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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/8/2026 has been entered.
Response to Amendment
Applicant has not filed a substantiative response to the drawing objections for two replies now, and therefore is not fully responsive as is required of them by MPEP 714.02. Applicant simultaneously "earnestly solicits a Notice of Allowance" in their Remarks. Applicant's resolution of the drawing objections is necessary through either submitting new figures that show the features but which do not add new matter, or the cancelation of the claimed limitations not shown in the originally filed figures. Applicant is asserting patentable novelty for all the claims but has not attempted to show the features of claims 3, 4, 6, 13, 14, & 16. Future replies which are not fully responsive will be treated per MPEP 714.03.
Applicant's amendments are sufficient to overcome US 6,045,440 (Johnson) under 102. Regarding the 102 rejection over US 2020/0224500 (Dubose) [the examiner's response are in bolded brackets in-line], Applicant argues that "[t]he Examiner's analysis relies upon a pla[i]n-view interpretation that divides a perimeter shape into right and left halves [There is nothing improper about this as it is the same way Applicant defines the present cutters; see present figure 3A. It is not necessary that the prior art use the same language or nomenclature as the present case in order to anticipate the claims, as is well established. These are imaginary / abstract geometric lines, so-to-speak. Any given geometric surface can be divided this way in the same manner as the present case. Further, the examiner notes that the profile views of figs 14-16 were cited extensively in the prior action, not just the "plain-views" as disparaged by Applicant]. That analysis does not establish that one of the identified perimeter segments is an edge profile [The recessed surfaces clearly extend to an edge of the cutter face and Applicant does not attempt to explain why the peripheral edges of recessed portions 1406 / 1506/ 1606 are not "an edge profile" in favor of simply stating it was not addressed by the examiner. The edge of the recesses are clearly shown in figs 14-16 and were reproduced in the prior action, as review of the prior action at pages 4, 14, & 20 will show. What does Applicant regard "peripheral edge 1008" - ¶ 94 & fig 10 - or "peripheral edge 1108" - fig 11 & ¶ 96 - in Dubose as teaching if there is no "perimeter segments [with] an edge profile" as they assert? Is Applicant asserting that recessed portions 1406 / 1506 / 1606 in figs 14-16 do not extend to the edge simply because the edge is not labeled in those particular figures, despite being clearly shown in those figures and discussed by name for other figures?] of the claimed first portion extending between the dividing line and a leading end of the relief surface ["leading wall 1408" - ¶ 106 & fig 14. "leading wall 1508" - ibid & fig 15. "leading wall 1608" - ¶ 107 & fig 16, as was cited several times in the prior action], that another identified perimeter segment is an edge profile [all the recessed portions clearly extend to the "peripheral edge", that edge is simply not numbered in figs 14-16] of the claimed second potion extending between the dividing line and a trailing end of that same relief surface ["trailing wall 1410" - ¶ 106 & fig 14. "trailing wall 1510" - ibid & fig 15. "trailing wall 1610" - ¶ 107 & fig 16, as was cited several times in the prior action]", or that the two edge profiles so defined are asymmetric [Clearly shown in the profile portions of figs 14-16; "the leading wall 1408 comprise a convex portion and the trailing wall 1410 comprises a concave portion" - ¶ 106 & fig 14. "[T]he leading wall 1508 comprises a concave portion and the trailing wall 1510 comprise a convex portion" - ¶ 106 & fig 15. "[T]he trailing wall 1610 is convex and the leading wall 1608 is linear... a trailing wall 1608 that is a concave or convex, and a leading wall 1610 that is substantially linear, or vice versa" - ¶ 107 & fig 16, as was cited several times in the prior action. Is Applicant asserting that "concave" and "convex" ends as shown in figs 14-16 are symmetrical?]. The examiner also notes that the profile portions of figs 14-16 clearly shows, in profile, asymmetric edges of the recessed portion, exactly as claimed, and in the same manner shown in present figure 3C. Applicant does not attempt to respond to this in their Remarks. The examiner maintains the prior grounds of rejection .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s). No new matter, including incidental features and shapes not fully supported by the original specification, should be entered. The examiner respectfully notes that Applicant is reciting specific shapes, orientations, sizes, and angles, as patentable & novel features. Therefore the "only one relief surface", for example, is not a merely perfunctory requirement. Applicant only shows a cutter with "only three relief surfaces" but conspicuously recites numerous variations in the claims - outlined below - that are not shown in the figures with appropriate detail as required by 37 CFR 1.83(a).
The cutting element with "only one relief surface" of claims 3 & 13 is not shown.
The cutting element with "only two relief surfaces" of claims 4 & 14 is not shown.
The cutting element with "only four relief surfaces" of claims 6 & 16 is not shown.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5-12, 15-21 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2020/0224500 (Dubose). In the interests of clarity, the examiner includes annotated versions of Dubose figs 14-16 below.
Independent claim 1. Dubose discloses a cutting element (title, abstract) comprising:
a cutting section ("superabrasive table 204" - ¶ 54. The superabrasive tables drawn to the present claims are shown in figs 14-16 & ¶ 105, however element numbers 1400 & 1500 are not used in the specification), the cutting section including a cutting section thickness (tc) (inherent and clearly shown in the profile portions of figs 14-16) and an exposed cutting face (upper face as shown in the isometric portions of figs 14-16) having a CenterPoint (Cp) (inherent to cylindrical elements; "the longitudinal center of the cutting element" - ¶ 105); and
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one or more relief surfaces extending into the cutting section (recessed portions 1406 / 1506 / 1606, defined between "adjacent spokes" 1304 / 1504 / 1604) proximate the CenterPoint (Cp) (The recessed portions are clearly shown extending from proximate the center in figs 14-16. The claim can not exclude the planar portion at the center as shown by present dependent claim 2), each of the one or more relief surfaces having a perimeter outer edge (the recessed portions are clearly shown extending to the edge of the cutting table, defining an edge between adjacent spokes) having a CenterPoint (CE) (the edges between adjacent spokes inherently has a "center point"), the one or more relief surfaces separatable into first ("1st" in the annotated version of fig 15 here) and second portions ("2nd" in the annotated version of fig 15 here) as defined by a line extending from the CenterPoint (CP) to the CenterPoint (CE) of the perimeter out edge (ibid; the examiner notes that these are imaginary / abstract geometric lines and it is moot that the prior art does not use the same nomenclature of the present case. It is clearly possible to divide the edge of the recessed portions in half and extend a line between the halves to the center of the circular face), and further wherein,
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for a given one of the one or more relief surfaces, an edge profile of the first portion ("peripheral edge" of "1st", clearly shown in the annotated figure here between Ce and 1508) extends between the line (line Cp-Ce in the annotated figure here and above) and a leading end of the given one or of the one or more relief surfaces ("leading wall 1508" - ¶ 106, which is, as shown in fig 16 as defining the end of the "1st" portion as defined above, as shown in the annotated version of fig 15 here. This interpretation is also applicable to "leading wall 1408" and "leading wall 1608" in figs 14 & 16), an edge profile of the second portion ("peripheral edge" of "2nd", clearly shown in the annotated figure here between 1510 & Ce) extends between the line (line Cp-Ce in the annotated figure here and above) and a trailing end of the given one or more relief surfaces ("the trailing wall 1510" - ¶ 106; shown in the annotated figure here. This interpretation is also applicable to "trailing wall 1410" and "trailing wall 1610" in figs 14 & 16), and the edge profile of the first portion is asymmetric with the edge profile of the second portion ("the leading wall 1408 comprise a convex portion and the trailing wall 1410 comprises a concave portion" - fig 14 & ¶ 106. "[L]eading wall 1508 comprises a concave portion and the trailing wall 1510 comprise a convex portion" - fig 15 & ¶ 106. "the trailing wall 1610 is convex and the leading wall 1608 is linear" - fig 16 & ¶ 107).
The examiner notes that fig 15 is used for claim 1 here, but that the same interpretation is applicable to figures 14 & 16, with their respective element numbers being either 14xx or 16xx for the same features shown in fig 15. The examiner also again notes that it is not necessary that the prior art use the same grammar or nomenclature as the present case in order to anticipate the claim. The portions are clearly recessed. The portions clearly extend to the periphery of the cutting face and form an edge. The edge clearly and inherently has an geometric center point between its two ends. The portions can clearly and inherently be "divided in half" (geometrically / abstractly speaking) by a abstract line from the center / central axis to the center of any given edge defined by the recessed portions. The portions clearly extend between two respective raised spokes with leading and trailing edges, which are named as such. The leading and trailing edges are expressly taught as being differently shaped (¶ 106), and the asymmetrical shape is clearly shown in the profiles of figs 14-16. The examiner again compares profile portion figure of present 3C to the profile portion of figs 14-16 of Dubose.
Independent claim 11 requires at least one cutting element recited identically to that of claim 1, in combination with a drill bit. The "cutting element" of claim 11 is similarly rejected as described for claim 1 above, respectfully not repeated again here. Dubose discloses a drill bit (fig 1), comprising: a bit body ("bit body 104" - fig 1 & ¶ 34);
one or more blades attached to the bit body ("The bit body 104 may include a plurality of raised blades 110 that extend from the face of the bit body 104" - ¶ 36);
one or more pockets formed in the one or more blades ("Each discrete cutting element 112 may be disposed within a recess or pocket in each blade 110" - ¶ 37; conventional rotary drag bit PDC mounting); and
one or more cutting elements fixed in the one or more pockets ("discrete cutting element 112" - ibid), wherein each cutting element includes [the features of claim 1] (as described for claim 1 above, respectfully not repeated again here).
Independent claim 21. Dubose discloses a well system (¶ 1) comprising:
a wellbore formed through one or more subterranean formations (¶s 1 & 33); and
a drill bit located in the wellbore (fig 1), the drill bit comprising the features of claim 11, as similarly described above and respectfully not repeated again here.
2 & 12. The cutting element as recited in Claim 1 / 11, further including a plateau located at the CenterPoint (CP), wherein the one or more relief surfaces extend into the cutting section from the plateau (Dubose: clearly shown in figs 14-16, but not individually numbered. Element 504 in fig 5A of Dubose).
5 & 15. The cutting element as recited in Claim 2 / 12, wherein the one or more relief surfaces are only three relief surfaces (fig 9; ¶ 134; the various features of the embodiments may be used together, so the three spoke embodiment of fig 9 may also be asymmetrical; ¶ 111).
6 & 16. The cutting element as recited in Claim 2 /12, wherein the one or more relief surfaces are only four relief surfaces (figs 14-16).
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7 & 17. The cutting element as recited in Claim 1 /11, wherein for the given one of the one or more relief surfaces, the edge profile of the first portion (right half of the profile edge as indicated by the annotations of fig 16 for claim 1 above) forms a longer arc length (by virtue of the greater curvature shown in the right half clearly shown) and the edge profile of the second portion (left side of the profile edge as indicated by the annotations of fig 16 above) forms a shorter arch length (by virtue of the lesser curvature shown in the left half / the portion of the immediately adjacent recesses to the right of the annotated portion in fig 16 above).
8 & 18. The cutting element as recited in Claim 7 / 11, wherein the edge profile of the first portion forming the longer arc length ("1st" in the annotated version for claim 1 above) is at a leading end of the given one of the one or more relief surfaces ("leading wall 1508" - ¶ 106. "leading wall 1608" on the right side of the recess: fig 16 & ¶ 107) and the edge profile of the second portion forming the shorter arc length ("2nd" in the annotated version for claim 1 above) is at a trailing end of the given one of the one or more relief surfaces ("trailing wall 1510" - ¶ 106; the edge at the far left side of "leading edge 1608" of the recess - ¶ 107).
9 & 19. The cutting element as recited in Claim 1 /11, wherein for the given one of the one or more relief surfaces, the edge profile of the first portion ("1st" / the right half of the profile shown in fig 14 where the "the leading wall 1408 comprise a convex" - ¶ 106) forms a first smaller angle (alpha) (The right half of the profile shown in fig 14 is a shallow slope. The profile shown in figs 15 & 16 is reversed from figure 14, and therefore the left half of the profile shown in figs 15 & 16 is a shallow slope), and the edge profile of the second portion ("2nd" / the left half of the profile shown in fig 14 where "trailing wall 1410 comprises a concave portion" - ¶ 106) forms a second greater angle (theta) (The left half of the profile shown in fig 14 is a steep slope. The right half of the profile shown in figs 15 & 16 is a steep slope).
10 & 20. The cutting element as recited in Claim 9 / 19, wherein the edge profile of the first portion ("1st) forming the first smaller angle (For claims 10 & 20, the "first portion" is drawn to the right half of the profile shown in fig 14 toward "leading wall 1408") is at a leading end of the given one of the one or more relief surfaces (defined by "leading wall 1408" which is also on the right half of the profile as shown in fig 14), and the edge profile of the second portion ("2nd") forming the second greater angle (For claims 10 & 20, the "second portion" is drawn to the left half of the profile shown in fig 14 toward "trailing wall 1410") is at a trailing end of the given one of the one or more relief surfaces (the opposite side from "leading wall 1408" is "trailing wall 1410").
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.
Claim(s) 3, 4, 13, & 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0224500 (Dubose) in view of US 2005/0247492 (Shen).
Claims 3 4, 13, & 12. Dubose discloses all the limitations of the parent claims but does not expressly disclose those of the present. However, Shen discloses a cutting element title, fig 1 & 8) having a cutting section ("an ultra hard top layer 140 for a cutter with a shaped working surface 142 and having a varied geometry chamfer 144 circumferentially around a cutting edge 146 at the intersection of the shaped working surface 142 and a side surface 148" - ¶ 66 & fig 8), the cutting section including a cutting section thickness (clearly shown by "side surface 148" in fig 8) and an exposed cutting face ("shaped working surface 143") having a CenterPoint ("central axis 152" - ¶ 66); and
one of more relief surfaces ("one or more depressions 150a, 150b, and 150c" - ¶ 66) extending into the cutting section from proximate the CenterPoint (fig 8), each of the one or more relief surfaces having a perimeter outer edge ("one or more depressions 150a, 150b, and 150c extending radially outwardly to the cutting edge 146" - ¶ 66) having a CenterPoint (inherent as similarly discussed above for Dubose, respectfully not repeated again here), the one or more relief surfaces separatable into first and second portions as defined by a line extending from the cutting face CenterPoint CP to the CenterPoint of the perimeter outer edge (inherent as similarly discussed above for Dubose, respectfully not repeated again here) and further wherein, for a given one of the one or more relief surfaces, an edge profile of the first portion extends between the line and a leading end of the given one or more relief surfaces (ends of the edge 146 defined by "depression 150a" are clearly shown on each side of the depression, generally denoted by element number 154 as shown in fig 8), an edge profile of the second portion extends between the line and a trailing end of the given one or more relief surfaces (the other end of "depression 150a" on the opposite side of 150a from the end generally denoted by element number 154). Further, "[w]hile three depressions 150a-c are depicted uniformly spaced around the shaped working surface 142, fewer or a greater number with uniform or non-uniform spacing may be formed" (¶ 66).
In other words, Shen teaches a clearly analogous cutter (as outlined in the above paragraph) that has recessed surfaces therein. There may be three or more recesses (fig 8 & "a greater number..." - ¶ 66) which comports to figs 9 & 14-16 of Dubose. Or there may be a "fewer... number" than the "three depressions" shown in fig 8 (¶ 66); i.e. "only one" for claims 3 & 13 or "only two" for claims 4 & 14. Beyond clearly teaching "only one" or "only two" in ¶ 66 as described above, these are also expressly shown in figs 19 & 20 ("only one") and fig 18 ("only two").
Therefore it would have been obvious to PHOSITA at the time of filing to use less than three or four depressions as taught by Shen with the cutter taught by Dubose. Shen teaches a clearly analogous cutter (as outlined in the above) and further teaches variability in the number of recesses with the reasonable expectation of success as shown by Shen. At its broadest, Dubose also teaches "at least one spoke" that forms the recessed surfaces (abstract), but does not specifically teach only one or only two. However Shen shows that only one and only two are known in the art for analogous cutters. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range (i.e. only one, or only two) involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
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