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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive. Applicant’s arguments that the cutters of are Miess rotatable and thus not non-rotatably fixed as claimed is accurate but US 20070278017 A1 teaches using only some rotatable cutters while others are fixed which is obviously applicable to Miess as discussed below. Applicant’s argument that any modification to Miess that results in the cutters not being rotatable would be contrary to the purpose of Miess and require significant redesign is not persuasive since Miess also contemplates using cutters that do not promote rotation (col. 11 l. 63-col. 12 l. 13), some of the cutters will still rotate in the combination discussed below, and making a rotatable cutter non-rotatable does not require significant redesign. Applicant’s argument that Miess fails to disclose the limitations of claims 103-106, this is not persuasive since the language does not explicitly require the different configurations disclosed in figs. 36, 37. Claim 107 is being interpreted as proposed below under the claim objections section but will require these amendments to be allowable.
Claim Objections
Claim 107 is objected to because of the following informalities: “an angle of tapering” is used to describe multiple tapering angles. Furthermore, the direction one looks is not established so the angle of tapering could be interpreted multiple ways. Examiner suggests the following language. Appropriate correction is required.
107. (New) The drill bit of claim 103, wherein: each radially tapered cutting surface of the first plurality of cutting elements extends helically around a central axis of the respective cutting element and has [[an]] a first angle of tapering relative to a circumferential direction about the central axis, the first angle of tapering defining a direction of radial tapering that is clockwise when viewed from above along the central axis of the respective cutting element; and each radially tapered cutting surface of the second plurality of cutting elements extends helically around a central axis of the respective cutting element and has [[an]] a second angle of tapering relative to a circumferential direction about the central axis, the second angle of tapering defining a direction of radial tapering that is counterclockwise when viewed from above along the central axis of the respective cutting element.
Claim Rejections - 35 USC § 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.
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.
Claim(s) 1, 2, 11, 13, 14, 16, 44, 46, 51, 61, and 99-106 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miess (US 7762359 B1) in light of Shen (US 20070278017 A1).
With respect to claim 1, Miess discloses a drill bit body (1300) a cutting element having a stepped superabrasive table (800, step 810), with radially tapered cutting surfaces (808, shown in fig. 8A) which taper in a radial direction (col. 9 ll. 28-47) with stepped surfaces (810), wherein the cutting element is positioned on the drill bit and aligned in a fixed relative to the drill bit body (shown in figs. 13, 14, each cutting element in aligned in an orientation).
However, while Miess discloses that table 800 is superabrasive (col. 9 ll. 28-30) and that superabrasive means harder than tungsten carbide (col. 4 ll. 19-23), and that table 408 is PDC (col. 4 ll. 20-25), Miess fails to specifically disclose table 800 being PDC.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made table 800 PDC like table 408 of Miess as taught by Miess (col. 4 ll. 20-25) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results.
Miess also discloses that the cutters rotate within an outer housing and thus fails to disclose non-rotatably fixed cutters.
Nevertheless, Shen also discloses cutters which are rotatably mounted within a fixed housing (pgph. 55), but also discloses only making some of the cutters rotatable while the others are statically fixed (pgph. 102, 103).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have only made some of the cutters of Miess rotatable within a housing while the remainder of the cutters were non-rotatably fixed to the bit as taught by Shen (pgphs. 102, 103) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results and a reasonable expectation for success.
With respect to claim 2, Miess discloses wherein the step comprises a top edge, a sidewall, and a bottom edge, wherein the top edge is a boundary between the sidewall and the first cutting surface, wherein the bottom edge is a boundary between the sidewall and the second cutting surface, and wherein the sidewall is a surface extending between the first and second cutting surfaces (shown in fig. 8A).
With respect to claims 11, 13, and 14, Miess discloses wherein a height of the sidewall extending from the second cutting surface to the first cutting surface varies as a function of radial position relative to a periphery the polycrystalline diamond table (shown in fig. 8A), wherein a width of the first cutting surface, a width of the second cutting surface, or combinations thereof varies as a function of radial position relative to a periphery of the polycrystalline diamond table and wherein the polycrystalline diamond table has a first thickness at the first cutting surface and a second thickness at the second cutting surface, and wherein the first thickness is different than the second thickness (shown in fig. 8A).
With respect to claim 16, Miess discloses wherein the polycrystalline diamond table includes a third cutting surface (instance of 808 two above the one indicated in fig. 8A) and a second step (instance of 810 above the one indicated in 8A), wherein the second step is between the second cutting surface and the third cutting surface such that the third cutting surface is positioned at a third elevation (elevation of third surface adjacent to 802) in the polycrystalline diamond table, wherein the third elevation is different than the second elevation.
With respect to claim 44, Miess discloses wherein the polycrystalline diamond table comprises a plurality of steps including the step and a plurality of cutting surfaces including the first and second cutting surfaces, wherein each cutting surface of the polycrystalline diamond table is positioned between a pair of adjacent steps, wherein the plurality of cutting surfaces include cutting surfaces that slope downward in a clockwise direction about the center of the polycrystalline diamond table, cutting surfaces that slope downward in a counterclockwise direction about the center of the polycrystalline diamond table, or combinations thereof (shown in fig. 8A).
With respect to claim 46, Miess discloses wherein the first cutting surface, the second cutting surface, and the step form a wedge in the polycrystalline diamond table (shown in fig. 8A).
With respect to claim 51, these limitations have been rejected supra with respect to claim 1 except for the alignment providing a force on the drill bit in a first direction ( as shown in figs. 13, 14, in Miess, the elements are arranged so that they provide a force on the drill bit body (both generally perpendicular to the face 802 as well as generally into the page of fig. 14 due to WOB).
With respect to claim 61, Miess discloses leaching table 408 but fails to disclose leaching table 800.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have also leached table 800 as taught by Miess in col. 4 ll. 32-42 since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results and Examiner takes official notice that it is notoriously well known in the art to leach a PDC table (which would include the step and multiple surfaces of Miess) by contacting it with a leaching solution.
With respect to claims 99 and 100, Miess further discloses wherein the first direction is towards a center of the bit (into the page reaction forces resulting from WOB for the center-most two cutters in fig. 14 will be towards a center of the bit) and wherein the first direction is away from a center of the bit (forces perpendicular to the face 802 for the outermost cutters in fig. 14 will be away from the center of the bit).
With respect to claims 101 and 102, Miess further discloses mounting in a first orientation (figs. 13, 14) and wherein the first orientation is fixed (positioning of the housings 402, 902, 1002 will be fixed so the orientation of the cutters will be fixed).
With respect to claim 103, Miess discloses a drill bit, the drill bit comprising: a drill bit body; a first plurality of cutting elements positioned on the drill bit body (cutting elements on top row 1304 of fig. 14), the first plurality of cutting elements comprising cutting elements having stepped polycrystalline diamond tables with radially tapered cutting surfaces directed in a clockwise direction (discussed supra, surfaces 808 extend in both clockwise and counterclockwise directions); a second plurality of cutting elements positioned on the drill bit body (cutting elements on bottom row 1304 of fig. 14), the second plurality of cutting elements comprising cutting elements having stepped polycrystalline diamond tables with radially tapered cutting surfaces directed in a counterclockwise direction (discussed supra, surfaces 808 extend in both clockwise and counterclockwise directions); wherein each radially tapered cutting surface is a surface having an elevation in the stepped polycrystalline diamond table that tapers in a radial direction, the stepped polycrystalline diamond table having stepped surfaces between adjacent radially tapered cutting surfaces (discussed supra); and wherein the first plurality of cutting elements are positioned on the drill bit body and aligned in a first orientation relative to the drill bit body to provide a first force on the drill bit body that is directed in a first direction (both generally perpendicular to the face 802 as well as generally into the page of fig. 14 due to WOB), wherein the second plurality of cutting elements are positioned on the drill bit body and aligned in a second orientation relative to the drill bit body to provide a second force on the drill body that is directed in a second direction (both generally perpendicular to the face 802 as well as generally into the page of fig. 14 due to WOB), and wherein the first and second directions are different (the forces perpendicular to the faces 802 will be different for the two blades since they face in opposite directions).
With respect to claim 104, Miess discloses wherein the drill bit comprises a first blade (upper blade 1304 in fig. 14), wherein the first plurality of cutting elements are positioned on the first blade; wherein the drill bit comprises a second blade (lower blade 1304 of fig. 14), wherein the second plurality of cutting elements are positioned on the second blade (fig. 14); and wherein the first plurality of cutting elements on the first blade have radially tapered cutting surfaces that are directed in the clockwise direction, and wherein the second plurality of cutting elements on the second blade have radially tapered cutting surfaces that are directed in the counterclockwise direction (the surfaces extend in and are thus directed in both directions. Furthermore, when looking from above the bit of fig. 14 as opposed to when looking from below as depicted, the faces 808 will be pointing generally clockwise for the first blade and generally counterclockwise for the second blade).
With respect to claim 105, Miess further discloses wherein the cutting elements are arranged on the drill bit body in pairs such that each pair of cutting elements includes one of the first plurality of cutting elements and one of the second plurality of cutting elements, wherein the first plurality of cutting elements are oriented such that the radially tapered cutting surfaces are directed in the clockwise direction, and wherein the second plurality of cutting elements are oriented such that the radially tapered cutting surfaces are directed in the counterclockwise direction (it could be said that the cutters on the top and bottom blades are arranged in pairs since the cutter in each corresponding position will work in pairs to cut the same material from the formation, and they each face in opposite direction as discussed supra).
With respect to claim 106, Miess further discloses wherein the first and second forces are directed in opposite directions (shown in fig. 14, since the blades face in opposite directions the forces will be in opposite directions).
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miess and Shen as applied to claim 2 above, and further in light of McDonough(US 6883624 B2), hereinafter Don.
With respect to claims 3 and 4, Miess fails to disclose the angle of the sidewall.
Nevertheless, Don discloses wherein the sidewall extends at an acute and obtuse angle relative to the first cutting surface (col. 6 ll. 45-50, col. 8 l. 65 – col. 9 l. 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided the angled sidewall at an acute angle relative to the first cutting surface (802) of Miess as taught by Don (col. 6 ll. 45-50, col. 8 l. 65 – col. 9 l. 9, providing an angle for the sidewall relative to the longitudinal axis of Miess will give the sidewall both an acute and obtuse angle relative to the first cutting surface 802 depending on how the angle is measured) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results.
With respect to claim 5, Don also discloses wherein the sidewall extends perpendicular relative to the first cutting surface (col. 6 ll. 45-47).
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miess and Shen as applied to claim 1 above, and further in light of Cheng (US 20200340303 A1).
With respect to claim 36, Miess fails to disclose the central concavity.
Nevertheless, Cheng discloses this (fig. 20, surface 1358).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made surface 802 of Miess into a concavity as taught by Cheng (fig. 20, compared to fig. 17) in order to allow drilling fluid to cool the cutting face more effectively and facilitate breaking and folding of the cutting ribbon as taught by Cheng (pgph. 125).
Allowable Subject Matter
Claim 107 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIPP CHARLES WALLACE whose telephone number is (571)270-1162. The examiner can normally be reached Monday - Friday 12:00 PM - 8:00 PM.
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/KIPP C WALLACE/Primary Examiner, Art Unit 3674 12/11/2025