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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 5 – 8 and 10 – 13 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Burhan, et al. (US 2015/0047911 A1).
With respect to claim 5, Burhan, et al. teach a method of attachment between a cutting element and a drill bit body, the method comprising: positioning the cutting element (paragraph 0049) comprising a superhard table(paragraph 0058; examiner notes that the reference teaches that the cutting element [item 302 – figure 3] may be formed of diamond or other ultra-hard material table material) secured to a substrate (item 304 – figure 3) within an opening in the bit body (figure 3); and securing a bottom surface of the cutting element in contact with the bottom surface of the opening in the bit body (paragraph 0049; figure 3) with at least one magnet laterally offset from a central axis of the cutting element (figure 3; examiner notes that magnet 330 has a width dimension which is smaller than the top surface of the cutting element and thus, is laterally offset as claimed), the at least one magnet secured within a recess in a surface of the at least one of the cutting element OR the opening in the bit body (figure 3; examiner notes magnet is disposed within sleeve; as written, it would appear that the recess may be in the surface of the cutting element or the bit body opening), the recess having a depth greater than a length of the least one magnet (figure 3; the bottom portion of the bit body which is recessed has a depth greater than the magnet), wherein the opening in the bit body and the at least one magnet are configured to secure the cutting element in the bit body (paragraph 0049).
With respect to the lateral surface, examiner contends the interpretation above is appropriate based on the instant application. Paragraph 0066 recites the following with respect to laterally offset:
“…the magnet lateral surface 242 may be laterally offset inwardly relative to the lateral surface 214 of the superhard compact 202 to form a gap between the magnet lateral surface 242 and a corresponding surface of the recess. The magnet lateral surface 242 may be laterally offset inwardly relative to the lateral surface 214 when the lateral dimension of the magnet 236 is less than a lateral dimension of the superhard table 218 and/or the substrate 224.”
In other words, being laterally offset may be construed as the magnet being smaller in diameter than the superhard compact. Because the magnet of Burhan, et al. has a smaller diameter than the top face of the cutting element, the magnet is thus, laterally offset.
With respect to claim 6, the reference teaches aligning a lateral surface of the at least one magnet to extend along a lateral surface of the superhard table (paragraph 0049 and 0050).
With respect to claim 7 and 8, Burhan, et al. teach directly attaching the substrate to the at least one magnet (paragraph 0049 and 0050) and further positioning the substrate between the superhard table and the least one magnet (figure 3; paragraph 0049).
With respect to claims 10 – 12, Burhan, et al. teach disposing the at least one magnet in at least one recess defined in the bit body at a location adjacent to the opening (figure 3); further comprising defining a portion of the opening for receiving the cutting element with the at least one magnet disposed in the least one recess (figure 3; paragraph 0049) further comprising disposing the at least one magnet in the at least one recess in the bit body comprising a blind recess (figure 3; examiner notes that retaining element (340) coupled with ferromagnetic material (324) create a blind recess into which the magnet is disposed. )
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With respect to claim 13, Burhan, et al. teach securing the cutting element to the bit body with a plurality of magnets (paragraph 0073 – 0074).
Claim(s) 15 and 19 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Burhan, et al. (US 2015/0047911 A1).
With respect to claim 15, Burhan, et al. teach a method of attachment between cutting elements and a bit body, the method comprising: disposing a cutting element within an opening in the bit body (paragraph 0049; figure 3), the cutting element comprising a superhard table (paragraph 0057) secured to a substrate (paragraph 0049; item 304 – figure 3) wherein the opening in the bit body is sized and configured to enable the cutting element to be rotated within the opening (0048); securing the cutting element to the bit body with at least one magnet (item 330 – figure 3; paragraph 0049) offset from a central axis of the cutting element (figure 3; examiner notes that magnet 330 has a width dimension which is smaller than the top surface of the cutting element and thus, is laterally offset as claimed); and inhibiting rotation of the cutting element relative to the bit body with the least one magnet (paragraph 0048).
With respect to claim 19, the reference teaches further disposing the at least one magnet in one or more blind recesses defined in the bit body (figure 3; examiner notes that retaining element (340) coupled with ferromagnetic material (324) create a blind recess into which the magnet is disposed) wherein only the at least one magnet inhibits rotation of the cutting element (paragraph 0048).
Claim Rejections - 35 USC § 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burhan, et al. (US 2015/0047911 A1).
With respect to claim 1, Burhan, et al. teach a method of forming an assembly, the method comprising: disposing at least a cutting element in at least one recess defined by a support body (figure 3; paragraph 0049); wherein the at least one recess is defined by a recess bottom surface (item 310 – figure 3; examiner notes sleeve 310 defines the recess into which cutting element is disposed or inserted); and at least one recess lateral surface from the recess bottom surface to at least one exterior surface of the support body (figure 3; sleeve has an interior surface or wall which extends to the exterior) wherein the cutting element includes an upper surface (item 302 – figure 3; paragraph 0049); a a bottom surface (note that item 302 has a bottom surface which faces the recess and at least one lateral surface extending between the upper surface and the bottom surface (examiner notes that the cutting element peripheral surface extends laterally between the cutting surface and the bottom surface); magnetically securing a bottom surface of the cutting element in contact with the recess bottom surface of the support body (paragraph 0049; examiner notes that Burhan, et al. teach that the cutting element is disposed in the sleeve attached or held in place via magnet 330), wherein the support body, the cutting element, or both comprise at least one magnet laterally offset from a central axis of the at least one superhard compact and configured to at least partially inhibit rotation of the at least cutting element (figure 3; examiner notes that magnet 330 has a width dimension which is smaller than the top surface of the cutting element and thus, is laterally offset as claimed.)
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With respect to the lateral surface, examiner contends the interpretation above is appropriate based on the instant application. Paragraph 0066 recites the following with respect to laterally offset:
“…the magnet lateral surface 242 may be laterally offset inwardly relative to the lateral surface 214 of the superhard compact 202 to form a gap between the magnet lateral surface 242 and a corresponding surface of the recess. The magnet lateral surface 242 may be laterally offset inwardly relative to the lateral surface 214 when the lateral dimension of the magnet 236 is less than a lateral dimension of the superhard table 218 and/or the substrate 224.”
In other words, being laterally offset may be construed as the magnet being smaller in diameter than the superhard compact. Because the magnet of Burhan, et al. has a smaller diameter than the top face of the cutting element, the magnet is thus, laterally offset.
Burhan, et al. may not specifically teach however, that the cutting element 300 is a superhard compact, but the reference teaches that bit bodies, roller cones, cutting elements and/or inserts may be any combination of hard or superhard materials (paragraph 0001) and therefore, the examiner contends that it would be obvious to one of ordinary skill in the art at the time the invention was filed that the cutting element be a superhard compact as claimed.
With respect to claims 2 – 3, while Burhan, et al. may not specifically teach that the securing the at least one superhard compact to the support body includes magnetizing a core or further comprising before removing the at least one superhard compact from the at least one recess, demagnetizing the core, these steps are obvious in light of the teachings in Burhan, et al. The reference teaches that the cutting element is held in place via the magnet. In addition, ferromagnetic material may be included in the cutter pocket or sleeve (paragraph 0061). Thus, based on the combination of the magnet and the ferromagnetic material, examiner contends that it would be obvious to magnetize and/or demagnetize a core as claimed to secure the magnet or release it.
With respect to claim 4, Burhan, et al. teach removing the at least one superhard compact form the at least one recess (paragraph 0063 – 0064). Examiner further notes that the cutting element (or superhard compact) may be releasably held in the sleeve via the magnet and retention element (340) and thus, it would similarly follow that the cutting element may be released therefrom.
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Burhan, et al. (US 2015/0047911 A1).
Burhan, et al. teach the features as noted in claim 5 and 13; however, fail to specifically teach that the magnet or magnets are positioned within the recess of the substrate.
The reference does teach that the magnet(s) may be attached or joined to the substrate with adhesive, solder or low temperature braze. Alternatively, a portion of the substrate may be magnetized such that the magnet is formed as part of the rotatable cutting element (paragraph 0077). Thus, while not specifically teaching a recess per say in the substrate, its inclusion would be obvious per the teachings in the Burhan, et al. for the purpose of attaching the magnet to the substrate end surface.
Claims 16 – 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burhan, et al. (US 2015/0047911 A1). Burhan, et al. teach the features as noted above in claim 15; however, do not specifically teach the magnetizing or demagnetizing. In addition, the reference does not specifically teach disposing the at least one magnet in more or more recesses defined in the cutting element.
The reference teaches that the cutting element is held in place via the magnet. In addition, ferromagnetic material may be included in the cutter pocket or sleeve (paragraph 0061). Thus, based on the combination of the magnet and the ferromagnetic material, examiner contends that it would be obvious to magnetize and/or demagnetize a core as claimed to secure the magnet or release it. Alternatively, a portion of the substrate may be magnetized such that the magnet is formed as part of the rotatable cutting element (paragraph 0077). Thus, based on these teachings, it would be obvious that a portion of the substrate would be magnetized to attach or secure the cutting element to the bit body.
With respect to the inclusion of a recess in the cutting element, the reference is not specific to such a recess; however, it does teach magnet(s) may be attached or joined to the substrate with adhesive, solder or low temperature braze (paragraph 0077). Therefore, its inclusion [the recess] would be obvious per the teachings in the Burhan, et al. for the purpose of attaching the magnet to the substrate end surface.
Response to Arguments
Applicant’s arguments, see pages 2 – 4, filed April 30, 2026, with respect to the previous rejection with Elkins as the primary reference have been fully considered and are persuasive. The rejection has been withdrawn. Examiner concurs that neither Elkins nor the additional reference(s) teach or render obvious a laterally offset magnet. Reviewing Elkins, the magnet 122 appears to sit in the sleeve but its width or diameter is not offset or smaller than the cutting element itself and thus, examiner, upon an updated search has cited Burhan, et al. Burhan, et al. do teach a magnet with a width or diameter which can be smaller than that cutting element face (see figure 3; see also paragraph 0076).
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 MARIA VERONICA EWALD whose telephone number is (571)272-8519. The examiner can normally be reached Mon-Fri ~9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi Kumar can be reached at 571-270-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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