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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 10 recite the limitation “a non-embedded cutting surface”. This limitation does not comply with the written description requirement because it was not described in the originally filled parent application and therefore constitutes new matter. This is particularly a matter of concern because it is further uncertain as to what exactly this is intended to mean, as noted below.
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 1-20 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.
Claims 1 and 10 recite the limitation “a non-embedded cutting surface”. This limitation renders the claims indefinite because it is unclear as to what is “embedded”, what is not “embedded” and how they differentiate (e.g. is something disposed within a “hole/aperture” of something else, is something disposed within a gap in the molecules of something else, etc.).
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 and 6 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by King (US 2645471).
Regarding claim 1, King discloses a replaceable bit for use in radial mining equipment, the bit comprising: a forged and through-hardened body [10], the body comprising a retention portion [14] and an ore face engagement portion, the ore face engagement portion having an ore-facing surface; and a non-embedded cutting surface [24, 26] applied on the ore-facing surface after forging and through-hardening of the body; wherein the cutting surface is composed of hard surfacing that is first shaped to form a profiled surface, and then sharpened to form a sharpened cutting surface [the Examiner notes this it is a product-by-process limitation; however it is disclosed in column 3, line 69].
Regarding claim 6, King further discloses the parallel surface [Figure 1].
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) 4, 7-10 and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2645471) alone.
Regarding claim 4, the Examiner notes this limitation is disclosed in the Applicant’s admitted prior art [Figure 1].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of King by adding the retention notch as described by the admitted prior art to maintain the position of the device throughout its operable use, such that it can function and save time/money by not falling out and having to be constantly replaced.
Regarding claim 7, King claims a "steel shank" and "steel alloy". One of ordinary skill in the art would expect the two steels to have – broadly speaking, similar thermal expansion.
Regarding claims 8 and 9, although King is silent as to the specific hardening surface thickness, it would have been obvious to one of ordinary skill in the art to utilize .0625 inches dependent upon a number of factors including material size, shape, intended ore to mine etc. Subsequently, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.d 272, 205 USPQ 215 (CCPA 1980).
Regarding method claims 10 and 13-18, it would have been obvious to one of ordinary skill in the art that the replaceable bit of King in its normal and usual operation, would necessarily perform the method as claimed by the Applicant.
Specifically regarding claims 13, 14 and 16, although King is silent as to the exact parameters of these values, it would have been obvious to one of ordinary skill in the art to utilize those of the instant invention depending on a number of factors including material size, shape, intended or to mine etc. Subsequently, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.d 272, 205 USPQ 215 (CCPA 1980).
Specifically regarding claim 15 and 17, although not explicitly detailed in King, it would have been obvious to a skilled artisan to shot-blast burrs from the forging process and clean the surface prior to hardening the body surface, and similarly, it would have been obvious to grind to the general profile shape prior to sharpening the surface.
Claim(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2645471) in view of Ojanen (US 6478383).
King fails to disclose the forged steel alloy is specifically AISI 4140 steel.
Ojanen teaches a mining bit comprising AISI 4140 steel [Column 5, Line 27].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to utilize the AISI steel as described by Ojanen to comply with the known/required standards for equipment in the art. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2645471) in view of Krekeler (US 3057609).
King fails to disclose the removal notch,
Krekeler teaches a mining bit comprising an integral removal notch [Column 2, Lines 59-64].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of King by adding the removal notch as described by Krekeler to allow for a tool to pry the bit out. It would therefore have been obvious to one of ordinary skill in the art to have modified the King bit to have the integral removal notch as in order to allow for prying. Krekeler also described integral retention notch [Column 3, Lines 5-10] which is advantageous because it allows for a retaining means to secure the bit. It would therefore have been obvious to one of ordinary skill in the art to have modified the King bit to have the integral retention notch in order to secure the bit.
Claim(s) 5 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2645471) in view of Mondy (US 2003/0230926).
King fails to disclose the hardening compound is powdered with a nickel base.
Mondy teaches a mining bit comprising a hard surfacing composed of a powdered compound with nickel base [10022] which is applied to steel [0020] using a torch [0021].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of King by utilizing a powdered nickel compound as described by Monday to provide a dense and hard surfacing with hardness suitable for grinding/mining applications.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2645471) in view of Shigihara (US 2014/0144199).
King fails to disclose the forging process is specifically closed die forging.
Shigihara teaches a closed die forging process [Abstract].
At the time of the invention it would have been obvious to one of ordinary skill in the art to modify the device of King by utilizing the closed die forging process as described by Shigihara to prevent surface cracks originating in temperature decrease during forging, and is capable of easy temperature control, even though it is the closed-die forging for a hard-to-work material such as a superalloy material [Paragraph 14].
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ojanen (US 6478383) in view of Ojanen (6478383) and Panda (WO 2020046295).
King fails to disclose the forged steel alloy is specifically AISI 4140 steel and the material is added via a plasma transfer arc process.
Ojanen teaches a mining bit comprising AISI 4140 steel [Column 5, Line 27].
Panda teaches a method of hardening a drill bit surface via a plasma transfer arc process [Paragraphs 17 & 29].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to utilize the AISI steel as described by Ojanen to comply with the known/required standards for equipment in the art. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Likewise, it would have been obvious to utilize the plasma transfer arc process as described by Panda to create a full metallurgical bond with superior wear, corrosion and heat resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A ARMSTRONG whose telephone number is (571)270-1184. The examiner can normally be reached M-F ~10-6.
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, Anita 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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KYLE ARMSTRONG, P.E.
Primary Examiner
Art Unit 3678
/KYLE ARMSTRONG/ Primary Examiner, Art Unit 3619
