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 .
Specification
The amendment filed 22 April, 2019 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The incorporation by reference of PCT/US2017/053695 and of the US Application No 62/412,411 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 27 September, 2017, see MPEP 1893.03(b). Therefore the specification amendment of 22 April, 2016 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claims 25-27, 29-32, and 45-46 are rejected under 35 U.S.C. 103 as being unpatentable over Van (US 2014/0256238, previously presented) in view of Oliver (US 4,916,869, previously presented) and Schladitz (US 3,495,960, previously presented).
Regarding Claim 25, Van teaches A bonded abrasive wheel (Ref. 100, Fig. 1, [0019]) comprising abrasive particles (Ref. 174, Fig. 2, [0019]) retained in a first organic binder (Ref. 150, Fig. 2, [0019]), wherein the abrasive particles comprise ceramic bodies (Ref. 140, Fig. 2, [0019] describes ceramic bodies); wherein the bonded abrasive wheel has a central portion (Fig. 1, the depressed central portion) adjacent to a central hub (Ref. 190, Fig. 1, [0019]), wherein the bonded abrasive wheel has an outer circumference (Fig. 1) and a rotational axis (See annotated Fig. 1 below) extending through the central hub (Fig. 1).
Van fails to explicitly teach magnetizable abrasive particles, each having a respective unitary magnetizable layer disposed thereon. Oliver teaches an abrasive grit structure with abrasive particles retained in a binder and can be considered analogous art because it is within the same field of endeavor of abrasives used to grind/wear a surface. Oliver teaches abrasive particles (Ref. 420, Fig. 10) with each having a respective unitary magnetizable layer (Ref. 421, Fig. 10, [Col. 8, Line 19-32], examiner notes the term unitary is interpreted as parts to be made a whole) thereon; wherein a majority of the magnetizable abrasive particles are substantially parallel to one another (Fig. 10, [Col. 8, Line 26-32]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the ceramic abrasive particles in the first organic binder, as taught by Van, with the magnetizable layer, as taught by Oliver, as to provide further functionality of being able to be aligned in the correct orientation for effective polishing to provide a more useful longer wearing structure ([Col. 8 Line 14-17]).
Van as modified further fails to explicitly teach wherein a majority of the magnetizable abrasive particles are substantially parallel to the rotational axis. Schladitz teaches an abrasive disk with abrasive particles retained in a binder and can be considered analogous art because it is within the same field of endeavor of abrasive disks. Schladitz teaches magnetizable abrasive particles (Ref. 14, Fig. 4, [Col 2, Lines 60-Col 3, Line 3] & [Col. 4, Line 5-31]), wherein a majority of the magnetizable abrasive particles (14) are substantially parallel (Fig. 2&4) and sit in a direction from a top surface to a bottom surface ([col. 2, Line 32-43] Fig. 2&4 shows the particles parallel in a direction from the top surface to the bottom surface). Given the rotational axis is parallel to the direction of a top surface to a bottom surface of the disk, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the abrasive particles in the first organic binder, as taught by Van as modified, to be in a direction of a top surface to a bottom surface, as taught Schladitz, thereby being parallel to the rotational axis to add the functionality of being able to be aligned in the correct orientation for effective polishing ([Col. 4, Line 5-31]).
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Regarding Claim 26, Van as modified teaches the limitations of claim 25, as described above, and Van further teaches wherein the bonded abrasive wheel comprises:
a primary abrasive layer (Ref. 120, Fig. 2, [0019]) comprising the abrasive particles retained in the first organic binder (Fig. 2);
a secondary abrasive layer (Ref. 160, Fig. 2, [0019]) comprising non-magnetizable abrasive particles (Ref. 170, Fig. 2, [0019]) retained in a second organic binder (Ref. 175, Fig. 2, [0019]); and
a first reinforcing material (Ref. 117 Fig. 2, [0019]) disposed between and contacting the primary abrasive layer and the secondary abrasive layer (Fig. 2).
Van fails to explicitly teach the primary abrasive layer comprising the magnetizable abrasive particles in the first organic binder. Oliver teaches abrasive particles (Ref. 420, Fig. 10) with each having a respective magnetizable layer (Ref. 421, Fig. 10, [Col. 8, Line 19-32]) in a first binder (Fig. 10, Abstract, Ref. 422) in a primary abrasive layer (Fig. 10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the abrasive particles in the primary abrasive layer, as taught by Van, with the magnetizable layer, as taught by Oliver, as to provide further functionality of being able to be aligned in the correct orientation for effective polishing to provide a more useful longer wearing structure ([Col. 8 Line 14-17]).
Regarding Claim 27, Van as modified teaches the limitations of claim 26, as described above, and Van further teaches a second reinforcing material (Ref. 166, Fig. 2, [0019]) contacting the secondary abrasive layer opposite the first reinforcing material (fig. 2).
Regarding Claim 29, Van as modified teaches the limitations of claim 25, as described above, and Van teaches that the ceramic abrasives can have different shapes ([0057]) but fails to explicitly teach wherein the ceramic bodies comprise ceramic rods. Schladitz further teaches abrasive particles within a resin bond and can be considered analogous art because it is within the same field of endeavor. Schladitz teaches the abrasive is rod shaped (Ref. 14, Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify shape of the ceramic abrasive bodies, as taught by Van, to be rod shaped, as taught by Schladitz, as a simple substitution of a known element to produce the result of effectively abrading a surface and providing greater and more consistent surface area of the abrasive particles.
Regarding Claim 30, Van as modified teaches the limitations of claim 25, as described above, and Van further teaches the ceramic abrasives can have different shaped ([0057]) but fails to explicitly teach wherein the ceramic bodies comprise ceramic platelets. Schladitz further teaches abrasive particles within a resin bond and can be considered analogous art because it is within the same field of endeavor. Schladitz teaches wherein the ceramic bodies comprise ceramic platelets (examiner interprets platelets as having a shape having a flat face, Fig. 4 shows the ceramic bodies having a flat face at the end of the rod shaped filaments). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the rod shaped abrasives with flat faces, as taught by Van as modified, since such a modification is merely an alternate equivalent structure to abrade a face and to ensure proper abrading of a surface and providing greater and more consistent surface area of the abrasive particles.
Regarding Claim 31, Van as modified teaches the limitations of claim 25, as described above, and Oliver teaches the magnetizable abrasive particles comprise a magnetizable layer (Ref. 421, Fig. 10, [Col. 8, Line 19-32]) consists essentially of a metal or metal alloy ([Col. 8, Line 19-32]teaches the magnetizable layer being made of a metal such as iron, in the form of iron oxide). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the magnetizable layer, as taught by Van, integrated with the magnetizable materials such as iron, as taught by Oliver, and to provide further functionality of being able to be aligned in the correct orientation for effective polishing ([Col. 8, Line 29-32]).
Regarding Claim 32, Van as modified teaches the limitations of claim 25, as described above, and Van teaches a magnetizable layer (Ref. 120, Fig. 2, [0019]) with particles (Ref. 174, Fig. 2, [0019]) in a binder (Ref. 150, Fig. 2, [0019]). Oliver further teaches a magnetizable layer (Ref. 421, Fig. 10, [Col. 8, Line 19-32]) retained in a binder (Ref. 422, Fig. 10, [Col. 8, Line 19-32 & Abstract]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to replace the abrasive particles in the first organic binder, as taught by Van, with the magnetizable abrasive particles, as taught by Oliver, as a simple substitution of a known element to produce the result of effectively abrading a surface and to provide further functionality of being able to be aligned in the correct orientation for effective polishing ([Col. 8, Line 29-32]).
Regarding Claim 45, Van as modified teaches the limitations of claim 25, as described above, and Van teaches a secondary abrasive layer (Ref. 160, Fig. 2, [0019]) comprising non-magnetizable abrasive particles (Ref. 170, Fig. 2, [0019]) retained in a second organic binder (Ref. 175, Fig. 2, [0019]).
Regarding Claim 46, Van as modified teaches the limitations of claim 25, as described above, and given the teachings of the magnetizable abrasive particles as taught by Oliver, Van as modified further teaches the ceramic magnetizable abrasive particles (140, Van) has a length within the thickness of the bonded abrasive wheel. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the length of the ceramic magnetizable abrasive particles, as taught by Van as modified, to be at least half the thickness of the bonded abrasive wheel. since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Van would not operate differently with different sized ceramic magnetizable particles and since such a modification would yield the predictable result of grinding a worksurface. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the particles preferably have an average particle length and other lengths may be used (specification [Pg. 8, Lines 16-22]).
Response to Arguments
Applicant's arguments filed 22 October, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments in regards to the prior art failing to teach a unitary magnetizable layer have been fully considered and are not persuasive. Examiner has applied Van in view of Oliver and Schladitz to the 35 USC 103 rejection above. Van teaches A bonded abrasive wheel (Ref. 100, Fig. 1, [0019]) comprising abrasive particles (Ref. 174, Fig. 2, [0019]) retained in a first organic binder (Ref. 150, Fig. 2, [0019]), wherein the abrasive particles comprise ceramic bodies (Ref. 140, Fig. 2, [0019] descries ceramic bodies); wherein the bonded abrasive wheel has a central portion (Fig. 1, the depressed central portion) adjacent to a central hub (Ref. 190, Fig. 1, [0019]), wherein the bonded abrasive wheel has an outer circumference (Fig. 1) and a rotational axis (See annotated Fig. 1 below) extending through the central hub (Fig. 1). Oliver teaches abrasive particles (Ref. 420, Fig. 10) with each having a respective unitary magnetizable layer (Ref. 421, Fig. 10 shows layers, [Col. 8, Line 19-32], examiner notes the term unitary is interpreted as parts to be made a whole) thereon; wherein a majority of the magnetizable abrasive particles are substantially parallel to one another (Fig. 10, [Col. 8, Line 26-32]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the ceramic abrasive particles in the first organic binder, as taught by Van, with the magnetizable layer, as taught by Oliver, as to provide further functionality of being able to be aligned in the correct orientation for effective polishing to provide a more useful longer wearing structure ([Col. 8 Line 14-17]). Given examiner’s interpretation of the term unitary, as parts to make a whole, Oliver teaches the magnetizable particles to make a whole layer.
In response to applicant's argument that it would not have been obvious to teach Oliver with Van due to conflicting teachings and Oliver teaching away from Van, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments that the Oliver reference would not be combinable with Van due to differing construction of layers have been fully considered and are not persuasive. Examiner is merely using Oliver to teach abrasive particles in a magnetizable layer and are used to teach the concept of the magnetizable layer. Given the suggestion both Van and Oliver teach abrasive particles within a layer, it would have been obvious to one of ordinary skill in the art before the effective filing date to teach the magnetizable layer of Oliver, into the layer of Van since both Oliver and Van yield a predictable result of polishing a workpiece.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANA L POON whose telephone number is (571)272-6164. The examiner can normally be reached on General: 6:30AM-3:30PM.
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/DANA LEE POON/Examiner, Art Unit 3723
/DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723