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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set
forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
application is eligible for continued examination under 37 CFR 1.114, and the fee set
forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
December 29, 2025 has been entered.
Response to Amendments
The amendments filed December 29, 2025 have been entered. Applicant amended claims 1 and 15. Claims 1-10 and 15-20 remain pending in the application.
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.
Claims 1-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over UK Patent Application GB 2345930 A (“Findley”) in view of US 20070102198 A1 (“Oxford”).
In regards to claim 1, Findley discloses
a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”);
placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.);
allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”);
inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.);
boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure.);
Findley does not disclose and performing a characterization test on the extracted specimen.
However, Oxford discloses
and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.).
Findley and Oxford are considered analogous to the claimed invention because they are in the field of earth-boring drill bits. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for a method comprising: selecting and preparing a casting material; placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height; wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material; allowing for the casting material to set, creating a cast sample with a shape; wherein the cast sample comprises the structure enveloped by the casting material; inserting the cast sample into a boring apparatus; boring and extracting a cylindrical specimen of the structure from the cast sample, wherein the extracted specimen does not include the casting material, as disclosed by Findley, and performing a characterization test on the extracted specimen, as disclosed by Oxford, to provide a characterization test on the extracted specimen for a method for selecting and preparing a casting material. One skilled in the art would understand and recognize the value of a characterization test to improve earth-boring drill bits used to drill subterranean formations.
In regards to claim 2, Findley discloses
the method of claim 1, further comprising: selecting a mold for the casting material; and pouring the casting material into the mold (page 21, line 26; “Such a mold material 62 may be poured into mold casing 60”).
In regards to claim 3, Findley discloses
the method of claim 1, wherein the casting material height is greater than the structure height and a layer of casting material resides between the structure and the base side (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body and that the castable material may between the structure and the base.).
In regards to claim 4, Findley discloses
the method of claim 1, wherein the structure is a 3D-printed structure (page 9, lines 7-9; “method of the present invention includes employing … layered-manufacturing processes to fabricate a … bit body” Examiner notes that layered processing is an essential part of 3D-printing.).
In regards to claim 5, Findley discloses
the method of claim 1, wherein the shape of the cast sample is an orthotope (page 22, lines 9-10; “Bit gage mold 68 is preferably an annular, or ring-shaped” Examiner notes that in the current application [0026] “one or more embodiments, the cast sample 300 of FIG. 3 has the shape of a cylinder”. Examiner also notes that the bit gage mold is preferably an annular or ring-shaped, which does not preclude the bit gage mold from being an orthotope shape.).
In regards to claim 10, Findley discloses
the method of claim 1.
Findley does not disclose wherein the characterization test is a standardized test defined by a testing or standardization body.
However, Oxford discloses
wherein the characterization test is a standardized test defined by a testing or standardization body ([0056]; “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is a standardized testing body that publishes technical standards for materials.).
Findley and Oxford are considered analogous to the claimed invention because they are in the field of earth-boring drill bits. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, as disclosed by Findley, wherein the characterization test is a standardized test defined by a testing or standardization body, as disclosed by Oxford, to provide a standardized characterization test defined by a standardization body for the method of selecting and preparing casting material. One skilled in the art would understand and recognize the value of a characterization test to improve earth-boring drill bits used to drill subterranean formations.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Findley in view of Oxford and US 20090008142 A1 (“Shimizu”).
In regards to claim 6, Findley in view of Oxford discloses
the method of claim 1.
Findley in view of Oxford does not disclose further comprising: storing at least one of the cast sample and the extracted specimen in an aqueous solution.
However, Shimizu discloses
further comprising: storing at least one of the cast sample and the extracted specimen in an aqueous solution ([0193]; “immersing the multilayer assembly in an aqueous … solution”).
Findley and Shimizu combined are considered analogous to the claimed invention because they are in the fields of earth-boring drilling bits and multilayer assemblies. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, as disclosed by Findley in view of Oxford, further comprising: storing at least one of the cast sample and the extracted specimen in an aqueous solution, as disclosed by Shimizu, to provide an aqueous solution for storing at least one of the cast sample and the extracted specimen for the purpose of selecting and preparing casting material. One skilled in the art would understand and recognize the value of the addition of an aqueous solution and the extracted specimen to improve multilayer assemblies.
In regards to claim 7, Findley in view of Oxford
discloses the method of claim 1.
Findley in view of Oxford does not disclose the method of claim 1, wherein the casting material is gypsum cement.
However, Shimizu discloses
wherein the casting material is gypsum cement ([0321]; “Representative materials … include … resins, … metals…, and … concrete” Examiner notes that cement is an ingredient in concrete.)
Findley and Shimizu combined are considered analogous to the claimed invention because they are in the fields of earth-boring drilling bits and multilayer assemblies. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, as disclosed by Findley in view of Oxford, wherein the casting material is gypsum cement, as disclosed by Shimizu, to provide gypsum cement as the casting material for the purpose of selecting and preparing casting material. One skilled in the art would understand and recognize the value of the addition of gypsum cement to improve multilayer assemblies.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Findley in view of Oxford, Shimizu, and US 4276253 A (“Adler”).
In regards to claim 8, Findley in view of Oxford discloses
the method of claim 1, wherein the boring apparatus comprises.
Findley discloses
a boring drill bit (page 1, lines 10-11; “the present invention relates to methods of fabricating a … drill bit”)
and buffer material (page 25, lines 20-23; “Exemplary core materials … include, without limitation, … titanium, a titanium alloy, … and alloys” Examiner notes that common buffer materials may include titanium alloys.).
Findley in view of Oxford does not disclose a drill press.
However, Shimizu discloses
a drill press ([0200]; “interconnections … may be formed by boring with a … drill” Examiner notes that both a drill press and a drill can bore holes.);
Findley and Shimizu combined are considered analogous to the claimed invention because they are in the fields of earth-boring drilling bits and multilayer assemblies. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, wherein the boring apparatus comprises, a boring drill bit, and buffer material, as disclosed by Findley in view of Oxford, a drill press, as disclosed by Shimizu, to provide a drill press for the purpose of selecting and preparing casting material. One skilled in the art would understand and recognize the value of the addition of a drill press to improve multilayer assemblies.
Findley in view of Oxford does not disclose a vise.
However, Adler discloses
a vise (column 2, lines 20-21; “block of FIG. 1 mounted in a microtome vise”).
Findley and Adler combined are considered analogous to the claimed invention because they are in the fields of earth-boring drill bits and histological tissue specimen labelling methods. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, wherein the boring apparatus comprises, a boring drill bit, and buffer material, as disclosed by Findley in view of Oxford, a vise, as disclosed by Adler, to provide a vise for the purpose of selecting and preparing casting material. One skilled in the art would understand and recognize the value of the addition of a vise to improve the effectiveness of a method for positive labelling of histological tissue specimens.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Findley in view of Oxford and WO 2017023603 A1 (“Ferrasse”).
In regards to claim 9, Findley in view of Oxford discloses
the method of claim 1.
Findley in view of Oxford does not disclose wherein the extracted specimen is cylindrical with a diameter of 1 inch and a height of 2 inches.
However, Ferrasse discloses
wherein the extracted specimen is cylindrical with a diameter of 1 inch and a height of 2 inches ([0067], “aluminum billed was 1 inch in outer diameter and had a 2 inch height”).
Findley and Ferrasse combined are considered analogous to the claimed invention because they are in the field of earth-boring drill bits and methods of forming aluminum articles. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the method of claim 1, as disclosed by Findley in view of Oxford, wherein the extracted specimen is cylindrical with a diameter of 1 inch and a height of 2 inches, as disclosed by Ferrasse, to provide a specimen with a 1 inch diameter and a 2 inch height for the purpose of selecting and preparing casting material. One skilled in the art would understand and recognize the value of the addition of a specimen to improve the effectiveness of methods of forming aluminum articles with fine uniform microstructures and textures.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Findley in view of Shimizu and Adler.
In regards to claim 15, Findley discloses
a system for extracting a cylindrical specimen from a non-uniform structure, comprising: a boring apparatus comprising (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure.): a boring drill bit (page 1, lines 10-11; “the present invention relates to methods of fabricating a … drill bit”), a cast sample with an associated shape, the cast sample comprising (page 5, lines 21-25; “The infiltration process may include pouring a castable material … to provide solid structure support upon solidification or hardening of the castable material.”): wherein the boring apparatus is configured to: receive the cast sample into the boring apparatus (page 10, line 22; “such a mold is utilized to fabricate an earth-boring drill bit”);
and bore and extract a cylindrical specimen of the non-uniform structure from the cast sample using the boring drill bit (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure.).
Findley does not disclose a drill press, the non-uniform structure and a casting material, wherein the non-uniform structure is enveloped by the casting material and the casting material is disposed to protect the non-uniform structure from damage by compressive forces.
However, Shimizu discloses
a drill press ([0200]; “interconnections … may be formed by boring with a … drill” Examiner notes that both a drill press and a drill can bore holes.) and the non-uniform structure and a casting material, wherein the non-uniform structure is enveloped by the casting material ([0195]; “Metal deposition on an undesired portion … may be prevented by affixing a protective sheet to one side of the multilayer assembly”) and the casting material is disposed to protect the non-uniform structure from damage by compressive forces ([0233]; “resinous spatulas are … used, because they are unlikely to damage the interconnections and the porous layer”).
Findley and Shimizu combined are considered analogous to the claimed invention because they are in the fields of earth-boring drilling bits and multilayer assemblies. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for a system for extracting a cylindrical specimen from a non-uniform structure, comprising: a boring apparatus comprising: a boring drill bit, a cast sample with an associated shape, the cast sample comprising: wherein the boring apparatus is configured to: receive the cast sample into the boring apparatus; and bore and extract a cylindrical specimen of the non-uniform structure from the cast sample using the boring drill bit, as disclosed by Findley, a drill press and a non-uniform structure and a casting material, wherein the non-uniform structure is enveloped by the casting material and the casting material is disposed to protect the non-uniform structure from damage by compressive forces, as disclosed by Shimizu, to provide a drill press, non-uniform structure enveloped by casting material, and casting material to protect the non-uniform structure from damage for the purpose of a system for extracting a cylindrical core from a non-uniform structure. One skilled in the art would understand and recognize the value of the addition of a drill press and casting material to improve the effectiveness of multilayer assemblies.
Findley does not disclose a vise and the casting material does not slip when constricted by the vise by nature of its material or shape.
However, Adler discloses
a vise (column 2, lines 20-21; “block of FIG. 1 mounted in a … vise”) and the casting material does not slip when constricted by the vise by nature of its material or shape (column 2, lines 20-21; “block of FIG. 1 mounted in a … vise” Examiner notes that a vise is a tool that secures an object in place.).
Findley and Adler combined are considered analogous to the claimed invention because they are in the fields of earth-boring drill bits and histological tissue specimen labelling methods. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for a system for extracting a cylindrical specimen from a non-uniform structure, comprising: a boring apparatus comprising: a boring drill bit, a cast sample with an associated shape, the cast sample comprising: wherein the boring apparatus is configured to: receive the cast sample into the boring apparatus; and bore and extract a cylindrical specimen of the non-uniform structure from the cast sample using the boring drill bit, as disclosed by Findley, a vise and the casting material does not slip when constricted by the vise by nature of its material or shape, as disclosed by Adler, to provide a vise to secure the casting material in place for the purpose of a system for extracting a cylindrical core from a non-uniform structure. One skilled in the art would understand and recognize the value of the addition of a vise to improve the effectiveness of a method for positive labelling of histological tissue specimens.
In regards to claim 16, Findley discloses
the boring apparatus of claim 15, further comprising a buffer material (page 25, lines 20-23; “Exemplary core materials … include, without limitation, … titanium, a titanium alloy, … and alloys” Examiner notes that common buffer materials may include titanium alloys.) disposed between the cast sample and the vise when the cast sample is in the boring apparatus (page 22, lines 27-30, “a preferred embodiment of a method of fabricating a drill bit 10 ... that includes the layer-manufactured bit crown ... comprises disposing one or more particulate core materials ... within bit interior cavity ... and integrally infiltrating bit crown ... and particulate core material”).
In regards to claim 17, Findley discloses
the system of claim 15, wherein the non-uniform structure is a 3D-printed structure (page 16, lines 29-31; “in a three-dimensional printing embodiment of the layered-manufacturing method of the present invention, fixative head 212 may deposit a binder material”).
In regards to claim 18, Findley discloses
the system of claim 15.
Findley does not disclose wherein the casting material is gypsum cement.
However, Shimizu discloses
wherein the casting material is gypsum cement ([0321]; “Representative materials … include … resins, … metals…, and … concrete” Examiner notes that cement is an ingredient in concrete.).
Findley and Shimizu combined are considered analogous to the claimed invention because they are in the fields of earth-boring drilling bits and multilayer assemblies. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the system of claim 15, as disclosed by Findley, wherein the casting material is gypsum cement, as disclosed by Shimizu, to provide gypsum cement as casting material for a system for extracting a cylindrical core from a non-uniform structure. One skilled in the art would understand and recognize the value of the addition of gypsum cement to improve multilayer assemblies.
In regards to claim 19, Findley discloses
the system of claim 15, wherein the extracted cylindrical specimen has a diameter of 1 inch and a height of 2 inches (page 11, lines 31-32; “FIG. 1 is … an assembled drill bit” Examiner notes that a drill bit is typically a cylindrical shape and that the diameter of large drill bits can range from ½ inch to 2 inches and that the height of drill bits can range from 1 inch to 36 inches.).
In regards to claim 20, Findley discloses
the system of claim 15.
Findley does not disclose wherein a characterization test is performed on the extracted cylindrical specimen.
However, Oxford discloses
wherein a characterization test is performed on the extracted cylindrical specimen ([0056]; “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is a standardized testing body that publishes technical standards for materials.).
Findley and Oxford are considered analogous to the claimed invention because they are in the field of earth-boring drill bits. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the applicant’s invention for the system of claim 15, as disclosed by Findley, wherein a characterization test is performed on the extracted cylindrical specimen, as disclosed by Oxford, to provide a characterization test for a system for extracting a cylindrical core from a non-uniform structure. One skilled in the art would understand and recognize the value of a characterization test to improve earth-boring drill bits used to drill subterranean formations.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive. Applicant amended claims 1 and 15. Claims 1-10 and 15-20 remain pending in the application. With respect to claims 1-5 and 10, “Applicant respectfully asserts that the Examiner's interpretation of independent claim 1 is not reasonable because the interpretation is inconsistent with the specification. Further, the interpretation proposed by the Examiner cannot be reached by those skilled in the art because that interpretation requires the meaning of terms to change from limitation to limitation, when mapped to the actual teachings of the prior art” (See REQUEST FOR CONTINUED EXAMINATION SUBMISSION UNDER 37 C.F.R. § 1.114, REMARKS, Rejections under AIA 35 U.S.C. § 103, Claims 1-5 and 10, page 11, paragraph 1). Examiner acknowledges Applicant’s remarks. However, Examiner notes in the 35 USC § 103 amended rejection of amended claim 1, Findley discloses a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”); placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.);
allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”); inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.); boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure and Oxford discloses and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.). The amended 35 USC § 103 rejection of claim 1 is consistent with the Applicant’s specification and removes the term changes from limitation to limitation.
MPEP § 2111 discusses proper claim interpretation, including giving claims their
broadest reasonable interpretation (“BRI”) in light of the specification during
examination. Under BRI, the words of a claim must be given their plain meaning unless
such meaning is inconsistent with the specification, and it is improper to import claim
limitations from the specification into the claim. Applicant’s argument is not persuasive because the BRI is broader than what is argued. Therefore, the rejection of claim 1, as obvious over Findley in view of Oxford, is maintained. Consequently, the rejections of dependent claims 2-4 and 10 are maintained.
With respect to claims 6 and 7, Applicant argues that “Findley and Oxford fail to teach the limitations of independent claim 1 from which claims 6 and 7 depend. Applicant respectfully asserts that Shimizu fails to supply that which Findley and Oxford lack” (See REQUEST FOR CONTINUED EXAMINATION SUBMISSION UNDER 37 C.F.R. § 1.114, REMARKS, Rejections under AIA 35 U.S.C. § 103, Claims 6 and 7, page 16, paragraph 2). Examiner acknowledges Applicant’s remarks. However, Examiner notes in the 35 USC § 103 amended rejection of amended claim 1, Findley discloses a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”); placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.); allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”); inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.); boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure and Oxford discloses and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.). With respect to claim 6, Shimizu discloses further comprising: storing at least one of the cast sample and the extracted specimen in an aqueous solution ([0193]; “immersing the multilayer assembly in an aqueous … solution”) and with respect to claim 7, Shimizu discloses wherein the casting material is gypsum cement ([0321]; “Representative materials … include … resins, … metals…, and … concrete” Examiner notes that cement is an ingredient in concrete.).
MPEP § 2111 discusses proper claim interpretation, including giving claims their
broadest reasonable interpretation (“BRI”) in light of the specification during
examination. Under BRI, the words of a claim must be given their plain meaning unless
such meaning is inconsistent with the specification, and it is improper to import claim
limitations from the specification into the claim. Applicant’s argument is not persuasive because the BRI is broader than what is argued. Therefore, the rejection of claim 1, as obvious over Findley in view of Oxford, is maintained. Consequently, the rejections of dependent claims 6 and 7, as obvious over Findley in view of Oxford and Shimizu, are maintained.
MPEP 2141.01(a) discusses obviousness regarding analogous art. Under MPEP 2141.01(a), a reference is analogous to the claimed invention if: (1) the reference is from the same field of endeavor (even if it addresses a different problem): or (2) the reference is reasonable pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Examiner notes that Shimizu is reasonably pertinent to the problem faced by the inventor. Therefore, the rejections of claims 6 and 7, as obvious over Findley in view of Oxford and Shimizu, are maintained.
With respect to claim 8, Applicant argues that “Findley, Oxford, and Shimizu each fail - whether considered separately or in combination - to teach the limitations of independent claim 1 from which claim 8 depends. Applicant respectfully asserts that Adler fails to supply that which Findley, Oxford, and Shimizu lack” (See REQUEST FOR CONTINUED EXAMINATION SUBMISSION UNDER 37 C.F.R. § 1.114, REMARKS, Rejections under AIA 35 U.S.C. § 103, Claim 8, page 16, paragraph 4). Examiner acknowledges Applicant’s remarks. However, Examiner notes in the 35 USC § 103 amended rejection of amended claim 1, Findley discloses a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”); placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.); allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”); inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.); boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure and Oxford discloses and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.). The amended 35 USC § 103 rejection of claim 1 is consistent with the Applicant’s specification and removes the term changes from limitation to limitation. With respect to claim 8, Findley discloses a boring drill bit (page 1, lines 10-11; “the present invention relates to methods of fabricating a … drill bit”) and buffer material (page 25, lines 20-23; “Exemplary core materials … include, without limitation, … titanium, a titanium alloy, … and alloys” Examiner notes that common buffer materials may include titanium alloys.), Shimizu discloses a drill press ([0200]; “interconnections … may be formed by boring with a … drill” Examiner notes that both a drill press and a drill can bore holes.), and Adler discloses a vise (column 2, lines 20-21; “block of FIG. 1 mounted in a microtome vise”).
MPEP § 2111 discusses proper claim interpretation, including giving claims their
broadest reasonable interpretation (“BRI”) in light of the specification during
examination. Under BRI, the words of a claim must be given their plain meaning unless
such meaning is inconsistent with the specification, and it is improper to import claim
limitations from the specification into the claim. Applicant’s argument is not persuasive because the BRI is broader than what is argued. Therefore, the rejection of claim 1, as obvious over Findley in view of Oxford, is maintained. Consequently, the rejection of dependent claim 8, as obvious over Findley in view of Oxford, Shimizu, and Adler, is maintained.
MPEP 2145(III) and MPEP 2145(IV) discuss obviousness regarding analogous art. Under MPEP 2145(III), “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Under MPEP 2145(IV), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Therefore, the rejection of claim 8, as obvious over Findley in view of Oxford, Shimizu, and Adler is maintained.
With respect to claim 9, Applicant argues that “Findley and Oxford each fail - whether considered separately or in combination - to teach the limitations of independent claim 1 from which claim 9 depends. Applicant respectfully asserts that Ferrasse fails to supply that which Findley and Oxford lack.” (See REQUEST FOR CONTINUED EXAMINATION SUBMISSION UNDER 37 C.F.R. § 1.114, REMARKS, Rejections under AIA 35 U.S.C. § 103, Claim 9, page 17, paragraph 2). Examiner acknowledges Applicant’s remarks. However, Examiner notes in the 35 USC § 103 amended rejection of amended claim 1, Findley discloses a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”); placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.); allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”); inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.); boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure and Oxford discloses and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.). The amended 35 USC § 103 rejection of claim 1 is consistent with the Applicant’s specification and removes the term changes from limitation to limitation. With respect to claim 9, Ferrasse discloses wherein the extracted specimen is cylindrical with a diameter of 1 inch and a height of 2 inches ([0067], “aluminum billed was 1 inch in outer diameter and had a 2 inch height”).
MPEP § 2111 discusses proper claim interpretation, including giving claims their
broadest reasonable interpretation (“BRI”) in light of the specification during
examination. Under BRI, the words of a claim must be given their plain meaning unless
such meaning is inconsistent with the specification, and it is improper to import claim
limitations from the specification into the claim. Applicant’s argument is not persuasive because the BRI is broader than what is argued. Therefore, the rejection of claim 1, as obvious over Findley in view of Oxford, is maintained. Consequently, the rejection of claim 9, as obvious over Findley in view of Oxford and Ferrasse, is maintained.
MPEP 2145(III) and MPEP 2145(IV) discuss obviousness regarding analogous art. Under MPEP 2145(III), “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Under MPEP 2145(IV), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Therefore, the rejection of claim 9, as obvious over Findley in view of Oxford and Ferrasse, is maintained.
With respect to claims 15-20, Applicant argues that “with respect to amended independent claim 1, Findley and Adler fail to teach a cast sample being comprised of a structure enveloped by a casting material, where this cast sample is received by a boring apparatus to bore and extract a cylindrical specimen of the structure from the cast sample, as required by independent claim 15. Because Findley and Adler are each silent with respect to, at least, this feature, these references do not support an obviousness rejection over amended independent claim 15. Similarly, Oxford (in regard to claim 20) fails to supply that which Findley and Adler lack.” (See REQUEST FOR CONTINUED EXAMINATION SUBMISSION UNDER 37 C.F.R. § 1.114, REMARKS, Rejections under AIA 35 U.S.C. § 103, Claims 15-20, page 17, paragraph 4). Examiner acknowledges Applicant’s remarks. However, Examiner notes in the 35 USC § 103 amended rejection of amended claim 1, Findley discloses a method comprising: selecting and preparing a casting material (page 5, line 21; “The infiltration process may include pouring a castable material”); placing a structure, with a structure height, into the casting material which possesses a base side and a casting material height, wherein the casting material height is greater than or equal to the structure height such that the casing material envelopes the structure when the structure is placed in the casing material (page 5, lines 25-26; “the bit body or assembly may be dipped … into a castable material” Examiner notes that the height of the castable material may be greater than or equal to the height of the bit body.); allowing for the casting material to set, creating a cast sample with a shape, wherein the cast sample comprises the structure enveloped by the casting material (page 5, lines 21-25; “The infiltration process may include pouring a castable material able to withstand the high temperatures … around the particulate-based bit body or assembly to provide solid structure support upon solidification or hardening of the castable material.”); inserting the cast sample into a boring apparatus (page 1, lines 10-14; “the present invention relates to methods of fabricating … a drill bit … disposing a material … within the cavity of the mold” Examiner notes that a drill bit is a boring apparatus and that disposing a material refers to placing a material into a mold cavity.); boring and extracting a cylindrical specimen of the structure from the cast sample wherein the extracted specimen does not include the casting material (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure and Oxford discloses and performing a characterization test on the extracted specimen ([0056], “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is commonly used to perform characteristic tests for various materials.). With respect to claim 15, Findley discloses a system for extracting a cylindrical specimen from a non-uniform structure, comprising: a boring apparatus comprising (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure.): a boring drill bit (page 1, lines 10-11; “the present invention relates to methods of fabricating a … drill bit”), a cast sample with an associated shape, the cast sample comprising (page 5, lines 21-25; “The infiltration process may include pouring a castable material … to provide solid structure support upon solidification or hardening of the castable material.”): wherein the boring apparatus is configured to: receive the cast sample into the boring apparatus (page 10, line 22; “such a mold is utilized to fabricate an earth-boring drill bit”); and bore and extract a cylindrical specimen of the non-uniform structure from the cast sample using the boring drill bit (page 10, lines 22-23; “Laser head … under control computer … cuts an outline of … bit crown” Examiner notes that a laser head under computer control can bore and extract a cylindrical structure.), Shimizu discloses a drill press ([0200]; “interconnections … may be formed by boring with a … drill” Examiner notes that both a drill press and a drill can bore holes.) and the non-uniform structure and a casting material, wherein the non-uniform structure is enveloped by the casting material ([0195]; “Metal deposition on an undesired portion … may be prevented by affixing a protective sheet to one side of the multilayer assembly”) and the casting material is disposed to protect the non-uniform structure from damage by compressive forces ([0233]; “resinous spatulas are … used, because they are unlikely to damage the interconnections and the porous layer”), and Adler discloses a vise (column 2, lines 20-21; “block of FIG. 1 mounted in a … vise”) and the casting material does not slip when constricted by the vise by nature of its material or shape (column 2, lines 20-21; “block of FIG. 1 mounted in a … vise” Examiner notes that a vise is a tool that secures an object in place.). With respect to claim 20, Oxford discloses wherein a characterization test is performed on the extracted cylindrical specimen ([0056]; “composite material may include … -400 ASTM (American Society for Testing and Materials) … particles.” Examiner notes that ASTM is a standardized testing body that publishes technical standards for materials.).
MPEP § 2111 discusses proper claim interpretation, including giving claims their
broadest reasonable interpretation (“BRI”) in light of the specification during
examination. Under BRI, the words of a claim must be given their plain meaning unless
such meaning is inconsistent with the specification, and it is improper to import claim
limitations from the specification into the claim. Applicant’s argument is not persuasive because the BRI is broader than what is argued. Therefore, the rejection of claim 1, as obvious over Findley in view of Oxford, is maintained. Consequently, the rejections of claims 15-20, as obvious over Findley in view of Oxford and Adler, are maintained.
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(571) 272-4252 and whose email address is lantoine@uspto.gov. The examiner can be reached Monday-Thursday, 7:30 am – 5:30 pm CT. 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, Xuan Thai, can be reached on (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/LISA H ANTOINE/
Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715