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 Arguments
Applicant's arguments filed on 03/02/2026 with respect to claim 1 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that the characterization of Young is incorrect. Specifically applicant states that the inserts of Young extend outward from the body, not recessed and Young does not disclose, teach, or suggest that the inserts (134, 146) comprise an entire outer edge recessed within a recess in the tool body.
Examiner respectfully disagree.
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As shown in the annotated fig. 3 above, Young clearly shows insert 134 and some of the inserts 146 completely inserted into the recess of the body with their outer edges completely and entirely recessed within the recess of the body. Note that not all of inserts 146 are inserted as shown above. The claim only requires “at least one” of the plugs to be recessed such that an entire edge is recessed within the recess of the tool body. The claim does not require “all of the plugs” to be recessed in this fashion. Applicant’s drawings in fig. 7A also shows that not all of the plugs are recessed in this manner. Some extend outward while some are recessed. Therefore, examiner’s interpretation is consistent with the claimed invention. Therefore, Young teach “at least one” lateral plug/insert having an outer edge recessed within the recess in the tool body as shown in the annotated fig. above.
Regarding claim 1, applicant cites Young, Col. 7 line 60 - Col. 8 line 4 which states that "Inserts 146 thus cooperate with each other to minimize erosion, abrasion and wear from fluid flow adjacent to leading edge 122 and surfaces 126 and 148 of flow channel 144”.
Applicant then states that “if an entire outer edge were recessed within a recess in the tool body. Applicant submits herewith a declaration from Christopher Beuershausen as evidence that the inserts (134, 146) of Young would not be recessed in order to fulfil the stated purpose (e.g., minimize erosion, abrasion, and wear) of Young. Recessing the inserts would promote erosion or wear of the tool body to the portions being adjacent to the recessed inserts. FIG. 3 of Young does not show inserts with an entire outer edge recessed within a recess in the tool body as shown above”.
Examiner respectfully disagree because applicant’s argument is based on the idea that if “all” of the inserts are recessed within the recess of the body, it will not minimize erosion, abrasion, and wear. While this is true, Young does not teach that “all” of the inserts are recessed within the tool body. As shown in the annotated fig. 3 above, several inserts 146 are not recessed. Some are recessed and some are not. The ones that are not recessed with solve the problem of erosion, abrasion, and wear stated in col. 7 and 8. The claim only requires “at least one” to be recessed and not all of them.
Applicant further states that modifying Beuershausen with Young will render the tool of Beuershausen inoperable for its intended purpose because “an insert that includes an entire outer edge of the insert recessed within a recess of the tool body would not cut the formation. Modifying the inserts of the gage pads of Beuershausen to include entire outer edge of the insert recessed within the recess in the tool body would remove all aggressiveness of the gage pads rendering Beuershausen inoperable for its intended purpose which is improper. See M.P.E.P. § 2143.01(VI)”.
Examiner respectfully disagree. As stated above, applicant’s interpretation is based on the fact that “ALL” of the lateral plugs are recessed within the recess of the tool body. However, the claim only requires “at least one” to be recessed. As shown in applicant’s own figures (specifically fig. 7A), not all of the plugs are recessed. Some are “flush” and some appear to extend outwardly. Therefore, examiner has modified Beuershausen with Young to teach “at least one” of the lateral plugs/insert recessed within the recess in the tool body.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 8, 11-13, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Beuershausen (U.S. 6,349,780B1), in view of Young et al. (U.S. 5,755,297).
Regarding claim 1, Beuershausen discloses an earth-boring tool (10B, see fig. 3), comprising:
a tool body (16; refer to col. 8, lines 31-32) comprising at least one blade (34; col. 8, lines 30-35) and a center longitudinal axis (26, fig. 3 and refer to col. 8, lines 10-15) extending through the tool body (16; as shown), wherein the tool body (16) comprises a first material exhibiting a first volumetric density (examiner is using the embodiment where the body is made from “steel” or “steel alloy”; col. 8, lines 56-57; examiner notes that the steel alloy will exhibit a first volumetric density); and
at least one inertia modifying member (the inertia modifying member comprises “tungsten carbide inserts 66A”. Examiner notes that while the prior art is silent to the word “inertia modifying member” or “inertia” in general, the claim language below implies that the different materials/volumetric densities of the body and the plug results in the “inertia modification”), each inertia modifying member disposed at least partially within an inertia modification zone (the inertia modification zone is the area/region on pads “30A, 30B” comprising inserts 66A) of the tool body (16), the at least one inertia modifying member comprising at least one lateral plug (inserts 66A; see figs, 6A, 6B, 6C) completely inserted into a recess in the tool body (see the embodiment of fig, 6C; refer to col. 5, lines 29-35 and col. 21, line 40-45; “flush mounting”) along a direction, the direction oriented at an angle from about 10 degrees to about 90 degrees relative to the center longitudinal axis (col. 14, lines 5-8: “perpendicular to the surface of the gage pad”), the at least one lateral plug (66A) comprising a second material (col. 13, lines 65-66: “tungsten carbide”) exhibiting a second volumetric density different than the first volumetric density (the volumetric density of steel alloy (used for the bit body, ibid) is different from that of tungsten carbide).
However, Beuershausen fails to teach that an entire outer edge of the at least one lateral plug is recessed within the recess in the tool body. In other words, Beuershausen fails to teach an embodiment in which the an entire outer edge of the at least one lateral plug is recessed within the recess.
Young et al. teach a drill bit (20, fig. 1 and col. 4, line 67) comprising a tool body (32, fig. 1). A plurality of lateral plugs (134, 146, fig. 3 and refer to col. 6, lines 56-65), wherein at least one or more of the plurality of lateral plugs (those located along surface 128 and 148) comprises an entire outer edge recessed within a recess in the tool body (as shown in fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified at least one lateral plug of Beuershausen to have an entire outer edge of the at least one lateral plug recessed within the recess in the tool body, as taught by Young et al. because applicant has not disclosed that having the entire outer edge of the at least one lateral plug recessed within the recess in the tool body provides an advantage, is used for a particular purpose, or solves a state problem. One of ordinary skill in the art, furthermore, would have expected applicant’s invention to perform equally well with the at least one lateral plug extending slightly out of, flushed, or recessed within the recess of the tool body because this will not affect the rotational inertia.
Therefore, it would have been an obvious matter of design choice to modify Beuershausen to have an entire outer edge of the at least one lateral plug recessed within the recess in the tool body, as taught by Young et al.
Regarding claim 4, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein the at least one lateral plug (66A) comprises more than one lateral plug (see figs. 6A, 6B, 6C), each lateral plug at least substantially longitudinally aligned (as shown in fig. 6C) with a respective blade (34) of the least one blade of the tool body (see figs. 3 and 6C).
Regarding claim 8, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein the inertia modification zone (the inertia modification zone is the area/region on pads “30A, 30B” comprising inserts 66A) exhibits a hollow cylindrical shape defined by a first diameter of the earth-boring tool and a second diameter of the earth-boring tool (see annotated fig. below).
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Regarding claim 11, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein the first volumetric density is within a range of from about 1 g/cm3 to about 25 g/cm3 (volumetric density of steel is about 7.8g/cm3) and the second volumetric density is within a range of from about 4 g/cm3 to about 18 g/cm3 (volumetric density of tungsten carbide is about 14.70g/cm3).
Regarding claim 12, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein the second material comprises one or more of steel, aluminum, diamond, lead, carbon, graphite, tungsten, titanium, and alloys thereof (col. 13, lines 65-66: “tungsten carbide”).
Regarding claim 13, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein an absolute value of a difference between the first volumetric density and the second volumetric density is within a range of from about 1 g/cm3 to about 24 g/cm3 (the difference between 14.70g/cm3 and 7.8g/cm3 is 6.9g/cm3 which is between 1 g/cm3 to about 24 g/cm3).
Regarding claim 21, the combination of Beuershausen and Young et al. teach all the features of this claim as applied to claim 1 above; Beuershausen further discloses wherein the at least one lateral plug (66A) is inserted into the tool body at a substantially ninety (90) degree angle relative to the center longitudinal axis (col. 14, lines 5-8: “perpendicular to the surface of the gage pad”).
Allowable Subject Matter
Claims 14-17 and 22 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 14, Beuershausen discloses a method of modifying rotational inertia of an earth-boring tool (10B, see fig. 3), the earth-boring tool comprising a tool body (16; refer to col. 8, lines 31-32) comprising a first material exhibiting a first volumetric density (examiner is using the embodiment where the body is made from “steel alloy”; col. 8, lines 56-57; examiner notes that the steel alloy will exhibit a first volumetric density), the method comprising:
providing at least one inertia modifying member (the inertia modifying member comprises “tungsten carbide inserts 66A”. Examiner notes that while the prior art is silent to the word “inertia modifying member” or “inertia” in general, the claim language below implies that the different materials/volumetric densities of the body and the plug results in the “inertia modification”) within an inertia modification zone (the inertia modification zone is the area/region on pads “30A, 30B” comprising inserts 66A) defined by a first diameter of the earth-boring tool and a second diameter of the earth-boring tool (see annotated fig. below), the at least one inertia modifying member comprising a second material (col. 13, lines 65-66: “tungsten carbide”) having a second volumetric density which is different than the first volumetric density (the volumetric density of steel alloy (used for the bit body, ibid) is different from that of tungsten carbide), wherein the at least one inertia modifying member comprises one or more lateral plugs (inserts 66A; see figs, 6A, 6B, 6C) completely inserted into a recess in the tool body (see the embodiment of fig, 6C; refer to col. 5, lines 29-35 and col. 21, line 40-45; “flush mounting”) along a direction, the direction oriented at an angle from about 10 degrees to about 90 degrees relative to the center longitudinal axis (col. 14, lines 5-8: “perpendicular to the surface of the gage pad”).
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Young et al. teach a drill bit (20, fig. 1 and col. 4, line 67) comprising a tool body (32, fig. 1). A plurality of lateral plugs (134, 146, fig. 3 and refer to col. 6, lines 56-65), wherein at least one or more of the plurality of lateral plugs (those located along surface 128 and 148) comprises an entire outer edge recessed within a recess in the tool body (as shown in fig. 3).
However, the combination of Beuershausen and Young fail to teach modeling the earth-boring tool to predict an occurrence of undesirable vibrations while drilling a particular subterranean formation; based on the prediction of undesirable vibrations, modifying the rotational inertia of the earth- boring tool to reduce or eliminate the undesirable vibrations. Beuershausen does not disclose a modeling step to predict the occurrence of vibrations and modify the rotational inertia based on the predictions.
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.”
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 YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
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, Nicole Coy can be reached on (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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/YANICK A AKARAGWE/Primary Examiner, Art Unit 3672
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