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 .
Response to Amendment
The amendments filed 08 December 2025 have been entered. Claims 1–18 and 20 remain pending, wherein claims 1–6 are withdrawn without traverse. Claim 19 has been canceled.
The objection to claim 19 is rendered moot by the cancelation of claim 19.
The rejections of claims 9–12 and 14 under 35 U.S.C. 112(b) have been overcome by the amendments to claims 9 and 14. The previous grounds of rejection are herein withdrawn, but the amendment to claim 9 introduces a new issue of indefiniteness that will be described herein.
The rejections of claims 15–18 and 20 under 35 U.S.C. 102(a)(1) have been overcome by the amendment to claim 15. The rejections are herein withdrawn.
The rejections of claims 7–14 under 35 U.S.C. 103 have been overcome by the amendments to claim 7. The rejections are herein withdrawn.
Claim Objections
Claims 14 and 15 are objected to because of the following informalities:
Claim 14 has been amended to recite “higher pressure higher temperature”, but these phrases should be separated by the conjunction “and” to show that they are distinct and both required, i.e., “higher pressure and higher temperature”;
Claim 15 contains an extra period below the final line of the claim, which should be removed.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 has been amended to recite the limitation, “wherein the plurality of diamond particles have a diamond volume percentage varied between about 17.5% to about 27.5%”. The phrase “varied between” leads to indefiniteness because “varied” implies an action being taken to change the diamond volume percentage. “Varied between” could reasonably imply “between x% and y%”, “embodiments that alternate between x% and y%”, or “a heterogeneous distribution of diamonds in the product that vary between x% and y%”. The Examiner believes the applicants simply meant to define the boundaries of the recited range, i.e., “…have a diamond volume percentage between about 17.5% and about 27.5%”, and this is the interpretation that the Examiner will use herein.
Allowable Subject Matter
Claims 7, 8, 10–18 and 20 are allowed, with formal requirements outstanding for claims 14 and 15 (see the above Claim Objections section).
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Claim 7 recites a method of making an impregnated diamond cutter, wherein the method comprises a step of wetting the plurality of diamond particles with the metal binder to increase bonding between diamond particles. This is a form of sintering requiring a binder with a low melting point, wherein the metal binder is melted to sufficiently distribute itself between the diamond particles.
The previously cited reference, Konovalov (US 2018/0235405 A1) teaches high pressure, high temperature sintering with diamonds and a non-catalytic metal binder. Importantly, the non-catalytic metal binder does not wet the surface of the diamonds; Konovalov explicitly teaches the non-catalytic material as “not catalytic with carbon in forming diamond and intra-diamond grain bonds” (see paragraph 0024), while the catalytic material boosts inter-diamond bonding. And while Konovalov does disclose the inclusion of catalytic material which can undergo liquid phase sintering, it is not mixed with diamonds to form a paste, as required by claim 7. Furthermore, Konovalov teaches the risks of using catalytic material, including the fact that excess material can cause diamonds to revert to a softer phase like graphite, which would greatly diminish its abrasive character (see paragraph 0006).
A person of ordinary skill in the art before the effective filing date of the claimed invention would therefore not be motivated to modify the composition of Konovalov to mix catalytic binder into a paste as claimed, because doing so would risk affecting the abrasiveness of the finished product. None of the other cited references cure the deficiencies of Konovalov. Xu (cited above) is the only other reference identified which uses the Co-Cu-Fe-P alloy binder claimed in claim 10, and while it would be reasonable to assume the alloy is melted during sintering, Xu does not actually disclose the sintering conditions, and so it is not possible to determine if Xu actually meets the limitations of the claims.
Additional searches were conducted for prior art teaching diamonds sintered with a low-melting-point metal binder, but no prior art was identified which could reasonably anticipate or render obvious the limitations of claim 7. Therefore, claim 7 is determined to be allowable over the prior art of record. Claims 8 and 10–14 depend from claim 7, and are similarly allowable.
Claims 15–18 and 20 recite a method of making an impregnated diamond cutter, comprising mixing Co-Cu-Fe-P binder with diamond and subjecting the mixture to specific temperature and pressure conditions to wet the diamond particles. As discussed above, the only reference to teach the claimed binder is Xu, and Xu does not teach the sintering conditions used, so it is not possible to determine if Xu actually meets the limitations of claim 15. There are no “standard” sintering conditions that can be relied upon because sintering conditions are optimized for specific powder-binder systems. Accordingly, claims 15–18 and 20 are allowable over the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see Remarks filed 08 December 2025, with respect to claims 7–18 and 20, have been fully considered and are persuasive. The rejections of claims 7–18 and 20 have been withdrawn.
Examiner’s Suggestions
Claims 1–6 currently stand withdrawn without traverse. The impregnated diamond cutter recited in claims 1–6 does not necessarily require all the limitations of the allowed method of claim 7, and thus claims 1–6 are not currently eligible for rejoinder. Applicants’ response to the claim objections and 112(b) rejection identified above should also include an amendment to claims 1–6 in order to enable rejoinder and allowance of these claims. If claims 1–6 remain ineligible for rejoinder when the elected claims are all in condition for allowance, the withdrawn claims will be canceled in accordance with MPEP 821.02.
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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731