DETAILED ACTION
Notice of 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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Claims 16-36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject
matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 16-32 are directed to a method of manufacturing a drill segment (manufactures) and claims 33-36 are directed to a drill segment for a drill bit (machine). As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis
in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim 16 and 33 recite the abstract limitation including (or substantially similar to): “first, precalculating at least one performance parameter of the drill segment with the pattern or determining the pattern according to a precalculation of the performance parameter”.
This limitation, as drafted, is a process that, under its broadest reasonable
interpretation, cover performance of the limitations in the mind, or by a human using pen and
paper, and therefore recite mental processes. The mere recitation of generic computing elements does not take the claim out of the mental process grouping. Mental processes cover concepts performed in the human mind (including an observation, evaluation, judgment, opinion) as well as decision-making steps which encompasses the limitations listed above. The claims do not require any action as currently worded. Thus, the claims recite abstract ideas.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of
the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural
phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners
evaluate whether the claim recites additional elements that integrate the exception into a
practical application of that exception.
Claims 16 and 33 recite the additional elements of “then,manufacturing the drill segment having the at least one layer with abrasive particles arranged in accordance with the pattern” and claim 33 recites the additional elements of “A drill segment for a drill bit, the drill segment comprising: abrasive particles embedded in a binder material, the drill segment being manufactured in accordance with the method as recited in claim 16”.
The recitation of “manufacturing the drill segment having the at least one layer with abrasive particles arranged in accordance with the pattern” and “A drill segment for a drill bit, the drill segment comprising: abrasive particles embedded in a binder material, the drill segment being manufactured in accordance with the method as recited in claim 16” amount to insignificant extra-solution activity.
Accordingly, in combination, these additional elements do not integrate the abstract ideas into practical applications because they do not impose any meaningful limits on practicing the abstract ideas.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The recitation of “manufacturing the drill segment having the at least one layer with abrasive particles arranged in accordance with the pattern” and “A drill segment for a drill bit, the drill segment comprising: abrasive particles embedded in a binder material, the drill segment being manufactured in accordance with the method as recited in claim 16” are directed to insignificant extra-solution activity in that these limitations merely amount to “apply it" because these steps contain mere instructions to execute the subtract idea. Thus, these additional element do not add significantly more to the abstract ideas they are simply applying the abstract idea. In re Brown, 645 Fed. Appx. 1014, 1015-16 (Fed. Cir. 2016) (non-precedential).
Thus, even when viewed as an ordered combination, nothing in the claims add
significantly more (i.e. an inventive concept) to the abstract idea.
Regarding claims 17-20, 22-31 recite the limitations which further recite abstract ideas. For example, the limitations “the pattern has at least two similar mutually spaced sub-regions” (claim 17) , “a change of a workpiece to be machined by the drill segment and formed from at least one material is precalculated.” (claim 18), “multiple layers are stacked in order to form the drill segment or a green body of the drill segment” (claim 25), “the at least one performance parameter includes a wear parameter” (claim 26) and “the manufacturing step occurs when the performance parameter attains or exceeds a particular value” (claim 31) are directed to abstract ideas because nothing in these claim elements precludes the aforementioned step from practically being performed in the human mind, or by a human using pen and paper. Therefore, similar to claim 16, these claims do not provide a practical application of the abstract idea, and are not significantly more.
Regarding claim 21, the claim recites the additional element of “for the precalculation, a machine learning module is firstly trained” which merely amounts to “apply it” because this module is a generic computer component to perform the abstract idea. Thus, the claim does not include more than mere instructions to perform the abstract idea on the generic components. Symantec, 838 F.3d at 1316, 120 USPQ2d at 1359. Therefore, similar to claim 16, this claim does not provide a practical application of the abstract idea, and is not significantly more.
Regarding claim 32, the claim recites “wherein the drill bit is a drill bit for machining reinforced concrete.” and this recitation is well-understood, routine and conventional in the art of drill. Duncan (U.S. Publication No. 20080179105) discloses that using a core drill to drill through concrete is conventional (pp[0010]-[0011]). Therefore, similar to claim 16, this claim does not provide a practical application of the abstract idea, and is not significantly more.
Claims 34-36 recite the limitations which further recite abstract ideas. For example, the limitations “the abrasive particles in at least one layer is configured in accordance with a pattern composed of at least two identical, mutually spaced sub-regions” (claim 34) and “wherein the sub-region has at least one triangular or tetragonal, arrangement of abrasive particles” are directed to abstract ideas because nothing in these claim elements precludes the aforementioned step from practically being performed in the human mind, or by a human using pen and paper. Therefore, similar to claim 33, these claims do not provide a practical application of the abstract idea, and are not significantly more.
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 17-21 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 claim 17, the recites “at least two similar mutually spaced sub-regions” and it is unclear what the limitation “similar” entails structurally and/or functional. What is “similar” regarding the at least two “sub-regions”? Is it the depth, width, length and/or shape? If it is parameters such depth or width, it is unclear what quantitative values are considered “similar”. For the above reasons, the metes and bounds of this claim is indefinite.
Regarding claim 18, the recites “a change of a workpiece to be machined by the drill segment and formed from at least one material is precalculated” the claim is indefinite for several reason. Firstly, it is unclear if the claim requires “a workpiece” or not because this limitation is not positively recited because “a workpiece to be machined by the drill segment” is intended use of the claimed “drill segment”. Furthermore, it is unclear what “a change of a workpiece” entails structurally and/or functionally. What exactly is changing about the workpiece? Is it the size, position and/or shape? Furthermore, is “a change” caused by the “drill segment” when the drill segment machines the workpiece or it is caused by something else? For at least the above reasons, it is unclear what the claim requires and the metes and bounds of the claim is indefinite. Additionally, the phrasing of the claim language further adds to the confusion.
Claims 19 and 20 recite the limitation "the workpiece" . There is insufficient antecedent basis for this limitation in these claims.
Claim 21 recites the limitation “for the precalculation, a machine learning module is firstly trained.” This limitation is indefinite because it is unclear who or what is performing the claimed training. Is the limitation “firstly trained” part of the claimed method or is the machine learning module pre-trained before the method? Furthermore, does the claim require “a machine learning module” or does the claim simply require a step of training a machine learning module. For the above reasons, the metes and bounds of this claim is indefinite.
Claim 21 further recites the limitation "the precalculation" . There is insufficient antecedent basis for this limitation in the claim.
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)(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) 16-19, 22-31, 33 and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sung et al.(U.S. Publication No. 20170361388).
Regarding claim 16, Sung teaches a method for manufacturing a drill segment for a drill bit, wherein the drill segment has at least one layer with a multiplicity of abrasive particles, wherein the abrasive particles form a pattern within the layer (pp[0092]- [0094], Fig. 1, 2), the method comprising:
first, precalculating at least one performance parameter of the drill segment with the pattern or determining the pattern according to a precalculation of the performance parameter (a plurality of superabrasive particles 20 are brazed to an exposed surface of substrate 102 in accordance with a predetermined pattern; pp[0068], [0092]), and
then,manufacturing the drill segment having the at least one layer with abrasive particles arranged in accordance with the pattern (superabrasive particles are chemically bonded to a matrix support material according to a predetermined pattern by a braze alloy; Abstract, Pp[0092]).
Regarding Claim 17, as best understood, Sung teaches the method as recited in claim 16 wherein the pattern has at least two similar mutually spaced sub-regions (apertures 114; Fig. 3, pp[0153]).
Regarding claim 18, as best understood, Sung teaches wherein a change of a workpiece to be machined by the drill segment and formed from at least one material is precalculated (Various alloys of these brazes may also be used for further adjustments of brazing temperature and mechanical properties. The selection of diamond braze depends largely on the intended application. In general, more severe applications, such as sawing granite, concrete, or asphalt, would require a stronger diamond grit that may tolerate a higher temperature of brazing. Brazes which melt at higher temperatures are, in general, more wear resistant; pp[0125]).
Regarding claim 19, Sun further teaches wherein the workpiece to be machined has at least two materials (applications such as granite, concrete, asphalt, limestone or marble; pp[0125]).
Regarding claim 22, Sung teaches wherein a probabilistic regression is performed (diamond may be degraded when exposed to a temperature above about 1,000.degree. C. The degradation is due to either the reaction with the matrix material or the development of micro-cracks around metal inclusions inside the crystal; pp[0017], [0019], [0020]).
Regarding claim 23, Sung further teaches wherein an optimum of the performance parameter, or a pattern associated with the optimum of the performance parameter, is determined on the basis of an optimization calculation (“optimum performance parameter” is spacing and size of the particles which is determined based on the application; pp[0008]-[0010], [0114], [0143], [0147]).
Regarding claim 24, Sung further teaches wherein multiple layers are lined up together in order to form the drill segment or a green body of the drill segment (layers lines up together; pp[0139], Fig. 6A, 8).
Regarding claim 25, Sung further teaches wherein multiple layers are stacked in order to form the drill segment or a green body of the drill segment (stacked layers; Fig. 9, pp[0150]).
Regarding claim 26, Sung further teaches wherein the at least one performance parameter includes a wear parameter (a control of diamond distribution is highly desirable to improve the wear characteristics of the tool. For example, the sides of a diamond saw blade are often worn faster than the center, so it is advantageous to add more diamond grit on the sides (see FIG. 6B); pp[0138]).
Regarding claim 27, Sung teaches wherein the at least one performance parameter includes a cutting performance parameter (if the diamond/CBN abrasive particles are too close to one another, some of the particles are redundant and provide little or no assistance in cutting or grinding. In addition, excess particles add to the expense of production due the high cost of diamond and cubic boron nitride. Moreover, these non-performing diamond or CBN particles can block the passage of debris, thereby reducing the cutting efficiency. Thus, having abrasive particles disposed too close to one another adds to the cost, while decreasing the useful life of the tool; pp[0008]).
Regarding claim 28, Sung teaches wherein the abrasive particles have carbon (diamond particles; pp[0102], [0114]).
Regarding claim 29, Sung teaches wherein the abrasive particles have diamond, graphene or carbon nanotubes (diamond; pp[0093], [0102], [0114]).
Regarding claim 30, Sung teaches wherein the abrasive particles have aggregated diamond nanorods or graphene, tungsten carbide, tungsten boride or a boron nitride (it is highly desirable for the matrix to form carbide around the surface of the diamond. The chemical bond so formed is much stronger than the traditional mechanical attachment. The carbide may be formed by reacting diamond with suitable carbide formers such as a transition metal. Typical carbide forming transition metals are: titanium (Ti), vanadium (V), chromium (Cr), zirconium (Zr), molybdenum (Mo), and tungsten (W); pp[0016]).
Regarding claim 31, Sung teaches wherein the manufacturing step occurs when the performance parameter attains or exceeds a particular value (This is implicit because parameters such as spacing of the apertures in the template is used in the predetermined pattern for manufacturing. Variations in spacing can be provided to facilitate different concentrations on various areas to facilitate different concentrations on various portions of the sheet of amorphous brazing alloy. Likewise, by controlling the size of the apertures and the order in which the diamond particles are placed in the apertures, a single layer could be provided with particles of different sizes. As such, appropriate spacing is attained, then manufacturing step occurs; pp[0114]
Regarding claim 33, Sung teaches a drill segment for a drill bit (pp[0094]), the drill segment comprising: abrasive particles embedded in a binder material (the particles may be positioned on the substrate using the template method recited above, and held in place by glue, or other suitable binder; pp[0092], [0122])), the drill segment being manufactured in accordance with the method as recited in claim 16 (see claim 16 above).
Regarding claim 34, Sung further teaches wherein the abrasive particles in at least one layer is configured in accordance with a pattern (a plurality of superabrasive particles 20 are brazed to an exposed surface of substrate 102 in accordance with a predetermined pattern; pp[0092]) composed of at least two identical, mutually spaced sub-regions (“sub regions” are layers 14, 16 and 18; Fig. 1, 6A, pp[0139]).
Regarding claim 35, Sung further teaches wherein the sub-region has at least one polygonal arrangement of abrasive particles (polygonal arrangement; Fig. 6A, 6B, 7A).
Regarding claim 36, Sung further teaches wherein the sub-region has at least one triangular or tetragonal, arrangement of abrasive particles (triangular arrangement; Fig. 8, 9).
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.
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.
Claim(s) 20, 32, 37 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Sung et al. (U.S. Publication No. 20040112359) in view of Mueller at al. (U.S. Publication No. 20170361388).
Regarding claim 20, Sung further teaches the method as recited in claim 16, wherein the workpiece to be machined has stone.
Sung is silent regarding the workpiece has stone and metal.
Mueller, drawn to a drilling tool with diamond particles, discloses that the drilling tool can be used on a workpiece has stone and metal (reinforces concrete comprising rebar and concrete; pp[0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sung such that the drill tool of Sung is used on a workpiece such as reinforced concrete, as taught by Mueller, because the diamond particles will successfully saw through the rebar (pp[0023], Mueller).
Regarding claim 32, Sung teaches the method as recited in claim 16.
Sung is silent regarding wherein the drill bit is a drill bit for machining reinforced concrete.
Mueller, drawn to a drilling tool with diamond particles, discloses that the drilling tool can be used on machining reinforced concrete (reinforces concrete comprising rebar and concrete; pp[0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sung such that the drill tool of Sung is used on a workpiece such as reinforced concrete, as taught by Mueller, because the diamond particles will successfully saw through the rebar (pp[0023], Mueller).
Regarding claim 37, Sung teaches a drill bit (pp[0094]) at least one drill segment as recited in claim 33 (see claim 33 above).
Sung discloses numerous applications of the drill bit such as circular saws, thin-wall core bits, and curvature grounder (pp[0173]) but does not specify specific structures associated with these applications which forces the reader to look elsewhere for such teachings.
Mueller, drawn to a continuous drilling tool, discloses a drill bit (a core drill bit 10; pp[0037]) comprising: a shaft (a cylindrical drill shaft 12; Fig. 1) having at one end a connecting portion for connecting the drill bit to a power tool (The core drill bit 10 is fastened via the insertion end 14 in the tool receptacle of a core drilling device and during drilling operation is driven by the core drilling device in a rotary direction 15 about a rotary axis 16; pp[0037]), and at another end at least one drill segment (drill segment 21 via 11; Fig.1, 2, pp[0038]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sung such that the drill bit of such that it comprises a shaft and connected to a power tool, as taught by Mueller, in order to perform the drilling operation such as coring operation with the drill bit (pp[0003]).
Regarding claim 38, the combination of Sung and Mueller teaches the drill bit as recited in claim 37.
Mueller further teaches wherein the shaft is a tubular shaft (cylindrical drill shaft 12; pp[0037]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lamia Quaim whose telephone number is (469)295-9199. The examiner can normally be reached Monday-Friday 10AM - 6PM CST.
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, Tara Schimpf can be reached at (571) 270-7741. 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.
/LAMIA QUAIM/Examiner, Art Unit 3676