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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 01/28/2026.
Claims 1, 4, and 10 have been amended.
Claims 2-3 cancelled.
Claims 15-16 added.
Claims 1, and 4-16 are currently pending and have been examined.
Response to Amendment
The amendment filed 01/28/2026 has been entered. Claims 1, and 4-16 remain pending in the application. Applicant’s amendments to the claims have overcome each rejection previously set forth in the Non-Final Office Action filed 10/28/2025.
Applicant’s argument with respect to the prior art rejections of the claims have been considered and found partially persuasive; therefore, the rejections have been withdrawn.
Regarding applicants’ amendments to claims 10-16, the amendments and arguments have been considered and are not persuasive because the new limitations are considered as mental and/or mathematical calculations; field of use; and well-understood, routine conventional activity. Therefore, the 35 U.S.C. 101 rejection is maintained.
Regarding applicant’s argument that probe positioned proximate to a cutter backside and electronic storage device integrated into a cavity of the drill bit taken together cannot be performed by a human mind is not persuasive.
The electronic storage device (i.e. non-transitory machine-readable storage medium) is an additional element whose functions is recited at a high level of generality and are merely invoked as a tool to perform the abstract idea. The recitation of the probe, backside of a cutter element, cavity and drill bit merely restrict the application to a particular technical environment or field of use. While Examiner agrees that these elements are physical elements, as argued by the Applicant, they are considered insignificant and therefore do not provide a practical application for the claimed judicial exception.
More specifically, other than reciting “downloading the acquired data from an electronic storage device disposed within a cavity of a drill bit,” nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. The mere recitation of generic computing elements does not take the claim out of the mental process grouping. Furthermore, as discussed in MPEP §2106.04(a)(2)(III)(A), claims directed toward a mental process include claims to “‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 199 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)”. The step of “acquiring” under BRI merely requires understanding of the data or information which the human mind is capable of doing. Data is received by the probe at the described location; however, this is not a positively recited method steps of measuring, and simply gathering data understood to be the BRI of “acquiring” as discussed above. Thus, the claim recites an abstract idea.
Regarding applicant’s argument that a specific computational technique rooted in physical science for the correlation of the measured and an actual measurement cannot be perform mentally or with pen and paper is not persuasive. The limitation of “correlate the measured environmental parameter with an actual environmental parameter proximate a cutting surface of the cutter element by applying heat transfer correlations that account for material properties of the cutting layer,” (emphasis added) are 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 which include “observations, evaluations, judgments, and opinions” (emphasis added, see MPEP 2106.04(a)(2)(III)). The additional limitation of “applying heat transfer correlations” constitutes the use of mathematical relationships, formulas, or calculations which are abstract ideas. The additional limitation of “applying heat transfer correlations” constitutes the use of mathematical relationships, formulas, or calculations which are abstract ideas. These claims also recite limitations that further define the “environmental parameter,” and “correlating” which further limits the abstract idea with more specific data elements. The recitation of the specific variables (i.e. correlating, measured and actual parameter…) is insufficient as “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas (See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Applicant further argues that the computational methods are too complex to be performed mentally or with pen and paper, but the Examiner does not find this persuasive because said complexity is not present in the claim. A computer may perform the correlations more quickly does not preclude the limitation from being characterized as a mental process. The correlations can still be performed in the human mind, pen and paper, or a generic computing device. The use of a computer to accelerate the correlations does not remove the limitation from a category of abstract mental processes.
Regarding applicant’s argument that positioning a probe at the back side of a cutter element is an unconventional arrangement is not persuasive. The limitation of a probe positioned proximate to a backside of a cutter element, amounts to a well-understood, routine conventional activity as cited in Hird et al. (US11828164) or Cao et al. (US11111731).
Regarding the applicant’s argument that modeling and measuring environment conditions at the drill bit integrates into a practical application in not persuasive. The claim recites limitations that are considered insignificant extra-solution activity. As noted in MPEP 2106.05(g), limitations directed toward “necessary data gathering and outputting” is considered insignificant. The claim does not recite anything more than a generic retrieval of data; therefore, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea.
However, upon further consideration, the amendments raise new issues and a new ground(s) of rejection is made.
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 must be shown or the feature(s) canceled from the claim(s) and no new matter should be entered:
Claim 15 recites braze, and passage of cutter is protected from the braze.
Claim 16 recites extension inhibits flow of braze.
The drawings are objected to for the following:
Figures 3A-3B are illustrated as a cross sectional views however the figures do not include any cross hatching.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 recites: passage of the cutter element is protected from braze material during brazing of the cutter element within the pocket, but there is no corresponding disclosure in the specification that adequately describes or explains the subject matter of protecting the passage of the cutter element from the braze material.
The specification lacks any discussion of elements or methods of assembly to protect the passage of the cutter element from the braze material during brazing of the cutter element within the pocket. Therefore, the claimed subject matter is not sufficiently supported by the written description.
Claim 16 recites: an extension within the cutter element inhibits flow of braze material into a passage of the cutter element during the brazing, but there is no corresponding disclosure in the specification that adequately describes or explains the subject matter of an extension within the cutter element protecting the passage of the cutter element from the braze material.
The specification lacks any discussion of an extension to protect the passage of the cutter element from the braze material during brazing of the cutter element within the pocket. Therefore, the claimed subject matter is not sufficiently supported by the written description.
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 15 and 16 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.
Claim 15 recites the limitation: passage of the cutter element is protected from braze material during brazing of the cutter element within the pocket. It is unclear how the passage of the cutter element is protected from the braze material during brazing in order to meet the claim invention, and one of ordinary skill in the art would be reasonably apprised of the scope of the invention.
Claim 16 recites the limitation: an extension within the cutter element inhibits flow of braze material into a passage of the cutter element during the brazing. It is unclear how an extension within the cutter element inhibits the flow of braze into the passage of the cutter element during brazing in order to meet the claim invention, and one of ordinary skill in the art would be reasonably apprised of the scope of the invention.
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 10-16 is 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.
Claim 10 is directed to a method (process). 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 10 recites abstract limitations as shown underlined below:
A method, comprising:
acquiring data from a probe positioned proximate to a backside of a cutter element of a drill bit, wherein the data is indicative of a measured environmental parameter, and wherein the probe comprises a measuring tip abutting a back side of a cutting layer of the cutter element;
downloading the acquired data from an electronic storage device disposed within a cavity of the drill bit; and
processing the downloaded data using a computing device to correlate the measured environmental parameter with an actual environmental parameter proximate a cutting surface of the cutter element by applying heat transfer correlations that account for material properties of the cutting layer.
These limitations, as drafted, are 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 additional limitation of “applying heat transfer correlations” constitutes the use of mathematical relationships, formulas, or calculations which are abstract ideas.
More specifically, other than reciting “downloading the acquired data from an electronic storage device disposed within a cavity of a drill bit,” nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. The mere recitation of generic computing elements does not take the claim out of the mental process grouping. Furthermore, as discussed in MPEP §2106.04(a)(2)(III)(A), claims directed toward a mental process include claims to “‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 199 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)”. The step of “acquiring” under BRI merely requires understanding of the data or information which the human mind is capable of doing. Thus, the claims recite an abstract idea.
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.
Claim 10 recite additional elements as shown bolded below:
A method, comprising:
acquiring data from a probe positioned proximate to a backside of a cutter element of a drill bit, wherein the data is indicative of a measured environmental parameter, and wherein the probe comprises a measuring tip abutting a back side of a cutting layer of the cutter element;
downloading the acquired data from an electronic storage device disposed within a cavity of the drill bit; and
processing the downloaded data using a computing device to correlate the measured environmental parameter with an actual environmental parameter proximate a cutting surface of the cutter element by applying heat transfer correlations that account for material properties of the cutting layer.
The electronic storage device (i.e. non-transitory machine-readable storage medium) is an additional element whose functions is recited at a high level of generality and are merely invoked as a tool to perform the abstract idea. The recitation of the probe, backside of a cutter element, drill bit, measuring tip, downloading, data, and cavity merely restrict the application to a particular technical environment or field of use.
Regarding the limitations probe, a backside of a cutter, a drill bit, a measuring tip abutting a back side of a cutting layer, and cavity; these limitations are not positively recited as the claim merely refers to the limitations without expressly reciting the structure or how they interact. Data is received by the probe at the described location, however, these are not positively recited method steps of measuring, and simply gathering data understood to be the BRI of “acquiring” as discussed above.
Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea or controlling, modifying, or affecting the operation of the drill bit.
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).
As discussed above, the limitations of the probe, a backside of a cutter, a drill bit, a measuring tip abutting a back side of a cutting layer, and cavity merely links the use of the judicial exception to a particular technical environment or field of use. Thus, even when viewed as an ordered combination, nothing in the claim(s) add significantly more (i.e. an inventive concept) to the abstract idea. Furthermore; probe, a backside of a cutter, a drill bit, a measuring tip abutting a back side of a cutting layer, and cavity are generically claimed to provide data input for the abstract idea (see MPEP section 2106.05(h)).
As discussed above, the additional elements of downloading and the electronic storage device limitations amount to mere instructions to apply the exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
As discussed above, the additional element of a probe positioned proximate to a backside of a cutter element, amounts to a well-understood, routine conventional activity as cited in Hird et al. (US11828164) or Cao et al. (US11111731).
Regarding the method step of downloading the data from electronic storage device, the Versata court decisions cited in MPEP 2106.05(d)(II) indicate that mere storing and retrieving information in memory is a well‐understood, routine activity when it is claimed in a merely generic manner (as it is here).
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 11-12, 14 and 16, these claims recite the additional elements of “environmental parameter,” “thickness of cutter element,” “blade,” “edge,” “pocket,” “cavity,” “passage,” “brazing,” and “extension,” which merely restrict the application to a particular technical environment or field of use.
These claims also recite limitations that further define the “environmental parameter,” and “correlating” which further limits the abstract idea with more specific data elements. The recitation of the specific variables (i.e. correlating, measured and actual parameter…) is insufficient as “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas (See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)).
Regarding claim 13, this claim recites a limitation that is considered insignificant extra-solution activity. As noted in MPEP 2106.05(g), limitations directed toward “necessary data gathering and outputting” is considered insignificant. The claim does not recite anything more than a generic retrieval of data; therefore, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea.
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.
Claims 1, 4, 8-9, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hird et al. (US11828164) in view of Cao et al. (US11111731).
Claim 1. Hird discloses: A drill bit (Fig. 2), comprising:
a bit body (30 bit body, Fig. 2) configured to rotate about a central axis in a cutting direction of rotation (34 cutting direction about 33 axis, Fig. 2) , wherein the bit body includes a bit face (face of bit, Fig. 2);
a blade extending radially along the bit face (36 primary blades and 38 secondary blades, Fig. 2) and having a leading edge (edge of 46 leading face, Fig. 3) and a trailing edge (edge of 48 trailing face, Fig. 3), wherein the blade comprises:
a pocket (54 cavity, Fig. 16) proximate to the leading edge (Fig. 3) and configured to receive a cutter element (cutter, Fig. 10-15; Col. 6, lines 15-29);
a cavity (116 channel, Fig. 3, 16-17) behind the pocket (Fig. 16-17) and configured to receive an electronic device (106 wire, Fig. 17 or electronics accommodated within the bit itself; Col. 11, lines 43-49); and
a passage (combined passageway of bore of 96, Fig. 12-15 and 114 passage, Fig. 16-17) coupling the cavity to the pocket (Fig. 16-17) and configured to receive a probe (70 strain gage carrier, Fig. 15 and 108 temperature sensor, Fig. 17) coupled to the electronic device (Fig. 17),
a cutter element (44 cutter, Fig. 2 or assembly of 88, 90, and 96, Fig. 10-15, 17) arranged in the pocket and coupled to the blade (Fig. 2 or Fig. 17);
wherein the cutter element comprises:
a substrate (90 substrate, Fig. 17);
a cutting layer (88 cutting layer, Fig. 17) coupled to the substrate proximate to the leading edge (Fig. 17), the cutting layer comprising a cutting face (distal or exposed face of 88, Fig. 17 and a back side (proximal or unexposed fac of 88, Fig, 17).
Hird does not disclose: a pressure cap configured to seal the cavity and isolate the cavity from an external environment or a passage through the substrate to the back side of the cutting layer, wherein the passage of the cutter element is configured to couple to the passage of the blade, such that when received, the probe is proximate to the back side of the cutting layer.
Cao recites instrumented cutting elements for earth boring tools.
Cao teaches: a pressure cap (258 seal, Fig. 20) configured to seal the cavity (implicit passageway for 260 section of 250 conduit system, Fig. 20) and isolate the cavity from an external environment (implicit function of 258 seal, Fig. 20);
a passage (104 first hole, Fig. 1) through the substrate (140 substrate, Fig. 1) to the back side of the cutting layer (138 69table, Fig. 1); wherein the passage of the cutter element is configured to couple to the passage of the blade when the cutter element is arranged in the pocket (104 is coupled to 134, Fig. 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the instrumented cutter of Hird by including a seal and a passage through a substrate to the back side of the cutter as taught by Cao with a reasonable expectation of success in order to seal and isolate a cavity for the instrumentation from external influences and create a passage through substrate to the back side of the cutter for the instrumentation to contact the cutter as taught by Cao (Fig. 1, 20).
Claim 4. Hird in view of Cao teaches: The drill bit of claim 3, further comprising a probe arranged in the passage of the cutter element, wherein the probe comprises a measuring tip configured to abut the back side of the cutting layer (Cao: 120 sensor abuts to 114 terminus, Fig. 1).
Claim 8. Hird in view of Cao teaches: The drill bit of claim 4, wherein the probe comprises a thermocouple (Cao: thermocouple, Col. 7, lines 45-48).
Claim 9. Hird in view of Cao teaches: The drill bit of claim 4, wherein the electronic device is configured to acquire and store data from the probe (Cao: receive and store signals generated by 102 sensor; Col. 12, line 66 – Col. 13, line 4).
Claim 15. Hird in view of Cao teaches: The drill bit of claim 1, wherein the cutter element is brazed within the pocket (Hird: brazed, Col. 14, line 55-56; Cao: brazed, Col. 1, 58-60) wherein the passage of the cutter element is configured to couple to the passage of the blade (Hird: Fig. 17; Cao: Fig. 1), and wherein the passage of the cutter element is protected from braze material during brazing of the cutter element within the pocket (Cao: 132 extension protects cutter passage from 148 braze, Fig, 1).
Claim 16. Hird in view of Cao teaches: The method of claim 10, further comprising:
brazing the cutter element in a pocket of a blade of the drill bit, wherein an extension within the cutter element inhibits flow of braze material into a passage of the cutter element during the brazing (see previously rejected claim 15); and after the brazing, inserting the probe through a passage in the blade that couples to the passage of the cutter element (Cao: Col. 1, lines 50-57).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hird et al. (US11828164) in view of Cao et al. (US11111731) in further in view of Pierce et al. (US3745822).
Claim 5. Hird in view of Cao teaches: The drill bit of claim 4.
Hird in view of Cao does not teach: comprising a biasing element configured to bias the measuring tip into contact with the back side of the cutting layer.
Pierce discloses an apparatus for making temperature measurements where the temperature probe comprises of housing around a thermocouple, a biasing spring coupled to a shoulder to force the thermocouple probe to contact the wall where a measurement is to be received.
Pierce teaches: a biasing element (59 spring, Fig. 5) configured to bias the measuring tip into contact (Col. 5. lines 20-33).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the sensor of Hird in view of Cao with the probe of Pierce with a reasonable expectation of success in order to bias a sensor to contact the surface to be measured as taught by Pierce (Fig. 5).
Claim 6. Hird in view of Cao and further in view of Pierce teach: The drill bit of claim 5, wherein: the electronic device further comprises a housing (Pierce: tubular structure enclosing the 59 biasing spring, Fig. 5);
the probe further comprises a shoulder (Pierce: 61 flange, Fig. 5); and
the biasing element comprises a spring coupled to the housing and to the shoulder (Pierce: Fig. 5), the biasing element configured to bias the shoulder away from the housing (Pierce: 59 biasing spring forces the 61 flange away from the tubular structure enclosing the 59 biasing spring, Fig. 5).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hird et al. (US11828164) in view of Cao et al. (US11111731) and further in view of Mebarkai et al. (US9602045).
Claim 7. Hird in view of Cao teaches: The drill bit of claim 4.
Hird in view of Cao does not teach: comprising an adhesive configured to maintain contact between the measuring tip and the back side of the cutting layer.
Mebarkai discloses an apparatus comprising of an adhesive bound sensor coupled to a flowline to measure the temperature of a flowline.
Mebarkai teaches: an adhesive (thermal epoxy resin; Col. 7, lines 31-36) configured to maintain contact between the measuring tip and the back side (bond sensor 62 to steel pipe 40; Col. 7, lines 31-36; Fig. 3).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sensor of Hird in view of Cao as taught by Mebarkai with a reasonable expectation of success in order to bond the sensor with the back side of terminus using an adhesive as taught by Mebarkai (Col. 7, lines 31-36).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US11111731) in view of Haddad et al. (US6789937).
Claim 10. Cao discloses: A method, comprising:
acquiring data (data collection; Col. 16 line 57 – Col. 17 line 51) from a probe (102 senor, Fig. 1) positioned proximate to a backside of a cutter element (114 terminus of 138 table, Fig. 1) of a drill bit (1900 earth boring tool, Fig. 19), wherein the data is indicative of a measured environmental parameter (temperature measured from thermocouple; Col. 7 lines 45-48), wherein the probe comprises a measuring tip abutting a back side of a cutting layer of a cutter element (120 sensor abuts to 114 terminus, Fig. 1;
downloading the acquired data (transmission; Col. 16 line 57 – Col. 17 line 51) from an electronic storage device (a storage, processing, and/or transmission module; Col. 12 line 66 – Col. 13 line 4) disposed within a cavity of the drill bit (1902 transmission module resides in internal portion of 1900 earth boring tool, Fig. 19; Col. 16 line 57 – Col. 17 line 9); and
processing the downloaded data using a computing device (a storage, processing, and/or transmission module to receive, store and analyze data implicitly requires a computing device; Col. 12 line 66 – Col. 13 line 4), the measured environmental parameter with an actual environmental parameter proximate a cutting surface of the cutter element (measure temperature of environment and/or operating condition of cutter element; Col. 1, lines 30-35).
Cao does not disclose: correlate the measured environmental parameter with an actual environmental parameter by applying heat transfer correlations that account for material properties.
Haddad discloses a method of calculating a static formation temperature from a measured temperature of a sample of formation fluid using formation properties.
Haddad teaches: correlate (Fig. 7) the measured environmental parameter (measured temperature obtained by probe; Box 7, Fig. 7; Col. 8, line 63-66) with an actual environmental parameter (estimate of static reservoir temperature, Col. 9, 11-13) by applying heat transfer correlations (temperature mode; Box 5, Fig. 7; Col. 8 lines 52-54) that account for material properties (input data; Box 1, Fig. 7; Col. 8 lines 33-35).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized the temperature correlation as taught by Haddad into the processing system of Cao with a reasonable expectation of success in order to determine the external cutter temperature using the measured temperature from the back side of the cutter as taught by Haddad (Fig. 7).
Claim 11. Cao in view of Haddad teaches: The method of claim 10, wherein the environmental parameter comprises temperature (Cao: thermocouple measures temperature, Col. 7, lines 45-48), heat flux, vibration, strain, or a combination thereof.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US11111731) in view of Haddad et al. (US6789937) and further in view of Hird et al. (US11828164).
Claim 14. Cao in view of Haddad teaches: The method of claim 10, wherein the drill bit comprises a blade (144 blade, Fig. 19) having a leading edge (edge of 144 blade face with 100 cutting elements, Fig. 19) and a trailing edge (edge of 144 blade face without cutting elements, Fig. 19), wherein the blade comprises:
a pocket (146 pocket, Fig. 10) proximate to the leading edge (Fig. 19) and configured to receive the cutter element (100 cutter in 146, Fig. 19).
Cao in view of Haddad does not teach: a cavity behind the pocket and configured to receive the electronic device; and
a passage coupling the cavity to the pocket and configured to receive the probe coupled to the electronic device.
Hird discloses a rotary cutting tool for use in a wellbore has an instrumented cutter fitted into a cavity in the tool body.
Hird teaches: a cavity (116 channel, Fig. 3, 16-17) behind the pocket (Fig. 16-17) and configured to receive an electronic device (106 wire, Fig. 17 or electronics accommodated within the bit itself; Col. 11, lines 43-49);
a passage (combined passageway of bore of 96, Fig. 12-15 and 114 passage, Fig. 16-17) coupling the cavity to the pocket (Fig. 16-17) and configured to receive a probe (70 strain gage carrier, Fig. 15 and 108 temperature sensor, Fig. 17) coupled to the electronic device (Fig. 17).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the bit and cutter configuration of Cao in view of Haddad by including a cavity and a passage as taught by Hird with a reasonable expectation of success in order to have a cavity to incorporate electronic devices, and a passageway coupled to the cavity and pocket for a probe coupled to an electronic device as taught by Hird (Fig. 12-17).
Claim 13 is ejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US11111731) in view of Haddad et al. (US6789937) and further in view of Zhan et al. (US11111732).
Claim 13. Cao in view of Haddad teaches: The method of claim 10.
Cao in view of Haddad does not teach: retrieving the drill bit to a surface location prior to downloading the acquired data.
Zhan discloses a method for obtaining sensor data from sensors incorporated into a drill bit where the sensor data is downloaded to the data acquisition system when the drill bit is returned to the surface.
Zhan teaches: retrieving the drill bit to a surface location prior to downloading the acquired data (Col. 5, lines 24-26).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sensor of Cao in view of Hird as taught by Zhan with a reasonable expectation of success in order to store sensor data and to download the data after the bit is returned to the surface as taught by Zhan (Col. 5, lines 24-26).
Allowable Subject Matter
The subject matter of claim 12 may be allowable over the prior art of record but it is not in condition for allowance even when combined with the base claim or any intervening claim because it is fully rejected under 35 U.S.C. 101.
The following is an examiner’s statement of reasons for allowance:
Claim 12 read on a method utilizing a probe positioned proximate a back side of the cutter element to measure an environmental parameter and correlating a first measured environmental parameter with a first actual environmental parameter based upon a first thickness of a cutting layer, and correlating a second measured environmental parameter with a second actual environmental parameter based upon a second thickness of the cutting layer.
The claimed invention has been examined in light of prior art, including relevant searches of published patent documents, non-patent literature and other sources. Based upon this examination, no prior art has been identified that discloses or teaches the claimed invention in its entirety.
Specifically, none of the references disclosed in the prior art show or suggest the combination of correlating a first measured environmental parameter with a first actual environmental parameter based upon a first thickness of a cutting layer, and correlating a second measured environmental parameter with a second actual environmental parameter based upon a second thickness of the cutting layer. Therefore, these limitations in combination with the remainder of the claim, is deemed allowable.
For example, Cao et al. (US11111731) in view of Haddad et al. (US6789937) teaches a method of correlating the exposed and unexposed temperatures of cutter element using a probe proximate the back side of cutter element.
The prior art references do not disclose using a probe and a correlation of first and second environmental parameters using cutter layer thickness.
The unique combination of elements recited in the claims results in a new and non-obvious solution that is not anticipated or rendered obvious by the cited references.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moellendick et al. (US11255130) and Li et al. (US11414980) teach computing devices within a cavity in a drill bit.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 7:30 AM to 5:00 PM CST.
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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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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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