Prosecution Insights
Last updated: April 19, 2026
Application No. 18/202,762

SUPERHARD COMPACTS, ASSEMBLIES INCLUDING THE SAME, AND METHODS INCLUDING THE SAME

Non-Final OA §103
Filed
May 26, 2023
Examiner
MILLER, DANIEL H
Art Unit
1783
Tech Center
1700 — Chemical & Materials Engineering
Assignee
US SYNTHETIC CORPORATION
OA Round
3 (Non-Final)
53%
Grant Probability
Moderate
3-4
OA Rounds
4y 2m
To Grant
73%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allow Rate
367 granted / 687 resolved
-11.6% vs TC avg
Strong +19% interview lift
Without
With
+19.3%
Interview Lift
resolved cases with interview
Typical timeline
4y 2m
Avg Prosecution
30 currently pending
Career history
717
Total Applications
across all art units

Statute-Specific Performance

§103
66.2%
+26.2% vs TC avg
§102
14.7%
-25.3% vs TC avg
§112
11.6%
-28.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 687 resolved cases

Office Action

§103
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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/27/2026 has been entered. 103 Obviousness Rejection: Claims 5-8, 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Elkins (US 5,515,754) in view of WO 2015/023953 A1 to Burhan (hereinafter “Burhan”) in view of WO 2004/106003 A1 to Achilles (hereinafter “Achilles”) further in view of Houghes (US Pat. 5,467,834) (1995). Elkins (US 5,515,754) teaches a recess tool holder with a magnet inserted inside the recess at the bottom, but being shorter than the recess, and the magnet engaging with the bottom surface of the tool head (See figures [such as figure 2) and column 5 lines 40-65). Elkins may not teach all the elements of the claims. Referring to Applicant’s independent claim 5, Burhan teaches a superhard compact for use in a support body (See Abstract; par. [0048]), comprising: a superhard table (par. [0049]; FIG. 3) including: an upper surface (par. [0049]; FIG. 3); a table bottom surface opposite the upper surface (par. [0049]; FIG. 3); and at least one table lateral surface extending between the upper surface and the table bottom surface (par. [0049]; FIG. 3); a substrate (pars. [0058], [0077]); and at least one magnet configured to attach to attach the superhard table to the support body (par. [0049]; FIG. 3). Although Burhan teaches the diamond or other ultra-hard material table forming the cutting face of a rotatable cutting element may be disposed on a substrate formed of a variety of hard or ultrahard particles (par. [0058] of Burhan) and one or more permanent magnets may be attached or joined to a substrate of the rotatable cutting element taught therein (par. [0077] of Burhan), Burhan does not teach explicitly at least one substrate lateral surface extending between the upper substrate surface and the substrate bottom surface, wherein a lateral dimension of the at least one table lateral surface is substantially the same as a lateral dimension of a majority of the at least one substrate lateral surface. However, Achilles teaches a polycrystalline diamond abrasive element, particularly a cutting element, comprises a table of polycrystalline diamond bonded to a substrate, particularly a cemented carbide substrate, along a non-planar interface (See Abstract of Achilles). In at least one embodiment, Achilles teaches a polycrystalline diamond abrasive element comprises a layer of polycrystalline diamond (shown in phantom lines) bonded to a cemented carbide substrate along an interface (page 9, second paragraph; FIGS. 4-6; the interface of Achilles is equivalent to Applicant’s claim language “an upper substrate surface bonded to the table bottom surface”). Achilles teaches the polycrystalline diamond layer has an upper working surface, which has a cutting edge (page 9, second paragraph; FIGS. 4-6 of Achilles). Achilles the substrate has a flat bottom surface and a profiled upper surface (page 9, third paragraph; FIGS. 4-6; the profiled upper surface of Achilles is equivalent to Applicant’s claim term “an upper substrate surface”; the flat bottom surface of Achilles is equivalent to Applicant’s claim term “substrate bottom surface”). As illustrated in FIGS. 4-6 of Achilles, the polycrystalline diamond abrasive element and substrate attached thereto have lateral surfaces whose respective lateral dimensions are substantially the same to each other as illustrated (See FIGS. 4-6 of Achilles). There is a reasonable expectation the substrate and diamond or other ultra-hard material table of Burhan form a similar construction as the substrate and polycrystalline diamond abrasive element taught by Achilles. Just as the polycrystalline diamond abrasive element and substrate attached thereto have lateral surfaces whose respective lateral dimensions are substantially the same to each other as illustrated (See FIGS. 4-6 of Achilles) so to would the substrate and polycrystalline diamond abrasive element of Burhan (par. [0058] of Burhan) had an illustration been provided. For this reason, a person having ordinary skill in the art before the effective filing date of the present application would recognize and appreciate the substrate and polycrystalline diamond abrasive element of Burhan would exhibit and possess a similar structural profile as the polycrystalline diamond abrasive element and substrate of Achilles. That is, a person having ordinary skill in the art before the effective filing date of the present application would recognize and appreciate the polycrystalline diamond abrasive element and substrate attached thereto of Burhan would exhibit and possess lateral surfaces whose respective lateral dimensions are substantially the same to each other as illustrated in FIGS. 4-6 of Achilles. Burhan as modified by Achilles teaches the superhard table includes a polycrystalline diamond table (par. [0058]; FIG. 3 of Burhan), the polycrystalline diamond table including a plurality of diamond grains bonded together defining a plurality of interstitial regions therebetween (par. [0058]; FIG. 3 of Burhan), at least a portion of the plurality of interstitial regions including a metal-solvent catalyst therein (par. [0058]; FIG. 3; the polycrystalline diamond, not the thermally stable diamond, of Burhan implicitly contains metal-solvent catalyst and is equivalent to Applicant’s claim term “a polycrystalline diamond table”). Burhan as modified by Achilles teaches the substrate is directly attached to the at least one magnet (par. [0058]; FIG. 3 of Burhan) and positioned between the superhard table and the at least one magnet (par. [0058]; FIG. 3 of Burhan). Burhan as modified by Achilles teaches the at least one magnet includes a magnet upper surface that exhibits a shape that corresponds to the substrate bottom surface (par. [0058]; FIG. 3 of Burhan); and the magnet upper surface is attached to the substrate bottom surface (par. [0058]; FIG. 3 of Burhan). Burhan as modified by Achilles teaches the at least one magnet is brazed to the substrate (par. [0077] of Burhan). It would have berne obvious to one of ordinary skill in the art a the time of the filing of the invention to provide multiple magnets for additive effect attaching a hard, grinding, or cutting tool surface to a tool face removably. It would have been obvious to one of ordinary skill in the art a the time of the filing of the invention to provide demagnetizing to be able to remove and/or replace the cutting surface after wear or to provide a hard surface with other properties. Regarding new limitations potentially not taught above. Houghes (US Pat. 5,467,834) (1995) teaches a drill bit that can rotate and or be fixed in position by protrusions within the recess to cut at angles (See drawings and claims). A person having ordinary skill in the art before the effective filing date of the present application would be motivated to provide the rotation and fixing the tool hard surface in order to provide for cutting at angles and/or turns (see figures). Claims 1-4, 9-12, 19-20 are newly rejected (claims 1-20) is rejected under 35 U.S.C. 103 as being unpatentable over Elkins (US 5,515,754) in view of WO 2015/023953 A1 to Burhan (hereinafter “Burhan”) (copy provided in prior Official action) in view of WO 2004/106003 A1 to Achilles (hereinafter “Achilles”) (copy provided in prior Official action) as applied to claim 1 above, and further in view of United States Patent No. 9,695,642 B2 to Hay et al. (hereinafter “Hay”) further in view of Houghes (US Pat. 5,467,834) (1995).. Elkins (US 5,515,754) teaches a recess tool holder with a magnet inserted inside the recess at the bottom, but being shorter than the recess, and the magnet engaging with the bottom surface of the tool head (See figures [such as figure 2) and column 5 lines 40-65). Elkins may not teach all the elements of the claims. Referring to Applicant’s claims 4, 9-12, 19-20, Burhan as modified by Achilles teaches a superhard compact for use in a support body (See Abstract; par. [0048] of Burhan), comprising: a superhard table (par. [0049]; FIG. 3 of Burhan) including: an upper surface (par. [0049]; FIG. 3 of Burhan); a table bottom surface opposite the upper surface (par. [0049]; FIG. 3 of Burhan); and at least one table lateral surface extending between the upper surface and the table bottom surface (par. [0049]; FIG. 3 of Burhan); and at least one magnet configured to attach to attach the superhard table to the support body (par. [0049]; FIG. 3 of Burhan). However, Burhan as modified by Achilles does not teach explicitly the substrate defines at least one compact recess extending inwardly from the at least one substrate lateral surface, and wherein “the at least one magnet is disposed in the at least one recess” according to Applicant’s claim language. Hay teaches a drill tool includes an instrumented cutting element comprising a cutting table and a substrate having a cavity and coupled to the cutting table, on one of the plurality of blades (See Abstract of Hay). In at least one embodiment, Hay teaches the cutting table may be a polycrystalline diamond cutting table and the substrate may be a substrate having a cavity and composed of tungsten carbide with a cobalt binder (col. 4, ll. 1-6; FIG. 4; the cavity of Hay is equivalent to Applicant’s claim term “a recess”). Hay teaches the cavity may be machined in substrate, created with the use of an electro discharge machine (EDM) process, and/or manufactured with any other suitable method based in part on the conductivity, hardness and/or any other property of substrate (col. 4, ll. 7-11; FIG. 4 of Hay). In some embodiments, Hay teaches the permanent magnet may be located in cavity adjacent and/or proximate to cutting table (col. 11, ll. 12-14; FIG. 4 of Hay). Hay teaches the permanent magnet may be any suitable magnet capable of withstanding the brazing temperature experienced when coupling cutting table to substrate (col. 11, ll. 14-17; FIG. 4 of Hay). There is a reasonable expectation the substrate of Burhan as modified by Achilles can be modified further to include a cavity such as Hay in which the magnet can be positioned so as to (i) be directly attached to the substrate; (ii) be between the table and substrate; or (iii) be adjacent to the table. A person having ordinary skill in the art recognizes and appreciates the additional parts, e.g., the detector, support coil, core, spacer, connector and cap of Hay, are not required to practice the superhard compact taught by Burhan. As both Burhan and Hay teach utilizing a permanent magnet (par. [0049]; FIG. 3 of Burhan; col. 11, ll. 1-17; FIG. 4 of Hay) and incorporating said permanent magnet adjacent to (par. [0049]; FIG. 3 of Burhan) or within the substrate (col. 11, ll. 12-14; FIG. 4 of Hay), a person having ordinary skill in the art before the effective filing date of the present application would recognize and appreciate positioning the magnet with respect to a substrate, a polycrystalline diamond table or both is entirely possible and well within said person’s skills and abilities given both Burhan’s and Hay’s teachings. For this reason, a person having ordinary skill in the art before the effective filing date of the present application would be motivated to modify further the substrate of Burhan as modified by Achilles by including the cavity of Hay and disposing a permanent magnet within the cavity as taught by Hay. A person having ordinary skill in the art before the effective filing date of the present application would be motivated to do so given said person recognize and appreciate positioning the magnet with respect to a substrate, a polycrystalline diamond table or both is entirely possible and well within said person’s skills and abilities given both Burhan’s and Hay’s teachings. Regarding new limitations potentially not taught above. Houghes (US Pat. 5,467,834) (1995) teaches a drill bit that can rotate and or be fixed in position by protrusions within the recess to cut at angles (See drawings and claims). A person having ordinary skill in the art before the effective filing date of the present application would be motivated to provide the rotation and fixing the tool hard surface in order to provide for cutting at angles and/or turns (see figures). Response to Arguments Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL H MILLER whose telephone number is (571)272-1534. The examiner can normally be reached M-TH 9-6. 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, Veronica Ewald can be reached at 571-272-8519. 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. /DANIEL H MILLER/Primary Examiner, Art Unit 1783
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Prosecution Timeline

May 26, 2023
Application Filed
Jun 06, 2025
Non-Final Rejection — §103
Aug 04, 2025
Interview Requested
Aug 13, 2025
Response Filed
Aug 13, 2025
Examiner Interview Summary
Aug 13, 2025
Applicant Interview (Telephonic)
Nov 19, 2025
Final Rejection — §103
Jan 16, 2026
Response after Non-Final Action
Jan 27, 2026
Request for Continued Examination
Jan 30, 2026
Response after Non-Final Action
Feb 06, 2026
Non-Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
53%
Grant Probability
73%
With Interview (+19.3%)
4y 2m
Median Time to Grant
High
PTA Risk
Based on 687 resolved cases by this examiner. Grant probability derived from career allow rate.

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