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 .
Drawings
The drawing rejections for drawings submitted on 11/29/2021 has been withdrawn.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 190 in fig. 11 and 12. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Line quality in all figures is poor, thus the drawings do not meet the reproducibility requirements of 37 CFR 1.84(L). Note that the drawings must be viewed in the USPTO Patent Center in order to see this problem. The drawings likely contain grayscale elements, which cause image degradation in the USPTO electronic filing system. Drawings must be entirely bi-tonal, containing only black or white color values. With specific attention to Fig. 15, this illustration appears to be directly generated by CAD software, and is being treated as a "photograph" in the context of 37 CFR 1.84(b). Photographs are only permitted when they are "the only practicable medium for illustrating the claimed invention." In this case, black and white line drawings are preferred. Fig. 15 contains shading which reduces legibility due to the presence of grayscale. See 37 CFR 1.84(m).
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 1-19 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.
Regarding claim 1, the phrase "(fluid)" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim 17 recites the limitation "the wall" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-16 and 18-19 are rejected for depending on claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 9-11, and 13-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Drenth et al. (US 10,626,676 B1), hereinafter Drenth.
Regarding claim 1, Drenth discloses a drill bit (100) having a central axis (318), the drill bit comprising:
a shank (132+108) defining an inner bore (190+110, see fig. 9 and fig. 3); and
a crown (130+116) having a cutting face (138+124, see fig. 7 and fig. 5), wherein the crown an outer operative circumference (122, see fig. 2) and comprises:
a core-receiving slot (142+194) in communication with the inner bore of the shank (see figures 8 and 9);
at least one peripheral slot (a first interpretation: 368+202+210) in communication with the inner bore of the shank (see fig. 7), the at least one peripheral slot being positioned radially between the core-receiving slot and the outer operative circumference of the crown (368+202+210 is within 122, see fig. 2);
at least one face channel (345+150), wherein each face channel of the at least one face channel extends between and is in (fluid) communication with the core-receiving slot and a respective peripheral slot of the at least one peripheral slot (368 fluidly connects to 142+194 via 345 and 150, see fig. 2 an fig. 7); and
a base portion (192) positioned within the core-receiving slot (see col. 9 lines 1-17, see fig. 7), wherein the base portion defines a breaking surface (see col. 9 lines 1-17, see fig. 12), wherein at least a portion of the breaking surface, or a plane tangential thereto, is oriented at an oblique angle to the central axis (see col. 9 lines 1-17, see fig. 12),
wherein the at least one peripheral slot is configured to receive fluid moving in a distal direction toward the cutting face of the crown (see fig. 2), and wherein the at least one face channel is configured to deliver fluid from the at least one peripheral slot to the core-receiving slot (see col. 10 lines 31-43, see fig. 12).
Regarding claim 2, Drenth further discloses wherein the at least one peripheral slot comprises a plurality of peripheral slots (368+202+210, in fig. 2 and fig. 7), and wherein at least one peripheral slot of the plurality of peripheral slots is not in communication with a face channel of the at least one face channel (202, see fig. 4).
Regarding claim 3, Drenth further discloses wherein the at least one peripheral slot comprises a plurality of peripheral slots (368+202+210, in fig. 2 and fig. 7), and wherein the at least one face channel comprises at least two face channels (channel 1 is top half 150+345 and channel 2 is the bottom half of 150+345 in fig. 2).
Regarding claim 4, Drenth further discloses wherein at least one peripheral slot of the plurality of peripheral slots has a different arc length than at least one other peripheral slot of the plurality of peripheral slots (210 has a greater arc length than 368 and 202 as seen in fig. 2 and fig. 5).
Regarding claim 5, Drenth further discloses wherein the plurality of peripheral slots (368+202+210, in fig. 2 and fig. 7) comprises a pair of opposing peripheral slots spaced apart along a transverse axis that is perpendicular to the central axis (see 202a and 202b in annotated fig. 2).
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Regarding claim 7, Drenth further discloses wherein the plurality of peripheral slots comprises first and second pairs of opposing peripheral slots (see annotated fig. 8), wherein the first pair of opposing peripheral slots are spaced apart along a first transverse axis that is perpendicular to the central axis (transverse axis is perpendicular to 318, see annotated fig. 8), and wherein the second pair of opposing peripheral slots are spaced apart along a second transverse axis that is perpendicular to the central axis (see annotated fig. 8).
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Regarding claim 9, Drenth further discloses wherein the crown (130+166) comprises:
a wall that defines the outer operative circumference of the crown (118+120 as shown by 122 in fig. 2); and
a plurality of inner crown portions that define the core-receiving slot (334a and 334b, see fig. 8),
Regarding claim 10, Drenth further discloses wherein each peripheral slot of the at least one peripheral slot (a second interpretation: 210 and 368) is at least partially defined by:
a respective outer wall portion (201) of the wall of the crown (116; see fig. 2, see also fig. 4); and a respective inner crown portion (204) of the plurality of inner crown portions (130; see fig. 2, see also fig. 7).
Regarding claim 11, Drenth further discloses wherein each face channel (150+345) of the at least one face channel is defined by a respective inner crown portion of the plurality of inner crown portions (see figures 2, see also fig. 4 and 7).
Regarding claim 13, Drenth further discloses wherein the base portion (192, fig 8) extends between opposing first and second inner crown portions of the at least one inner
crown portion (192 extends between 334a and 334b, see fig. 8), wherein the first and second inner crown portions are spaced apart along a first
transverse axis (top and bottom lines off of 318 in fig. 8) that intersects the central axis of the drill bit (318, fig. 8) and is perpendicular or substantially perpendicular to the central axis (fig. 8).
Regarding claim 14, Drenth further discloses wherein each of the first and second inner crown portions (334a and 334b, see fig. 8, col. 11 lines 6-19) comprises:
a first axial edge (336A and 336B, see fig. 8, col. 11 lines 6-19);
a second axial edge (338A and 338B, see fig. 8, col. 11 lines 6-19);
a medial axial edge (374A and 374B, see fig. 8, col. 11 lines 6-19);
a first inner surface (344A and 344B, see fig. 8, col. 11 lines 6-19) extending between the first axial edge and the medial axial edge (see fig. 8, col. 11 lines 6-19); and
a second inner surface (348A and 348B, see fig. 8, col. 11 lines 6-19) extending between the medial axial edge and the second axial edge (see fig. 8, col. 11 lines 6-19).
Regarding claim 15, Drenth further discloses wherein the first inner surface of each of the first and second inner crown portions (344A and 344B, see fig. 8, col. 11 lines 6-19) is planar or substantially planar (fig 8).
Regarding claim 16, Drenth further discloses wherein the second inner surface of each of the first and second inner crown portions (348A and 348B, see fig. 8, col. 11 lines 6-19) has a convex curvature (fig 8).
Regarding claim 17, Drenth further discloses wherein the wall (118+120 as shown by 122 in fig. 2) defines at least one axial channel that is radially inwardly recessed from the outer operative circumference of the crown (368A and 368B, fig. 8, col. 13 lines 4-13).
Regarding claim 18, Drenth discloses a drilling assembly (10) comprising:
an outer tube (outer tube of a dual-tube drill string, see col. 6 lines 45-49);
an inner tube received within the outer tube (inner tube of a dual-tube drill string, see col. 6 lines 45-49), the inner tube and the outer tube cooperating to define an annular space (annulus between a dual-tube system, see col. 6 lines 45-49); and
a drill bit as in claim 1 (see claim 1)
wherein the shank of the drill bit is threadedly coupled to the outer tube (see col. 10 lines 31-43, see fig. 12).
Regarding claim 19, Drenth discloses further comprising a drill sub (104) having a proximal end and an opposed distal end (see fig. 9), wherein the drill sub defines a central bore (190) that extends between, and provides fluid communication between, the core receiving slot of the crown of the drill bit and the inner tube (see fig. 9).
Regarding claim 20, Drenth discloses a drill bit (100) having a central axis (106, see fig. 2), the drill bit comprising:
a shank (132+108) defining an inner bore (190+110);
a crown (130+116) having a cutting face (138+124), wherein the crown has an outer circumferential surface (122), wherein the crown comprises:
a core-receiving slot (142+194) in communication with the inner bore of the shank (see figures 8 and 9);
at least one face channel (345+150), wherein each face channel of the at least one face channel extends between and is in communication with the core-receiving slot and the outer operative circumference of the crown (see fig. 2); and
a base portion (192) positioned within the core-receiving slot (see col. 9 lines 1-17, see fig. 7), wherein the base portion defines a breaking surface (see col. 9 lines 1-17, see fig. 12), wherein at least a portion of the breaking surface, or a plane tangential thereto, is oriented at an oblique angle to the central axis (see col. 9 lines 1-17, see fig. 12),
wherein the at least one face channel is configured to receive fluid flowing distally along the outer surface of the crown and deliver fluid from the outer surface of the crown to the core- receiving slot (see col. 10 lines 31-43, see fig. 12).
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, 3, 9-12, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12, 13, 20, 24-26 of U.S. Patent No. 12,421,804 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of patent 12,421,804 B2 contains all of the substance of claim 1 of the instant case, claims 9 and 10 together are substantially identical to claim 12, and the other claims are substantially identical to the corresponding claims as listed below.
19/258,548
12,421,804 B2
1
1
3
1+10
9
1+12
10
1+12
11
1+12+13
12
1+12+20
18
24
19
24+25
20
26
Claims 2, 4-8, and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, and 12 of U.S. Patent No. 12,421,804 B2 in view of Drenth et al. (US 10,626,676 B1). Claim 1 of patent 12,421,804 B2 contains all of the substance of claim 1 of the instant case which each of these claims depends off of. Claim 2 contains all of the substance of claim 3 of the patent, but has an additional element taught by Drenth, which is “is not in communication with a face channel of the at least one face channel” (202, see fig. 4). Claims 4-8 and 17 are substantially identical to the corresponding claims as listed below, but depend off of claim 2. Claims 13-16 depend off of claims 1 and 12, but are taught by Drenth (see claim rejection for claims 13-16 above).
19/258,548
12,421,804 B2
other reference
2
1+3
Drenth et al. (US 10,626,676 B1)
4
1+3+4
5
1+3+5
6
1+3+5+6
7
1+3+7
8
1+3+7+8
13
1+12
14
1+12
15
1+12
16
1+12
17
1+22
Allowable Subject Matter
Claims 6, 8, and 12 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.
The following is a statement of reasons for the indication of allowable subject matter:
Drenth et al. (US 10,626,676 B1) is considered the closest prior art.
Regarding claim 6, Drenth fails to disclose a first peripheral slot of the pair of opposing peripheral slots has a different arc length than a second peripheral slot of the pair of opposing peripheral slots. There is no obvious reason, without undo hindsight, to modify opposing peripheral slots to have different arc lengths to each other.
Regarding claim 8, Drenth fails to disclose wherein the first and second transverse axes intersect the central axis, and wherein the first and second transverse axes are perpendicular or substantially perpendicular to one another. There is no obvious reason, without undo hindsight, to modify the first and second transverse axes to be perpendicular or substantially perpendicular to one another.
Regarding claim 12, Drenth fails to disclose wherein the plurality of peripheral slots has a radial thickness that is different than a radial thickness of the inner crown portion that at least partially defines a second peripheral slot of the plurality of peripheral slots. There is no obvious reason, without undo hindsight, to modify the plurality of peripheral slots to have a radial thickness that is different than a radial thickness of the inner crown portion that at least partially defines a second peripheral slot of the plurality of peripheral slots.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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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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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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