Detailed Office Action
Notice of Pre-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 Amendments
The amendment filed on 09/09/2025 has been entered. Claims 2 – 3 and 5 – 6 have been canceled. Claims 1 and 4 remain pending and under examination. The amendments to claims find support in at least the original claim set.
Claim Rejections – U.S.C. §103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Eason (US2010/0154587, cited with the OA on 06/09/25) in view of Sagwell (“Superfine Iron Powder”, NPL, 2018, cited with the OA on 06/09/25), Abe (JP2002/220628, using espacenet translation, cited with the OA on 06/09/25), and Sun (CN108274004, using espacenet translation, cited in the IDS of 03/01/23)
Regarding claim 1, Eason teaches a method for forming drill bit bodies [0019], wherein the bit bodies can include hard particles of diamond [0022] and matrix particles can be commercially pure iron [0023], meeting the claimed limitation of diamond bit from a pure iron-based matrix. Eason further discloses that organic material can be included with the powder mixture and that organic material can include binders as well as include lubricants/compaction aids [0026] such as oil [0027], meeting the broadest reasonable interpretation of binder and wetting agent. While Eason does not expressly disclose that the binder/wetting agent is first mixed with the diamond powder prior to mixing with the iron powder, changes in the sequence of adding ingredients is a prima facie case of obviousness (MPEP 2144.04 IV C). In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious)
Eason discloses that the method includes forming a powder mixture of hard particles (i.e. diamond powder), matrix particles (CP iron powder) [0024] and organic material [0026] via mixing (meeting the claimed limitation of mechanical mixing), and ultimately subjecting the mixed powders to a sintering process that can include the application of isostatic pressure [0054], meeting the broadest reasonable interpretation of hot press sintering.
Eason does not explicitly disclose size/oxygen content of the iron powder. Eason does not disclose the mixing ratio of hard particles (i.e. diamond powder) and matrix particles (CP iron powder). Eason suggests that isostatic pressing should be at least 35 MPa (~357 kgf/cm2) [0041], which overlaps with the claimed range, but does not disclose temperature and time. Eason does not explicitly use engine oil or paraffin as wetting agent, or polyethylene glycol or polyvinyl alcohol as binder.
Sagwell discloses commercially available iron powder [Title, Page 1]. Sagwell explicitly discloses commercially available iron powder for diamond tools [Page 2], including UHB iron powder. Sagwell further discloses that UHB iron powder is unalloyed iron powder with 8500 ppm of O or less, which overlaps with the claimed range, and the average particle size is 3.3 – 4.3 µm, which falls within the claimed range [Page 6].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Eason and Sagwell to result in the use of Sagwell’s UHB iron powder in the method of Eason as its matrix particle powder to achieve predictable results. Eason expressly appreciates that the commercially pure iron powder can be used and as such, an ordinarily skilled artisan would have a reasonable expectation of success in combining Eason and Sagwell. Furthermore, given that Sagwell acknowledges that the UHB powder is for diamond tools, an ordinarily skilled artisan would have been motivated to select said powder.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07)
Eason in view of Sagwell does not disclose the mixing ratio of hard particles (i.e. diamond powder) and matrix particles (CP iron powder). Eason in view of Sagwell does not disclose temperature and time of sintering. Eason does not explicitly teach using engine oil or paraffin as wetting agent/lubricant, or polyethylene glycol or polyvinyl alcohol as binder.
Abe teaches a method of producing a diamond-metal composite [0001, 0004]. Abe teaches that the method includes mixing diamond powder with metal powder, in which the metal powder can be iron [0009], and subjecting it to sintering [0009].
Abe teaches that the mixing ratio of diamond to metal is 5 – 30 vol% [0012], which overlaps with the claimed range. Wherein iron is approximately 2.2x the density of diamond (~7.8/3.5) and as such, the mass fraction of iron in the mixture would be approximately 85 – 98 mass%, which falls within the claimed range of the iron powder being at least 40% mass fraction of the mixture. Based on ~2 to 14 mass% of diamond to metal (5/2.2 - 30/2.2 vol%).
Abe also teaches that the sintering parameters are 770 – 930°C [0013], which overlaps with the claimed range, for 1 – 10 min (60 – 600 sec), which overlaps with the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Eason in view of Sagwell and combined it with the teachings of Abe to have a diamond vol% ratio of 5 – 30% and to have used a sintering temperature and time of 770 – 930°C and 1 – 10 min to achieve predictable results. Eason and Abe both disclose producing diamond metal composites (including an iron matrix) via sintering and Eason does not limit the ratio of metal to diamond. Furthermore, Abe expressly teaches that the sintering conditions are for an iron matrix and as such, an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results with no change in their respective functions.
Lastly, Eason teaches that organic material can be included with the powder mixture in an amount of 5 wt% or less [0026]. Wherein the combination of Eason in view of Sagwell and Abe would possess an iron mass fraction of ~85 – 98 mass% (see above) and as such, Eason’s disclosure of 5 wt% or less organic material (i.e. binder and/or wetting agent) would overlap with the claimed range of the binder being 1.2 – 2.2% of the iron powder mass.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Eason in view of Sagwell and Abe does not explicitly teach using engine oil or paraffin as wetting agent/lubricant, or polyethylene glycol or polyvinyl alcohol as binder.
Sun teaches making a metal-based diamond cutter and drill bill [0001]. Sun discloses that the metal-based component includes iron powder [0010] and iron is the majority of the elements [0010, 0017]. Sun further discloses that method includes mixing metal-based powder and diamond powder and subjecting it sintering [0009, 0011], wherein the powder mixture further includes a wetting agent and molding agent (i.e. binder) [0009]. Sun discloses that the wetting agent includes liquid paraffin [0015] and the molding agent can be polyvinyl alcohol [0016], meeting the claimed limitations. Sun describes that the wetting agent and molding agent disclosed avoids the segregation the mixed components due to density differences between the matrix powder and diamond powder [0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used liquid paraffin as the lubricant and polyvinyl alcohol as the binder, as taught by Sun, in the method of Eason in view of Sagwell and Abe. Eason expressly appreciates that an oil can be included to provide lubrication/compaction aid and polymers can be included as binders [0027] and as such, an ordinarily skilled artisan would have a reasonable expectation of success. Furthermore, Sun describes that the wetting agent and molding agent disclosed avoids the segregation the mixed components due to density differences between the matrix powder and diamond powder [0021], providing motivation to an ordinarily skilled artisan.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Eason (US2010/0154587, cited with the OA on 06/09/25) in view of Sagwell (“Superfine Iron Powder”, NPL, 2018, cited with the OA on 06/09/25), Armstrong (US 5,932,508, cited with the OA on 06/09/25), and Sun (CN108274004, using espacenet translation, cited in the IDS of 03/01/23)
Regarding claim 4, Eason teaches a method for forming drill bit bodies [0019], wherein the bit bodies can include hard particles of diamond [0022] and matrix particles can be commercially pure iron [0023], meeting the claimed limitation of diamond bit from a pure iron-based matrix.
Eason further discloses that organic material can be included with the powder mixture and that organic material can include binders as well as include lubricants/compaction aids [0026] such as oil [0027], meeting the broadest reasonable interpretation of binder and wetting agent. While Eason does not expressly disclose that the binder/wetting agent is first mixed with the diamond powder prior to mixing with the iron powder, changes in the sequence of adding ingredients is a prima facie case of obviousness (MPEP 2144.04 IV C). In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious)
Eason discloses that the method includes forming a powder mixture of hard particles (i.e. diamond powder) and matrix particles (CP iron powder) [0024] and molding to form a green body [0038] with a packing density of about 80% or more [0049], meeting the claimed limitation of mechanically mixing iron powder and diamond, and preparing the mixture into a body. The body is then subjected to a sintering process that can include sintering in a vacuum furnace [0054], meeting the claimed limitation of pressureless sintering.
Eason does not explicitly disclose the size or oxygen content of the iron powder or the mixing ratio of hard particles (i.e. diamond powder) and matrix particles (CP iron powder). Eason does not teach the sintering parameters. Eason does not explicitly teach using engine oil/paraffin as the lubricant (interpreted as the wetting agent) or polyvinyl alcohol/polyethylene glycol as the binder.
Sagwell discloses commercially available iron powder [Title, Page 1]. Sagwell explicitly discloses commercially available iron powder for diamond tools [Page 2], including UHB iron powder. Sagwell further discloses that UHB iron powder is unalloyed iron powder with 8500 ppm of O or less, which overlaps with the claimed range, and the average particle size is 3.3 – 4.3 µm, which falls within the claimed range [Page 6].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Eason and Sagwell to result in the use of Sagwell’s UHB iron powder in the method of Eason as its matrix particle powder to achieve predictable results. Eason expressly appreciates that the commercially pure iron powder can be used and as such, an ordinarily skilled artisan would have a reasonable expectation of success in combining Eason and Sagwell. Furthermore, given that Sagwell acknowledges that the UHB powder is for diamond tools an ordinarily skilled artisan would have been motivated to select said powder.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07)
Eason in view of Sagwell does not teach the mixing ratio of hard particles (i.e. diamond powder) and matrix particles (CP iron powder). Eason in view of Sagwell does not teach the sintering parameters. Eason in view of Sagwell does not expressly teach using engine oil/paraffin as the lubricant (interpreted as the wetting agent) or polyvinyl alcohol/polyethylene glycol as the binder.
Armstrong teaches a method of producing a bonded abrasive product [Title]. The method includes mixing abrasive particles and metal in particulate form, pressing the powder mixture, and free sintering [Col 2, line 1 – 7], wherein free sintering is a temperature range of 900 – 1300°C [Col 2, line 5], which overlaps with the claimed range, and Armstrong teaches an example in which the sintering temperature is held for a time of 30 minutes [Example 1], which meets the claimed range. Armstrong further teaches the metal particulate can be iron [Col 2, line 28] and the abrasive particles can be diamond [Col 2, line 34].
Armstrong teaches that the hard particles do not typically exceed 30% by volume [Col 2, line 37 – 38], which overlaps with the claimed range. Wherein iron is approximately 2.2x the density of diamond (~7.8/3.5) and as such, the mass fraction of metal in the mixture would be approximately 85 mass% or more, which overlaps with the claimed range of the iron powder being at least 40% mass fraction of the mixture. Based on ~14 mass% or less of diamond to metal (30 vol%/2.2 or less).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Eason in view of Sagwell and combined it with the teachings of Armstrong to have a diamond vol% ratio of up to 30% as well as a free sintering temperature and time of 900 – 1300°C and 30 min to achieve predictable results. Eason and Armstrong both disclose producing diamond metal composites, the metal including iron, and Eason does not limit the amount ratio of metal to diamond. Furthermore, Armstrong teaches that the sintering conditions are for an iron metal matrix and as such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings with no change in their respective functions.
Additionally, Eason teaches that organic material can be included with the powder mixture in an amount of 5 wt% or less [0026]. Wherein the combination of Eason in view of Sagwell and Armstrong would possess an iron mass fraction of ~85 mass% or more and as such, Eason’s disclosure of 5 wt% or less organic material (i.e. binder and/or wetting agent) would overlap with the claimed range of the binder being 1.2 – 2.2% of the iron powder mass.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Eason in view of Sagwell and Armstrong does not explicitly teach motor oil/paraffin as the lubricant (interpreted as the wetting agent) or polyvinyl alcohol/polyethylene glycol as the binder.
Sun teaches making a metal-based diamond cutter and drill bill [0001]. Sun discloses that the metal-based component includes iron powder [0010] and iron is the majority of the elements [0010, 0017]. Sun further discloses that method includes mixing metal-based powder and diamond powder and subjecting it sintering [0009, 0011], wherein the powder mixture further includes a wetting agent and molding agent (i.e. binder) [0009]. Sun discloses that the wetting agent includes liquid paraffin [0015] and the molding agent can be polyvinyl alcohol [0016], meeting the claimed limitations. Lastly, Sun describes that the wetting agent and molding agent disclosed avoids the segregation the mixed components due to density differences between the matrix powder and diamond powder [0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used liquid paraffin as the lubricant and polyvinyl alcohol as the binder, as taught by Sun, in the method of Eason in view of Sagwell and Armstrong to obtain predictable results. Eason expressly appreciates that an oil can be included to provide lubrication/compaction aid and polymers can be included as binders and as such, an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results. Furthermore, Sun describes that the wetting agent and molding agent disclosed avoids the segregation the mixed components due to density differences between the matrix powder and diamond powder [0021], providing motivation to an ordinarily skilled artisan.
Wherein the density of iron is 7.87 g/cm3 and the density of diamond is 3.52 g/cm3. The relative density of the green body as disclosed in Eason is ~80% or more and the volume ratio as disclosed in Armstrong is up to 30%. As such, the density of the green body would vary from 5.26 g/cm3 (30% Diamond, 70% Iron, 80% relative density) to essentially 7.87 g/cm3 (~100% iron at ~100 relative density).
Therefore, Eason in view of Sagwell, Armstrong, and Sun reasonably suggests an overlapping range to the claimed density range of 3.95 – 6.29 g/cm3 of the body (i.e. green body).
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Response to Arguments
Applicant’s amendments have overcome the previous rejections. However, upon further consideration, new rejections are made of:
Claim 1 under 35 U.S.C. 103 as being unpatentable over Eason (US2010/0154587) in view of Sagwell (“Superfine Iron Powder”, NPL, 2018), Abe (JP2002/220628), and Sun (CN108274004)
Claim 4 under 35 U.S.C. 103 as being unpatentable over Eason (US2010/0154587) in view of Sagwell (“Superfine Iron Powder”, NPL, 2018), Armstrong (US 5,932,508), and Sun (CN108274004)
Applicant's arguments directed to these prior art disclosures have been fully considered but they are not persuasive.
Applicant argues that the prior art relied upon (D1 – D5) are different from the claimed invention in that pure-iron is used, whereas the prior art relies on alloys/doping agents. This is not found persuasive. Eason makes clear that the matrix material selected can be commercially pure iron by stating “The matrix material may also be selected from commercially pure elements such as cobalt, aluminum, copper, magnesium, titanium, iron, and nickel” [0023]. As such, applicant’s arguments are not persuasive.
The examiner notes for purposes of compact prosecution that while the other prior art is not relied upon for the claimed limitation that the matrix is iron, the examiner notes that both Abe and Armstrong also teach using elemental iron as the matrix metal. Abe states that “Metal is titanium and titanium alloy, iron and iron alloy, cemented carbide” [0009] (the phrase “iron or iron alloy” making clear that elemental iron is an option) and Armstrong states “The metal for the matrix may be iron or an iron-rich alloy, i.e. an alloy which is predominantly iron with minor amounts of metal additives characterised by having negligible dimensional volume change as a consequence of sintering” [Col 2, line 28 – 32] (also teaching that elemental iron can be used). As such, applicant’s arguments are not persuasive.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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