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 .
Response to Amendment
This Action is in response to Applicant’s Reply of September 18, 2026.
Claims 3, 7, 10, 13-15, 22, 24, and 25 remain withdrawn from consideration.
The drawings were received on September 18, 2026. These drawings are accepted and overcome the previously presented objection thereto.
Applicant’s amendment to claim 1 overcomes the previously presented 35 USC 102(a)(1) rejection thereof.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 2, 9, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by King (US 4,941,538).
Regarding claim 1: King discloses a fixed cutter drill bit 11 for drilling a borehole in an earthen formation Abstract, the drill bit comprising:
a bit body 13 having a central axis 37 and a bit face Fig 1, wherein the bit body is configured to rotate about the central axis in a cutting direction of rotation 1:63-67, wherein the bit face includes a concave cone region 31 extending radially from the central axis, a convex shoulder region A (see reproduction of Figure 1 below) extending radially from the cone region, a nose B (see reproduction of Figure 1 below) at the intersection of the cone region and the shoulder region, and a gage region extending 33 radially from the shoulder region to a full gage diameter of the drill bit;
a cutting structure disposed on the bit face Fig 1, wherein the cutting structure includes a primary blade 27, 28 extending radially from proximal the bit axis through the cone region and the shoulder region to the gage region Fig 1, wherein the blade has a leading side relative to the cutting direction of rotation Fig 1, a trailing side relative to the cutting direction of rotation Fig 1, and a cutter-supporting surface 35 extending from the leading side to the trailing side Fig 1; and
a plurality of cutter elements 25 mounted to the cutter-supporting surface of the primary blade in the cone region Fig 1, the shoulder region Fig 1, and the gage region Fig 1;
a gage pad 41, 45, 47 disposed in the gage region and extending axially from the primary blade Fig 1, wherein the gage pad has a central axis Fig 1, an uphole end 43 distal the primary blade, a downhole end 39 integral with the primary blade, a leading lateral side C (see reproduction of Figure 1 below) relative to the cutting direction of rotation, a trailing lateral side D (see reproduction of Figure 1 below) relative to the cutting direction of rotation, and a formation facing surface 41, 47 configured to slidingly engage a sidewall of the borehole during drilling;
wherein the formation facing surface of the gage pad extends axially from the uphole end to the downhole end of the gage pad Fig 1, and wherein the formation facing surface extends laterally from the leading side of the gage pad to the trailing side of the gage pad Fig 1;
wherein the gage pad includes a surface area reducing feature 47 disposed along the formation facing surface Fig 1 and positioned along a middle portion of the gage pad that is axially positioned between Fig 1 and axially spaced from the uphole end of the gage pad and the downhole end of the gage pad Fig 1, wherein the surface area reducing feature comprises a first recess 47 extending from the formation facing surface toward the bit body Fig 1;
wherein the formation facing surface includes an uphole portion 41 extending axially from the uphole end of the gage pad to the surface area reducing feature Fig 1 and a downhole portion 45 extending axially from the surface area reducing feature to the downhole end of the gage pad Fig 1, and wherein the downhole portion of the formation facing surface is disposed at the full gage diameter of the drill bit and is configured to slidingly engage the sidewall of the borehole Fig 1.
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Regarding claim 2: Wherein the first recess extends laterally from the leading side of the gage pad or the trailing side of the gage pad Fig 1.
Regarding claim 9: Wherein the leading side of the gage pad is oriented parallel to the trailing side of the gage pad Fig 1.
Regarding claim 12: Wherein the formation facing surface of the gage pad is disposed at the full gage diameter of the drill bit along an entire axial length of the gage pad measured axially relative to the central axis of the gage pad from the uphole end of the gage pad to the downhole end of the gage pad Fig 1.
Allowable Subject Matter
Claims 16-21 and 23 are allowed.
Claims 4-6, 8, and 11 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4: The prior art of record fails to disclose or suggest a fixed cutter drill bit with a gage pad having a surface area reducing feature that comprises a first and second recess extending from the formation facing surface toward the bit body as recited in the claimed combination.
It is noted that a duplication of parts is often considered obvious however there would be no reason to add another recess to the gage pad of King other than hindsight.
Regarding claim 5: Claim 5 is considered allowable due to its dependence on claim 4.
Regarding claim 6: The prior art of record fails to disclose or suggest a fixed cutter drill bit with a gage pad having a surface area reducing feature that comprises a plurality of recesses including the first recess as recited in the claimed combination.
It is noted that a duplication of parts is often considered obvious however there would be no reason to add another recess to the gage pad of King other than hindsight.
Regarding claims 8, 11, 16-21, and 23: These claims remain allowable for the reasons set forth in the previous Office Action.
Conclusion
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 JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
10/13/2026
