DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 Mar 2026 has been entered.
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 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 22-23 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.
Regarding claim 22, the claim recites “a tertiary orientation value (P1/P3) of at least 4 and not greater than 10.” It is unclear what “a tertiary orientation value” is, and it is unclear what P1/P3 is. What metric is being defined here? While the claim defines that the abrasive particles have a first portion (P1), second portion (P2) and third portion (P3), it is unclear what defines the tertiary orientation value. Parentheses within claims are used to denote reference characters (see MPEP 608.01(m)), and the use of (P1/P3) within parentheses does nothing to define the claimed tertiary orientation value. While it appears that applicant is intending to define a ratio or quotient, it is unclear what elements are intended to contribute to this value. Is this a division of one angle into another? Is this a ratio between numerical values? For the purposes of this examination, the tertiary orientation value will be interpreted as a ratio of the number of particles in the first portion to the number of particles in the third portion.
Claim 23 is rejected as indefinite due to its dependency upon rejected claim.
Further regarding claim 23, the claim recites “a tertiary orientation value (P1/P3),” which is unclear for substantially the same reasons as described in the rejection of claim 22 above. Furthermore, there is already antecedent basis for a tertiary orientation value in claim 22, making unclear if “a tertiary orientation value” recited in claim 23 is the same or different from as the tertiary orientation value recited in claim 22. While it appears these terms are intended to refer to the same value, claim 23 is made further unclear due to the fact that it broadens the upper end of the claimed range (see also 112d rejection below).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 23 appears to further define the range of tertiary orientation value recited in claim 22 (see also 112b rejection above). However, the range recited in claim 22 is “at least 4 and not greater than 10” and the range recited in claim 23 is “at least 5.0 and not greater than 11.” As claim 23 broadens the upper end of the claimed range, claim 23 fails to include all the limitations of claim 22 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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) 1-5, 8, 10-13, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adefris (US 2010/0151196, previously cited) in view of Bauer (US 2016/0362589, previously cited).
Regarding claim 1, Adefris teaches a coated abrasive article comprising: a backing (42); and abrasive particles (20) overlying the backing (as shown in figs 1C and 4C), wherein the abrasive particles have a random rotational orientation ([0039]; “randomly distributed and rotated”) and the abrasive particles are oriented at a tilt angle of greater than 44 degrees and not greater than 90 degrees ([0043] the tilt angles are equal to 180 minus the described “draft angles” shown in fig 4C; since the draft angles of the particles are 120, 110, and 100 degrees, the tilt angles are 60, 70, and 80 degrees, which are all greater than 44 degrees as claimed).
While Adefris does not explicitly teach at least 1% and not greater than 13% of the abrasive particles are oriented at a tilt angle within a range of 0 to 44 degrees (and thus 87-99% of the abrasive particles having the tilt angle of greater than 44 degrees), Adefris does describe that the invention can be practiced with a portion of the particles not having the sloped sidewalls which are responsible for the upright tilt angle ([0065]), and recognizes that the tilt angle of the abrasives has a direct effect on the cutting performance of the abrasive article ([0050-0051]). Bauer further teaches a coated abrasive article including abrasive particles (505) oriented at a tilt angle (fig 6), wherein at least 82% of the abrasive particles are formed with an upright tilt angle ([0310]), and between 1% and 18% of the abrasive particles are not oriented at the tilt angle ([0309-0310]; “at least 82%” and “not greater than about 99%” of abrasive particles oriented with the desired upright tilt angle, indicating between 1% and 18% of the particles are not upright, overlapping the claimed range). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention that at least 87% of the abrasive particles of Adefris are oriented with the tilt angle of between 44 and 90 degrees, at least 1% and not greater than 13% of the abrasive particles of Adefris may be tilted at an angle not greater than 44 degrees, as both Adefris ([0065], [0051]) and Bauer ([0309-0310]) teach that the increased cutting performance achieved by higher tilt angles can be achieved with less than 100% of the particles being upright. Applicant has provided no showing of criticality to the claimed ranges.
Regarding claim 2-4, Adefris, as modified, teaches all the limitations of claim 1 as described above. Adefris further teaches the abrasive particles include a first type of abrasive particle comprising shaped abrasive particles ([0055]); wherein the shaped abrasive particles comprise a star-shape comprising a central region and a plurality of arms including at least three arms extending from the central region ([0055]; described as “star-shaped” particles).
Regarding claim 5, Adefris, as modified, teaches all the limitations of claim 2 as described above. Adefris further teaches each of the shaped abrasive particles have a body (shown in figs 4A, 4B), wherein each body comprises a length (length of bottom side in fig 4A), a width (total vertical width in fig 4A), and a height (total vertical height as viewed in fig 4B), wherein l ≥ w ≥ h (as shown in figs 4A, 4B; and described [0040]).
Regarding claim 8, Adefris, as modified, teaches all the limitations of claim 1 as described above. Adefris further teaches at least 1% of the abrasive particles are oriented at a tilt angle within a range of greater than 44 degrees to 71 degrees ([0040]; majority of particles are tilted “approximately 60 degrees”).
Regarding claim 10-13, Adefris, as modified, teaches all the limitations of claim 1 as described above. Adefris further teaches the abrasive particles include primary particles comprising shaped abrasive particles (fig 4C; all particles are shaped abrasive particles) and secondary particles distinct from the primary particles (fig 4C, aligned on distinct draft angles as described [0042]) having an aspect ratio of at least 1.1:1 ([0057] length A and width 0.25A results in aspect ratio of 4:1) and wherein at least a portion of the secondary particles have an upright orientation (upright as shown in fig 4C); at least 5% (as shown in fig 4C, all of the particles, including secondary particles have the claimed tilt angle) of the secondary particles are oriented at a tilt angle within a range of 44 to 90 degrees ([0043]; secondary particles with draft angle 60 equal to 100 degrees have a tilt angle of 180-100 = 80 degrees); wherein at least 5% of the secondary particles are oriented at a tilt angle of 71 to 90 degrees ([0043]; secondary particles with draft angle 60 equal to 100 degrees have a tilt angle of 180-100 = 80 degrees); and wherein not greater than 50% of the secondary particles are oriented at a tilt angle of not greater than 44 degrees ([0043] considering the upright particles with the draft angle of 100 degrees are the secondary particles, all of these particles have a tilt angle over 44 degrees, as the tilt angle is 180-100 = 80 degrees).
Regarding claim 21, Adefris, as modified by Bauer, teaches all the limitations of claim 1 as described above. Claim 21 narrows the range which is rendered obvious by the combination of Adefris and Bauer as detailed above, and is obvious for substantially the same reasons as described above.
Regarding claim 22, Adefris, as modified, teaches all the limitations of claim 1 as described above. Adefris further teaches the abrasive particles comprise shaped abrasive particles comprising a polygonal shape with a central region and a plurality of arms extending from the central region ([0055]; described as “star-shaped” particles), and wherein the shaped abrasive particles comprise alumina ([0041]), wherein the abrasive particles comprise a first portion (P1) having an upright orientation having a tilt angle within a range of greater than 71 degrees to 90 degrees ([0043]; fig 4C; particles with draft angle 60 are oriented at a tilt angle of 80 degrees), a second portion (P2) having a slanted orientation having a tilt angle within a range of greater than 44 degrees to 71 degrees ([0043]; fig 4C; particles with draft angles 52 and 56 are oriented at tilt angles of 60 and 70 degrees respectively, both within the claimed range and constituting the claimed second portion P2 of the particles).
While Adefris does not explicitly teach at least 1% and not greater than 10% of the abrasive particles are oriented at a tilt angle within a range of 0 degrees to 44 degrees (this is the claimed portion P3), and wherein at least 89% and not greater than 98% of the abrasive particles are oriented at a tilt angle within a range of greater than 44 degrees to 90 degrees, these limitations are narrowing of the ranges discussed in the rejection of claim 1 above, and are obvious for similar reasons as discussed above in the rejection of claim 1. Adefris does not teach a specific tertiary orientation value P1/P3, but this value appears to be a ratio between the quantity of upright particles of the first portion P1 and quantity flat particles P3. However, as further discussed in the rejection of claim 1 above, Adefris does describe that the invention can be practiced with a portion of the particles not having the sloped sidewalls which are responsible for the upright tilt angle ([0065]), and recognizes that the tilt angle of the abrasives has a direct effect on the cutting performance of the abrasive article ([0050-0051]). Bauer further teaches a coated abrasive article including abrasive particles (505) oriented at a tilt angle (fig 6), wherein at least 82% of the abrasive particles are formed with an upright tilt angle ([0310]), and between 1% and 18% of the abrasive particles (corresponding to the claimed third portion P3) are not oriented at the tilt angle ([0309-0310]; “at least 82%” and “not greater than about 99%” of abrasive particles oriented with the desired upright tilt angle, indicating between 1% and 18% of the particles are not upright, overlapping the claimed range). The portion of flat particles directly relates to the claimed ratio P1/P3. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention that 89-98% of the abrasive particles of Adefris are oriented with the tilt angle of between 44 and 90 degrees, and 1-10% of the abrasive particles of Adefris may be tilted at an angle not greater than 44 degrees, with a resulting ratio P1/P3 of between 4 and 10, as both Adefris ([0065]) and Bauer ([0309-0310]) teach that the increased cutting performance achieved by higher tilt angles can be achieved with less than 100% of the particles being upright or slanted. Applicant has provided no showing of criticality to the claimed ranges.
While Adefris describes the abrasive particles comprise alumina ([0041]), Adefris is silent as to a wt%, and crystallite size of the abrasive. However, it is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). Bauer teaches a coated abrasive article including shaped abrasive particles comprising at least 90 wt% alumina ([0151]), and an average crystallite size within a range of at least 0.01 microns and not greater than 2 microns (range anticipated as described [0118]). As Adefris desires a shaped abrasive particle comprising alumina, and Bauer teaches a shaped alumina particle with the claimed wt% of at least 90 and crystallite size between 0.01 and 2 microns being suitable for the intended purpose of providing abrasion in a coated abrasive article, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to use an abrasive particle with the claimed properties to achieve the predictable result of providing a suitable abrasive to the coated abrasive article.
Regarding claim 23, Adefris, as modified, teaches all the limitations of claim 22 as described above. The tertiary orientation value of claim 23 appears to be a further limitation of the P1/P3 value recited in claim 22 (see 112b rejection above), and is obvious for substantially the same reasons as described in the rejection of claim 22 above.
Response to Arguments
Applicant's arguments filed 16 Mar 2026 have been fully considered but they are not persuasive. Applicant argues that the previous objections to the claims and drawing, as well as the previous rejections under 112b have been alleviated. However, there are still issues of clarity regarding claims 22 and 23 as detailed in the rejections above.
Regarding claim 1 and its dependents, applicant argues that Adefris does not suggest that its invention can be carried out with some of the particles lacking the claimed upright tilt angle, and further argues that Adefris teaches away from the claimed inclusion of particles having the flatter tilt angle of between 0 and 44 degrees. Examiner respectfully disagrees. While Adefris prefers to have most of the particles having an upright tilt angle for improved performance, there is no disclosure in Adefris that teaches away from having some portion of the particles with a flatter tilt angle. This line of argument from applicant directly contradicts the arguments from the declaration filed 26 Dec 2024, which asserts that 16% of the particles in figure 3 of Adefris are fallen rather than upright. Furthermore, the teachings of Bauer describe that 82-99% of the particles may have the desired upright tilt angle ([0309-0310]; fig 6), indicating that 1-18% of the particles may have a flat orientation while still realizing the improved abrasive performance. Applicant argues that this orientation disclosed by Bauer is not an upright orientation as claimed, due to the fact that Bauer does not apply the claimed distinction of 44 to 90 degrees for upright particles, and 0 to 44 degrees for fallen particles. While Bauer may not describe a particular angle for the upright particles, it is clear from figure 6 of Bauer, combined with the disclosure of paragraphs [0309-0310], that Bauer is describing upright particles. Note that applicant has provided no showing of criticality or justification for the apparently arbitrarily chosen cutoff of 44 degrees. Furthermore, Adefris clearly describes the tilt angle of the particles as being a results effective variable which has a direct effect on cutting performance, which renders the particularly claimed angle obvious for a person of ordinary skill, who would be able to arrive at usable tilt angles through routine optimization. Applicant has provided no showing of criticality to the claimed ranges, and there is no indication that the claimed ranges would provide any unexpected result over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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