 1 or 3, in view of Oda, Neuville and/or Bhushan.
With respect to instant claims 14-15, given the density, degree of crystallinity, and average coordination number range recited in patented claim 1, which would suggest that the hard carbon film of patented claim 1 is a ta-C film, wherein ta-C films have hardness values as instantly claimed, with Oda (Paragraph 0011, Examples), Neuville (p. 7), and Bhushan (p. 1999) each teaching hardness values within the claimed ranges, instant claims 14-15 would have been obvious over patented claim 1 in view of Oda, Neuville and/or Bhushan, wherein it is again noted that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum hard carbon film properties for a particular end use.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,049,693 in view of Oda, Neuville and/or Bhushan.  Patented claim 1 is directed to a “cutting tool comprising a base body and a hard carbon film arranged on the base body, wherein the hard carbon film includes an amorphous phase and a graphite phase, a degree of crystallinity of the hard carbon film is no more than 6.5%, and a degree of orientation of the graphite phase is no more than 6” wherein the degree of orientation is defined as a ratio of the scattering intensity I200 of the peak originating from the (200) plane of the graphite phase to the scattering intensity I011 of the peak originating from the (011) plane of the graphite phase, and the smaller the degree of orientation of the graphite phase, the smaller the number of layers of graphene.  Although patented claim 1 does not recite that the hard carbon film has a hydrogen content of 5 atom% or less and “when a cross section of the hard carbon film is observed using a high angle annular dark field scanning transmission electron microscope, an area proportion of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less” as recited in instant claim 1, patented claim 3 does recite that the hard carbon film has a hydrogen content of no more than 5 atom %, and given that it is well established in the art that in HAADF STEM, images are formed by collecting scattered electrons wherein heavier elements or higher Z elements appear brighter and lighter elements or lower Z elements appear darker, and a crystalline material exhibits a characteristic lattice-like pattern of dark and bright spots due to its repeating atomic structure while an amorphous material which lacks long-range order appears more diffuse with no distinct spots or patterns (as evidenced by Sohlberg, Insights into the physical chemistry of materials from advances in HAADF-STEM, Entire document, particularly Abstract, and Introduction on pp. 3982-3989), 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 hard carbon film of patented claim 3 to have a cross section that exhibits an area portion of black regions within the percentage ranges as recited in instant claims 1 and 7-9 when viewed by HAADF STEM given that the hard carbon film of patented claim 3 may consist essentially of amorphous carbon with almost no or a very low degree of crystallinity, and a low degree of orientation of the graphite phase such that the graphite phase may be on the order of angstroms in size and thus would not exhibit any black regions (i.e. 0% as in instant claims 1 and 7-9) with an equivalent circle diameter of 10 nm or more, such that lines 3-6 of instant claim 1 merely represent another manner for characterizing the same hard carbon film as recited in patented claim 3.  Further, it would have been well within the skill level of one having ordinary skill in the art to determine the optimum production method and process parameters to provide a hard carbon film having the desired properties, such as hardness, wear resistance, and heat resistance, for a particular end use of the hard carbon film, wherein defects such as dangling bonds, impurities, pores, etc. which can reduce said properties are controlled and/or minimized.  Hence, absent any clear showing of criticality and/or unexpected results, instant claims 1 and 7-9 would have been obvious over patented claim 3 in view of Oda, Neuville and/or Bhushan.  Alternatively, given that such hard carbon films as recited in patented claim 1 typically contain only a minor amount of hydrogen given that as hydrogen content increases, hardness decreases as taught by Oda, Neuville, and/or Bhushan, instant claims 1 and 7-9 alternatively would have been obvious over patented claim 1 in view of Oda, Neuville, and/or Bhushan wherein it is again noted that the claimed HAADF STEM observations would have been obvious over the properties recited in patented claim 1 with respect to the hard carbon film as discussed above.
With respect to instant claims 2-6, patented claims 2 and 4-7, respectively, recite the same limitations and hence instant claims 2-6 would have been obvious over patented claims 2 and 4-7, respectively, for the same reasons as discussed above with respect to instant claim 1 over patented claim 1 in view of Oda, Neuville and/or Bhushan.
With respect to instant claims 10-12, as noted above, patented claim 3 specifically recites a hydrogen content of no more than 5 atom % while patented claim 14 recites a hydrogen content of no less than 0 atom % and no more than 5 atom %, such that either patented claim 3 or patented claim 14 render obvious the atom % ranges as recited in instant claims 10-12, and hence instant claims 10-12 would have been obvious over patented claim 3 or patented claim 14 for the same reasons as discussed above with respect to instant claim 1 over patented claim 1 or patented claim 3, in view of Oda, Neuville and/or Bhushan.
With respect to instant claim 13, patented claim 1 recites that the hard carbon film incudes an amorphous phase reading upon the claimed “hard carbon film is amorphous” and given the hydrogen content of no more than 5 atom % as recited in patented claim 3 which depends upon patented claim 1, a carbon content of 95 atom% or more would have been obvious over patented claim 3 given that such hard carbon films typically consist essentially of carbon and hydrogen, thereby rendering instant claim 13 obvious over patented claim 3, in view of Oda, Neuville and/or Bhushan.
With respect to instant claims 14-15, given that Oda (Paragraph 0011, Examples), Neuville (p. 7), and Bhushan (p. 1999) each teaches hardness values within the claimed ranges for similar hard carbon films, and that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum hard carbon film properties for a particular end use of the hard carbon film and/or cutting tool, absent any clear showing of criticality and/or unexpected results, instant claims 14-15 would have been obvious over patented claim 1 in view of Oda, Neuville and/or Bhushan.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.  O’Neill (USPN 5,401,543) discloses a method for producing macroparticle-free DLC films by cathodic arc discharge using a cathode of vitreous (glassy) carbon or pyrolytic graphite.  Shi (USPN 11,643,733) discloses multilayered ta-C based coatings with improved hardness for coating cutting tools, wherein the ta-C coating has a hydrogen content of less than 10%, preferably less than 5%, and an sp2 content of less than 30%, preferably less than 20%.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787