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 .
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.
Election/Restriction
Claims 4-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 June 2026.
Applicant's election with traverse of Group A in the reply filed on 15 June 2026 is acknowledged. The traversal is on the ground(s) that Applicant has amended independent claim 1 to include the limitations of former claim 2 and these limitations have not been identified in prior art reference attributed to Borschert (US 2010/0221078). This is not found persuasive because in response to a PCT restriction, the claimed invention still lacks unity of invention because the technical feature of Group 1-A, as elected by Applicant is not a special technical feature because the elected grouping does not make a contribution over the prior art as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
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 1 and 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Perkins et al. (GB 1,008,029).
Claim 1:
Each of the recitations "the front cutter face of each cutter part is ground to form a ground shaped face" and “grinding of one of the two cutter parts at the blade does not reach the rotation axis, and grinding of the other one at the blade reaches the rotation axis or goes beyond the rotation axis” is a product-by-process limitation. As set forth in MPEP § 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. § 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP § 2113. The structure implied by the abovementioned steps in view of applicant’s disclosure as originally filed is a drill bit cutter comprising two cutter parts each of which having a front cutter face and a rear cutter face and having a defined geometry resulting in geometrically dissimilar shaped faces; having local height differences; and having different relationships relative to an axis of rotation.
Perkins discloses a drill bit cutter defining a rotation axis (longitudinal axis) (figs. 1-4, p1, ll. 13-22), comprising:
two cutter parts (17 and adjoining face 1, 18 and adjoining face 2) located at two sides of the rotation axis (longitudinal axis) in a transverse direction, each cutter part having a front cutter face (17 or 18), a rear cutter face (respective adjoining face 1 or 2), and a blade formed between the front cutter face (17 or 18) and the rear cutter face (respective adjoining face 1 or 2) (figs. 1-4, p1, ll. 45-65 – see also annotated reproduction of fig. 2, below),
wherein the front cutter face (17 or 18) of each cutter part is a ground shaped face (17 or 18) (figs. 1-4, p1, ll. 45-65 – see also annotated reproduction of fig. 2, below),
wherein the ground shaped faces of the two front cutter faces are different (different polygonal shapes) (figs. 1-4, p1, ll. 45-65 – see also annotated reproduction of fig. 2, below), and
wherein at least a local height difference is thereby produced in the two blades (figs. 1-4, p1, ll. 66-71 – see also annotated reproduction of fig. 3, below),
wherein one (18 and adjoining face 2) of the two cutter parts at the blade does not reach the rotation axis (longitudinal axis), and the other one (17 and adjoining face 1) at the blade reaches the rotation axis (longitudinal axis) or goes beyond the rotation axis (longitudinal axis) (figs. 1-4, p1, ll. 45-65 – see also annotated reproduction of fig. 2, below).
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Claim 3:
The recitation "grinding depths of the ground shaped faces of the two front cutter faces are the same” is a product-by-process limitation. As set forth in MPEP § 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. § 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP § 2113. The recitation "grinding depths of the ground shaped faces of the two front cutter faces are the same” is being interpreted as product-by-process language because grinding depth is defined relative to a pre-griding condition and does not, by itself, impart a distinguishable structural limitation to the claimed drill bit cutter. Patentability is based upon the resulting structure of the cutter rather than the amount of material removed during manufacture. The resulting structure is a ground shaped face.
Perkins discloses the drill bit cutter according to claim 1, including ground shaped faces (figs. 1-4, p1, ll. 45-65 – see also annotated reproduction of fig. 2, above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Massa et al. (US 5,996,714) discloses a rotatable cutting bit assembly
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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/Lee A Holly/Primary Examiner, Art Unit 3726
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