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 .
Response to Amendment
In response to the amendment received on 03/02/2026:
claims 1 and 3-16 are currently pending;
the 112(b) rejection to claims 1 and 3-16 are withdrawn in light of the amendments to the claims;
the 112(d) rejection to claim 12 is withdrawn in light of the amendments to the claims; and
all prior art grounds of rejection are maintained for at least the reasons as set forth herein.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 3-4, 6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Keshavan (US 5,045,092) (“Keshavan” hereinafter).
Regarding claim 1, Keshavan teaches a method for making a polycrystalline diamond composite (PDC) compact element comprising a polycrystalline diamond (PCD) structure integrally bonded to a substrate formed of cemented carbide (see Keshavan at C1 L9-11 teaching techniques for making cemented tungsten carbide inserts for rock bits with diamond particles dispersed in the matrix, see Keshavan at Fig. 3, also shown below, and see Keshavan at C5 L12-14 teaching the carburized and transformed layer then forms a transition between a layer of polycrystalline diamond 32 and the principal body 34 of the insert). The cemented tungsten carbide insert is taken to meet the claimed polycrystalline diamond composite (PDC) compact element comprising a polycrystalline diamond (PCD) structure integrally bonded to a substrate formed of cemented carbide;
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the method including providing the substrate, introducing a source of excess carbon to the substrate at or proximate a bonding surface of the substrate to form a carburised substrate or carburised substrate assembly; contacting an aggregated mass of diamond grains to form the PCD structure with the carburised substrate or carburised substrate assembly adjacent or proximate the bonding surface to form an unbonded assembly (see Keshavan at C2 L47-52 teaching a method for forming a cemented tungsten carbide article with embedded diamond particles by introducing excess carbon beyond the stoichiometric proportion of tungsten carbide into a mixture of tungsten carbide particles and cobalt, see Keshavan at C2 L60-66 teaching excess carbonaceous material such as wax or graphite may be mixed with the carbide and cobalt before pressing… if it is desired to have a higher proportion of diamond particles near the surface and a smaller proportion of diamond in the core of such an article, the article may be carburized and then subjected to elevated temperature and pressure, see Keshavan at C4 L10-15 teaching carburizing sintered tungsten carbide… the carburizing introduces excess carbon into the cemented tungsten carbide insert in excess of the stoichiometric proportion of tungsten carbide, see Keshavan at C5 L10-14 teaching alternatively, such an insert may be the substrate on which a layer of polycrystalline diamond is formed… the carburized and transformed layer then forms a transition between a layer of polycrystalline diamond 32 and the principal body 34 of the insert). Carbide is taken to meet the claimed substrate. In summary, Keshavan teaches a cemented tungsten carbide insert by a method of mixing excess carbonaceous (or carbon) material such as graphite to be mixed with the carbide (or substrate) before pressing and carburizing, a layer of polycrystalline diamond which necessarily includes the claimed aggregated mass of diamond grains, thus meeting the claimed recitations; and
sintering the diamond grains in the presence of a solvent/catalyst material for diamond at a temperature and pressure at which diamond is thermodynamically stable to form the PCD compact element comprising the PCD structure bonded to the substrate (see Keshavan at C5 L26-38 teaching alternatively, a mixture of diamond powder and cobalt may be blended with a wax and formed into a thin cap for the insert… this assembly is then placed in a super-pressure press and processed in the same manner as hereinabove described… the high pressure and high temperature cause the layer of diamond powder to be formed into a layer of polycrystalline diamond tightly adherent to the cemented tungsten carbide of the insert… the formation of the polycrystalline diamond layer and creation of diamond particles dispersed in the cobalt matrix can be accomplished simultaneously in a single high pressure, high temperature cycle by placing the carburized insert in the press, see Keshavan at C4 L41-43 teaching sufficient pressure is then applied that diamond is thermodynamically stable at the temperatures involved in the process, see Keshavan at C4 L49-52 teaching such pressure and temperature are held for 60 seconds so that diamond particles form from the excess in the cobalt phase). Cobalt is taken to meet the claimed solvent/catalyst material based on the specification at page 2 paragraph 2 disclosing generally preferred solvent/catalyst materials are… Co. In summary, Keshavan teaches the claimed sintering a temperature and pressure at which diamond is thermodynamically stable to form PCD;
wherein the mean size of the diamond grains in the aggregated mass is no greater than 30 microns (see Keshavan at C7 L49-52 teaching sample 3, which was processed at high temperature and pressure, has hard diamond particles embedded in the matrix, some as large as ten micrometers). Diamond grains is taken to meet the claimed diamond particle sizes, and ten micrometers is below the claimed 30 micrometers (see MPEP 2131.03.I);
wherein the step of introducing the source of excess carbon comprises introducing at least 0.1 weight percent source of excess carbon to the substrate at or proximate the bonding surface of the substrate, wherein the weight percent is expressed as a percentage of the weight of the total substrate material in a surface region at the bonding surface of the substrate or in the substrate into which the carbon is introduced (see Keshavan at C5 L51-57 teaching in still another alternative, the original compact may be sintered in a carbonaceous environment, in which case an excess carbon is obtained more or less throughout the insert… in any of these arrangements, excess carbon beyond the stoichiometric proportion of tungsten carbide is present in the sintered product, see Keshavan at C5 L58 to C6 L4 teaching the amount of excess carbon is in the range of from two to fifteen percent by volume of the composite cemented tungsten carbide… lower carbon proportions are suitable where the proportion of cobalt binder is low, however, less than about two percent by volume should show such a small benefit that the added cost of processing is not justified… concomitantly, higher proportions of carbon are used when the cobalt content is higher… generally speaking, it is desirable to employ a high cobalt content for enhanced toughness and resistance to breakage… the conversion of carbon to diamond in a higher cobalt composite enhances the wear resistance to offset the usual decrease in wear resistance of higher cobalt grades of cemented carbide, see Keshavan at C6 L7-19 teaching in applications where the composite cemented carbide article with diamond particles dispersed in the matrix is to be used as a cutting or machining tool, higher proportions of excess carbon may be useful… graphite contents up to 50% by volume may be employed where the tungsten carbide content of the composite is concomitantly reduced… sufficient cobalt should be present for catalyzing substantially complete conversion of graphite to diamond… if the carbon content is too high, cracking of the composite article may be observed due to differential thermal expansion or excessive shrinkage).
As such, one of ordinary skill in the art would appreciate that the amount of excess carbon to the substrate or surface is a result effective variable that could be optimized because the amount of excess carbon can affect the toughness and breakage resistance of the resulting insert.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the amount of excess carbon in the insert as taught by Keshavan to affect the toughness and breakage resistance of the resulting insert, so as to arrive at the claimed “wherein the step of introducing the source of excess carbon comprises introducing at least 0.1 weight percent source of excess carbon to the substrate at or proximate the bonding surface of the substrate, wherein the weight percent is expressed as a percentage of the weight of the total substrate material in a surface region at the bonding surface of the substrate or in the substrate into which the carbon is introduced”.
Regarding claim 3, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches including forming the aggregated mass from diamond grains having a multi-modal size distribution (see Keshavan at C7 L49-52 teaching sample 3, which was processed at high temperature and pressure, has hard diamond particles embedded in the matrix, some as large as ten micrometers). The range of up to 10 microns size distributions is taken to meet the claimed multi modal size distributions because there is necessarily at least some slight variation in grain sizes within a range.
Regarding claim 4, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches wherein the source of excess carbon is in the form of… graphite (see Keshavan at C2 L60-61 teaching excess carbonaceous material such as… graphite).
Regarding claim 6, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches including combining source of excess carbon in… particulate form with raw materials for the cemented carbide forming the combination into a substantially self-supporting green body (see Keshavan at C5 L44-46 teaching the insert may be fabricated from a mixture of powders of graphite, tungsten carbide and cobalt… these powders are mixed, pressed and sintered as hereinabove described, see Keshavan at C3 L45-47 teaching the mixture is pressed to form a “green” compact having the same shape as the completed insert). Tungsten carbide is taken to meet the claimed raw materials for the cemented carbide, and
sintering the green body at a pressure at which diamond is not thermodynamically stable (see Keshavan at C3 L53-60 teaching the green compacts are loaded into a high temperature vacuum furnace and gradually heated until the temporary binder wax has been vaporized… the temperature is then elevated to about the melting temperature of the cobalt, whereupon the compact is sintered to form an insert of high density, that is, without substantial porosity… the inserts are then relatively slowly cooled in the vacuum furnace, and see Keshavan at C4 L39-43 teaching the insert… is subjected to isostatic pressure… sufficient pressure is then applied that diamond is thermodynamically stable at the temperatures involved in the process). One of ordinary skill in the art would appreciate that the sintering pressure conditions for the green body as taught by Keshavan is at a pressure which diamond is not thermodynamically stable because there is a latter step that involved sufficient pressure that is applied wherein diamond is thermodynamically stable.
Regarding claim 8, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches further comprising prior to the step of contacting an aggregated mass of diamond grains to form the PCD structure with the carburised substrate or carburised substrate assembly, introducing… refractory metal carbide particles into the aggregated mass of diamond grains, the refractory metal carbide particles being selected from the group consisting of… tungsten carbide (see Keshavan at C5 L44-46 teaching the insert may be fabricated from a mixture of powders of graphite, tungsten carbide and cobalt… these powders are mixed, pressed and sintered as hereinabove described, and see Keshavan at C7 L49-52 teaching sample 3, which was processed at high temperature and pressure, has hard diamond particles embedded in the matrix). One of ordinary skill in the art would appreciate that diamond particles are mixed with tungsten carbide.
Regarding claim 9, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches wherein the step of introducing the source of excess carbon further comprises dispersing the source of excess carbon is throughout the volume of the… carburised substrate assembly (see Keshavan at C5 L52-55 teaching the original compact may be sintered in a carbonaceous environment, in which case an excess of carbon is obtained more or less throughout the insert).
Regarding claim 10, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches wherein prior to the step of contacting the aggregated mass of diamond grains with the carburised substrate or carburised substrate assembly the method further comprising forming the carburised substrate by sintering a mixture comprising tungsten carbide grains, a binder material and the source of excess carbon (see Keshavan at C5 L44-46 teaching the insert may be fabricated from a mixture of powders of graphite, tungsten carbide and cobalt… these powders are mixed, pressed and sintered as hereinabove described, see Keshavan at C3 L65 teaching the sintered insert is carburized in a conventional manner).
Regarding claims 11-13, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further wherein the step of introducing the source of excess carbon comprises introducing no greater than 10 weight percent of the source of excess carbon in the surface region at the bonding surface of the substrate or the substrate (claim 11), wherein the content of the source of excess carbon throughout the entire carburised substrate is at least 0.1 weight percent of the substrate (claim 12), and wherein the content of the source of excess carbon within the surface region or throughout the entire carburised substrate is at least 0.3 weight percent of the surface region or the substrate (claim 13) (see Keshavan at C5 L51-57 teaching in still another alternative, the original compact may be sintered in a carbonaceous environment, in which case an excess carbon is obtained more or less throughout the insert… in any of these arrangements, excess carbon beyond the stoichiometric proportion of tungsten carbide is present in the sintered product, see Keshavan at C5 L58 to C6 L4 teaching the amount of excess carbon is in the range of from two to fifteen percent by volume of the composite cemented tungsten carbide… lower carbon proportions are suitable where the proportion of cobalt binder is low, however, less than about two percent by volume should show such a small benefit that the added cost of processing is not justified… concomitantly, higher proportions of carbon are used when the cobalt content is higher… generally speaking, it is desirable to employ a high cobalt content for enhanced toughness and resistance to breakage… the conversion of carbon to diamond in a higher cobalt composite enhances the wear resistance to offset the usual decrease in wear resistance of higher cobalt grades of cemented carbide, see Keshavan at C6 L7-19 teaching in applications where the composite cemented carbide article with diamond particles dispersed in the matrix is to be used as a cutting or machining tool, higher proportions of excess carbon may be useful… graphite contents up to 50% by volume may be employed where the tungsten carbide content of the composite is concomitantly reduced… sufficient cobalt should be present for catalyzing substantially complete conversion of graphite to diamond… if the carbon content is too high, cracking of the composite article may be observed due to differential thermal expansion or excessive shrinkage).
As such, one of ordinary skill in the art would appreciate that the amount of excess carbon to the substrate or surface is a result effective variable that could be optimized because the amount of excess carbon can affect the toughness and breakage resistance of the resulting insert.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the amount of excess carbon in the insert as taught by Keshavan to affect the toughness and breakage resistance of the resulting insert, so as to arrive at the claimed “wherein the step of introducing the source of excess carbon comprises introducing no greater than 10 weight percent of the source of excess carbon in the surface region at the bonding surface of the substrate or the substrate” (claim 11), “wherein the content of the source of excess carbon throughout the entire carburised substrate is at least 0.1 weight percent of the substrate” (claim 12), and “wherein the content of the source of excess carbon within the surface region or throughout the entire carburised substrate is at least 0.3 weight percent of the surface region or the substrate” (claim 13).
Regarding claim 14, Keshavan teaches the limitations as applied to claim 1 above, but Keshavan does not explicitly teach wherein the surface region at the bonding surface of the substrate extends to a depth of at least 1 mm from the bonding surface.
However, Keshavan teaches sample 3, which was processed at high temperature and pressure, has hard diamond particles embedded in the matrix, some as large as ten micrometers (see Keshavan at C7 L49-52), and the carburized and transformed layer then forms a transition between a layer of polycrystalline diamond 32 and the principal body 34 of the insert (see Keshavan at C5 L12-14 and Fig. 3).
Additionally, MPEP states that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (see MPEP 2144.04.IV.A). In this instance, the insert as taught by Keshavan comprises polycrystalline diamond layer embedded in the matrix on the tungsten carbide substrate is similar to the claimed PDC compact element, such that the insert as taught by Keshavan is expected to perform similarly to the claimed PDC compact element. As such, the claimed recitation of “a surface region wherein the diamond particles are dispersed extends to a depth of at least about 1 mm from the bonding surface” would have been obvious to one of ordinary skill in the art in the absence of new or unexpected results, based on the teachings of Keshavan.
Regarding claim 15, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches wherein the source of excess carbon is introduced in the form of a gas (see Keshavan at C3 L66 teaching either pack, gas, or liquid carburizing may be used, see Keshavan at C4 L13 teaching the carburizing introduces excess carbon).
Regarding claim 16, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches comprising combining source of excess carbon in… particulate form with raw materials for the cemented carbide forming the combination into a substantially self-supporting green body (see Keshavan at C5 L44-46 teaching the insert may be fabricated from a mixture of powders of graphite, tungsten carbide and cobalt… these powders are mixed, pressed and sintered as hereinabove described, see Keshavan at C3 L45-47 teaching the mixture is pressed to form a “green” compact having the same shape as the completed insert). Tungsten carbide is taken to meet the claimed raw materials for the cemented carbide, and
sintering the green body at a pressure at which diamond is not thermodynamically stable to form the carburised substrate (see Keshavan at C3 L53-60 teaching the green compacts are loaded into a high temperature vacuum furnace and gradually heated until the temporary binder wax has been vaporized… the temperature is then elevated to about the melting temperature of the cobalt, whereupon the compact is sintered to form an insert of high density, that is, without substantial porosity… the inserts are then relatively slowly cooled in the vacuum furnace, see Keshavan at C3 L65 teaching the sintered insert is carburized in a conventional manner, and see Keshavan at C4 L39-43 teaching the insert… is subjected to isostatic pressure… sufficient pressure is then applied that diamond is thermodynamically stable at the temperatures involved in the process). One of ordinary skill in the art would appreciate that the sintering pressure conditions for the green body as taught by Keshavan is at a pressure which diamond is not thermodynamically stable because there is a latter step that involved sufficient pressure that is applied wherein diamond is thermodynamically stable.
Claims 5 and 7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Keshavan as applied to claim 1 above, and further in view of Dismukes et al. (US 4,931,068) (“Dismukes” hereinafter).
Regarding claim 5, Keshavan teaches the limitations as applied to claim 1 above, but Keshavan does not explicitly teach including introducing further diamond grains to the substrate at or proximate the bonding surface of the substrate; and the step of sintering further comprises converting at least some of the diamond into graphite to serve as a source of excess carbon.
Like Keshavan, Dismukes teaches a method of preparing an insert with a step of converting carbonaceous material to diamond (see Dismukes at C1 L8-11 teaching a method for preparation of fully dense, consolidated diamond or diamond composite articles, see Dismukes at C1 L14-19 teaching conventional synthesis of diamond grit or powder involves the conversion of a non-diamond carbon to diamond in the presence of a metal acting as a solvent-catalyst under conditions of high temperature and high pressure at which diamond is the thermodynamically stable form of carbon).
Dismukes further teaches that diamond particles so produced may be compacted into a substantially fully dense consolidated article, such as drill blanks for use in producing drill bits… for this purpose, the charge may be compacted to produce a monolithic structure or may be compacted onto a disc or substrate of for example tungsten carbide and cobalt (see Dismukes at C2 L19-25). Dismukes also teaches a pretreatment step involving surface graphitization of the diamond powder may be performed to provide thereon a uniform coating of graphite which promotes the penetration of the catalyst into the diamond layer within the cell by continuously dissolving the graphite to form diamond during high temperature compacting… the catalyst-carbide charge may consist of cobalt, nickel or iron catalyst powder mixed with tungsten carbide, titanium carbide or tantalum carbide powder (see Dismukes at C2 L54-65). The pretreatment step involving surface graphitization of the diamond powder is taken to meet the claimed “including introducing further diamond grains to the substrate at or proximate the bonding surface of the substrate; and the step of sintering further comprises converting at least some of the diamond into graphite to serve as a source of excess carbon”.
As such, one of ordinary skill in the art would appreciate that Dismukes teaches that a pretreatment step involving surface graphitization of the diamond powder may be performed so as to provide a uniform coating of graphite which promotes the penetration of the catalyst into the diamond layer within the cell by continuously dissolving the graphite to form diamond during high temperature compacting, and seek those advantages by adding a pretreatment step involving surface graphitization of the diamond powder in the method of making an insert as taught by Keshavan.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add a pretreatment step involving surface graphitization of the diamond powder as taught by Dismukes in the method of making an insert as taught by Keshavan so as to provide a uniform coating of graphite which promotes the penetration of the catalyst into the diamond layer within the cell by continuously dissolving the graphite to form diamond during high temperature compacting.
Regarding claim 7, Keshavan teaches the limitations as applied to claim 1 above, and Keshavan further teaches prior to the step of providing the substrate, the method further comprising including combining diamond grains with raw materials for cemented carbide; forming the combination into a substantially self-supporting green body (see Keshavan at C5 L44-46 teaching the insert may be fabricated from a mixture of powders of graphite, tungsten carbide and cobalt… these powders are mixed, pressed and sintered as hereinabove described, see Keshavan at C3 L45-47 teaching the mixture is pressed to form a “green” compact having the same shape as the completed insert). Tungsten carbide is taken to meet the claimed raw materials for the cemented carbide, and
a pressure at which diamond is not thermodynamically stable (see Keshavan at C3 L53-60 teaching the green compacts are loaded into a high temperature vacuum furnace and gradually heated until the temporary binder wax has been vaporized… the temperature is then elevated to about the melting temperature of the cobalt, whereupon the compact is sintered to form an insert of high density, that is, without substantial porosity… the inserts are then relatively slowly cooled in the vacuum furnace, and see Keshavan at C4 L39-43 teaching the insert… is subjected to isostatic pressure… sufficient pressure is then applied that diamond is thermodynamically stable at the temperatures involved in the process). One of ordinary skill in the art would appreciate that the sintering pressure conditions for the green body as taught by Keshavan is at a pressure which diamond is not thermodynamically stable because there is a latter step that involved sufficient pressure is then applied that diamond is thermodynamically stable.
However, Keshavan does not explicitly teach subjecting the green body to a temperature of at least 500 degrees centigrade. Please see claim 5 rejection with respect to Dismukes as it is incorporated herein.
Dismukes teaches the graphite-to-diamond conversion is performed in the diamond stable region of temperatures and pressures in the range of 1200 to 2500oC and 50 to 120 kbar (see Dismukes at C1 L66-68). Dismukes also teaches prior to charging of the diamond powder to the cell, the diamond powder may be cleaned by heating it in the presence of hydrogen gas… at a temperature within the range of 800 to 1000oC (see Dismukes at C2 L49-52). Temperature within the range of 800 to 1000oC is taken to meet the claimed subjecting the green body to a temperature of at least 500 degrees centigrade because this temperature range is used prior to the graphite-to-diamond conversion step or sintering step.
As such, one of ordinary skill in the art would appreciate that Dismukes teaches that diamond powder may be cleaned by heating it in the presence of hydrogen gas at a temperature within the range of 800 to 1000oC prior to the sintering step.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to clean the diamond powder by heating it in the presence of hydrogen gas at a temperature within the range of 800 to 1000oC prior to the sintering step as taught by Dismukes, in the absence of new and unexpected results, in the method of making an insert as taught by Keshavan.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Applicant discusses that the present application appreciated that there is a need to solve the problem of reducing the risk or incidence of defects in a polycrystalline diamond composite compact element, particularly in the region adjacent the interface between the polycrystalline diamond body and the substrate attached thereto… conventional PCD inserts comprising a PCD layer integrally formed with and bonded to a hard-metal substrate formed of tungsten carbide generally have a range of defects… present application appreciated above-mentioned problems and may be substantially overcome by using fine or ultrafine diamond grains that is less than 30 microns to form the polycrystalline diamond body in combination with introducing at least 0.1 weight percent source of excess carbon to the substrate… wherein the weight percent is expressed as a percentage of the weight of the total substrate material in a surface region at the bonding surface of the substrate or in the substrate into which the carbon is introduced… this combination provides a surprising reduction in the incidence of defects in the polycrystalline diamond composite… in contrast, Keshavan does not disclose or suggest this problem nor solution… Keshavan is directed to solving the problem of enhancing the wear resistance of a cemented tungsten carbide rock bit insert… the solution proposed in Keshavan is to include diamond crystals dispersed throughout the cemented tungsten carbide or more concentrated near the surface than in the interior… thus, Keshavan is directed to solving a different technical problem… one skilled in the art would not obviously look to Keshavan for the solution identified by the present applicant or one skilled in the art would not obviously arrive at the solution… thus claims 1-2 and 11-14 are non-obvious over Keshavan (see Applicant’s arguments at page 8 paragraph 3 to page 11 paragraph 2).
Examiner acknowledges the arguments and as mentioned in the previous office action, respectfully notes that MPEP states that “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (see MPEP 2144.IV). And, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, Keshavan has reasonably met the limitations of independent claim 1 as outlined above.
Additionally, with respect to the argument that the “combination of the size of the diamond grains and the amount of the excess carbon provides a surprising reduction in the incidence of defects in the polycrystalline diamond composite”, Examiner respectfully notes that “if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case… rebuttal evidence and arguments can be presented in the specification… or by way of an affidavit or declaration… however, arguments of counsel cannot take the place of factually supported objective evidence” (see MPEP § 2145.I). In this instance, as mentioned, Keshavan has reasonably met both limitations as outlined above. Applicant has to come forward with evidence presented in the specification or by way of an affidavit or declaration, not through the arguments of the counsel.
Accordingly, Examiner maintains the prior art rejection based on Keshavan.
Applicant discussed that with respect to claims 5 and 7, both Keshavan and Dismukes do not disclose or suggest the features of claim 1… Dismukes is directed to solve the problem of providing consolidating finely divided diamond particles (see Applicant’s arguments at page 12 paragraph 1 to page 13 paragraph 3).
Examiner respectfully reiterates that MPEP teaches that “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (see MPEP 2144.IV). And, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, Keshavan has reasonably met the limitations of independent claim 1 as outlined above. As such, the rejections to dependent claims 5 and 7 based on Keshavan and Dismukes are maintained.
Conclusion
This is a continuation of applicant's earlier Application No. 17/704437. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731