DETAILED ACTION
The preliminary amendment filed 2/26/2025 has been entered.
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 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.
Claim 20 is 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 20 recites that the one or more interface cutting element comprise at least two interface cutting elements “aligned” with the longitudinal axis of the rolling cutter assembly. As best understood, this is illustrated in fig 6 with multiple cutters 208 and rolling cutter assembly longitudinal axis 128. However, it appears that only one cutter could be “aligned” (as in a line) with the longitudinal axis, and therefore this claim is indefinite.
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) 16-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Shamburger, Jr. (US 5,695,019).
In regard to claim 16, Shamburger, Jr. discloses an earth-boring tool comprising: a rolling cutter assembly (20, as in fig 2) configured to rotate relative to a tool body (18) of the earth-boring tool about a longitudinal axis of the rolling cutter assembly; and one or more interface cutting elements (50, as in fig 2) extending from the tool body toward a surface of the rolling cutter assembly, the one or more interface cutting elements configured to break up debris in a region between the rolling cutter assembly and the tool body (as would perform, also see col. 4, lines 42+).
In regard to claim 17, Shamburger et al. disclose wherein the one or more interface cutting elements extend from the tool body toward a face surface of the rolling cutter assembly (as in figs 2 and 3, where 50 extends toward end surfaces 22 of each cone), wherein the face surface of the rolling cutter assembly is in a plane substantially perpendicular to the longitudinal axis of the rolling cutter assembly (22 as in fig 2, 3).
In regard to claim 18, Shamburger et al. disclose wherein the one or more interface cutting elements include a substantially planar cutting face (50 as in fig 2) extending in a second plane substantially perpendicular to the longitudinal axis of the rolling cutter assembly (as in fig 2 where left most 50 is at least substantially perpendicular to axis 44, and where there would be multiple at such an angle as in fig 3).
In regard to claim 19, Shamburger et al. disclose wherein the one or more interface cutting elements extend from the tool body toward a side surface of the rolling cutter assembly (as in fig 2, where any surface may be considered a “side surface”).
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) 1-4, 7-8, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poteet, III (US 2017/0175450) in view of Reed (US 1,908,049).
In regard to claim 1, Poteet, III discloses an earth-boring tool comprising: a tool body (6); at least one blade (12); a rolling cutter pocket defined in the tool body adjacent the at least one blade (as in fig 1 between blades 12); a rolling cutter assembly (10) disposed in the pocket, the rolling cutter assembly including a plurality of cutting elements extending from a surface of the rolling cutter assembly (42/44/46). Poteet III does not disclose at least one interface cutting element extending from a surface of the pocket.
Reed, in a similar field of endeavor, discloses an earth-boring tool including a tool body (1) and at least one interface cutting element (12) extending from a surface of the tool. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the at least one interface cutting element as taught by Reed, with the tool of Poteet, III in order to clear the rolling cutter assembly of debris while cutting (Reed, page 1, line 72-98).
In regard to claim 2, Poteet, III discloses wherein the plurality of cutting elements are arranged in at least two rings about the surface of the rolling cutter assembly (as in fig 2).
In regard to claim 3, Reed discloses wherein the at least one interface cutting element extends from the surface of the pocket at a position that coincides with a gap between at least two rings (as in fig 2, where as combined would include such positioning).
In regard to claim 4, Reed discloses wherein the at least one interface cutting element extends into a plane of the at least two rings of the plurality of cutting elements without contacting the plurality of cutting elements (as extending between rows, page 1, lines 72-80).
In regard to claim 7, as combined above, the at least one interface cutting element extends from the surface of the pocket toward the surface of the rolling cutter assembly from which the plurality of cutting elements extend (as similar in Reed as extending from surface of tool body).
In regard to claim 8, as combined above, the at least one interface cutting element extends from the surface of the pocket toward a face of the rolling cutter assembly (as may be considered as extending within groove), wherein the face of the rolling cutter assembly is free of the plurality of cutting elements (where no cutting elements are within groove between rows where interface cutter as combined would extend).
In regard to claim 11, Reed discloses wherein the at least one interface cutting element comprises a substantially planar cutting face (as on end of 12, fig 3).
In regard to claim 12, Poteet, III discloses a method of forming an earth-boring tool comprising: forming a tool body (6) comprising at least one blade (12) and a pocket defined in the tool body adjacent the at least one blades (as in fig 1, pocket as containing 10); disposing a rolling cutter assembly (10) into the pocket. Poteet, III do not disclose coupling at least one interface cutting element to the tool body in the pocket, wherein the at least one interface cutting element is positioned between at least two cutting elements extending from the rolling cutter assembly.
Reed, in a similar field of endeavor disclose a method of forming an earth-boring tool comprising: coupling at least one interface cutting element (12) to a tool body (1) in, wherein the at least one interface cutting element is positioned between at least two cutting elements extending from a rolling cutter assembly (as in fig 2, 12 as between rows 6, page 1, lines 72+). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Poteet, III with the at keast one interface cutting element, as taught by Reed, in order to clear the rolling cutter assembly of debris while cutting (Reed, page 1, line 72-98).
In regard to claim 13, Reed discloses wherein coupling the at least one interface cutting element to the tool body comprises removably coupling the at least one interface cutting element to the tool body (as in page 1, lines 85-90 as holding 13).
In regard to claim 14, Poteet, III disclose wherein disposing the rolling cutter assembly into the pocket comprises rotatably coupling the rolling cutter assembly to an arm adjacent to the pocket (as coupled with arm 16).
In regard to claim 15, as combined above, the method would include wherein disposing the rolling cutter assembly into the pocket, comprises positioning the rolling cutter assembly, such that a first ring of cutting elements comprising a first cutting element the at least two cutting elements is positioned on a first side of the at least one interface cutting element and a second ring of cutting elements comprising a second cutting element of the at least two cutting elements is positioned on a second opposite side of the at least one interface cutting element (as positioned in Reed as between rows 6 in fig 2 and would be between rows as in fig 2 of Poteet, III).
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poteet, III in view of Shamburger, JR.
In regard to claim 1, Poteet, III discloses an earth-boring tool comprising: a tool body (6); at least one blade (12); a rolling cutter pocket defined in the tool body adjacent the at least one blade (as in fig 1 between blades 12); a rolling cutter assembly (10) disposed in the pocket, the rolling cutter assembly including a plurality of cutting elements extending from a surface of the rolling cutter assembly (42/44/46). Poteet III does not disclose at least one interface cutting element extending from a surface of the pocket.
Shamburger, Jr., in a similar field of endeavor, discloses an earth-boring tool including a tool body (18) and at least one interface cutting element (50) extending from a surface of the tool. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the at least one interface cutting element as taught by Shamburger, Jr., with the tool of Poteet, III in order to cut any material which may extend behind the rolling cutter assembly (as in Shamburger, Jr. col. 4, lines 45+).
In regard to claim 2, Poteet, III discloses wherein the plurality of cutting elements are arranged in at least two rings about the surface of the rolling cutter assembly (as in fig 2).
In regard to claim 5, Shamburger, Jr. disclose wherein the at least one interface cutting element is formed from a super hard material (col. 4, lines 48-50).
In regard to claim 6, Shamburger, Jr. disclose wherein the super hard material comprises at least one of diamond (col. 4, lines 48-50), boron nitride, silicon carbide, a carbide of titanium, tungsten, or tantalum, and a boride of titanium, tungsten, or tantalum.
Claim(s) 1-2 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poteet, III in view of Esseling (US 1,306,674)
In regard to claim 1, Poteet, III discloses an earth-boring tool comprising: a tool body (6); at least one blade (12); a rolling cutter pocket defined in the tool body adjacent the at least one blade (as in fig 1 between blades 12); a rolling cutter assembly (10) disposed in the pocket, the rolling cutter assembly including a plurality of cutting elements extending from a surface of the rolling cutter assembly (42/44/46). Poteet III does not disclose at least one interface cutting element extending from a surface of the pocket.
Esseling, in a similar field of endeavor, discloses an earth-boring tool including a tool body (1) and at least one interface cutting element (6) extending from a surface of the tool. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the at least one interface cutting element as taught by Esseling with the tool of Poteet, III in order to cut any material which may extend behind the rolling cutter assembly (as in Esseling. Page 1, lines 103-105).
In regard to claim 2, Poteet, III discloses wherein the plurality of cutting elements are arranged in at least two rings about the surface of the rolling cutter assembly (as in fig 2).
In regard to claim 9, Esseling discloses wherein the at least one interface cutting element comprises a non-flat cutting face (6 as in fig 1).
In regard to claim 10, Esseling discloses wherein the non-flat cutting face comprises at least one of a domed cutting face, a conical cutting face (6 as in fig 1), and a scribe cutting face (6 as in fig 1).
Allowable Subject Matter
Claim 20 appears would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims (as including at least two interface cutting elements with at least one aligned with the longitudinal axis of the rolling cutter assembly).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Green (US 2,041,467) and Pearce (US 2,654,578) disclose roller cone bits with debris removal features.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
8/24/2026
