Appeal No. 96-4022
Application 08/197,011
independent claims that (1) second cutter or cutters (claims 9
and 21), (2) wear knot (claim 16) or (3) flank cutter (claim 23)
“selectively” engage portions of the wall of the 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). Additionally, there is
no descriptive support for the limitation appearing in each of
the independent claims that the flank portion is “immediately
adjacent” the gage portion.
In summary:
The examiner’s rejections of claims 2, 9, 10, 16-21 and 23
under 35 U.S.C. § 102(b) and claims 3-7 and 11-15 under 35 U.S.C.
§ 103 based on the reference to Warren are reversed.
New rejections of claims 2-7, 9-21 and 23 under 35 U.S.C.
§ 112, first and second paragraphs, have been made.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
of the decision (37 CFR § 1.197). Should appellants elect to
have further prosecution before the examiner in response to the
new rejection under 37 CFR § 1.196(b) by way of amendment or
showing of facts, or both, not previously of record, a shortened
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