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 .
Terminal Disclaimer
The terminal disclaimer filed on 27 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. 12,338,697 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 27 May 2026 have been fully considered but they are not persuasive.
Applicant argue the prior art of Church does not disclose a combined bit assembly formed by sliding engagement, but instead discloses a unitary drilling tool having components and radial expansion cutters that are not a separate larger assembly that slidable engages a smaller assembly because the components of the same tool are actuated internally.
The reference discloses a drill bit 12 and an expandable reamer 21 in a single tool for a boring operation as explained in the non-final rejection dated 3 February 2026.
Applicants argue the prior art of Church discloses the locking jaws 19 and threads 17 as the alleged one- way mechanism whereas the features provide selective engagement/disengagement of the tool relative to a drill collar, and not directionally controlled sliding between two assemblies; and determined that the art does not disclose a mechanism permitting relative axial motion in one direction while preventing motion in the opposite direction.
Necessary for operation of the prior art device, selective engagement of the tool is by way of axial movement of the lockable assembly to expand the reamers in the drilling direction.
Applicants argue the prior art of Davey Sr. et al. does not disclose a smaller and larger bit assembly because the casing shoe follows the drill bit a predetermined distance during drilling and do not combine into a single combined drill bit assembly.
Notwithstanding the argued limitations absent from the claims, the reference discloses a pair of concentric drilling tools wherein the inner concentric drilling tool is selectively engageable with the outer drilling tool.
Applicants argue the prior art does not disclose a sliding interface between two assemblies that merge into a combined bit assembly.
The drilling tool includes an inner and outer cutting tools of the drill bit slide into a locking engagement via the lug and slot arrangement.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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, 11, 12 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Church, U.S. 1,571,931.
See Non-Final rejection dated 3 February 2026. Thanks.
Claims 1-4, 11-14 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davey, Sr., et al., U.S. 3,190,378.
See Non-Final rejection dated 3 February 2026.
Allowable Subject Matter
Claims 5-10 and 15-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 KENNETH L THOMPSON whose telephone number is (571)272-7037. The examiner can normally be reached Weekdays; 9:00-5:00, est.
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9 June 2026
/KENNETH L THOMPSON/Primary Examiner, Art Unit 3676
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