Ex parte HANSEN et al. - Page 7




          Appeal No. 96-4022                                                          
          Application 08/197,011                                                      


          borehole or subterranean formations as these claims set forth               
          (claim 9 in lines 21 and 22; claim 16 in lines 21 and 22; claim             
          21 in lines 20 and 21; claim 23 in lines 22 and 23).  In this               
          regard it should be noted that it does not follow that just                 
          because one cutter protrudes a lesser distance from the profile             
          of the bit body than another, that there is a function or power             
          of making a selection or choice.  It is further unclear how                 
          tangential forces generated on the bit body by cutters and/or               
          wear knobs that are on opposite sides of (or at least spaced                
          apart along the curving outer profile 42 of) the bit body can               
          possibly be construed as acting in “the same radial plane” of the           
          bit body as set forth in the “wherein” clause of independent                
          claims 9, 16, 21 and 23 (a tangential force would appear to                 
          inherently act perpendicularly to one of the infinite number of             
          radial planes extending through the bit body).                              
               In independent claims 9 and 16 “in a plurality of radial               
          planes” should apparently be --along a plurality of radial                  
          planes-- ( claim 9, line 9; claim 16, lines 9 and 16).   In line            
          16 of independent claim 9 “of in substantially the same radial              
          plane” should apparently be --along the same radial plane--.                
          In independent claims 21 and 23 “in one or more radial planes”              
          should apparently be --along one or more radial planes-- (claim             

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