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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 19, 2025 has been entered.
Response to Amendment
This Action is in response to Applicant’s Reply of December 19, 2025.
Claims 42 and 43 were added.
Claims 16, 24-26, 28-33, and 36-39 remain withdrawn from consideration.
Applicant’s amendment to claim 36 overcomes the previously presented objection thereto.
Applicant’s amendment to claim 12 overcomes the previously presented 35 USC 112(b) rejection thereof.
Applicant’s amendments to claims 1 and 14 overcome the previously presented 35 USC 102(a)(1) rejection as previously presented as not all of the interior angles in Figure 15 are less than 180 degrees.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has argued that Pettiet fails to disclose that the outer periphery forms a convex shape in which all interior angles of the convex shape are less than 180 degrees as the outer periphery of Figure 15 in Pettiet is concave feature.
It is first noted that Applicant has referenced paragraph [0095] of the instant application as providing basis for this amendment. Paragraph [0095] is specifically directed to Figure 9 which is a non-elected species. However, the description of Figure 4, the elected embodiment, found in paragraph [0082] does indicate that the laterals sides 408/414 can be “rounded, such as convex or concave surfaces” though this is not shown in the drawings.
Regarding the shape of the outer periphery of the cutter in Figure 15 of Pettiet, it is unclear how this outer periphery can be considered to not be concave. As shown in Figure 15, the outer periphery bulges outward thus would be considered convex. This is further shown by the fact that the outer periphery of the cutter of Figure 9 is described as being concave [0095] and extends in the opposite direction from that of Figure 15 of Pettiet. A surface that extends in a direction opposite from a concave surface would be considered convex. As such, the outer periphery of cutter shown in Figure 15 of Pettiet is convex.
Likewise, the outer periphery of the cutter shown in Figure 14 of Pettiet would be considered convex and none of the interior angles are greater than 180 degrees.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the outer periphery forms a convex shape in which all interior angles of the convex shape are less than 180 degrees or the outer periphery including linear edges and being convex as recited in claims 1 and 14 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Paragraphs [0082] and [0095] indicate that the lateral sides of the cutters in Figure 4 and 9 can be convex, this feature is not shown in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-15, 17-23, 27, 34, 35, and 40-43 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.
Regarding claims 1 and 14: Claims 1 and 14 have been amended to require that “the outer periphery forms a convex shape in which all interior angles of the convex shape are less than 180 degrees”. What is meant by the outer periphery forming a convex shape is unknown.
While there is discussion of the lateral sides of the cutters shown in Figure 4 and Figure 9 possibly being convex [0082] and [0095] respectively, there is no description or depiction of a cutter that has an outer periphery that forms a convex shape or that all of the interior angles would be less than 180 degrees.
It is recognized that the recitation of the lateral sides potentially being convex is basis for the recitation of the outer periphery of the cutter forming a convex shape, however Applicant has argued that the outer periphery of Figure 15 of Pettiet has a concave outer periphery while the description of Figure 9 of the instant application indicates that the cutter of Figure 9 is considered to have a concave outer periphery [0095]. The outer peripheries of these two cutters face in opposite directions. With this discrepancy, the brief mention of the possibility of the outer surface does not sufficiently define a convex outer periphery for one of ordinary skill in the art to determine the meets and bounds of claims 1 and 14.
It is further unclear how the outer periphery can be formed by “linear edges” and have a convex shape at the same time. Paragraph [0082] of the instant application indicates that the lateral surface 408/414 can planar (shown in Figure 4 as linear) or “rounded, such as convex or concave surfaces”. It is unclear how a planar or linear surface can also be convex.
Regarding claims 2-13, 15, 17-23, 27, 34, 35, and 40-43: These claims are rejected due to their dependence on one of the above claims.
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.
Claim(s) 1, 2, 7-11, 13-15, 17, 20, 27, 42, and 43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pettiet (US 2015/0047912).
Regarding claim 1: Pettiet discloses a downhole tool 20, comprising:
a body 22 comprising a face Fig 1 and an axis of rotation Fig 1;
a plurality of blades 32 disposed on the face of the body, each of the plurality of blades defining a plurality of cutter pockets 70, wherein at least one cutter pocket of the plurality of cutter pockets comprises a non-circular cross-section Fig 13, [0164]; and
a plurality of cutters 80 – Fig 14, a portion of each cutter being disposed within a respective cutter pocket of the plurality of cutter pockets Fig 13, [0164], wherein the portion of each cutter has a cross-sectional shape that matches a cross-sectional shape of the respective pocket Fig 13, 14;
each cutter comprises a diamond table 64 having an outer periphery formed by a plurality of cutting tips 94 and a plurality of relatively linear edges 92;
adjacent cutting tips of the plurality of cutting tips are separate by a respective linear edge Fig 14 of the plurality of the linear edges that joins the adjacent cutting tips Fig 14; and
the outer periphery forms a convex shape in which all interior angles of the convex shape are less than 180 degrees – the outer surface formed by all of the cutting tips is considered to be convex as it bulges outwardly; further there are no angles shown within this formed outer surface that would be greater than 180 degrees.
Regarding claim 2: Wherein the downhole tool comprises a drill bit [0033].
Regarding claim 7: Wherein:
the blade comprises a plurality of knuckles A (see reproduction of Figure 2 from US 9,903,163, the instant document’s associated patent, below); and
each of the plurality of knuckles protrudes from a top surface of one of the plurality of blades Fig 2 and is in alignment with a respective one of the plurality of cutter pockets Fig 2 and supports a portion of a base of one of the plurality of cutters seated within the respective one of the plurality of cutter pockets Fig 2.
[AltContent: arrow][AltContent: textbox (A)]
PNG
media_image1.png
574
490
media_image1.png
Greyscale
Regarding claim 8: Wherein each of the plurality of knuckles has a shape and size that substantially corresponds to a size and shape of a portion of the one of the plurality of cutters that extends above the top surface of a respective one of the plurality of blades on which the one of the plurality of cutters is mounted Fig 2, the knuckle mimics the shape of the associated cutter.
Regarding claim 9: Wherein a top surface of each of the plurality of knuckles tapers downward toward the top surface of a respective one of the plurality of blades in a direction away from the one of the plurality of cutters Fig 2.
Regarding claim 10: Wherein each of the plurality of knuckles is axially aligned with a respective one of the plurality of cutters Fig 2.
Regarding claim 11: Wherein:
the body comprises a plurality of channels Fig 2, each channel being formed between adjacent blades of the plurality of blades Fig 2;
the body comprises a plurality of nozzles 36, Fig 2, each nozzle being disposed within one of the plurality of channels Fig 2; and
an outlet of each nozzle is aligned with one of the plurality of cutters that faces the respective channel Fig 2.
Regarding claim 13: Wherein a shape and orientation of the at least one cutter pocket and a respective one of the cutters disposed within the at least one cutter pocket are selected such that when the respective one of the cutters is inserted into the at least one cutter pocket, the respective one of the cutters is oriented with a cutting tip 94 – Fig 13 of the respective one of the cutters protruding beyond a top surface of a respective one of the plurality of blades Fig 13, [0164].
Regarding claim 14: Pettiet discloses a cutter 80 – Fig 14 for a downhole tool, the cutter comprising:
a substrate 66 comprising a brazing surface bottom of cutter – [0008], [0036], [0037], wherein at least a portion of the brazing surface comprises a first non-circular cross-section Fig 5, 13; and
a diamond table 64 further comprising:
a bottom surface joined to the substrate Fig 5; and
a cutting face 68 opposite the bottom surface, the cutting face comprising a second non-circular cross-section Fig 5, 13, wherein:
the second non-circular cross-section comprises an outer periphery formed by a plurality of cutting tips 94 and a plurality of relatively linear edges 92;
adjacent cutting tips of the plurality of cutting tips are separated by a respective linear edge Fig 14 of the plurality of edges that joins the adjacent cutting tips Fig 14; and
the outer periphery forms a convex shape in which all interior angles of the convex shape are less than 180 degrees – the outer surface formed by all of the cutting tips is considered to be convex as it bulges outwardly; further there are no angles shown within this formed outer surface that would be greater than 180 degrees
Regarding claim 15: Wherein one or both of the first non-circular cross-section and the second non-circular cross- section comprises one or more concave and/or convex regions 92 – Fig 13.
Regarding claim 17: Wherein the cutting face comprises multiple discrete cutting tips 94 – Fig 13.
Regarding claim 20: W herein one or both of the first non-circular cross-section and the second non-circular cross- section comprises two or more linear sides 92 – Fig 14 that are connected via a plurality of curved corners 94 – Fig 14.
Regarding claim 27: W herein the diamond table comprises a chamfered edge Fig 29, [0184] that extends from the cutting face to a lateral side of the diamond table.
Regarding claim 42: Wherein the plurality of arcuate cutting tips and the plurality of linear edges form an entirety of the outer periphery of the diamond table Fig 14.
Regarding claim 43: Wherein the plurality of cutting tips comprise arcuate cutting tips curved – [0161].
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pettiet in view of Bilen (US 2018/0087325).
Pettiet discloses all of the limitations of the above claim(s) except the downhole tool comprising a reamer.
Bilen discloses a drill bit similar to that of Pettiet. Bilen discloses that the term “earth-boring drill bit” includes not only a drill bit but can also include a reamer [0026].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Pettiet so that the downhole tool was a reamer, as suggested by Bilen, since the notes the equivalence of drill bits and reamers with respect to the use of cutters and cutter pockets and the selection of any of these known equivalents to be the drilling tool of Pettiet would be within the level of ordinary skill in the art, as taught by Bilen.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pettiet.
Pettiet discloses a cutter that includes two or more linear sides 92 that are connected via a plurality of curved corners 94 - Fig 615but fails to disclose that a ratio of a length of the linear sides to a length of the curved corners is at least 0.5:1.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Pettiet so that the a ratio of a length of the linear sides to a length of the curved corners was at least 0.5:1 since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraphs [0010] and [0097] of the instant specification gives no criticality to the ratio of a length of the linear sides to a length of the curved corners.
Claim(s) 34, 35, 40, and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pettiet in view of Bowden et al. (US 2014/0202774, Bowden).
Regarding claim 34: Pettiet discloses an interface B (see reproduction of Figures 6-3 below) between the substrate and diamond table. This interface would have a non-circular cross-section as it would be the same shape as the substrate and diamond table. Pettiet fails to disclose that the substrate comprises a non-planar interface that protrudes from the substrate in a direction of the diamond table.
[AltContent: textbox (B)][AltContent: arrow]
PNG
media_image2.png
240
370
media_image2.png
Greyscale
Bowden discloses a drill bit similar to that of Pettiet. The cutters 200 used thereon include a substrate 202 with a non-linear interface 212 – [0027] that protrudes from the substrate in a direction of the diamond table 204.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Pettiet to have a non-planar interface between the substrate and diamond table, as taught by Bowden, in order to have reduced the stress between substrate and diamond table [0027].
Regarding claim 35: Wherein a shape of an outer periphery of the non-planar interface matches a shape of an outer periphery of a topmost planar surface of the substrate the interface of Pettiet, as modified, would have the same shape as the substrate and diamond table.
Regarding claim 40: Pettiet, as modified, discloses all of the limitations of the above claim(s) except a distance from a peripheral edge of the non-planar interface to a peripheral edge of the diamond table is consistent within 20% of a greatest distance from the peripheral edge of the non-planar interface to the peripheral edge of the diamond table across an entire periphery of the diamond table.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Pettiet so that a distance from a peripheral edge of the non-planar interface to a peripheral edge of the diamond table was consistent within 20% of a greatest distance from the peripheral edge of the non-planar interface to the peripheral edge of the diamond table across an entire periphery of the diamond table since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraph [0010] of the instant specification gives no criticality to the distance from a peripheral edge of the non-planar interface to a peripheral edge of the diamond table being consistent within 20% of a greatest distance from the peripheral edge of the non-planar interface to the peripheral edge of the diamond table across an entire periphery of the diamond table. Paragraph [0010] merely list the claimed value with no criticality give. Therefore, the distance from a peripheral edge of the non-planar interface to a peripheral edge of the diamond table being consistent within 20% of a greatest distance from the peripheral edge of the non-planar interface to the peripheral edge of the diamond table across an entire periphery of the diamond table can be said to be obvious.
Regarding claim 41: Wherein the first non-circular cross-section and the second non-circular cross-section comprise a same shape Fig 5, 14.
Allowable Subject Matter
Claims 4-6, 12, 18, 19, 22, and 23 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
1/29/2026