DETAILED ACTION
This communication is a final office action on the merits and in response to amendments filed on 1/27/2026. All currently pending claims have been considered below. 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
Applicant's amendments are sufficient to obviate the prior 112(a) and 112(b) rejections. The amendments are sufficient to overcome the prior art rejection of claim 1. New grounds necessitated by amendment respectfully follow. The examiner is respectfully obliged to note that the allowability of claim 6 was indicated "if rewritten in independent form including all the limitations of the base claim and any intervening claims" and that Applicant has not included the limitations of intervening claims 4 & 5. With the addition of claim 6 to claim 1, claim 4 is now indicated as allowable below.
Claim Objections
Claim 26 is objected to because of the following informalities: The phrase "the cutting pin are configured such that the during use" appears to be a typo of "the cutting pin are configured such that . Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5, 23, & 24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 5 recites "at least one protrusion" and "at least one complementary recess". However parent claim 1 has been amended to recite "at least one protrusion" and "at least one complementary recess", and no commensurate amendments are made to claim 5. This renders claim 5 indefinite because it is unclear how or if the identically named features of claim 5 differ from those features now in claim 1. In light of the specification and prior claim status they appear to be the same features.
Claim 23 recites "the cutting post", which lacks antecedent basis earlier in the claims. It is unclear if Applicant is attempting to reference a previously recited element using shifting nomenclature or if Applicant is attempting to require a new element with improper antecedent terminology. Further, assuming that the "cutting post" is the same as the "mounting post", it is unclear which element defines this post. Is the "post" a feature of the "cutting pin" or the "removable sleeve"? The specification teaches "mounting post 146" as being a feature of "cutting pin 124" (present figure 15), but this renders the phrase "a mounting post having a smaller diameter than a cutter body of the cutting post" unclear. In other words, if the "mounting post" (146) is a feature of the "cutting pin" (124, fig 15), how can it have "a smaller diameter than a cutter body of the cutting post" which is, itself, apparently a sub-element of the cutting pin. Claim 24 depends from claim 23.
In the interests of compact prosecution, the examiner notes that withdrawn claim 11 contains "a cutting pin" which is now in parent claim 1. If Applicant intends for claim 11 to be rejoined, claim 11 should be updated commensurately, along with any other withdrawn claims that require similar corrections for rejoinder.
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.
Claims 1, 2, 20-23, & 26 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,560,440 (Tibbitts) in view of EP 3,000,959 A1 (Beaton). A copy of Beaton was presented by Applicant with the IDS filed 12/23/2022.
Independent claim 1. Tibbitts discloses a drill bit assembly (title) for making a hole in a subterranean formation (abstract) the drill bit assembly comprising:
a connector body ("bit body 12" - fig 1) defining a centerline axis about which said connector body rotates while drilling (bet shown in fig 6, but also well understood in the art as PHOSITA would readily appreciate; "the longitudinal axis of the drill bit" - col 4:12-13);
a plurality of blade members mounted to the connector body ("blades or wings 40, 42, 44" - figs 1-7) and circumferentially arranged around the centerline axis (fig 6) to form a cutting blade (ibid) having an outer diameter generally equal to a desired hole diameter (col 1:13-22); and
wherein the blade members are configured to nest circumferentially around the centerline axis (figs 6 & 7; the word "nest" does not require contact or anything other than the broadest possible association. Figs 6 & 7 clearly show the blades to be nested "around the centerline") to form the cutting blade (ibid), and
wherein the outer diameter of the cutting blade is configured to be variable (transition between figs 1 & 3 and between figs 5 & 6) by adjusting a mounting position of each of the blade members on the connector body (the "mounting position of each blade member on the connector body" is different in figure 1 than in figure 3) to adjust a nesting configuration of the blade members (transition between figs 1 & 3 and between figs 5 & 6), positioning at least one protrusion ("positioning pin 50" - fig 1) into at least one complementary recess ("slot 48" - fig 1), bringing the blade member into an engagement position (figs 1 & 3 show the blades engaged with the body, the connector elements, and fig 3 shows the blades members in "an engagement position" with the wellbore at 82).
Tibbitts does not disclose a rotatable cutting pin as cutters. Rather Tibbitts discloses more generic "cutting elements 66".
However Beaton discloses a gouging cutter structure for a bladed drag bit (title, fig 1) that uses fixed cutter inserts ("shear cutters 16, such as, for example, polycrystalline diamond compact (PDC) cutters, tungsten carbide cutters, or cubic boron nitride cutters of any type known in the art" - ¶ 7) in combination with conical gouging cutters ("gouging type cutters 18" - ibid) all mounted on each blade ("blade 12" - ibid). Each blade comprises at least one aperture ("The gouging cutters 18 may be mounted in openings (18A in FIG. 2)" - ¶ 8) configured to receive a cutting pin ("gouging cutting element 18B"; 118B in fig 4C; drawn to the claimed "cutting pin"); and
a removable sleeve positioned within the at least one aperture ("retainer 18C" and "cutter mount body 18D" together - fig 4A; "retaining sleeve 118C" and "cutter mount body 18D" - fig 4C. Fig 4C clearly shows the gouging cutting element being received in a sleeve structure of 18D. 18D is secured in the apertures: ¶ 13. The cutting element is received within 18D: "An inner end 218 of the cutting element 18B may have a substantially round cross section and a diameter selected to substantially match the internal diameter of the gouging cutter mount body 18D" - ¶ 15), the removable sleeve configured to rotatably engage with the cutting pin to allow the at least one cutting pin to rotate within the removable sleeve ("When the retainer 18C is affixed to the gouging cutter mount body 18D, the cutting element 18B may be retained in place within the gouging cutter mount body 18D while free to rotate with respect thereto" - ¶ 16) to minimize wear at a point of engagement of the cutting pin (The prior art teaches all the structure of the claims, and therefore the functional limitation of "to minimize wear…" is presumed to be inherent to that structure. MPEP 2112, subsections I, II, & V. MPEP 2112.01, subsections I & II. MPEP 2114. Further, Beaton teaches in ¶ 32: "Other possible benefits of a drill bit made according to the present disclosure may include that a rotatable gouging cutter is much more robust (less prone to loss or breakage)…" which the examiner respectfully asserts is quite reasonably commensurate with the functional limitation. This is discussed in more length in the prior actions and the Interview Summary mailed 10/16/2025, not repeated again here) when the drill bit assembly operates to make the hole in the subterranean formations (ibid).
Therefore it would have been obvious to use the rotating cutting pins / "gouging cutters" taught by Beaton on the bit taught by Tibbitts. First, this is a simple addition of a known element from an analogous reference to another analogous reference with the art recognized suitability and expectation of success. See MPEP 2143, subsection A. Second, this allows for the easy replacement of said gouging cutters (¶ 32). Finally, this allowed rotation protects the cutter from loss or breakage and can be made much smaller than gouging cutters known in the art (ibid).
2. The drill bit assembly in accordance with claim wherein the re-movable sleeve includes a connecting arrangement for securing the removable sleeve within the at least one aperture (Beaton: "The retainer 18C may be affixed to the gouging cutter mount body, for example, by threading" - last sentence of ¶ 15. "the cutting element body 18D may be mounted in the pocket (18A in FIG. 2) so that it may freely rotate. Such mounting may include, for example, snap rings or the like" - ¶ 16).
20. The drill bit assembly of claim 1, wherein the removable sleeve (Beaton: "retainer 18C" and "cutter mount body 18D" together - fig 4A; "retaining sleeve 118C" and "cutter mount body 18D" - fig 4C) comprises an inner surface (an inner surface is inherently present for 18C in fig 4A, and expressly shown for 118C and 18D in fig 4C) configured to receive the cutting pin (fig 4C) and the inner surface comprises a recess ("retaining balls 118D" are clearly shown in fig 4C as being located in a recess formed in the inner surface of the upright portion of 18D that receives 118B, as indicated by the
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annotated version of fig 4C here. "Retaining groove 118G" appears to be directed to the recess in 118B, but a corresponding recess in 18D is also clearly shown, albeit not individually numbered. Also "release groove 118E" is formed on the inner surface of 118C, fig 4C) configured to receive a lock of the cutting pin (both 118G / the unnumbered recess in the inner surface 18D and 118E in 118C receive "retaining balls 118D". 118G "receives" lock / "retaining balls 118D" to secure the cutting pin. 118E "receives" 118D to release the cutting pin - ¶ 19 of Beaton. Both recesses work for the claim as currently worded).
21. The drill bit assembly of claim 20, wherein the recess (Beaton: "retaining groove 118G" / the unnumbered recess in the inner surface 18D for the purposes of claim 21) is configured to block an axial movement of the cutting pin relative to the removable sleeve along a longitudinal extension of the removable sleeve ("Retaining balls 118D [are] urged into a corresponding retaining groove 118G formed in a portion (e.g., an opening such as a cylindrical opening) as shown in the cutting element rotating body 118B. A retaining sleeve 118C may be disposed radially externally to the retaining balls 118D, the gouging cutter mount body 18D and the gouging cutting element rotating body 118B so that the retaining balls retain the gouging cutting element rotating body 118B to the gouging cutter mount body 18D while enabling free relative rotation therebetween" - ¶ 19 of Beaton) and allow rotation of the cutting pin relative to the removable sleeve ("…while enabling free relative rotation therebetween" - ibid) about a rotational axis extending in the longitudinal extension of the removable sleeve (ibid, fig 4C).
22. The drill bit assembly of claim 1, wherein the removable sleeve (Beaton: "retainer 18C" and "cutter mount body 18D" together - fig 4A - for the purposes of claim 22) is formed as an integral piece ("The retainer 18C may be affixed to the gouging cutter mount body, for example, by threading, welding, brazing…" - last sentence of ¶ 15). The "sleeve" of 18C & 18D is rendered "integral" when they are secured to each other by welding or brazing.
In re Hotte (CCPA) 177 USPQ 326: "'integral' is sufficiently broad to embrace constructions united by such means as fastening and welding."
In re Clark, 41 CCPA 974, 214 F.2d 148, 102 USPQ 241 (CCPA 1954): "Although they are not structurally integral, the wall is rigidly secured to the housing, and therefore are integral in a functional sense."
In re Kohno 55 CCPA 998, 391 F.2d 959, 157 USPQ 275 (CCPA 1968): "The expression “integral” has a somewhat broad connotation and is not necessarily restricted to a one-piece article."
In re Morris 127 F.3d 1048, 44 USPQ2d 1023: "We conclude that the PTO's interpretation is reasonable in light of all the evidence before the Board. As the cases cited above demonstrate, our predecessor court had on several prior occasions interpreted the term "integral" to cover more than a unitary construction. See, e.g., In re Kohno, 391 F.2d 959, 157 USPQ 275 (CCPA 1968), In re Dike, 394 F.2d 584, 157 USPQ 581 (CCPA 1968), In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965), and In re Clark, 214 F.2d 148, 102 USPQ 241 (CCPA 1954). This court has also endorsed that interpretation. See, e.g., Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074, 12 USPQ2d 1539, 1542 (Fed.Cir.1989) (nothing of record limited "integral" to mean "of one-piece" construction). Appellants' attempt to distinguish these cases misses the point. Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources that support its interpretation."
23. In light of the 112b rejection of this claim, as described above, the limitations have been interpreted as best able: The "cutting post" is the same thing as the "mounting post", which is a feature of the "cutting pin".
The drill bit assembly of claim 1, wherein the removable sleeve ("retainer 18C" and "cutter mount body 18D" together - fig 4A; "retaining sleeve 118C" and "cutter mount body 18D" - fig 4C. Fig 4C clearly shows the gouging cutting element being received in a sleeve structure of 18D. 18D is secured in the apertures: ¶ 13. The cutting element is received within 18D: "An inner end 218 of the cutting element 18B may have a substantially round cross section and a diameter selected to substantially match the internal diameter of the gouging cutter mount body 18D" - ¶ 15) is tubular (18C / 118C
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are both tubular) and the removable sleeve comprises an inner surface and an outer surface (inherent and shown fig 18C in fig 4A and shown for 118C in fig 4C),
wherein the inner surface of the removable sleeve is configured to receive the cutting pin (figs 4B & 4C) at a mounting post (For fig 4A/4B, the "mounting post" is drawn to the surface defined by 318 - fig 4A. For fig 4C, the "mounting post" is drawn to the lower end, of 118B, clearly shown in fig 4C, labeled portion "A" in the annotated version of fig 4C here) having a smaller diameter than a cutter body of the cutting post (For figs 4A/4B, "a cutter body of the cutting post" is drawn to 218 - fig 4A. For fig 4C, drawn to labeled portion "B" in the annotated version of fig 4C here. Both these areas have a larger diameter than the areas mapped to the "mounting post" above) such that the cutting pin and the removable sleeve form a consistent profile (The profile shown in fig 4B is as reasonably "consistent" as the profile shown in present figures 14, 16, & 17. For fig 4C, shown by portion "C" in the annotated version of fig 4C here).
26. The drill bit of claim 1, wherein the removable sleeve (Beaton: 18C, 18D, & 118C are all removable & replaceable) and the cutting pin ("gouging cutting element 18B"; 118B in fig 4C) are configured such that the [sic] during use of the drill bit assembly the removable sleeve wears out by rotation of the cutting pin within the removable sleeve (the pin rotates within the sleeve: "When the retainer 18C is affixed to the gouging cutter mount body 18D, the cutting element 18B may be retained in place within the gouging cutter mount body 18D while free to rotate with respect thereto" - ¶ 16) faster than the blade member wears out (the prior art teaches all the structure of the claim. This functional use / outcome is presumed to be inherent of the recited structure in the claims. See MPEP 2114, subsection I. In other words, if there is some structural feature that results in this functional limitation, it must be recited in the claims).
Claims 3 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of US 5,560,440 (Tibbitts) & EP 3,000,959 A1 (Beaton), in further view of WO 2021/107979 (Brooks). A copy of Brooks was been previously provided with the non-final rejection mailed 11/4/2024.
3. The combination discloses all the limitations of the parent claim, and while Beaton discloses that that the removable sleeve may be secured in the blade aperture by a variety of methods (¶ 16), threaded engagement between the attachment mechanism and the aperture is not expressly taught.
However Brooks discloses a rotating conical gouging cutter (¶s 53 & 60) attached and rotatable relative to a removable sleeve (110, fig 14e), the removable sleeve comprising a connecting arrangement for securing the removable sleeve within the aperture of the blade (threads 115), wherein the connecting arrangement includes an outer threaded surface on the removable sleeve (ibid), and an inner threaded surface within the at least one aperture so that the removable sleeve threading engages the at least one aperture ("helical threads 115 are provides for allowing the insert body 110 to be threadably engaged into openings provided on the blade surface 26" - ¶ 52).
Therefore it would have been obvious to one having ordinary skill in the art at the time of filing to use the threaded engagement taught by Brooks to attach the cutter assemblies taught by the combination to the blades. As discussed above, Beaton discloses a variety of methods may be used for such attachment (¶ 16 of Beaton). Brooks teaches the claimed structure on an analogous bit (as cited above) with a reasonable expectation of success. The threaded engagement is simple, conventional, well understood, and allows for easy assembly and disassembly.
24. The combination discloses all the limitations of the parent claim, and while Beaton further discloses that an inner diameter of the removable sleeve (interior of 118C, fig 4C) is generally constant over a longitudinal extension of the tubular removable sleeve (the interior diameter of 118C is generally constant over it's length, in a manner that is reasonably commensurate with the present disclosure of figs 17 ^& 18. The examiner notes that the present case expressly teaches a notch 156 on the inner diameter - fig 18 - and therefore comparable structures in the prior art can not reasonably be said to fail this limitation in light of the specification), and
an outer diameter of the tubular removable sleeve being generally constant over the longitudinal extension of the tubular removable sleeve (118c is generally constant over it's length: fig 4C).
While Beaton discloses that that the removable sleeve may be secured in the blade aperture by a variety of methods (¶ 16), threaded engagement between the attachment mechanism and the aperture is not expressly taught.
However Brooks discloses a rotating conical gouging cutter (¶s 53 & 60) attached and rotatable relative to a removable sleeve (110, fig 14e), the removable sleeve comprising a connecting arrangement for securing the removable sleeve within the aperture of the blade (threads 115), wherein the connecting arrangement includes an outer threaded surface on the removable sleeve (ibid), and an inner threaded surface within the at least one aperture so that the removable sleeve threading engages the at least one aperture ("helical threads 115 are provides for allowing the insert body 110 to be threadably engaged into openings provided on the blade surface 26" - ¶ 52).
Therefore it would have been obvious to one having ordinary skill in the art at the time of filing to use the threaded engagement taught by Brooks to attach the cutter assemblies taught by the combination to the blades. As discussed above, Beaton discloses a variety of methods may be used for such attachment (¶ 16 of Beaton). Brooks teaches the claimed structure on an analogous bit (as cited above) with a reasonable expectation of success. The threaded engagement is simple, conventional, well understood, and allows for easy assembly and disassembly.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of US 5,560,440 (Tibbitts) & EP 3,000,959 A1 (Beaton), in further view of US 2010/0218999 (Jones).
25. The combination discloses all the limitations of the parent claim, and Beaton further discloses the cutting pin (fig 4C, elements 118A & 118B) comprises a mounting post (118B, fig 4C),
wherein the mounting post comprises a recess (118G),
wherein a lock is arranged in the recess of the mounting post (118D; ¶ 19),
wherein the lock interlocks with the removable sleeve (fig 4C) allowing a rotation of the cutting pin relative to the removable sleeve about a rotational axis extending in a longitudinal extension of the cutting pin ("…so that the retaining balls retain the gouging cutting element rotating body 118B to the gouging cutter mount body 18D while enabling free relative rotation therebetween" - ¶ 19) and locking an axial movement of the cutting pin relative to the removable sleeve in the direction of the longitudinal extension of the cutting pin (ibid).
While Beaton discloses a snap ring comprising a spring lock ("snap ring 222A") this is for a different embodiment (fig 4D; ¶ 20) where the cutting element is mounted around 18D, rather than the reverse as claimed.
However Jones discloses a method of mounting cutting pins on a drill bit (fig 11-B) the cutting pin (50-A, fig 11B) comprises a mounting post (58-A, fig 11B) comprising a recess (shown as element number 63 in fig 11-B although it is not apparently used in the specification. The embodiment of fig 11-A teaches a similar "groove 57" - ¶ 52), wherein a snap ring ("a securing device 54-A, such as a c-clip, spring ring, O-rings, and other similar resilient contracting and expanding rings and clips that can securely retain the cutter 50 in the hole 61" - ¶ 53) comprises a spring lock ("resilient contracting and expanding rings and clips" - ibid) is arranged in the recess of the mounting post (fig 11-B), wherein the spring lock interlocks within the mounting hole (ibid) where the cutting pins are rotatable but axially fixed ("…the cutter 50 is capable of rotating within the through hole 61, but not so much less as to cause the cutter to wobble or rattle within the through hole 61" - ¶ 51 - "… the inner diameter 62 of the through hole 61 configured to receive a securing device 54-A, such as a c-clip, spring ring, O-rings, and other similar resilient contracting and expanding rings and clips that can securely retain the cutter 50 in the hole 61" - ¶ 53).
Therefore it would have been obvious to PHOSITA at the time of filing to use the snap ring taught by Jones to secure the cutting pin in the removable sleeve taught by Beaton. First, Beaton is clear that a variety of securing methods may be used, between figs 4B-4G. Second, Beaton already teaches a snap ring (fig 4D; ¶ 20) it is in the reverse arrangement as claimed. Jones teaches the claimed arrangement (the snap ring about the cutting pin) as well as teaching that this achieves the same result of axially securing but allow rotation. In other words Jones teaches this as an art recognized alternative with a reasonable expectation of success.
Allowable Subject Matter
Claims 4 & 5 are 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.
Claims 10 & 16-19 are allowed.
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 Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571.270.7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676