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 .
Status of Claims
Responsive to the amendment filed 15 September 2025, claims 1 and 28 are amended. Claims 2, 4, and 23 are cancelled. Claim 32 is added. Claims 1, 3, 5-22, 24-27 and 31-32 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 15 September 2025, new grounds of rejection are presented corresponding to the changes in the claims.
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.
Claim(s) 1, 3, 5-22, 24-27 and 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 10208366 B2 (hereinafter “Olsen”), in view of Deng.
Regarding claim 1, Olsen teaches a metal matrix composite reinforced with refractory metal (see title). Olsen teaches that this makes a drill bit (See fig 1 or col 2). Olsen teaches that the composite is a reinforcing material that is infiltrated with a binder material (see claim 1, abstract or cols 4-5). Olsen teaches that the infiltrated material includes reinforcing particles and the refractory metal (col. 5 and Fig 3). Olsen teaches that the refractory metal component may be a tungsten metal powder, and the reinforcement material may be tungsten carbide (See col 10 or claim 5). Olsen teaches that the refractory metal portion of the reinforcing material may be up to 40% (see cols 9-10 and claim 6), overlapping the claimed range and establishing a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to have selected an amount of tungsten in the range as claimed because Olsen teaches the same utility over an overlapping range. Olsen teaches that the refractory metal component may be a tungsten metal powder, and the reinforcement material may be tungsten carbide (See col 10 or claim 5). Olsen teaches that a “powder means size below 250 microns (see col 8). Therefore the size of the tungsten overlaps the claimed range, establishing a prima facie case of obviousness. Olsen teaches that a secondary metal may be added as infiltration aid (See col 10).
Olsen does not teach wherein a powder mixture comprises a spherical fused carbide and a metal carbide. Olsen teaches that a spherical carbide may be one of many alternatives (See col 7).
Deng teaches a subterranean drill bit that is resistant to erosion (See title or SUMMARY OF THE INVENTION). Deng teaches that the bit is made from a powder mixture comprising first, second, and third components, wherein the first component is a cast tungsten carbide, the second is a macrocrystalline, carburized, or cemented tungsten carbide, and the third is a metal (SUMMARY or claim 1). Deng teaches that the bit is an infiltrated metal matrix body (SUMMARY), defining a metal matrix composite. Deng further teaches examples 1-7 at cols. 9-11, of these composite materials. Deng teaches that by controlling the particle sizes of the first and second components (carbides), the thermal stability, toughness, and strength of the drill bit are enhanced (see SUMMARY).
Deng does not teach an example using spherical carbide. Deng teaches that the first component be a cast tungsten carbide, which may be crushed or spherical (see (ii)(a) First Component Powder at cols 7-8). Deng teaches that the crushed material is preferred (see col 8), and includes examples using the crushed carbide.
It would have been an obvious matter to the skilled artisan to have chosen the cast (fused) spherical carbide as the first component, because Deng teaches that this may be used. The simple substitution of one known element for another to obtain predictable results would have been prima facie obvious to the skilled artisan.
It would have been obvious to one of ordinary skill in the art to have practiced the method of Olsen, and to have used the reinforcement powder component taught by Deng for the reinforcement material to be added to the tungsten metal, because Deng teaches that the mixture of powders as described improves the thermal stability, toughness, and strength of the bit (see SUMMARY at col. 3). The simple substitution of one known element for another to obtain predictable results would have been prima facie obvious to the skilled artisan.
Regarding the erosion resistance of no more than 12 mm3/kg, Olsen in view of Deng do no teach a erosion resistance value for the modified material including spherical carbides and a metal carbide. Deng teaches that erosion resistance is the entire point of the invention (see title, Summary, claim 1). Deng teaches that the wear resistance in each example is below the claimed value (Examples 1-7). The same materials as claimed processed in the same way and used for the same purpose as claimed would have been reasonably expected to have had the same results. The claimed properties would have flowed naturally from following the teachings of the prior art.
Regarding wherein the average size of the substantially spherical fused carbide particle is larger than the average size of the metal carbide particle, Deng teaches that the first component may have a size of -40 to +140 (106 to 425 micron), and Deng teaches that the second component may have a size such as 230 mesh (See col 8 and col 9). Thus the particle size of the first component would have tended to be larger than that of the second component, and the size of the spherical material, when chosen, would have been generally been larger than that of the second carbide particle.
Regarding claim 3, Olsen teaches that the refractory metal may be present at up to 40% (col 10 and claim 5), overlapping the claimed range. Deng teaches a composition of approximately 30-90% of the first component, 10-70% second component, and up to 12% of the third (claim 1). For example, Example 1 of Deng has 46% of the first component, 50% of the second and 4% of the third. Example 3 has 30% first component, 68% second component, and 2% third.
The total composition of the reinforcements of Olsen modified by Deng overlap the claimed ranges, establishing a prima facie case of obviousness for the ranges.
Regarding claim 5, Olsen teaches that the refractory metal component may be a tungsten metal powder, and the reinforcement material may be tungsten carbide (See col 10 or claim 5).
Regarding claim 6, Deng teaches that the second component may have a size such as 230 mesh (See col 9), overlapping the range as claimed.
Regarding claims 7-8, Deng teaches that the second component may be macrocrystalline (See claim 1).
Regarding claim 9, Deng teaches that the first component may have a size of -40 to +140 (106 to 425 micron), overlapping the range as claimed (see col. 8).
Regarding claim 10, Deng teaches that the first component be a cast tungsten carbide, which may be crushed or spherical (see (ii)(a) First Component Powder at cols 7-8).
Regarding claim 11, Deng teaches that the infiltrant (binder) makes up 20-40 volume percent of the total material (see col 7), overlapping the ranges as claimed.
Regarding claim 12, Olsen teaches that the infiltrant binder includes copper (See cols 5-6).
Deng also teaches that the infiltrant (binder) includes copper (See col 7 and Examples 1-7).
Regarding claims 13-15, Olsen teaches that a secondary metal may be added as infiltration aid (See col 10). The material of Deng includes up to 12 percent of a metal powder, which in the Examples is Nickel (Summary and Example 1-7).
Regarding claim 16, Deng teaches that the third powder may have size of -230 mesh (col 9), overlapping the claimed range.
Regarding claim 17, Olsen teaches that the refractory metal may be present at up to 40% (col 10 and claim 5), overlapping the claimed range. Olsen teaches that the refractory metal component may be a tungsten metal powder, and the reinforcement material may be tungsten carbide (See col 10 or claim 5). Olsen teaches that a “powder means size below 250 microns (see col 8). Therefore the size of the tungsten overlaps the claimed range, establishing a prima facie case of obviousness.
Deng teaches that the second component may have a size such as 230 mesh (See col 9), overlapping the range as claimed. Deng teaches that the first component may have a size of -40 to +140 (106 to 425 micron), overlapping the range as claimed (see col. 8).
The total composition of the reinforcements of Olsen modified by Deng overlap the claimed ranges, establishing a prima facie case of obviousness for the ranges.
Regarding claims 18-19, Olsen in view of Deng does not teach the theoretically calculated value of thermal shock resistance to transverse rupture strength as claimed. Olsen in view of Deng is completely silent as to the theoretically calculated value of thermal shock resistance to transverse rupture strength of the material.
The same materials as claimed processed in the same way and used for the same purpose as claimed would have been reasonably expected to have had the same results. The claimed properties would have flowed naturally from following the teachings of the prior art.
Regarding claim 20, Olsen in view of Deng does not teach the thermal conductivity as claimed. Olsen in view of Deng is completely silent as to the thermal conductivity.
The same materials as claimed processed in the same way and used for the same purpose as claimed would have been reasonably expected to have had the same results. The claimed properties would have flowed naturally from following the teachings of the prior art.
Regarding claims 21-22, Olsen in view of Deng do no teach rupture strength or toughness values for the modified material. The same materials as claimed processed in the same way and used for the same purpose as claimed would have been reasonably expected to have had the same results. The claimed properties would have flowed naturally from following the teachings of the prior art.
Regarding claim 24, Olsen in view of Deng does not measure strength of the tungsten powders and carbide powders. The claimed properties would have been inherent to the metal powders. MPEP 2112. 01.
Regarding claim 25, Olsen in view of Deng does not measure thermal conductivity of the tungsten powders and carbide powders. The claimed properties would have been inherent to the metal powders. MPEP 2112. 01.
Regarding claim 26, Olsen in view of Deng does not measure hardness of the tungsten powders and carbide powders. The claimed properties would have been inherent to the metal powders. MPEP 2112. 01.
Regarding claim 27, Deng does not measure erosion resistance of the tungsten powders and carbide powders. The claimed properties would have been inherent to the metal powders. MPEP 2112. 01.
Regarding claim 31, Olsen in view of Deng is applied to the claims as stated above.
Olsen teaches that the refractory metal may be present at up to 40% (col 10 and claim 5), overlapping the claimed range. Olsen teaches that the refractory metal component may be a tungsten metal powder, and the reinforcement material may be tungsten carbide (See col 10 or claim 5). Olsen teaches that a “powder means size below 250 microns (see col 8). Therefore the size of the tungsten overlaps the claimed range, establishing a prima facie case of obviousness.
Deng teaches that the second component may have a size such as 230 mesh (See col 9), overlapping the range as claimed. Deng teaches that the first component may have a size of -40 to +140 (106 to 425 micron), overlapping the range as claimed (see col. 8).
The total composition of the reinforcements of Olsen modified by Deng overlap the claimed ranges, establishing a prima facie case of obviousness for the ranges.
Regarding claim 32, Deng teaches that the first component may have a size of -40 to +140 (106 to 425 micron), and Deng teaches that the second component may have a size such as 230 mesh (See col 8 and col 9). Thus the particle size of the first component and second component overlap the claimed size ranges, establishing a prima facie case of obviousness.
Response to Arguments
Applicant's arguments filed 15 September 2025have been fully considered but they are not persuasive.
Applicant argues that Deng is a substantially different material than what Olsen teaches. Specifically, applicant states that Deng doe not teach a primary metal particle present in the final product, and does not teach that the primary metal particle be present at the amounts as claimed. Applicant therefore states that the skilled artisan would not have looked to the teachings of the Deng reference to apply them to the teachings of Olsen.
In response to applicant's argument that Deng is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Deng, like Olsen and the instant specification, is directed to forming a metal matrix composite drill bit using an infiltration procedure. Thus it is considered that Deng is at least reasonably pertinent to applicant’s endeavor. Deng is relied upon for the teachings to mix different types of carbides in the infiltrated MMC drill bit rather than for the teachings of including refractory metal particles in the drill bit.
Further to that point, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). No rejections are made over Deng alone, but rather over the teachings of Olsen, when combined with those of Deng.
Applicant further argues that the invention of Deng is “substantially all carbide” and that there is a smaller amount of binder within the composition of Deng. For this reason then applicant concludes that the materials are dissimilar and also that there would have been no reason to have believed that the erosion resistance value as claimed would have been exhibited.
These arguments have been considered but are not persuasive because they are not commensurate in scope with the teachings of the prior art. First, it is noted that the content of binder to the content of reinforcement is claimed as 0.3:1 to 5:1 (original claim 11). This is considered to be a fairly broad range. As was stated, Deng teaches that the range of binder ratio is 20-40 volume percent, which would overlap the range claimed. For these reasons the arguments lack persuasive merit.
When all of the evidence is considered as a whole, evidence of obviousness outweighs evidence of patentability.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759