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 .
Claim Objections
Claim 12 is objected to because of the following informalities: The recitation “the inner surface” lacks antecedent basis. Appropriate correction is required.
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.
Claims 1, 2, 4-13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grady, U.S. 2,931,630.
Re: claim 1, Grady discloses a drill bit (fig 1, col. 2, lines 64-66) for cutting a hole in a formation, the drill bit having a longitudinal axis (fig 1, at central bore 27; col. 4, lines 5-7) extending through a center of the drill bit, wherein a plane including the longitudinal axis of the drill bit bisects the drill bit and divides the drill bit into first and second sides (fig 2, side of 20, 19, 17; col. 3, lines 38-45 and circumferential side opposite 20, 19, 17), wherein the drill bit comprises: a shank (fig 1, 12) defining an interior space (central bore 27); a crown (fig 1, 13) coupled to the shank (12), the crown comprising: a circumferential outer surface (15); a cutting face (fig 3, 16; col. 3, lines 17-22); and at least one bore (fig 2, 26; col. 4, lines 5-9) that extends through the crown (13) from the interior space (27) of the shank (12) to the cutting face (16), each bore having an outlet defined by the cutting face, wherein each outlet has a perimeter (26 at 16) defined by an intersection between the bore and the cutting face, wherein the cutting face defines a face channel (19, 17, 20; col. 3, lines 38-45) that extends to the circumferential outer surface of the crown, wherein the face channel comprises an outlet (20) where the face channel meets the circumferential outer surface of the crown, wherein the longitudinal axis intersects the face channel, wherein greater than 50% of the perimeter of the outlet of each bore of the at least one bore is positioned on the first side (side opposite 20, 19, 17) of the drill bit, and wherein the outlet (20) of the face channel is on the second side of the drill bit.
Claim 2, Grady discloses the crown (13) comprises a plurality of buttons (14; col. 3, lines 2-6) that are secured to the cutting face of the drill bit.
Claim 4, Grady discloses a plurality of bores (26, fig 2).
Claim 5, Grady discloses exactly two bores (the reference appears to consist five bores 26, however the open-ended preamble does not preclude addition elements) that extend through the crown from the interior space of the shank to the cutting face.
Claim 6, Grady discloses each bore (26) of the at least one bore extends along a path that diverges (col. 4, lines 5-9, the ports 26 extend laterally from the central bore 27) from the longitudinal axis of the drill bit in a distal direction toward the cutting face.
Claim 7, Grady discloses the circumferential outer surface (15) of the crown (13) comprises a plurality of longitudinally extending channels (fig 2, 29; col. 4, lines 27-41) extending radially inwardly toward the longitudinal axis.
Claim 8, Grady discloses the face channel (17, 19, 20) extends between and is in fluid communication (fig 2, via water course 28) with a bore (26) of the at least one bore and a longitudinally extending channel (29) of the plurality of longitudinally extending channels (col. 4, lines 5-41).
Claim 9, Grady discloses an entirety of the perimeter of the outlet of each bore (26) of the at least one bore is positioned on the first side (side excluding 20, 19) of the drill bit.
Claim 10, Grady discloses the face channel (19, 17, 20) comprises side wall portions (fig 2, 21, 22; col. 3, lines 50-53) that converge in a direction from the first side of the drill bit to the second side of the drill bit.
Claim 11, Grady discloses the cutting face (16) has a distal-most portion (fig 4, lowermost portion at core 18; col. 3, lines 25-29), wherein the face channel (19, 17, 20) comprises a base surface (fig 5, upper wall 25; col. 3, lines 72-75) having a portion (24) that increases in spacing from the distal- most portion (fig 4, the lowermost portion at the bottom of the drill bore) of the cutting face along the longitudinal axis in a radially outward direction.
Claim 12, Grady discloses in figure 3 the portion (24) of an inner surface (inner surface of the base 25) of the face channel is U-shaped.
Claim 13, Grady discloses in figure 2 the crown (13) of the drill bit is symmetric about a plane (fig 2 cutaway line 4) that bisects the face channel (19, 20, 17) and includes the longitudinal axis (cutaway line 4 appears to pass through the center of the bit).
Claim 17, Grady discloses the outlet (20) of the face channel (19, 17) is the only outlet of the face channel.
Claims 1, 2, 3, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aalund, U.S. 3,583,504.
Re: claim 1, Aalund discloses a drill bit for cutting a hole in a formation (a percussion rock bit; col. 1, lines 2-4), the drill bit having a longitudinal axis (col. 2, lines 3-6) extending through a center of the drill bit, wherein a plane including the longitudinal axis of the drill bit bisects the drill bit and divides the drill bit into first and second sides, (fig 2 side having wash passages 15, 16, 17 and side having the asymmetrical cutter inserts 20; col. 1, line 70 —col. 2, line 14) wherein the drill bit comprises: a shank (at the mounting end of a drill string; col. 2, lines 15-19) defining an interior space (fig 1, 19); a crown (fig 1, A; col. 1, lines 61-63) coupled to the shank, the crown comprising: a circumferential outer surface (fig 2 B); a cutting face (fig 1 C); and at least one bore (wash passages 15, 16, 17) that extends through the crown (A) from the interior space (19) of the shank to the cutting face, each bore having an outlet defined by the cutting face, wherein each outlet (inherently) has a perimeter defined by an intersection between the bore (15, 16, 17) and the cutting face (C), wherein the cutting face defines a face channel (fig 2, recessed surface 11 and flutes 6, 7, 8; col. 1, line 68 —col. 2, line 2) that extends to the circumferential outer surface of the crown, wherein the face channel comprises an outlet (outlet of flutes 6, 7, 8) where the face channel meets the circumferential outer surface of the crown, wherein the longitudinal axis intersects the face channel (the recess appears to be centered in the bit A), wherein greater than 50% of the perimeter of the outlet of each bore (15, 16, 17) of the at least one bore is positioned on the first side (opposite the asymmetrical cutting inserts 20) of the drill bit, and wherein the outlet of the face channel (at flute 6 and 8) is on the second side (opposite the bores 15, 16, 17) of the drill bit.
Claim 2, Aalund discloses the crown (A) comprises a plurality of buttons (fig 2, 20-27; col. 2, lines 7-12) that are secured to the cutting face of the drill bit.
Claim 3, Aalund discloses at least one button (20) of the plurality of buttons is positioned within the face channel (in recess11).
Claim 14, Aalund discloses the drill bit is a percussive drill bit (a percussion rock bit; col. 1, lines 2-4).
Claim 16, Aalund discloses the outlet of each bore (15, 16, 17) of the at least one bore is within the face channel (within recess 11).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. U.S. 12,281, 522. Although the claims at issue are not identical, they are not patentably distinct from each other because of conflicting claims below.
Patented claim 1 includes all the limitations of pending claims 1 and 18.
Patented claims 2-14 require all the limitations of pending claims 2-14 respectively.
Patented claim 17 includes all the claimed limitations of pending claims 1 and 15.
Patented claims 15 and 16 require all the limitations of pending claims 16 and 17 verbatim.
Patented claim 18 includes all the limitations of pending claim 19.
Patented claims 19 and 20 require all of the limitations of pending claims 20 and 21.
Conclusion
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29 November 2025
/KENNETH L THOMPSON/ Primary Examiner, Art Unit 3676