Detailed Action
Status of Claims
In response to the communication filed 08/22/2025. Claims 49-63, 65-66, 68-69, and 71 are currently pending and addressed below.
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
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.
Claims 49-52, 55, 57-58 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ford (US Pat No 4694916)
In regards to claim 49 Ford discloses: A method comprising:
advancing a drill bit (Ford Fig 1; 10 pointing to the entire body) into a formation to form core sample pieces (Ford col 1 line 7-11 continuous sampling core bit), the drill bit having a central axis (Ford Fig 2; 34) and comprising:
a crown (Ford Fig 2; 18) having a cutting face (Ford Fig 1; 26) and defining an inner operative circumference (Ford Fig 2), wherein the crown is configured to form a core sample (Ford col 1 line 7-11 continuous sampling core bit);
a core receiving space (Ford Fig 2; 58) that is configured to receive the core sample as the drill bit is advanced into the formation (Ford Col 6 line 13-16 core progression into the flow passage);
and a base surface (Ford Fig 2; 38) spaced from the cutting face along the central axis of the drill bit,
the base surface having a fixed axial position relative to the cutting face (Ford Fig 2; base surface retained within the drill bit axially fixed via the annual bearing retainer 56 in conjunction with connected drill pipe via threading 20 col 6 line 3-12 resistance to upward directed thrust) and a fixed rotational position relative to the cutting face (Ford Col 6 line 35-39 base surface rotates along with the drill bit at a fixed rotational position relative to the cutting face),
wherein the base surface is configured to break apart portions of the core sample to form core sample pieces (Ford col 6 line 53-55 fracturing the core sample via the core breaker 38);
wherein the drill bit comprises a body (Ford Fig 2; drill bit comprises a body shown in Fig 2 made up of subcomponents), wherein the base surface and the cutting face are each formed by respective portions of the body (Ford Fig 2; base surface 38 is formed by its respective body portion and the cutting face 18 is formed by its respective body portion);
and wherein the core sample pieces are associated with respective depths at which the core sample pieces were separated from the formation (Ford col 3 line 3-11 core samples retrieved can be analyzed to determine formation characteristics col 6 57-62 fractured core pieces return to the surface).
In regards to claim 50 Ford discloses: The method of claim 49, wherein the respective depths associated with the core sample pieces account for a delay between when the core sample pieces were separated from the formation and when the core sample pieces are pumped from the borehole (Ford col 3 line 3-11 core samples retrieved can be analyzed to determine formation characteristics col 6 57-62 fractured core pieces return to the surface for analysis after the time taken to return to the surface and separated from the drilling fluid via the shakers).
In regards to claim 51 Ford discloses: The method of claim 49, wherein the drill bit further comprises: a shank (Ford Fig 2; 14) defining an inner bore (Ford Fig 2; Inner bore defined via 14), at least one conduit (Ford Fig 2; 28) that is configured to communicate the core sample pieces from the crown to the inner bore of the shank (Ford Col 6 line 13-16 core progression into the flow passage), wherein the at least one conduit is in fluid communication with the inner operative circumference defined by the crown and the inner bore of the shank (Ford col 3 line 3-11 core samples retrieved via fluid communication with the surface and drilling fluid returning from being pumped down col 6 57-62 fractured core pieces return to the surface for analysis after the time taken to return to the surface and separated from the drilling fluid via the shakers).
In regards to claim 52 Ford discloses: The method of claim 51, further comprising; flowing cutting fluid toward the cutting face (Ford Col 5; line 22-25 flow of drilling fluid towards the end of the drill bit); and flowing the cutting fluid through the at least one conduit to flush the core sample pieces from the crown to the inner bore of the shank (Ford Col 6 line 29-34 fluid flow enabling transport of the core samples towards the inner bore of the shank for transport to the surface).
In regards to claim 55 Ford discloses: The method of claim 49, wherein the drill bit further defines: an inner bore (Ford Fig 2; space of 28 and 28 and back up towards the surface); and a conduit that extends between the inner bore and the base surface (Ford Col 5; line 22-25 flow of drilling fluid towards the end of the drill bit Col 6 line 29-34 fluid flow enabling transport of the core samples towards the inner bore of the shank for transport to the surface).
In regards to claim 57 Ford discloses: The assembly of claim 49, wherein the base surface comprises a sloped surface (Ford Fig 2; 64) that is not coplanar with a plane that is perpendicular to the central axis.
In regards to claim 58 Ford discloses: The assembly of claim 49, wherein the base surface defines an apex that is radially spaced from the central axis (Ford Fig 2; 64 defines a radial maxima from the central axis).
Allowable Subject Matter
Claims 59-63, 65-66, 68-69 are allowable over the prior art.
Claims 53-54, 56 & 71 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 71 is indicated as allowable as the best prior art for the claims as written Ford US Pat No 4694916, teaches all the prior limitations of independent claim 49 but Ford does not teach “the body of the drill bit has a unitary, monolithic construction”, in conjunction with all the previous limitations required in claim 49 and to include the limitations of claim 71, a unitary, monolithic construction, would rely on hindsight reasoning to modify to meet the limitations of claim 71 as written. Therefore, the limitations of claim 71 if included with the limitations of claim 49 as written overcome would be considered allowable subject matter.
Response to Arguments
Applicant’s amendments and arguments, filed 08/22/2025, with respect to claims 49-58 under 35 USC 102(a)(1) in view of Willis (US Pat No 4168755) have been fully considered and are persuasive. The rejection of claims 49-58 in view of Willis has been withdrawn.
However, Applicant's amendments and arguments filed 08/22/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “Ford fails to teach or suggest a base surface configured to break core pieces having a fixed rotational position relative to a cutting face”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Ford teaches the core breaker may rotate along with the drill bit (Ford col 6 line 36-39) and maintaining a fixed rotational position relative to the cutting face. While Ford specifically states the core breaker “when engaged with the core it may remain in a substantially static rotational position while the drill bit continues to rotate” (Ford Col 6 line 36-39) the claim language does not explicitly state maintaining the fixed axial/rotational position throughout the entire coring operation (i.e. the base surface maintaining axial/rotationally fixed position during contact with a core sample). The preamble states only that the drill bit needs to be advancing into a formation to form core sample pieces which under broadest reasonable interpretation does not need to be during active core drilling and can include moving the drill bit from the drilling floor into the formation and active drilling operations into the formation face. Examiners position is that the base surface would be axial/rotationally fixed to the cutting face during a couple points during operations:
while running the tool downhole, i.e. advancing the drill bit into the formation
during active coring operations but before the base surface engages a core sample
Both interpretations, in the examiners opinion, are supported by Ford col 6 line 36-39 and meet the limitations of claim 49. Claim language specifically claiming the base surface maintaining axial/rotationally fixed position during contact with a core sample would overcome the current prior art rejection of Ford (US Pat No 4694916).
Furthermore, applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 49. When reading the preamble in the context of the entire claim, the recitation “advancing a drill bit into a formation to form core sample pieces” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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 Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672