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 drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 550 (as throughout paragraphs 113, 115-119, 122). 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. 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 Objections
Claims 20 and 21 are objected to for grammatical informalities:
In claim 20, line 1, the phrase “wherein first cutting tip” appears to require and article before “first”.
In claim 21, line 7, the phrase “to the a radially outer cylindrical surface” should apparently be recited as – to the radially outer cylindrical surface –, as being previously introduced in claim 15.
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 1-24 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 1 recites “the step” in line 15, but since “a first step” and “a second step” are previously recited, it is not clear which step this limitation refers and therefore this claim is indefinite.
Claims 14 lacks antecedent basis for “the first step surface” and “the substrate” and is therefore indefinite. It appears “the substrate” should be recited as – the base – as in claim 1.
Claim 15 lacks antecedent basis for “the reference plane” in lines 37-38 and is therefore indefinite.
Claims 2-13 and 16-24 are indefinite as being dependent on an indefinite claim.
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) 1-5, 9, 15, 18, 20-22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Haijiang et al. (US 2022/0017798).
In regard to claim 1, Haijiang et al. disclose a cutter element for a fixed cutter drill bit configured to drill a borehole in a subterranean formation, the cutter element comprising: a base (500, as in any of figs 1-13) having a central axis, a first end, a second end, and a radially outer cylindrical surface extending axially from the first end to the second end; a cutting layer (100) fixably mounted to the first end of the base, wherein the cutting layer includes a stepped cutting face distal the base (as in figs 1-13) and a radially outer cylindrical surface extending axially from the cutting face to the radially outer cylindrical surface of the base (fig 1-13 all show layer 100 extending to edge of base 500), wherein the radially outer cylindrical surface of the cutting layer is contiguous with the radially outer cylindrical surface of the base (as in any of fig 1-13); wherein the stepped cutting face comprises: a first step (120); a second step (110) axially spaced from the first step; a riser (112) axially positioned between the first step and the second step; wherein the first step is axially positioned between the riser and the base (as in any of figs 1-13); wherein the step has a W-shaped geometry in top view of the cutter element (as in any of figs 1-3, 7-9).
In regard to claim 2, Haijiang et al. disclose wherein the cutting layer has a thickness Tci measured axially from the base to the second step; wherein the first step is axially spaced from the second step by a distance Ds measured axially from the first step to the second step, wherein the ratio of the distance Ds to the thickness Tci is greater than or equal to 0.25 (as in figs 1-3 and 7-9 at least where Ds appears greater than 50% of Tci).
In regard to claim 3, Haijiang et al. disclose wherein the first step comprises a planar surface disposed in a plane oriented perpendicular to the central axis (as in figs 1, 3, 7-13 as shown).
In regard to claim 4, Haijiang et al. disclose wherein the riser comprises: a plurality of circumferentially adjacent planar surfaces (figs 1, where segments of riser as shown appear at least partially planar).
In regard to claim 5, Haijiang et al. disclose wherein the first step, the second step, and the riser are symmetric about a reference plane that contains the central axis of the base and bisects the cutter element (as in fig 1).
In regard to claim 9, Haiijiang et al. disclose wherein the second step is convex in front view of the cutter element and side view of the cutter element (as in figs 1-3, 7-9).
In regard to claim 10, Haijiang et al. disclose wherein the second step comprises a cutting region extending from the riser (any portion 110 as may be defined as in fig 11) and a relief region extending from the riser and the cutting region (as may be alternatively defined as any other portion of 110), wherein the relief region extends about the cutting region (as may be defined).
In regard to claim 15, Haijiang et al. disclose a cutter element for a fixed cutter drill bit configured to drill a borehole in a subterranean formation, the cutter element comprising: a substrate (500) having a central axis, a first end, a second end, and a radially outer cylindrical surface extending axially from the first end to the second end; a cutting layer (100) having a first end distal the substrate, a second end fixably attached to the first end of the substrate, and a radially outer cylindrical surface extending from the first end of the cutting layer to the second end of the cutting layer, wherein the first end of the cutting layer includes a stepped cutting face, wherein the radially outer cylindrical surface of the cutting layer is contiguous with the radially outer cylindrical surface of the base (fig 11); wherein the stepped cutting face comprises: a primary cutting surface (exposed portion of lower layer 120) extending from a first cutting tip of the cutter element (as extending from edge as in figs 11), wherein the first cutting tip is configured to engage and shear the subterranean formation; a secondary cutting surface (top of 110) axially spaced from the primary cutting surface, wherein the secondary cutting surface extends from a second cutting tip of the cutter element (multiple tips as in fig 11), wherein the second cutting tip is configured to engage and shear the subterranean formation; a riser (fig 11 shows surface extending from lower layer 110 to top layer 120) axially positioned between the primary cutting surface and the secondary cutting surface; wherein the primary cutting surface is axially positioned between the secondary cutting surface and the substrate (as in fig 11); wherein the riser comprises: a plurality of circumferentially adjacent planar surfaces (as in fig 11, side surfaces) including: a pair of central planar surfaces extending axially from the primary cutting surface to the second bevel (as in fig 11), wherein the pair of central planar surfaces are oriented at an angle A relative to each other in a top view of the cutter element, wherein the angle A ranges from 70 to 140 degrees (as shown appears as 90 degrees between the two side planar surfaces as in fig 11); a first lateral planar surface extending from one of the pair of central planar surfaces to the radially outer cylindrical surface of the cutting layer (as in fig 11); and a second lateral planar surface extending from the other of the pair of central planar surfaces to the radially outer cylindrical surface of the cutting layer (as in fig 11), wherein the first lateral planar surface and the second lateral planar surfaces are disposed on opposite sides of the reference plane and the pair of central planar surfaces (as may be defined where four such surfaces are in fig 11); wherein the first lateral planar surface and the second lateral planar surface are angularly spaced apart by an angle θ in the top view of the cutter element, wherein the angle θ ranges from 70 to 140 degrees (as shown appear as 90 degrees as in fig 11); wherein the primary cutting surface is configured to engage and shear the subterranean formation before the secondary cutting surface.
In regard to claim 18, Haijiang et al. disclose wherein the cutting layer has a thickness Toi measured axially from the substrate to the secondary cutting surface; wherein the primary cutting surface is axially spaced from the secondary cutting surface by a distance Ds measured axially from the primary cutting surface to the secondary cutting surface, wherein the ratio of the distance Ds to the thickness Toi is greater than or equal to 0.25 (as in figs 10 at least where Ds appears greater than 50% of Tci).
In regard to claim 20, Haijiang et al. disclose wherein the first cutting tip, the second cutting tip, and the riser are symmetric about a reference plane that contains the central axis of the base and bisects the cutter element (as in fig 11, as may be defined with reference plane perpendicular to top surface).
In regard to claim 21, Haijiang et al. disclose wherein the primary cutting surface comprises a planar surface disposed in a plane oriented perpendicular to the central axis (upper exposed position of 120); and wherein the secondary cutting surface comprises: a planar cutting region (top of 110) disposed in a plane oriented perpendicular to the central axis; and a relief region (at corners 1121 as in fig 11) disposed about the cutting region and extending from the cutting region to the a radially outer cylindrical surface of the cutting layer (as in fig 11).
In regard to claim 22, Haigiang et al. disclose wherein the secondary cutting surface is convex in front view (corners 1121 include rounded edges) of the cutter element and side view of the cutter element (corners 1121 rounded in axially and circumferentially).
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) 12-13 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Renard et al. (US 4,984,642).
In regard to claims 12 and 23, Haijiang et al. disclose all the limitations as applied to claims 1 and 15 above, except for a plurality of elongate raised ridges and recesses. Renard et al. disclose a cutting element wherein a cutting surface defines a primary cutting surface comprising a surface finish including a plurality of elongate raised ridges (27) and a plurality of recesses (28) positioned between the raised ridges, wherein the plurality of raised ridges are arranged in a plurality of parallel rows (as in figs 1-6). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the ridges and recesses as taught by Renard et al. with the cutting element of Haijiang et al. in order to provide a more efficiently cooled cutter (col. 3, lines 33-47).
In regard to claim 13 and 24, Renard et al. disclose wherein each of the plurality of raised ridges has a linear central axis (figs 1-6), a first end, a second end opposite the first end, a length measured axially from the first end to the second end, and a width measured perpendicular to the central axis (as in fig 1-6); wherein the plurality of raised ridges are oriented parallel to each other (fig 1-6). Renard et al. does not disclose wherein the width of each raised ridge ranges from 2.0 micron to 250.0 micron; and wherein the length of each raised ridge ranges from 25.0 micron to 750.0 micron. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to provide the ridges within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art (each ridge and recess with some width and length), discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. Further, such a selection of an angle will be inherently necessary in actual construction. Therefore it is also a routine design choice that must be made by the operator / manufacturer.
Claim(s) 14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Webb et al. (US 2023/0203892).
In regard to claims 14 and 17, Haijiang et al. disclose all the limitations of this claim, as applied to claims 1 and 15 above, except for a pair of circumferentially-spaced planar flats, wherein each planar flat extends axially from the first step surface across the radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate. Webb et al. disclose a cutter element comprising a pair of circumferentially-spaced planar flats (516 as in fig 5a-c; also shown in figs 6-8), wherein each planar flat extends axially from a first step surface (518) across a radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate (as extending into 406 as shown). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the planar flats, as taught by Webb et al. with the cutter element of Haijiang et al. in order to reduce wear and abrasion of the substrate below the cutting edge during drilling.
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 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 21 of U.S. Patent No. 12,448,852. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because instant claim 1 is generic to all that is recited in claim 11 of U.S. Patent No. 12,448,852. In other words, claim 11 of U.S. Patent No. 12,448,852 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 11 of the patent, it is not patentably distinct from claim 11. Thus the invention of claim 11 of the patent is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 11 of the patent, claim 1 is not patentably distinct from claim 11, regardless of any additional subject matter present in claim 1. Claim 15 is similarly encompassed by claim 21 of ‘852.
Claims 1 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 24 of copending Application No. 19/334,606 (reference application, ‘606). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is generic to all that is recited in claim 12 of ‘606. In other words, claim 12 of ‘606 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 12 of the ‘606, it is not patentably distinct from claim 12. Thus the invention of claim 12 of ‘606 is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 12 of ‘606, claim 1 is not patentably distinct from claim 12, regardless of any additional subject matter present in claim 12. Claims 15 appears similarly encompassed by claim 24 of ‘606.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 6-8, 11, 16 and 19 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.
Conclusion
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/D. ANDREWS/Primary Examiner, Art Unit 3672
2/23/2026