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 Acknowledged
Applicant's election with traverse of Group I, claims 1-7, in the reply filed on 06/01/2026 is acknowledged. The traversal is on the grounds that the claims are directed to a single inventive concept presenting no search burden because a search for the subject matter in one group would necessarily encompass a search for the subject matter of the remaining group due.
This is not found persuasive because search burden is applicable to applications filed under 35 U.S.C. § 111(a); it does not apply to applications filed under 35 U.S.C. § 371. See MPEP §§ 801, 808.02. Because the instant application is filed under the provision(s) of 35 U.S.C. § 371, the search burden requirement of applications filed under 35 U.S.C. § 111(a) would not apply.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-13 are pending. Of the pending claims, claims 1-7 are presented for examination on the merits. Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 01/11/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
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.
Claims 4 and 5 are 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.
Regarding claims 4 and 5, there is insufficient antecedent basis for the Co (cobalt) limitations in the claims. Because Co is the second listed component in each ratio and the ratios are non-zero, Co must be present (i.e., non-zero) in the insert; however, there is no requirement in parent claim 1 that the insert must contain Co, and claim 4 and 5 do not have a prior mention of Co being in the insert.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0030886 (A1) to Martensson et al. (“Martensson”) in view of US 2005/0126336 (A1) to Jansson et al. (“Jansson”).
Regarding claims 1 and 7, Martensson discloses a rock drill insert made of cemented carbide that has been sintered (sintered cemented carbide insert). Para. [0008], [0009]. The insert can be used to in a cutting device and in mines (for mining or cutting applications). Para. [0039], [0127], [0132].
The chosen WC mean grain size is above 1 µm and less than 18 µm. Para. [0013]. Examples of WC grain sizes of sintered examples are 2.4 µm and 3.3 µm for Example 2 and Example 3, respectively (Table 2; para. [0067]-[0072]), each of which falls within the claimed range.
The binder phase is 4-18% by mass. Para. [0008].
The balance is WC and unavoidable impurities. Para. [0008]; claim 1.
The difference between the hardness at 0.3 mm depth at any point of the surface of the rock drill insert and the minimum hardness of the bulk of the rock drill insert is at least 40 HV3. Para. [0008], [0025]. Hardness is measured by ISO EN6507. Para. [0081].
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Martensson does not disclose the presence of gamma phase and cubic gamma phase precursors.
Jansson discloses adding cubic carbide raw material (gamma phase precursor) to produce gamma phase in sintered cemented carbides comprising WC. Para. [0002], [0008], [0015]. The amount of gamma phase is 3 wt.% to 25 wt.%. Para. [0017]. In Example 1, 0.04 kg of (Ti,Ta,W)C powder (gamma phase precursor) is added to the insert mixture (about 2% by mass) (para. [0027]), which falls within the claimed range. Adding cubic carbides is a way to increase hot hardness and chemical wear resistance. Para. [0008].
It would have been obvious to one of ordinary skill in the art to have added cubic carbides to the inserts of Martensson, as taught by Jansson, because they would enhance the hardness and wear resistance, which are concerns encountered in rock drilling (Martensson at para. [0011]).
Regarding claim 2, Martensson discloses that the binder phase includes Co (cobalt). Para. [0008]. In Example 2 and Example 3, Co is the only material for the binder (at least 80 wt.%). Para. [0060], [0064].
Regarding claim 3, Jansson discloses that NbC and TaC are suitable cubic carbides for forming gamma phase. Para. [0008].
Regarding claim 4, Martensson discloses a Cr/Co mass ratio of 0.04-0.19. Para. [0012], [0033].
Regarding claim 5, Martensson discloses a Cr/Co mass ratio of 0.04-0.19 and a Cr/M7C3 ratio of 0.05-0.5. Para. [0012], [0022], [0033]. It therefore follows that the ratio of M7C3 to Co (weight to vol) must exceed zero, which overlaps the claimed range.
Regarding claim 6, Martensson is silent regarding the relative K1C fracture toughness as measured from the surface at 0.5 mm below compared to the bulk. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, the material components of the cemented carbide (WC, binder, gamma phase precursor) and structure (WC grain size and hardness distribution) of Martensson in view of Jansson satisfy the claimed composition and claimed structure. Therefore, the claimed fracture toughness difference as measured 0.5 mm from the surface relative to the bulk would also be expected to exist in the cemented carbides of Martensson in view of Jansson.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Martensson in view of Jansson, as applied to claim 1 above, and further in view of WO 2020/002664 (A1) to Blomqvist et al. (“Blomqvist”).
Regarding claim 5, Martensson does not define a specific ratio range of M7C3 to Co.
Blomqvist is drawn to a cemented carbide that has been sintered and is part of a cutting tool. Abstract; p. 1 – lines 3-5; p. 6 – lines 17-20; p. 18 – lines 9 and 10. M7C3 carbides are present in the cemented carbide. Claim 16. The vol/vol ratio of M7C3 / Co ranges from 0.01 to 0.5. Page 5 – lines 19-23.
Martensson discloses that M7C3 is present in the cemented carbide and negative effects from its presence are not seen. Para. [0022]. Therefore, it is present in some non-zero amount and the ratio of M7C3 to Co is greater than zero due to the presence of Co as binder. Furthermore, it would have been obvious to one of ordinary skill in the art to have looked to a similar cemented carbide, such as Blomqvist’s cemented carbide, to find an optimum ratio of M7C3 to Co, given Blomqvist’s success in the fabrication of a cemented carbide highly resistant to chipping (p. 1 – lines 21-25).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Blomqvist in view of Martenssson.
Regarding claim 1, Blomqvist discloses a cemented carbide that has been sintered and is part of a cutting tool (sintered cemented carbide insert for mining or cutting applications). Abstract; p. 1 – lines 3-5; p. 6 – lines 17-20; p. 18 – lines 9 and 10.
The binder phase ranges from 3 wt.% to 20 wt.% (p. 5 – lines 1-3; p. 6 – lines 14-16), which encompasses the claimed range.
Gamma phase formers may be added, with common additives including carbides of Ti, Ta, Nb, Zr, and V (cubic gamma phase precursors). Page 5 – lines 9-11. Examples are TaC and NbC, the total of which are 1.53 wt% and 0.89 wt.%, respectively, for Substrates 1A and 1C, respectively (Table 1), which fall within the claimed range.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Blomqvist discloses that the cemented carbide contains at least 50 wt.% WC (balance WC) (p. 5 – lines 1-3; p. 12 – lines 6-8), but is silent regarding the grain size of the WC.
Martensson is directed to a rock drill insert based on cemented carbide containing WC in a binder phase. Abstract. The chosen WC mean grain size is above 1 µm and less than 18 µm. Para. [0013]. This range is selected to facilitate the sinterability of the cemented carbide and also the provide a desired level of thermal conductivity and non-brittleness. Para. [0013]. Examples of WC grain sizes of sintered examples are 2.4 µm and 3.3 µm for Example 2 and Example 3, respectively (Table 2; para. [0067]-[0072]), each of which falls within the claimed range.
It would have been obvious to one of ordinary skill in the art to have limited the mean grain size of the WC grains in Blomqvist to the size taught by Martensson because it gives the manufacturer the ability to customize properties (e.g., thermal conductivity, lack of brittleness, ease of sinterability).
Blomqvist discloses that the Vickers hardness as measured on the rake face is at least 25 HV100 higher than the Vickers hardness as measured in the bulk (p. 9 – lines 11-16). Hardness is measured according to ISO EN6507. Blomqvist does not disclose the hardness difference in terms of HV3 and a location 0.3 mm from the surface. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, the material components of the cemented carbide (WC, binder, gamma phase precursor) and structure (hardness distribution) of Blomqvist satisfy the claimed composition and claimed structure. Therefore, the claimed hardness difference as measured under HV3 standard 0.3 mm from the surface relative to the bulk would also be expected to exist in Blomqvist’s cemented carbides.
Regarding claim 2, Blomqvist discloses that the metallic binder phase is an alloy comprising at least 80 wt.% of one or more metallic elements selected from Co, Ni and Fe. Page 15 – lines 9 and 10.
Regarding claim 3, Blomqvist discloses that gamma phase formers are added, with common additives including carbides of Ta and Nb (TaC and/or NbC). Page 5 – lines 9-11; Table 1 – Substrates 1A and 1C.
Regarding claim 4, Blomqvist discloses that the weight ratio of Cr/Co is between 0.03 to 0.35 for a Co binder (p. 5 – lines 12 and 13; p. 17 – lines 13-15), which encompasses the claimed range.
Regarding claim 5, Blomqvist discloses that the cemented carbide comprises M7C3 carbides in a vol/vol ratio of M7C3 / Co ranging from 0.01 to 0.5. Page 5 – lines 19-23.
Regarding claim 6, Blomqvist is silent regarding the relative K1C fracture toughness as measured from the surface at 0.5 mm below compared to the bulk. However, such a property is expected in Blomqvist’s cemented carbides given that the material components of the cemented carbide (WC, binder, gamma phase precursor) and structure (hardness distribution) of Blomqvist in view of Martensson satisfy the claimed composition and claimed structure. Therefore, the claimed fracture toughness difference as measured 0.5 mm from the surface relative to the bulk would also be expected to exist in the cemented carbides of Blomqvist in view of Martensson.
Regarding claim 7, Blomqvist discloses that the cemented carbide is used as a cutting tool (abstract; p. 4 – lines 19-20), but does not specifically disclose using it in a rock drill bit body.
Martensson discloses utility of the WC-Co cemented carbides in rock drill inserts. Para. [0001]-[0009]. The cemented carbides of Martensson are higher in hardness at the surface compared to the bulk, providing a balance between wear and ductility. Para. [0006].
It would have been obvious to one of ordinary skill in the art to have utilized the cemented carbide cutter of Blomqvist in a rock drill bit body because its higher surface hardness (Table 5) makes it a good candidate for cutting (Blomqvist at p. 9 – lines 11-24).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
June 27, 2026
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