DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
EXAMINER’S COMMENT
A telephone call was made to attorney Marcus Simon (Reg. no. 50,258) on 7/27/2026 to request a restriction between claims 1-11 and 12-22; a voice mail was left for the attorney. However, no response was received.
Upon further evaluation of the claims, it was concluded claims 1-22 can be examined together.
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 6 and 17 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.
Said claims recite, in part, “wherein at least one groove is wide enough to accommodate an electrical-discharge machining wire”; however, the language of the claim is found indefinite because it is not clear how wide is considered wide enough for the groove. Not only the claimed are product claim, and electrical-discharge machining wire implies a process limitation in product claims, but also EDM wires do not have the exact same diameter. Thus, the claimed width of the groove is unclear.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-22 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent No. 6,196,340 to Jensen et al. (hereinafter Jensen).
With respect to claim 1, Jensen teaches a cutting element insert, comprising a polycrystalline diamond layer boned to a cemented carbide substrate (abstract, Figures, col. 5, lines 45-50; col. 6, lines 52-67; col. 7, lines 1-21). Moreover, Jensen teaches that after the formation of the polycrystalline diamond insert/layer, the metal binder may be removed from the pores within the diamond grains (col. 7, lines 7-11); thus, the claimed limitation of “at least a volume of the polycrystalline diamond table is leached” has been met. Jensen, additionally, teaches an embodiment in which the polycrystalline diamond layer, which serves as a cutting surface and is in the upper surface of the insert, has a portion of it in a conical surface (Figures 6a and 6b, Figures 8a and 8b, col. 8, line to col. 9, line 12). It is noted because the reference teaches the removal of the metal binder from the polycrystalline layer and because the polycrystalline layer has a non-planar upper surface having a conical shape, the recitation of “non-planar surface having diamond material removed therefrom” is met. The reference discloses the desired surface shape of the diamond layer is achieved by methods such as lapping, grinding, EDM, EDG, or other similar methods (col. 7, lines 18-21). Thus, some diamond material is removed from the top surface of the disclosed polycrystalline diamond layer to form the claimed non-planar surface, which in this embodiment, it is conical. In another embodiment, the reference discloses the formation of grooves in the upper/top surface of the polycrystalline diamond layer (Figures 8a and 8b; col. 8, lines 51-65).
The claim under examination is a product claim; therefore, process limitations do not add patentable weight to the examination of the product claim. The claimed limitation of “by laser energy applied to a portion of the polycrystalline diamond table” is a process limitation in the product claim. According to MPEP 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The product as disclosed by Jensen has the same upper non-planar surface feature as claimed in the product claim under examination; thus, the claim is unpatentable even though the prior art product was made by a different process. The claimed process limitation does not result in any structural distinction from the disclosed structure, and the product as claimed cannot be only defined in the claimed process step(s).
Furthermore, although Jensen discloses the removal of some of the materials from the upper surface, i.e. from the polycrystalline diamond layer, the limitation of “having diamond material removed thereof” is also a process limitation in a product claim. Thus, although the removal of some material has been disclosed by Jensen, such limitation does not add patentable weight to the examination of the product claim.
Because of the multiple process limitations in the product claim, the claim is a product-by-process claim.
With respect to claim 2, as that taught by Jensen, the metal binder is removed from “at least a portion” of the polycrystalline diamond layer which takes the upper/top surface of each cutting element insert, and which is the non-planar cutting surface; thus, the reference reads on the claimed “at least the volume of the polycrystalline diamond compact that is leached includes at least the volume of the non-planar surface of the polycrystalline diamond compact”.
The claimed limitation of the volume of the non-planar surface of the polycrystalline diamond compact being “leached after the laser energy is applied to the portion of the polycrystalline diamond compact” is a process limitation/step in a product claim. Thus, the claim is a product-by-process claim. Said recitation does not add patentable weight to the examination of the product claim because according to MPEP 2113 “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regardless of whether the non-planar surface is leached after, or even prior to any application of laser energy, does not add any patentable weight to the examination of the product claim because the product of the reference is very similar to the claimed product (i.e. a cutting element comprising a polycrystalline diamond layer on a substrate, wherein the polycrystalline diamond layer which is the upper surface of the cutting element contains a non-planar surface) as claimed even though the product of the prior art or reference may have been made by a different process.
There is no structural distinction between the claimed “product” and the disclosed product of Jensen.
With respect to claim 3, as that taught by Jensen, the metal binder is removed from at least a portion of the polycrystalline diamond layer which takes the upper/top surface of each insert, and which is the non-planar cutting surface; thus, the reference reads on the claimed “at least the volume of the polycrystalline diamond table compact that is leached includes at least the volume of the polycrystalline diamond table being leached”.
The claimed limitation of the volume of the non-planar surface of the polycrystalline diamond compact “being leached before the laser energy is applied to the portion of the polycrystalline diamond compact” is a process limitation/step in a product claim. Thus, the claim is a product-by-process. Said recitation does not add patentable weight to the examination of the product claim because according to MPEP 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regardless of whether the non-planar surface is leached before, or even after any application of laser energy, does not add any patentable weight to the examination of the product claim because the product of the prior art is the same product (i.e. a cutting element inset comprising a cutting surface which is the upper surface and contains a polycrystalline diamond layer having a non-planar upper surface containing either grooves or a conical surface, which also satisfies a groove) as claimed in the present claims even though the product of the prior art may have been made by a different process.
With respect to claim 4, as that taught by Jensen, the embodiment of Figure 6a and 6b discloses conical surface for the upper surface the polycrystalline diamond layer which is taken to read on a groove shape which is offset inwardly and spaced from “at least” one lateral surface of the polycrystalline diamond layer by a portion of the polycrystalline diamond layer (Figure 6b; col. 8, lines 21-31).
Moreover, the embodiments of Figures 8 and 9 also disclose grooves on the upper surface of the polycrystalline diamond layer, which serves as the cutting surface, and wherein as evidenced by the Figures, all grooves are offset inwardly and spaced from at least one lateral surface of the polycrystalline diamond table/layer (Figures 8 and 9; col. 8, line 51 to col. 9, line 11).
The claimed limitation of “the at least one groove formed by the laser energy applied to a portion of the polycrystalline diamond table” is a process limitation/step in a product claim, and as such, it does not add patentable weight to the examination the product claim. Thus, the claim is a product-by-process claim. According to MPEP 2113 “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 5, Jensen teaches the embodiment of Figure 11a and 11b wherein there is a ridge formed on the polycrystalline diamond layer (Figures 11a and 11b). At the corner of the ridge and the upper surface of the polycrystalline diamond layer, the two form a groove (see arrow below), which from the top view, is of annular shape.
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With respect to claim 6, it is noted that the claimed limitation does not further limit the product under examination; the limitation is an implied process limitation, implying the use of a electrical-discharge machining wire which is placed in the groove. However, the claim under examination is a product claim.
Nevertheless, the groove shown by Figures 11a and 11b, which is formed by the ridge and the upper surface of the polycrystalline diamond layer, has an abtuse angle; thus, it is wide enough to accommodate an electrical discharge machining wire.
With respect to claim 7, it is noted that “at least a portion of the substrate has been grinded, lapped, electrical-discharge machined, or combination thereof to remove the portion of the substrate” is a process limitation in a product claim. Process limitations in a product claim do not add patentable weight to the examination of the product claim.
MPEP 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Because the claim recites only a process limitation, but does not further limit the claimed polycrystalline diamond compact, the claim is considered rejected with claim 1.
Assuming the above is not found persuasive, it is noted that no specific shape has been claimed in the present claim for the substrate although the reference teaches a cylindrical shape. Additionally, the reference teaches embodiments in which the interface region between the substrate and the polycrystalline diamond layer, can be flat or a more complex geometry, which would not be flat (col. 4, lines 48-51; col. 8, lines 15-20 and 31-35). An interface which is not flat but has complex geometry means the substrate surface, where it attaches to the polycrystalline diamond layer, is not flat either. Regardless of how the complex geometry of the interface of the substrate is formed, at the interface, it would be a non-flat surface for the substrate as well. Thus, there is structural feature for the substrate of Jensen, at the interface region.
With respect to claim 8, Jensen teaches a generally cylindrical substrate and a generally cylindrical polycrystalline diamond table as shown and demonstrated by, at least, the Figures (Figures and cols. 8 and 9).
The claims Gratio of about 8.0x106 to about 15.0x106 is expected to follow from the disclosed cutting element inserts absence evidence to the contrary because the reference teaches a substantially similar product, having substantially similar upper surface features such as grooves, compared to the claimed product, and wherein the material of the disclosed product, i.e. cutting element inserts comprising a polycrystalline diamond layer on a substrate, are substantially the same as the material claimed for the claimed compact.
With respect to claim 9, it is noted that this is a product-by-process claim claiming limitations directed to a first pass of laser energy resulting in removal of the material of the polycrystalline diamond table to a first depth, followed by removal of more materials through subsequent pass of laser energy so have the diamond material removed progressively through multiple passes wherein a depth of diamond material is removed during each pass of the laser energy is effective to prevent substantial thermal damage to the polycrystalline diamond table. The fact that Jensen teaches the final outcome, i.e. the formation of grooves or non-planar surface on the polycrystalline diamond layer, is sufficient evidence that the claimed product has been disclosed by the reference, as demonstrated in details in the rejection of claim 1 above.
Claim 9 is a product-by-process claim due to the process limitations claimed therein; with respect to product-by-process claims, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 10, it is noted that this claim depends from claim 9, and claim 9 claimed process limitations. Thus, claim 10 further limits process limitations in claim 9 by reciting “each of the subsequent passes of the laser energy removed a depth of about 0.003 inch to about 0.05 inch of diamond material as the portion of the polycrystalline diamond table is progressively ablated”.
As noted above, process limitations in a product claim do not add patentable weight to the examination of a product claim.
With respect to claim 11, it is noted that said claim is a product-by-process claim reciting “at least a portion of the substrate has been wire electrical-discharge machine to remove the portion of the substrate after the laser energy has been applied to the portion of the upper surface of the polycrystalline diamond table”. However, the claims under examination are product claim; claim 11 does not further limit the product under examination, but that it claims a process applied to the substrate. As such, claim 11 is considered rejected with claim 1. No specific shape has been claimed for the substrate although the reference teaches a cylindrical shape.
Assuming the above is not found persuasive, it is noted that no specific shape has been claimed in the present claim for the substrate although the reference teaches a cylindrical shape. Additionally, the reference teaches embodiments in which the interface region between the substrate and the polycrystalline diamond layer, can be flat or a more complex geometry, which would not be flat (col. 4, lines 48-51; col. 8, lines 15-20 and 31-35). An interface which is not flat but has complex geometry means the substrate surface, where it attaches to the polycrystalline diamond layer, is not flat either. Regardless of how the complex geometry of the interface of the substrate is formed, at the interface, it would be a non-flat surface for the substrate as well. Thus, there is structural feature for the substrate of Jensen, at the interface region.
With respect to claim 12, Jensen teaches a cutting element insert for use with drills used in the drilling and boring through the subterranean formations (abstract, Figure 1b), wherein the drill bit body has a plurality of cutting element inserts assembled onto the bit body, and wherein each cutting element insert comprises a polycrystalline diamond layer boned to a cemented carbide substrate (abstract, Figures, col. 5, lines 45-50; col. 6, lines 52-67; col. 7, lines 1-21). Moreover, Jensen teaches that after the formation of the polycrystalline diamond insert/layer, the metal binder may be removed from the pores within the diamond grains (col. 7, lines 7-11); thus, the claimed limitation of “at least a volume of the polycrystalline diamond table is leached” has been met. Jensen, additionally, teaches an embodiment in which the polycrystalline diamond layer, which serves as a cutting surface and is in the upper surface of the insert, has a portion of it having a conical surface (Figures 6a and 6b, Figures 8a and 8b, col. 8, line to col. 9, line 12). This conical surface shape/feature is taken to read on the claimed “non-planar surface having diamond material removed therefrom” especially since the reference discloses the desired surface shape of the diamond layer is achieved by methods such as lapping, grinding, EDM, EDG, or other similar methods (col. 7, lines 18-21). Thus, some diamond material is removed from the top surface of the disclosed polycrystalline diamond layer to form the claimed non-planar surface, which in this embodiment, it is conical. In another embodiment, the reference discloses the formation of grooves in the upper/top surface of the polycrystalline diamond layer (Figures 8a and 8b; col. 8, lines 51-65).
The claim under examination is a product claim; therefore, process limitations do not add patentable weight to the examination of the product claim. The claimed limitation of “by laser energy applied to a portion of the polycrystalline diamond table” is a process limitation in the product claim. According to MPEP 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The product as disclosed by Jensen is a rotary drill bit comprising cutting element insert comprising a substrate having a polycrystalline diamond layer which has the same upper non-planar surface feature as claimed in the product claim under examination; thus, the claim is unpatentable even though the non-planar surface was made by a different process. The claimed process limitation does not result in any structural distinction from the disclosed structure, and the product as claimed cannot be only defined in the claimed process step(s).
Furthermore, although Jensen discloses the removal of some of the materials from the upper surface, i.e. from the polycrystalline diamond layer, the limitation of “having diamond material removed thereof” is also a process limitation in a product claim. Thus, said limitation, although taught by the reference, does not add patentable weight to the examination of the product claim.
Because of the multiple process limitations in the product claim, the claim is a product-by-process claim.
With respect to claim 13, as that taught by Jensen, the metal binder is removed from “at least a portion” of the polycrystalline diamond layer which takes the upper/top surface of each cutting element insert, and which is the non-planar cutting surface; thus, the reference reads on the claimed “at least the volume of the polycrystalline diamond compact that is leached includes at least the volume of the non-planar surface of the polycrystalline diamond compact”.
The claimed limitation of the volume of the non-planar surface of the polycrystalline diamond compact being “leached after the laser energy is applied to the portion of the polycrystalline diamond compact” is a process limitation/step in a product claim. Thus, the claim is a product-by-process claim. Said recitation does not add patentable weight to the examination of the product claim because according to MPEP 2113 “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regardless of whether the non-planar surface is leached after, or even prior to any application of laser energy, does not add any patentable weight to the examination of the product claim because the product of the reference is very similar to the claimed product (i.e. a cutting element comprising a polycrystalline diamond layer on a substrate, wherein the polycrystalline diamond layer which is the upper surface of the cutting element contains a non-planar surface) as claimed even though the product of the prior art or reference may have been made by a different process.
There is no structural distinction between the claimed “product” and the disclosed product of Jensen.
With respect to claim 14, as that taught by Jensen, the metal binder is removed from at least a portion of the polycrystalline diamond layer which takes the upper/top surface of each insert, and which is the non-planar cutting surface; thus, the reference reads on the claimed “at least the volume of the polycrystalline diamond table compact that is leached includes at least the volume of the polycrystalline diamond table being leached”.
The claimed limitation of the volume of the non-planar surface of the polycrystalline diamond compact “being leached before the laser energy is applied to the portion of the polycrystalline diamond compact” is a process limitation/step in a product claim. Thus, the claim is a product-by-process. Said recitation does not add patentable weight to the examination of the product claim because according to MPEP 2113 “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regardless of whether the non-planar surface is leached before, or even after any application of laser energy, does not add any patentable weight to the examination of the product claim because the product of the prior art is the same product (i.e. a rotary drill bit comprising a bit body for use in drilling subterranean formations, wherein the body comprising a plurality of cutting element insets, wherein each insert comprises a cutting surface comprising of a polycrystalline diamond layer having a non-planar upper surface containing either grooves or a conical surface, which also satisfies a groove) as claimed in the present claims even though the product of the prior art may have been made by a different process.
With respect to claim 15, as that taught by Jensen, the embodiment of Figure 6a and 6b discloses conical surface for the upper surface the polycrystalline diamond layer which is taken to read on a groove shape which is offset inwardly and spaced from “at least” one lateral surface of the polycrystalline diamond layer by a portion of the polycrystalline diamond layer (Figure 6b; col. 8, lines 21-31).
Moreover, the embodiments of Figures 8 and 9 also disclose grooves on the upper surface of the polycrystalline diamond layer, which serves as the cutting surface, and wherein as evidenced by the Figures, all grooves are offset inwardly and spaced from at least one lateral surface of the polycrystalline diamond table/layer (Figures 8 and 9; col. 8, line 51 to col. 9, line 11).
The claimed limitation of “the at least one groove formed by the laser energy applied to a portion of the polycrystalline diamond table” is a process limitation/step in a product claim, and as such, it does not add patentable weight to the examination the product claim. Thus, the claim is a product-by-process claim. According to MPEP 2113 “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 16, Jensen teaches the embodiment of Figure 11a and 11b wherein there is a ridge formed on the polycrystalline diamond layer (Figures 11a and 11b). At the corner of the ridge and the upper surface of the polycrystalline diamond layer, the two form a groove (see the arrow below), which from the top view, is of annular shape.
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With respect to cl aim 17, it is noted that the claimed limitation does not further limit the product under examination; the limitation is an implied process limitation, implying the use of a electrical-discharge machining wire which is placed in the groove. However, the claim under examination is a product claim.
Nevertheless, the groove shown by Figures 11a and 11b, which is formed by the ridge and the upper surface of the polycrystalline diamond layer, has an abtuse angle; thus, it is wide enough to accommodate an electrical discharge machining wire.
With respect to claim 18, it is noted that “at least a portion of the substrate has been grinded, lapped, electrical-discharge machined, or combination thereof to remove the portion of the substrate” is a process limitation in a product claim. Process limitations in a product claim do not add patentable weight to the examination of the product claim.
MPEP 2113, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Because the claim recites only process limitation, but does not further limit the claimed polycrystalline diamond compact, the claim is considered rejected with claim 12.
Assuming the above is not found persuasive, it is noted that no specific shape has been claimed in the present claim for the substrate although the reference teaches a cylindrical shape. Additionally, the reference teaches embodiments in which the interface region between the substrate and the polycrystalline diamond layer, can be flat or a more complex geometry, which would not be flat (col. 4, lines 48-51; col. 8, lines 15-20 and 31-35). An interface which is not flat but has complex geometry means the substrate surface, where it attaches to the polycrystalline diamond layer, is not flat either. Regardless of how the complex geometry of the interface of the substrate is formed, at the interface, it would be a non-flat surface for the substrate as well. Thus, there is structural feature for the substrate of Jensen, at the interface region.
With respect to claim 19, Jensen teaches a generally cylindrical substrate and a generally cylindrical polycrystalline diamond table as shown and demonstrated by, at least, the Figures (Figures and cols. 8 and 9).
The claims Gratio of about 8.0x106 to about 15.0x106 is expected to follow from the disclosed cutting element inserts absence evidence to the contrary because the reference teaches a substantially similar product, having substantially similar upper surface features such as grooves, compared to the claimed product, and wherein the material of the disclosed product, i.e. cutting element inserts comprising a polycrystalline diamond layer on a substrate, are substantially the same as the material claimed for the claimed compact.
With respect to claim 20, it is noted that this is a product-by-process claim claiming limitations directed to a first pass of laser energy resulting in removal of the material of the polycrystalline diamond table to a first depth, followed by removal of more materials through subsequent pass of laser energy so have the diamond material removed progressively through multiple passes wherein a depth of diamond material is removed during each pass of the laser energy is effective to prevent substantial thermal damage to the polycrystalline diamond table. The fact that Jensen teaches the final outcome, i.e. the formation of grooves or non-planar surface on the polycrystalline diamond layer, is sufficient evidence that the claimed product has been disclosed by the reference, as demonstrated in details in the rejection of claim 1 above.
Claim 20 is a product-by-process claim due to the process limitations claimed therein; with respect to product-by-process claims, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 21, it is noted that this claim depends from claim 20, and claim 9 claimed process limitations. Thus, claim 21 further limits process limitations in claim 9 by reciting “each of the subsequent passes of the laser energy removed a depth of about 0.003 inch to about 0.05 inch of diamond material as the portion of the polycrystalline diamond table is progressively ablated”.
As noted above, process limitations in a product claim do not add patentable weight to the examination of a product claim.
With respect to claim 22, it is noted that said claim is a product-by-process claim reciting “at least a portion of the substrate has been wire electrical-discharge machine to remove the portion of the substrate after the laser energy has been applied to the portion of the upper surface of the polycrystalline diamond table”. However, the claims under examination are product claim; claim 22 does not further limit the product, the rotary drill bit, under examination, but that it claims a process applied to the substrate. As such, claim 22 is considered rejected with claim 12.
Assuming the above is not found persuasive, it is noted that no specific shape has been claimed in the present claim for the substrate although the reference teaches a cylindrical shape. Additionally, the reference teaches embodiments in which the interface region between the substrate and the polycrystalline diamond layer, can be flat or a more complex geometry, which would not be flat (col. 4, lines 48-51; col. 8, lines 15-20 and 31-35). An interface which is not flat but has complex geometry means the substrate surface, where it attaches to the polycrystalline diamond layer, is not flat either. Regardless of how the complex geometry of the interface of the substrate is formed, at the interface, it would be a non-flat surface for the substrate as well. Thus, there is structural feature for the substrate of Jensen, at the interface region.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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