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/Restrictions
Applicant’s election with traverse of Claims 1-18 in the reply filed on 8/27/26 is acknowledged.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
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 1-18 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.
Claims 1, 5, 8, 10, 11 and 17 recite “exhibits”. What are the mets and bounds for that term?
Claim Rejections - 35 USC § 102
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 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)(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, 3, 4, 6, 7, 13 and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kountanya et al. (USP 9,089,900).
Regarding claims 1 and 17, Kountanya discloses a cutting element, comprising: a superhard table (12) defining at least one cutting edge; a top surface at least partially defined by the superhard table; a bottom surface opposite the top surface; at least one lateral surface (18) extending from or nearly from the top surface to or nearly to the bottom surface (figures 2 and 3); and an opening (16) extending from the top surface to the bottom surface that is spaced from the at least one lateral surface, the opening at least partially defined by: at least one shaft surface (26) extending from or nearly from the bottom surface; and at least one tapered countersink surface (22) extending from or nearly from the at least one shaft surface (26), the at least one tapered countersink surface (22) exhibiting a countersink angle (θ: see below) measured between opposing portions of the at least one tapered countersink surface that is greater than about 45°. Furthermore, regarding claim 17, Kountanya discloses a cutting tool (where the insert would be attached to) and a fastener attaching the at least one cutting element to the cutting tool body, the fastener including a shaft and a head having a tapered surface at least partially abutting the at least one tapered countersink surface (col. 5, lines 1-3).
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Regarding claim 3, Kountanya discloses wherein the superhard table (12) forms at least a portion of the at least one tapered countersink surface (22) (see figure above).
Regarding claim 4, Kountanya discloses wherein the superhard table (12) forms all of the at least one tapered countersink surface (22) (see figure above).
Regarding claims 6 and 7, Kountanya discloses wherein the countersink angle (θ: see figure above) is greater than about 60°/ is about 60°to about 90°. Please note: even though the figure is schematic and not necessarity drawn to scale, θ, is acute and approximately within 60-90 degrees and likely around 70-80 degrees / roughly 75 degrees.
Regarding claim 13, Kountanya discloses further comprising a substrate (14) attached to the superhard table (12) (figures 3 and 4).
Claims 1, 11 and 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kountanya et al. (USP 9,089,900).
Please note: even though the same prior art is used, it is interpreted differently.
Regarding claim 1, Kountanya discloses a cutting element, comprising: a superhard table (12) defining at least one cutting edge; a top surface at least partially defined by the superhard table; a bottom surface opposite the top surface; at least one lateral surface (18) extending from or nearly from the top surface to or nearly to the bottom surface (figures 2 and 3); and an opening (16) extending from the top surface to the bottom surface that is spaced from the at least one lateral surface, the opening at least partially defined by: at least one shaft surface (26) extending from or nearly from the bottom surface; and at least one tapered countersink surface (24) extending from or nearly from the at least one shaft surface (26), the at least one tapered countersink surface (24) exhibiting a countersink angle (θ1: see below) measured between opposing portions of the at least one tapered countersink surface that is greater than about 45°.
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Regarding claim 11, Kountanya discloses wherein the superhard table (12) further includes at least one tapered bore surface (22) extending from or nearly from the at least one tapered countersink surface (24), the at least one bore tapered surface (22) exhibiting a bore angle (B1: see figure 1bove) measured between opposing portions of the at least one bore tapered surface that is less than the countersink angle (θ1) (i.e. B1 < θ1).
Regarding claim 13, Kountanya discloses further comprising a substrate (14) attached to the superhard table (12) (figures 3 and 4).
Regarding claim 14, Kountanya discloses wherein the substrate (14) defines at least a portion of the at least one tapered countersink surface (24) (see figure above).
Regarding claim 15, Kountanya discloses wherein the superhard table includes
polycrystalline diamond and the substrate includes a tungsten carbide substrate (col. 1, lines 11-15, 56-57 and col. 4, lines 23-27 & 63-65).
Claims 1, 2 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ueda et al. (US Pub. No. 2004/0234349).
Regarding claim 1, Ueda discloses a cutting element, comprising: a superhard table defining at least one cutting edge; a top surface at least partially defined by the superhard table; a bottom surface opposite the top surface; at least one lateral surface extending from or nearly from the top surface to or nearly to the bottom surface (figures 4A/B); and an opening (5) extending from the top surface to the bottom surface that is spaced from the at least one lateral surface, the opening at least partially defined by: at least one shaft surface (S: see below) extending from or nearly from the bottom surface; and at least one tapered countersink surface (T) extending from or nearly from the at least one shaft surface (S), the at least one tapered countersink surface (T) exhibiting a countersink angle (θ: see below) measured between opposing portions of the at least one tapered countersink surface that is greater than about 45°.
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Regarding claim 2, Ueda discloses wherein all of the top surface, the bottom
surface, the at least one lateral surface, the at least one shaft surface (S), and the at least one tapered countersink surface (T) is formed by the superhard table (figure 4A/B and paragraph 25).
Regarding claim 16, Ueda discloses wherein the cutting element does not
include a substrate (figure 4A/B and paragraph 25).
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.
Claims 5, 8-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kountanya et al. (USP 9,089,900).
Kountanya discloses all aspects of the invention as set forth in the rejection above. Kountanya does not disclose the superhard table exhibiting a thickness of about 5 mm or greater/about 9.5mm or greater nor the at least one tapered countersink surface exhibits a depth of about 1.25 mm or greater, wherein the depth of the at least one tapered countersink surface is a minimum distance measured from the at least one cutting edge to the at least one tapered countersink surface measured parallel to a central axis of the superhard table nor the depth of the at least one tapered countersink surface is about 1.6 mm or greater or a depth of the at least one tapered
countersink surface is about 1.25 mm or greater wherein the depth of the at least one
tapered countersink surface is a minimum distance measured from the at least one cutting edge to the at least one tapered countersink surface measured parallel to a central axis of the superhard table. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the different parts of Kountanya’s insert of any chosen measurements (such as width, height etc) depending on the size of the insert, cutting conditions and type of material being cut since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to made to make the different parts of Kountanya’s insert of any chosen measurements (such as width, height etc) depending on the size of the insert, cutting conditions and type of material being cut
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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 SARA ADDISU at (571) 272-6082. The examiner can normally be reached on Monday - Friday 9:00 am - 5:00 pm (Mondays and Wednesday-Friday).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached on (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA ADDISU/Primary Examiner, Art Unit 3722 9/3/26
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