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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/2026 has been entered.
Response to Amendment
In response to the amendment received on 02/04/2026:
claims 1-3, 5-7, 11-22, and 30-31 are currently pending;
all prior art grounds of rejection are withdrawn in light of the amendment – “using the magnet, applying a magnetic field to at least the backing and a portion of the gap between the backing and the distribution tool to exert a first magnetic force F1 on the magnetizable abrasive particles to magnetically extract the magnetizable abrasive particles from within the cavities of the distribution tool prior to contact with the backing and to influence transfer of the magnetizable abrasive particles across the gap, where the first magnetic force F1 is greater than the force F2; removing the second force F2 at a predetermined position of the distribution tool before the magnetizable abrasive particles enter a region of magnetic influence such that the magnetizable abrasive particles are released under the first magnetic force F1 during transfer” – in independent claim 1; and
the nonstatutory double patenting rejection is maintained for at least the reasons as set forth herein.
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.
Claim 13 is 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.
Claim 13 line 2 reciting “a magnet” is indefinite because it is not clear if it is the same or different from the recited “a magnet” in claim 1 line 18.
Examiner will treat the recitation as the same magnet.
Examiner suggests amending the claim to either i) replace “a” with “the”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6 and 8 of U.S. Patent No. 12208491 (“‘491” hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications is drawn to a method of making a coated abrasive article, the method comprising: providing dispensable magnetizable abrasive particles and a distribution tool, wherein the distribution tool is configured to receive the magnetizable abrasive particles therein, and wherein the distribution tool comprises a plurality of cavities configured to impart at least one of a predetermined orientation and alignment of the magnetizable abrasive particles before the magnetizable abrasive particles are transferred from the distribution tool; dispensing the magnetizable abrasive particles into the cavities of the distribution tool and applying a force F2 (or a magnetic field) to retain the magnetizable abrasive particles within the cavities; after dispensing the magnetizable abrasive particles into the cavities of the distribution tool, inverting the distribution tool such that the force F2 (or a magnetic field) retains at least some of the magnetizable abrasive particles against the force of gravity; positioning a backing adjacent to the inverted distribution tool and spaced therefrom by at least a minimum gap, wherein the minimum gap is at least as large as a maximum dimension of the magnetizable abrasive particles; and a magnet below the backing; using the magnet, applying a magnetic field to at least the backing and a portion of the gap between the backing and the distribution tool to exert a first magnetic force F1 on the magnetizable abrasive particles to influence transfer of the magnetizable abrasive particles from the cavities of the distribution tool to the backing; removing or changing the force F2 (or a magnetic field) prior to or simultaneous with transfer of the magnetizable abrasive particles from the plurality of cavities; and transferring the magnetizable abrasive particles from the distribution tool to a first major surface of the backing, wherein the magnetic field is applied during the transfer of the magnetizable abrasive particles; and at least partially curing a make layer precursor disposed on the backing; disposing a size layer precursor on at least a portion of the at least partially cured make layer precursor; and at least partially curing the size layer precursor.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Applicant discusses that the nonstatutory double patenting rejection of claims 1, 7 and 31 over claims 1, 3 and 6 of US 12,208,491 is traversed because of the following reasons:
i) the core mechanism of the present application applies magnetic field to magnetically extract the magnetizable abrasive particles from within the cavities of the distribution tool, while ‘491 does not use magnetic transfer;
ii) the pending claims recite a timed removal of F2 prior to magnetic transfer, which is not in ‘491 patent;
iii) the pending claims require transfer across a defined gap with magnetic control, not in ‘491 patent,
iv) the use of the magnetizable abrasive particles in the pending claims is different from the ‘491 patent because in ‘491, the mention of magnetizable particles is incidental and relates to fixation on the backing or optional post-placement alignment;
v) the ODP rejection is improper because of the assumption of equivalence between present application’s cavity-based, magnetic-field-based extraction, and the non-magnetic, mechanically based processes of the ‘491 patent;
vi) case law supports patentable distinction; and
vii) ODP rejection should be withdrawn
(see Applicant’s arguments at pages 9-13, section double patenting rejection).
Examiner acknowledges the arguments and respectfully notes the following:
i) claim 1 lines 17-19 of ‘491 patent claims “applying a second magnetic field to urge the magnetizable abrasive particles out from the cavities onto the backing”, which is an application of a magnetic field to extract the magnetizable abrasive particles from within the cavities of the distribution tool;
ii) claim 8 of ‘491 patent claims “wherein removing or changing the magnetic field includes at least one of: reversing a polarity of the magnetic field to push the magnetizable abrasive particles out of the cavities, moving the distribution tool relative to magnetic tool to reduce the magnetic field, eliminating the magnetic field by switching off an electromagnet that produces the magnetic field, or providing a second magnetic field of greater strength than and in substantially opposing direction from the magnetic field to push the magnetizable abrasive particles out of the cavities”, which is a timed removal of F2 prior to magnetic transfer;
iii) claim 1 lines 12-19 of ‘491 patent claims “inverting the distribution tool relative to the backing such that the magnetizable abrasive particles are retained by the first magnetic field against the force of gravity; aligning the backing with the dispensing surface with the first major surface facing the dispensing surface and has a distance from the dispensing surface to keep the backing from contacting the dispensing surface; applying a second magnetic field to urge the magnetizable abrasive particles out from the cavities onto the backing”, wherein the claimed “distance” in ‘491 is a gap, and the claimed “first magnetic field against the force of gravity” and “applying a second magnetic field to urge the magnetizable abrasive particles out from the cavities onto the backing” in ‘491 is the magnetic control;
iv) it is obvious in the absence of new or unexpected results for one of ordinary skill in the art that the magnetizable abrasive particles are controlled by the first and second magnetic fields in ‘491 patent;
v) both the pending application and the ‘491 patent claims cavity-based, magnetic-field-based extraction;
vi) based on the arguments outlined above, there are no patentable distinction between the pending application and the ‘491 patent; and
vii) based on the arguments outlined above, ODP rejection is maintained.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731