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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/24/2026 has been entered.
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) 16-18, 21, 22, 26, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Quesenbury US5141063.
Regarding claim 16, Quesenbury teaches a drill bit (Figures 3-4) which includes a pilot bit 33, which includes a body 2 and a drilling surface (area with cutters 33), and a reamer (wing 8), whereby the drill bit is arranged to provide a hole for a pipe to be installed in the ground (created by drilling such as in Figure 6), wherein the reamer comprises at least one wing 8 which is turnably pivoted (on 12) to the body of the pilot bit such that the wing, when turned to the drilling position (Figure 4), extends outside the outer circle of the body of the pilot bit (where 6 extends beyond 2 as shown in at least figure 4) and, when turned to a position turned forwards from the drilling position (Figure 3), the wing does not extend outside the outer circle of the body of the pilot bit (6 is within 2), that the wing comprises at least one bracket (the area supporting 12, and including 19 is considered the bracket since it has material to support 12) and outer part (surface 6 and side surfaces of 4 that extend vertically), the drill bit comprises a flushing channel 29 for supplying a flow of flushing medium (drill fluid Column 6: 9-12 “ passage 29 in the tool body extends to an outlet port 30 for the escape of pressurized drilling fluid to the area of the cutting elements at the end of the drill body”) to the drilling surface (via outlet port 30), and the outer part of the wing is arranged to turn a flow of flushing medium from the drilling surface towards a back part of the drill bit (via 6 being extended into annulus between 2 and the wellbore, which necessarily impinges and turns a flow of flushing medium such as the drilling fluid described in Column 6: 9-12 “from each of these ports, a passage 29 in the tool body extends to an outlet port 30 for the escape of pressurized drilling fluid to the area of the cutting elements at the end of the drill body”. Therefore, the flushing medium is coming from the drilling surface, and based on basic fluid flow mechanics and the fact that the drill bit is in a wellbore that provides volumetric constraints on the fluid, directs the fluid flow towards the back of the bit), wherein the flow of flushing medium is configured to flow on the drilling surface in a radial direction (wherein fluid exiting ports 30 will necessarily be diverted towards the radial direction due to impinging upon the bottom of the bore that the drill bit is drilling, since the face of the drill bit is what is drilling the bore), and configured to meet the outer part of the wing (via at least some of the fluid being forced radially outward towards the radially outer portion of 2), and the outer part of the wing is configured to turn the flow towards the back part of the drill bit (via channeling fluid between the sides of 4 that form an arch-shaped channel between each of the three shown wings and the borehole wall).
Regarding claim 17, Quesenbury teaches the drill bit according to claim 16, wherein the reamer comprises at least two wings (three are shown in Figure 5) which are turnably pivoted 12 to the body of the pilot bit such that the wings, when turned to a drilling position (as described above), extend outside the outer circle of the body of the pilot bit (as described above) and, when turned to the position turned forwards from the drilling position, the wings do not extend outside the outer circle of the body of the pilot bit (as described above).
Regarding claim 18, Quesenbury (as best understood by examiner) teaches the drill bit according to claim 16, wherein the wing comprises an outer part which is curved on at least its outer surface (Figure 5 shows surface 6 has a curved outer profile).
Regarding claim 21, Quesenbury teaches The drill bit according to any claim 16, wherein the drill bit includes in connection with each wing a pivot pin 12, around the centre axle of which, the wing is arranged to turn (Figure 3 versus Figure 4).
Regarding claim 22, Quesenbury teaches the drill bit according to claim 21, wherein the centre axis of the pivot pin is in a substantially perpendicular direction (12 is shown perpendicular to the vertical axis in Figure 3) in relation to the direction of the centre axis (vertical axis of Figure 3) of the drill bit.
Regarding claim 26, Quesenbury teaches the drill bit according to claim 16, wherein the wing includes a drilling surface (with buttons 5), whereby the drilling surface of the pilot bit and the drilling surface of the wing include drilling buttons (5 and 33. These carbide cutting buttons are the same as drilling buttons)
Regarding claim 30, Quesenbury teaches a method for drilling a hole for a pipe to be installed in the ground (the “drilling operation” described in column 6: 45-46), the method comprising using the drill bit according to claim 16 (as described above), when drilling, turning a wing 3 to a drilling position (shown in Figure 4) to extend outside the outer circle of a body of a pilot bit (as described above), and when removing the drill bit from inside the pipe, the wing being in a position turned forwards from the drilling position such that the wing does not extend outside the outer circle of the body of the pilot bit (removal from the well and forward retracted position described in Column 1: 65- column 2: 10 “ Because these cutters must be retracted into the cylindrical cutting head when not in use, the cross sectional area of the cutting head is necessarily decreased by any increase in size or number of the cutters. Because of this decrease in cross sectional area, the head is necessarily weakened, and so is generally limited to two cutters. Also, where the cutters must be retracted into recesses within the sides of the cylindrical body, any bending or deformation of these cutting surfaces may prevent retraction of the cutters into the cylinder body. An inability to retract the cutters may, in turn, prevent the tool from passing through a restriction to remove it from a well”).
Claim(s) 16, 17, 21, 22, 27, 28, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goodwin US2997119.
Regarding claim 16, Goodwin teaches a drill bit 15 which includes a pilot bit 24, which includes a body 28 and a drilling surface (cutting elements of 24), and a reamer 27, whereby the drill bit is arranged to provide a hole (since it is a drill bit, it is capable of drilling a hole) for a pipe 11 to be installed in the ground, wherein the reamer comprises at least one wing (two wings 27 are shown) which is turnably pivoted (on 29) to the body of the pilot bit such that the wing, when turned to the drilling position(Figure 1), extends outside the outer circle of the body of the pilot bit (the width/diameter of 17) and, when turned to a position turned forwards from the drilling position (Figure 2), the wing does not extend outside the outer circle of the body of the pilot bit (where 27 is radially within 17, and cutting edge 31 is pointed forward towards 24), that the wing comprises at least one bracket (as described above) and outer part (outer surface of the wing 27, including sidewalls of 27 that extend vertically) and that the outer part of the wing is arranged to turn a flow of flushing medium (by impinging on fluid flow around 28 when deployed as shown in Figure 1). The drill bit comprises a flushing channel 26 for supplying a flow of flushing medium (drilling fluid Column 4: 32-33) to the drilling surface (via the outlet for 26). The outer part of the wing is arranged to turn a flow of the flushing medium (via impinging on flow of drilling fluid, wherein, as described above, the drill bit is in a wellbore, thus the wellbore walls provide volumetric flow containment, and the wings provide at least impingement and fluid displacement, in which circulation back to the surface is described in Column 4: 44-46, which necessarily provides fluid flow towards the back of the bit) from the drilling surface towards a back part (top/uphole) of the drill bit, wherein the flow of flushing medium is configured to flow on the drilling surface in a radial direction (via the angle of 26, and the limitations of fluid flow via the face of 24 and the bottom of the borehole that 24 is drilling, which necessarily directs fluid flow radially), and configured to meet the outer part of the wing (wherein at least some of the fluid are radially pushed outward and upward within the borehole towards wings 24), and the outer part of the wing (sidewalls of 27) is configured to turn the flow towards the back part of the drill bit (via the arc-shaped passage formed by the sides of 27 and the wellbore wall that is being drilled).
Regarding claim 17, Goodwin teaches the drill bit according to claim 16, wherein the reamer comprises at least two wings (Figure 1 shows two wings 27 on either side of 32) which are turnably pivoted to the body of the pilot bit (as described above) such that the wings, when turned to a drilling position (Figure 1), extend outside the outer circle of the body of the pilot bit (as described above) and, when turned to the position turned forwards from the drilling position (as described above), the wings do not extend outside the outer circle of the body of the pilot bit (as described above).
Regarding claim 21, Goodwin teaches The drill bit according to any claim 16, wherein the drill bit includes in connection with each wing a pivot pin 29, around the centre axle of which, the wing is arranged to turn (Figure 1 versus Figure 2).
Regarding claim 22, Goodwin teaches the drill bit according to claim 21, wherein the centre axis of the pivot pin is in a substantially perpendicular direction (as shown in Figure 1) in relation to the direction of the centre axis of the drill bit (vertical axis shown in Figure 1).
Regarding claim 27, Goodwin teaches the drill bit according to claim 16, wherein the body of the pilot bit includes a shoulder 48 for a casing shoe 17 of a pipe to be installed in the ground, whereby the pipe to be installed in the ground is pullable inside the ground by means of the shoulder (as shown in Figure 4).
Regarding claim 28, Goodwin teaches the drill bit according to claim 16, wherein the wing, when turned to the drilling position, is substantially perpendicular in relation to the direction of the centre axis of the drill bit (when considering the cutting edge 31, and the horizontal surface at the bottom of 27 shown in Figure 1 to be the perpendicular portion compared with the vertical centerline of 15).
Regarding claim 30, Goodwin teaches a method for drilling a hole (Column 4: 13-49) for a pipe to be installed in the ground, the method comprising using the drill bit according to claim 16 (as described above), when drilling (Column 4: 46-49 “The expanded drill bit may then be rotated by rotating the drill pipe and drilling may proceed by continued direct circulation of the drilling fluid”), turning a wing (the above described expanded drill bit) to a drilling position (as described above) to extend outside the outer circle of a body of a pilot bit (as described above), and when removing the drill bit from inside the pipe (Column 4: 50-65), the wing being in a position turned forwards from the drilling position such that the wing does not extend outside the outer circle of the body of the pilot bit (the “contract the drill bit” described in Column 4:75-column 5: 2).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quesenbury in view of Sartor US4440247.
Regarding claim 19, Quesenbury teaches the invention substantially as claimed, as described above, and the outer part of the wing is arranged to turn the flow of the flushing medium towards the back part of the drill bit (by movement of fluid past the wings when the wings are deployed radially outward).
Quesenbury does not teach that there are flushing grooves on the drilling surface of the pilot bit and the wing includes an outer part such that the flushing groove is arranged to convey flushing medium towards the outer part of the wing.
Sartor teaches that it is well-known in the art for a drill bit 10 to have flushing grooves (between 16) on the drilling surface 16 of the bit for conveying flushing medium 35 towards the outer part of the bit, to remove debris while drilling (Column 8: 56-59 “This usually results in the drilling fluid being in laminar flow along the outer edges of the blades and the relative smoothness of the cutting face facilitates removal of debris therefrom during the drilling operation”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the drill bit of Quesenbury in view of the flushing grooves of Sartor with a reasonable expectation of success to facilitate removal of debris during drilling, such that fluid flow is directed towards the outer part of the wing, since the outer part of the wing is held by the radially outer portion of the drill bit.
Claim(s) 20, 23, 24, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quesenbury in view of Zhang, et al. CN104747086.
Regarding claim 20, Quesenbury teaches the invention substantially as claimed, as described above, but does not teach the wing includes from the outer part towards the centre part of the drill bit at least two brackets, between which, the flushing groove is arranged.
Zhang, et al. teaches that it is known in the art for expandable wings (Figure 2) to have brackets (held on either side of bore 6) that has flushing groove 7 axially between the brackets.
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the wing of Quesenbury in view of the wing of Zhang, et al. that includes the two brackets and the flushing groove between the brackets with a reasonable expectation of success to enable fluid flow about the wing.
Regarding claim 23, Quesenbury teaches the invention substantially as claimed, as described above, but does not teach that the wing includes at least two brackets, at the end of which, the pivot pin is arranged.
Zhang, et al. teaches that it is well-known in the art to mount expandable reamer wings (Figure 2) with two brackets (held on either side of the bore 6) to permit pivoting and support the wing (as shown in Figure 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the wings of Quesenbury in view of the wings with two brackets of Zhang, et al. with a reasonable expectation of success to support the wing and allow for pivoting and supporting the wing on the body.
Regarding claim 24, Zhang, et al. teaches the brackets are connected to each other by the material 8. Zhang, et al. does not teach that this material is over a half of the length of the bracket.
It would have been an obvious matter of design choice to select the bracket and the material sizes such that the material is over a half the length of the bracket, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Doing so would increase the strength of the wing’s bracket.
Note that those of ordinary skill in the art would appreciate that a modification such as a mere change in size of a component would be obvious. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See also, MPEP § 2144.04 which states: In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 25, the combination teaches the invention substantially as claimed, as described above, but does not that the at least two brackets include their own separate pivot pins at their end.
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date, to comprise a plurality of pins such that each bracket has their own separate pivot pins, as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. See also, MPEP § 2144.05 which states: In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
Claim(s) 28 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quesenbury alone.
Regarding claim 28, Goodwin teaches the invention substantially as claimed, as described above, but does not teach the wing, when turned to the drilling position, is substantially perpendicular in relation to the direction of the centre axis of the drill bit.
Regarding claim 29, Quesenbury teaches the invention substantially as claimed, as described above, but does not teach that the wing, when turned to the position turned forwards from the drilling position, is turned for at least 30 degrees forwards from the direction perpendicular to the direction of the centre axis of the drill bit.
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to modify the shape of Quesenbury’s wing to be substantially perpendicular to the center axis of the drill bit or at least 30 degrees forward from the perpendicular, since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Note that those of ordinary skill in the art would appreciate that a modification such as a mere change in shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin in view of Sartor.
Regarding claim 19, Goodwin teaches the invention substantially as claimed, as described above, and the outer part of the wing is arranged to turn the flow of the flushing medium towards the back part of the drill bit (by movement of fluid past the wings when the wings are deployed radially outward).
Goodwin does not teach that there are flushing grooves on the drilling surface of the pilot bit and the wing includes an outer part such that the flushing groove is arranged to convey flushing medium towards the outer part of the wing.
Sartor teaches that it is well-known in the art for a drill bit 10 to have flushing grooves (between 16) on the drilling surface 16 of the bit for conveying flushing medium 35 towards the outer part of the bit, to remove debris while drilling (Column 8: 56-59 “This usually results in the drilling fluid being in laminar flow along the outer edges of the blades and the relative smoothness of the cutting face facilitates removal of debris therefrom during the drilling operation”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the drill bit of Goodwin in view of the flushing grooves of Sartor with a reasonable expectation of success to facilitate removal of debris during drilling, such that fluid flow is directed towards the outer part of the wing, since the outer part of the wing is held by the radially outer portion of the drill bit.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin in view of Quesenbury.
Regarding claim 26, Goodwin teaches that the wing includes a drilling surface 31, and the invention substantially as claimed, as described above, but does not teach the drilling surface of the pilot bit and the drilling surface of the wing include drilling buttons.
Quesenbury teaches that it is known in the art for the drilling surface to include buttons 33 and for the drilling surface of the wing to include buttons 5, for providing desired abrasive wear resistance, creating desired abrasive cutting action Column 4: 47-53 (“The cutting and guiding edges are provided with "buttons" 5 and 7, respectively, of tungsten carbide or other material which is highly resistant to abrasive wear, which are brazed or otherwise securely affixed in place. On the cutting edge 4 the buttons 5 provide a durable surface to provide the necessary abrasive cutting action”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the drill bit and wing of Goodwin in view of the buttons of Quesenbury with a reasonable expectation of success to provide abrasive wear resistance and desired abrasive cutting action.
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive. applicant's arguments that Quesenbury does not teach the flow of flushing medium is configured to flow on the drilling surface in a radial direction, and configured to meet the outer part of the wing, and the outer part of the wing is configured to turn the flow towards the back part of the drill bit are refute. Flow ports/ outlets 30 flow fluid to the drilling surface (as shown in Figure 5). Once fluid exits ports 30, at least some of the fluid will necessarily flow radially outward, due to the interaction of the drilling surface and the ground that it is drilling. Similarly, the side walls of the wings 8 are part of the "outer part" of the wings, and the constraints of the bottom of the boerhole as well as these sidewalls and the borehole wall will necessarily turn the flow towards the back part (the upper part) of the drill bit due to the fluid having no where else to flow in a confined location such as in the borehole the drill bit is drilling.
In a similar manner, Goodwin's drill face at the bottom of 24 interacting with a borehole that the bit is drilling will direct fluid from 26 radially outward from the rotational centerline the bit due to the fluid having no other option to flow once it leaves 26, and therefore will also move upwardly and the side walls of 15 will therefore also at least nominally direct fluid towards the back (towards the top of Figure 1) due to restriction of fluid flow therepast the sidewalls of 15.
Therefore, applicant's arguments regarding dependent claims are similarly refuted.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cathleen Hutchins whose telephone number is (571)270-3651. The examiner can normally be reached M-F 11am-9:30PM EST.
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/CATHLEEN R HUTCHINS/Primary Examiner, Art Unit 3672 4/30/2026
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