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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-8 and 17-20) in the reply filed on 06/02/2026 is acknowledged.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/02/2026.
Status of Claims
Pending: claims 1-20
Amended: claims 9-10 and 14-15
Under examination: claims 1-8 and 17-20
Rejected: claims 1-8 and 17-20
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 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.
Claim 1-8 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US 20180327888 A1).
Regarding claim 1, with regard to the claimed “A method of forming a cutting element, the method comprising: providing a supporting substrate comprising a homogenized binder comprising Co, Al, C, and one or more of Ni and Re”, Cao teaches a method of forming supporting substrates for cutting elements, and related cutting elements and structures (Abstract), [0007], wherein the supporting substrate comprises a homogenized binder comprising Co, Al, C (Abstract), and optionally Ni and/or Re as additives [0052].
With regard to the claimed “depositing discrete diamond particles directly on the supporting substrate”, Cao teaches directly depositing diamond particles on the supporting substrate [0008], wherein the diamond particles are discrete diamond particles [0065].
With regard to the claimed “sintering the supporting substrate and the discrete diamond particles to a temperature of about 1350°C or greater under a pressure of about 5 GPa or greater to diffuse a portion of the homogenized binder into the discrete diamond particles and inter-bond the discrete diamond particles to form a cutting table attached to the supporting substrate.” Cao teaches sintering at 1400°C [0062] at pressures of, in some examples, greater than or equal to about 5.0 GPa [0067], and in particular, at temperatures and pressures sufficient amount of time to facilitate the inter-bonding of the discrete diamond particles [0067] to form a cutting table [0063], [0067] attached to the supporting substrate [0063].
With regard to the claimed “and converting portions of the homogenized binder into intermetallic phase precipitates comprising one or more of Ni and Re and metallic phase precipitates”, because inclusion of Ni and Re are optional [0052] and not explicitly mentioned in the preferred embodiments, it is prima facie expected that when Ni and/or Re are included in the composition, the property is prima facie expected to be present, and therefore the limitation satisfied, because the composition is otherwise the same and is subjected to the same processing conditions.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.).
Regarding claims 2-3 and 8, as discussed in the rejection of claim 1 above, Cao meets the limitations; it is prima facie expected that when Ni and Re is present, the resulting structure of claims 2-3 will form due to the substantially identical process. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.). With regard to the range in claim 8, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.).
Regarding claims 4-7, although Cao does not explicitly teach the limitations, it is prima facie expected that the claimed structure would form due to the substantially identical composition and process of making in Cao. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.). With regard to the range in claim 8, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.).
Regarding claim 17, with regard to the claimed “A method of forming a cutting element, the method comprising: forming a supporting substrate comprising a carbide material dispersed within a homogenized binder comprising Co, Al, C, and one or more of Ni and Re;” Cao teaches a method of forming supporting substrates for cutting elements, and related cutting elements and structures (Abstract), [0007], wherein the supporting substrate comprises a homogenized binder comprising Co, Al, C (Abstract), and optionally Ni and/or Re as additives [0052], with discrete WC (tungsten carbide) dispersed within the homogenized binder (Abstract).
With regard to the claimed “depositing discrete diamond particles on the supporting substrate;” Cao teaches directly depositing diamond particles on the supporting substrate [0008], wherein the diamond particles are discrete diamond particles [0065].
With regard to the claimed “sintering the supporting substrate and the discrete diamond particles to a temperature greater than a solidus temperature of the homogenized binder under a pressure of about 5 GPa or greater to diffuse a portion of the homogenized binder into the discrete diamond particles and inter-bond the discrete diamond particles to form a polycrystalline diamond compact (PDC) attached to the supporting substrate; and simultaneously converting portions of the homogenized binder into intermetallic phase precipitates and metallic phase precipitates.” Cao teaches sintering at 1400°C [0062] or a temperature greater than the solidus temperature of the homogenized binder [0067] at pressures of, in some examples, greater than or equal to about 5.0 GPa [0067], and in particular, at temperatures and pressures sufficient amount of time to facilitate the inter-bonding of the discrete diamond particles [0067] to form a cutting table [0063], [0067] attached to the supporting substrate [0063]. Cao further discusses the formation of PDC (polycrystalline diamond compact) [0052], [0056], [0063], and formation of intermetallic [0068] particularly after HTHP processing [0068]. Regarding the remainder of the properties, the property is prima facie expected to be present, and therefore the limitation satisfied, because the composition is otherwise the same and is subjected to the same processing conditions.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01 I.). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.).
Regarding claims 18-20, although Cao does not explicitly teach the limitations, it is prima facie expected that the claimed structure would form due to the substantially identical composition and process of making in Cao. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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