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 .
Request for Continued Examination
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant’s submission filed on 12/09/2025 has been entered.
Drawings
The drawings are objected to under 37 C.F.R. § 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “saw tooth configuration” (claim 11) must be clearly shown (the figures do not provide sufficient details for a proper understanding of the claimed invention) or the features should be canceled from the claims. MPEP § 608.02(d). No new matter should be entered.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in compliance with 37 C.F.R. § 1.121(d). No new matter should be entered. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections – 35 U.S.C. § 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.
Jost in view of Frade
Claims 1-2, 4-5, 8, 10, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20150218897 A1 (“Jost”) in view of US 20240328264 A1 (“Frade”).
Jost pertains to a drill bit breaker/clamp device (Abstr.; Figs. 1-9). Frade pertains to a drill bit breaker/clamp device (Abstr.; Figs. 2, 2A). These references are in the same field of endeavor.
Regarding claim 1, Jost discloses a bit breaker apparatus comprising (Figs. 1-9, apparatus 10):
a bit breaker body, the bit breaker body having two ends... (Figs. 1-9, body 14 has two ends (e.g., on opposite sides of the curved cylindrical surface 18));
a bit breaker plate that is capable of being connected to the bit breaker body (Figs. 1-9, plate 12/16 is capable of being connected to body 14);
at least one hole in the bit breaker body capable of accepting a mechanical fastener (Figs. 1-9, holes 26);
at least one hole in the bit breaker plate that is capable of accepting a mechanical fastener (Figs. 1-9, holes 28);
at least one mechanical fastener securing the bit breaker plate to the bit breaker body (Figs. 1-9, fasteners 30 secure plate 12/16 to body 14 via holes 28 and 26).
Jost does not explicitly disclose:
the bit breaker body having two ends each having a rod shaped portion that is insertable into a notched area of a tong;
wherein a first end of the rod shaped portion of the bit breaker body has a vertical hole near its end;
wherein a second end of the rod shaped portion of the bit breaker body has at least one horizontal hole near its end.
However, the Jost/Frade combination makes obvious this claim.
Frade discloses:
the bit breaker body having two ends each having a rod shaped portion that is insertable into a notched area of a tong (Figs. 1-2, rod shaped portions (at references 21a/b) at each end of body 20, which are capable of being inserted into a notched area of a tong (e.g., a clamp (“tong”) having a notch (see Jost ¶¶ 0005-0006)); Examiner notes that the “tong” and its “notched area” are not positively claimed);
wherein a first end of the rod shaped portion of the bit breaker body has a vertical hole near its end (Fig. 2, first end of rod shaped portion has hole 21b that is vertical to the top face of the rectangular bit breaker body; Examiner notes that “vertical” is not referenced to any feature, axis, or object and will be interpreted broadly);
wherein a second end of the rod shaped portion of the bit breaker body has at least one horizontal hole near its end (Fig. 2, second end of rod shaped portion has hole 21a that is horizontal to the side edge of the rectangular bit breaker body; Examiner notes that “horizontal” is not referenced to any feature, axis, or object and will be interpreted broadly).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Frade with Jost by modifying the device of Jost to add the rod shaped portions with holes 21a/b of Frade. This would have been obvious to a person of ordinary skill in the art because the added rod shaped portions and holes allow for easier manipulation of the device (e.g., as handles) and improve the device by allowing for a greater amount of torque to be applied by also securely fixing/clamping the added rod shaped portions (e.g., by way of holes 21a/b) (Frade Fig. 2; ¶ 0056, “The decoupling wrench 20 is fixed to the lower end of the drilling derrick 11 through tabs that extend outwards (21a, 21b)”) compared to only clamping the body 14 (Jost Figs 8-9, clamping jaws 70a/70b; ¶ 0064). Applicant has not disclosed that having the holes as claimed provides any function or advantage, solves any stated problem, or is used for any particular purpose and it appears that the device would perform equally well with other designs. Furthermore, absent a teaching as to criticality of this positioning as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to this particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Regarding claim 2, the Jost/Frade combination makes obvious the apparatus of claim 1 as applied above. Jost further discloses a recessed portion in the bit breaker body (Figs. 1-9; recess 22).
Regarding claim 4, the Jost/Frade combination makes obvious the apparatus of claim 1 as applied above. Frade further discloses wherein the vertical hole is a transverse hole (Fig. 2, hole 21b is a hole that is transverse to the top face of the rectangular bit breaker body; Examiner notes that “transverse” is not referenced to any feature, axis, or object and will be interpreted broadly).
The obviousness rationale for claim 4 is the same as for claim 1.
Regarding claim 5, the Jost/Frade combination makes obvious the apparatus of claim 2 as applied above. Jost further discloses wherein the bit breaker plate is shaped so that it is insertable in the recessed portion of the bit breaker body (Figs. 1-9, plate 12/16 is insertable into recess 22).
Regarding claim 8, the Jost/Frade combination makes obvious the apparatus of claim 1 as applied above. Frade further discloses at least one transverse hole in one rod shaped portion of the bit breaker body (Fig. 2, hole 21b is a hole that is transverse to the top face of the rectangular bit breaker body; Examiner notes that “transverse” is not referenced to any feature, axis, or object and will be interpreted broadly).
The obviousness rationale for claim 8 is the same as for claim 1.
Regarding claim 10, the Jost/Frade combination makes obvious the apparatus of claim 5 as applied above. Jost further discloses wherein the bit breaker plate has an interior hole shaped to accept an external shape of a drill bit (Figs. 1-9, plate 12/16 has interior hole 34 that is shaped to accept an external shape of a drill bit (Fig. 4, drill bit 44)).
Regarding claim 12, the Jost/Frade combination makes obvious the apparatus of claim 5 as applied above. Jost further discloses wherein the bit breaker plate has an oval shape (Figs. 1-9, plate 12/16 has a hole 34 that has an oval shaped).
To the extent Jost does not disclose this limitation, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Jost/Frade to use an oval bit breaker plate that fits into an oval shaped recess of the bit breaker body because this is simply a design choice based on the shape and size of the drill bits that are to be used with the apparatus. Applicant has not disclosed that an oval shape provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the apparatus would perform equally well with other shapes (see Spec. p. 5). Furthermore, absent a teaching as to criticality of this positioning as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to this particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Jost in view of Frade and Odegard
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20150218897 A1 (“Jost”) in view of US 20240328264 A1 (“Frade”) and US 20210388682 A1 (“Odegard”).
Jost pertains to a drill bit breaker/clamp device (Abstr.; Figs. 1-9). Frade pertains to a drill bit breaker/clamp device (Abstr.; Figs. 2, 2A). Odegard pertains to a drill bit breaker/clamp device (Abstr.; Figs. 11-15). These references are in the same field of endeavor.
Regarding claim 11, the Jost/Frade combination makes obvious the apparatus of claim 5 as applied above. Jost and Frade do not explicitly disclose wherein the recessed area of the bit breaker body has a saw tooth configuration. However, the Jost/Frade/Odegard combination makes obvious this claim.
Odegard discloses wherein the recessed area of the bit breaker body has a saw tooth configuration (Figs. 11-15, 16A-C, saw tooth configuration 615 of recessed area 130/135 of bit breaker body 100).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Odegard with the Jost/Frade combination to add a saw tooth configuration to the recessed area, which allows for a mating jaw piece (Odegard Figs. 11-15, 16A-C, jaw piece 300 with saw teeth 610). Applicant has not disclosed that a saw tooth configuration provides an advantage, solves any stated problem, or is used for any particular purpose and it appears that the apparatus would perform equally well with other shapes (see Spec. p. 4). Furthermore, absent a teaching as to criticality of this positioning as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to this particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 3 and 6-7 have been canceled. Claims 1-2, 4-5, 8, and 10-12 are pending. Claims 1-2, 4-5, 8, and 10-12 are rejected.
Drawings – Regarding the objections Fig. 1 for clarity, this objection is withdrawn in view of Applicant’s amendment. However, Applicant failed to address the drawing objection regarding the claimed “saw tooth configuration” of claim 11.
Specification – The objection to the abstract is withdrawn in view of Applicant’s amendment.
Claims – The objection to claim 1 is withdrawn in view of Applicant’s amendment. In light of Applicant’s claim amendments, the § 112(a) and (b) rejections are hereby withdrawn. Applicant is cautioned that claim amendments must include a correct status identifier for each claim and accurate markings to show the changes from the previous claim set. 37 C.F.R. § 1.121(c); MPEP § 714(II)(C). Claims 1-2, 4-5, 8, and 10-12 have no status identifiers.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments regarding amended claim 1 are addressed in the § 103 rejection above. Applicant’s remaining arguments are conclusory and are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866)217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800)786-9199 (IN USA OR CANADA) or (571)272-1000.
/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723