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 .
Election/Restriction
Claim(s) 1-20 is/are generic to the following disclosed patentably distinct species:
Species I – as best represented by Figs 2-4
Species II – as best represented by Fig 5
The species are independent or distinct because of patentably distinct variations in the structure and/or arrangement of the elements of the apparatus. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph/A.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Jeffery Frantz on 2/10/26, with a follow-up call on 2/11/26, a provisional election was made without traverse to prosecute the invention of Species I. Affirmation of this election must be made by applicant in replying to this Office action.
Claim Objections
Claims 13-14 are objected to because of the following informalities:
Claims 13-14 recite “a second blade disposed on the third gauge pad” […] “the second blade comprises […] a second trailing portion” and “the second trailing portion is disposed on a forth gauge pad”. The claims recite that the second blade (with the second trailing portion) is disposed on the third gauge pad, but rather recites that the second trailing portion is disposed on the fourth gauge pad. This is structured grammatically awkwardly.
Appropriate correction is required.
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 3 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 3 recites “a helix differential of between approximately 4° and 8°” as depending from its parent claim, the difference is “at least above” the value. It is unclear what it means to be “at least above” a range. In other words, being above 4° would appear to meet the limitation rendering it unclear what the recitation of the second end point of the range is intended to mean.
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, 4-5, 9-11, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schoen (US 20190136633 A1).
Regarding claim 1, Schoen teaches a bit for removing material from a formation, the bit comprising:
a bit body (Figs 2-3, readily seen); and
a first split blade (Fig 3, blade 318, split between 354b and 350a) disposed on the bit body comprising a leading portion (Fig 3, portion indicated at 354b) and a trailing portion (Fig 3, portion indicated at 350a), wherein the leading portion is forward sweeping having a negative helix angle (Fig 3, portion indicated at 354b is negatively helix angled/forward sweeping as it inclines inwardly from the radially outer portion, better seen in Fig 2) and the trailing portion is rearward sweeping having a positive helix angle (Fig 3, portion indicated at 350a is positively helix angled/rearward sweeping as it inclines outwardly from the radially outer portion, also seen in Fig 2).
Regarding claim 2, Schoen teaches wherein a difference between the negative helix angle of the leading portion and the positive helix angle of the trailing portion is at least above a threshold value (Fig 2-3, as discussed in the parent claim there is a negative/positive helix angle as seen, inherently, there is a different between them which can be set as above an arbitrary threshold).
Regarding claim 4, Schoen teaches wherein the bit body comprises a region between the leading portion and the trailing portion (Fig 3, region between portion 354b and 350a, seen).
Regarding claim 5, Schoen teaches wherein the bit body comprises a region between the leading portion and the trailing portion having a fluid port disposed therein Fig 3, region between portion 354b and 350a, seen, with fluid port also depicted).
Regarding claim 9, Schoen teaches a plurality of cutting elements disposed on each of the trailing portion and the leading portion of the first split blade (Para 0032, Fig 2-3, cutting elements 230).
Regarding claim 10, Schoen teaches a second split blade (Fig 3, blade 316), the second split blade comprising a second leading portion (Fig 3, portion indicated at 354a) and a second trailing portion (Fig 3, portion indicated at 350b), wherein the second leading portion has a second negative helix angle (Fig 3, portion indicated at 354a is negatively helix angled as it inclines inwardly from the radially outer portion, better seen in Fig 2) and the second trailing portion has a second positive helix angle (Fig 3, portion indicated at 350b is positively helix angled as it inclines outwardly from the radially outer portion, also seen in Fig 2).
Regarding claim 11, Schoen teaches a bit for removing material from a formation, the bit comprising:
a bit body (Figs 2-3, readily seen) comprising a first gauge pad (Fig 3, pad indicated at 354b) and a second gauge pad (Fig 3, pad indicated at 350a); and
a first blade (Fig 3, blade 318) comprising a first leading portion (Fig 3, portion indicated at 354b) and a first trailing portion (Fig 3, portion indicated at 350a, wherein the first leading portion is disposed on the first gauge pad (Fig 3, portion indicated at 354b) and the first trailing portion is disposed on the second gauge pad wherein the first leading portion has a negative helix angle (Fig 3, portion indicated at 354b is negatively helix angled as it inclines inwardly from the radially outer portion, better seen in Fig 2) and the first trailing portion has a positive helix angle (Fig 3, portion indicated at 350a is positively helix angled as it inclines outwardly from the radially outer portion, also seen in Fig 2) such that there is a first helix angle differential of at least a first threshold value between the first leading portion and the first trailing portion (Fig 2-3, as discussed there is a negative/positive helix angle as seen, inherently, there is a different between them which can be set as above an arbitrary threshold).
Regarding claim 17, Schoen teaches a bit for removing material from a formation, the bit comprising:
a bit body (Figs 2-3, readily seen) comprising a first gauge pad (Fig 3, pad indicated at 354b) and a second gauge pad (Fig 3, pad indicated at 350a); and
a first blade (Fig 3, blade 318) comprising a first leading portion (Fig 3, portion indicated at 354b) and a first trailing portion (Fig 3, portion indicated at 350a), wherein the first leading portion is disposed on the first gauge pad (Fig 3, portion indicated at 354b) with a forward sweeping orientation in a first direction towards rotation of the bit when the bit is in operation (Fig 3, portion indicated at 354b is forward sweeping as it inclines inwardly from the radially outer portion, better seen in Fig 2) and the first trailing portion is disposed on the second gauge pad (Fig 3, portion indicated at 350a) with a rearward sweeping orientation in a second direction away from the rotation of the bit when the bit is in operation (Fig 3, portion indicated at 350a is rearward sweeping as it inclines outwardly from the radially outer portion, also seen in Fig 2).
Regarding claim 18, Schoen teaches a helix angle differential of at least a first threshold value between the first leading portion and the first trailing portion (Fig 2-3, as are helix angles as seen, inherently, there is a different between them which can be set as above an arbitrary threshold).
Regarding claim 19, Schoen teaches wherein the bit body further comprises a third gauge pad (Fig 3, portion indicated at 354a) and a fourth gauge pad (Fig 3, portion indicated at 350b), wherein the bit further comprises a second blade (Fig 3, pad 316) comprising a second leading portion (Fig 3, portion indicated at 354a) and a second trailing portion (Fig 3, portion indicated at 350b), wherein the second leading portion is disposed on the third gauge pad (Fig 3, portion indicated at 354a) and the second trailing portion is disposed on the fourth gauge pad (Fig 3, portion indicated at 350b).
Regarding claim 20, Schoen teaches wherein the second leading portion has a negative helix angle (Fig 3, portion indicated at 354a is negatively helix angled as it inclines inwardly from the radially outer portion, better seen in Fig 2) and the second leading portion has a positive helix angle (Fig 3, portion indicated at 350b is positively helix angled as it inclines outwardly from the radially outer portion, also seen in Fig 2), and wherein the second leading portion and the second trailing portion comprise a second helix angle differential of a threshold value that is different from the at least first threshold value (Fig 2-3, as are helix angles as seen, with the differences in threshold values between 316 and 318 readily conveyed by the Figures, please also see Fig 7 and Para 0068, which discussed variations in angular orientation, specific values may be selected such that the limitation is met).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen (US 20190136633 A1).
Regarding claim 3, while Schoen teaches a threshold value (see parent claim) and appears to depict the threshold value is a helix differential of at least 0° (Fig 2-3), please also not the parent claim the threshold value is greater than approximately 4° and 8°, Schoen is not explicit on wherein the threshold value is a helix differential of between approximately 4° and 8°.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Schoen by having the threshold value is a helix differential of between approximately 4° and 8° since in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The examiner additionally notes the breathe of the claim, as best understood, and that no criticality has been asserted for this particular range recited.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen (US 20190136633 A1) , in view of Deen (US 20210071479 A1).
Regarding claim 6, Schoen teaches a first gauge pad (Fig 3, portion indicated at 354b).
Schoen is silent on wherein the first gauge pad is disposed at a first sweep angle on the bit body, and wherein the first sweep angle is approximately 0°.
Deen teaches wherein the first gauge pad is disposed at a first sweep angle on the bit body, and wherein the first sweep angle is approximately 0° (Para 0063, “each blade 114 sweeps or curves backwardly relative to the direction of rotation. All six blades 114 in this example either start or have a segment or section on the nose 124 of the bit body 104, in which the angle of the cutting profile is close to zero”; note the first sweep angle is associated with the first gauge pad which in Schoen is closes to the nose segment).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Schoen by having the first gauge pad is disposed at a first sweep angle on the bit body, wherein the first sweep angle is approximately 0° as disclosed by Deen because one of ordinary skill in seeking to implement the invention of Schoen would have to select a sweep angle and the selection of one close to zero nearest the nose of the bit is known in the art to allow a bit to perform as expected to drill a borehole.
Regarding claim 7, Schoen as modified teaches a second gauge pad (Fig 3 of Schoen, portion indicated at 350a) wherein the second gauge pad is disposed at a second sweep angle on the bit body different than the first sweep angle (Para 0063 of Deen, “a segment along the shoulder 126 of the bit body 104, which is characterized by increasing profile angles, and a segment on the gauge 128”, note the second gauge of Schoen is along a shoulder/gauge portion).
Allowable Subject Matter
Claims 8 and 12-16 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 8, while Deen, as cited in parent claim 7, teaches a different angle and more precise an angle greater than 0 (Para 00063), Deen does not teach nor render obvious “wherein the second sweep angle is approximately 100.” The examiner notes the relative specificity of the value claimed, relative to the broader range suggested in Deen of greater than 0. No technical reason is apparent to the examiner as to why the second sweep angle in particular would be approximately 10 degrees.
Regarding claim 12, it requires “the at least a first threshold value comprises an angle of between approximately 4° and 8°”. Schoen does not teach nor render obvious the missing claim limitation. The examiner notes the relative specificity of the value claimed, relative to the broader range suggested Schoen and discussed in claim 3. No technical reason is apparent to the examiner as to why the second sweep angle in particular would be approximately 10 degrees. Please note the indefiniteness issues and raised and difference in scope with similarly phrased claim 3. Claims 13-16 depend from claim 12.
Please see the discussion of relevant prior art in the section below.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. US 12442254. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. US 12442254 encompass the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Newton (US 5819860 A) teaches a rotary drill bit for use in drilling holes in subsurface formations comprises a bit body having a leading face and a gauge region, a number of blades formed on the leading face of the bit and extending outwardly away from the axis of the bit so as to define between the blades a number of fluid channels.
Casad (US 20190136635 A1) teaches a drag bit includes a blade extending from the bit body and supporting inner cutters proximate the longitudinal axis and outer cutters spaced from the longitudinal axis. The inner cutters are rotationally offset from the outer cutters.
Sinor (US 6302223 B1) teaches a fixed cutter, or rotary drag, bit for drilling subterranean formations, exhibiting an enhanced resistance to bit balling and an improved rate of penetration. The bit includes an auger-like blade configuration, wherein positively raked, relatively tall blades lean rotationally forward to provide increased clearance and volume between the bit face and the formation to facilitate removal of cuttings coming off the tops of the cutters from the bit face.
Beaton (US 5816346 A) a bit where each of the primary blades having a greater exposure than a majority of the cutters on the secondary blade, and a sweep angle of the secondary blade is less than a sweep angle of the primary blades
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/THEODORE N YAO/Primary Examiner, Art Unit 3676
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