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 .
Claim Objections
Claims 3, 8, and 22 are objected to because of the following informalities: the recitation of “the” or “a” …“curvature where the height of the abrasive article…” in these claims is awkwardly worded. While it is clear these claims are attempting to further limit the curvature defined in claim 1, the phrasing should be revised for ease of understanding. For example, the above quoted phrase may be amended to read “the curvature of the abrasive article is such that the height of the abrasive article…”. Appropriate correction is required.
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 1, 3-8, 10-14, 16, 18, and 20-23 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 1, the claim recites “the abrasive layer is disposed directly in contact with the polymeric polyethylene composition” and later recites “a polymeric make coat composition…wherein the abrasive particles are disposed in the make coat composition.” It is unclear if the make coat and/or abrasive particles are considered to be a part of the abrasive layer, or if these are separate elements of the article. It would seem that a layer which includes abrasive particles would be the abrasive layer, but it is not recited as such in the current claims. The claim also recites “the abrasive layer comprises cubic boron nitride, diamond, or a combination thereof.” Is this a recitation of the material of the abrasive particles in the make coat composition? This is made more confusing by the fact that there is no antecedent basis for “the abrasive particles” in the claim. For the purposes of this examination, the abrasive layer will be read as including the polymeric make coat and the abrasive particles comprising cubic boron nitride, diamond, or a combination thereof. See arguments below for further discussion.
Claims 3-8, 10-14, 16, 18, and 20-23 are rejected as indefinite due to their dependency upon rejected claim 1.
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, 3-8, 10-12, 16, 18, and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kincaid (US 2009/0325466, previously cited) in view of Esteban (US 2016/0001422, previously cited) and further in view of Kirchner (US 2431258, previously cited), You (US 8287611, previously cited), and Masmar (US 6672952).
Regarding claim 1, Kincaid teaches a coated abrasive article comprising: an abrasive layer (120) disposed on a backing material (elements 110, 114, 118), wherein the abrasive layer comprises cubic boron nitride, diamond, or a combination thereof ([0099]), and wherein the backing material comprises: a backing substrate (110) having a first side (top side in fig 1) and a second side (bottom side in fig 1); a layer (114) disposed on the first side of the backing substrate (shown in fig 1), wherein the abrasive layer is disposed directly in contact with the layer on the first side (element 130 of abrasive layer 120 is in direct contact); and a layer (118) of polymeric acrylate composition ([0074]) disposed on the second side of the backing substrate (shown in fig 1), and a polymeric ([0096]) make coat (130) composition comprising 45-75 wt% (fully encompassing claimed range) resin ([0077]), 8-12 wt % ([0085]; fully encompassed by claimed range) bisphenol A epoxy diacrylate ([0087]), wherein abrasive particles (140) are disposed in the make coat composition (fig 1), wherein the abrasive layer further comprises a polymeric ([0107]) size coat (150) composition disposed on the make coat composition and the abrasive particles (fig 1).
Kincaid does not teach the layer on the first side of the backing substrate is a polymeric polyethylene composition. Esteban teaches a coated abrasive article comprising a backing having a layer thereon (fig 3; [0039]), wherein the layer is a polymeric polyethylene composition ([0044]; “low or high density polyethylene”) disposed on a first side of a backing substrate (fig 3; e.g. layer 102 on first side of substrate 103). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). 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 a polymeric polyethylene composition as the layer on the first side of the backing of Kincaid, as Esteban establishes that polyethylene is suitable for use as a layer in a coated abrasive article backing, achieving the predictable result of promoting adhesion between adjacent layers as taught by Esteban ([0044]).
Kincaid does not explicitly teach the polymeric acrylate composition comprising ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof. Esteban teaches a coated abrasive article comprising a backing having a layer thereon (fig 3; [0039]), wherein the layer is a polymeric acrylate composition disposed on a second side of a backing substrate (fig 3; e.g. layer 108 on second side of substrate 107), the polymeric acrylate composition comprising ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof ([0044]; several of the listed compositions fall within the scope of the listed compositions). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). 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 ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof as the polymeric acrylate composition in Kincaid, as Esteban establishes that these materials are suitable for use as a layer in a coated abrasive article backing, achieving the predictable result of promoting adhesion between adjacent layers as taught by Esteban ([0044]).
Kincaid does not teach the abrasive article has a curvature, where a height of the abrasive article is less than or equal to 10% of a diameter of the abrasive article. Kirchner teaches a coated abrasive article having a curvature (as shown in fig 1) where a height of the abrasive article is less than or equal to 10% of a diameter of the abrasive article (col 2, lines 7-12; preferred height is between 3/8 inch and 5/8 inch for a diameter of 9 1/8 inch, which is a curvature of between 4.1% and 6.8%, which is fully encompassed by 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 to form the abrasive article of Kincaid to have a curvature with a height of less than or equal to 10% of a diameter of the abrasive article, as such a curvature allows the article to fit snuggly against a supporting pad while avoiding cracking as taught by Kirchner (col 1, line 48- col 2, line 12).
Kincaid does not teach the resin being diphenylopropane resin, the polymeric make coat composition comprising 10-20 wt% oxetane, or 1-8 wt% acrylate resin. You teaches a polymeric make coat composition including 10-70% oxetane (col 7, lines 2-13; fully encompassing claimed range), and 5-20 wt % acrylate resin (col 10, lines 26-35; overlapping the claimed range). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include 10-20 % oxetane and 1-8% acrylate resin in the polymeric make coat composition of Kincaid, as these components are known as suitable polymer constituents in an abrasive make coat composition for providing the desired mechanical properties as taught by You (col 10, lines 26-35).
Kincaid does not teach the resin being diphenylopropane resin. Masmar teaches a coated abrasive article comprising a polymeric make coat composition including diphenylopropane (col 12, lines 20-22 Eponex is the trade name for this material as discussed in applicant’s specification in table 2). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). 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 diphenylopropane resin in the polymeric make coat composition of Kincaid, as this component is a known commercially available polymer material known to be suitable as a polymer constituent in an abrasive make coat composition as taught by Masmar.
Regarding claim 3, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid as modified further teaches the curvature is such that the height of the abrasive article is not greater than 10% of the diameter of the abrasive article as described in the modification based on Kirchner in the rejection of claim 1 above.
Regarding claims 4-5, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid is silent as to a Young’s modulus of the make coat or size coat. You teaches a coated abrasive article wherein a make coat or size coat (col 19, lines 12-24; make coat 104 and size coat 108 are comprised of “binder”) comprises a Young’s modulus of at least 450 kpsi (col 18, lines 59-65), overlapping the claimed range. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the size coat or make coat in Kincaid to have a Young’s modulus of between 150 and 900 kpsi, as moduli in this range are known to provide desired strength and flexibility to a coated abrasive article. Furthermore, applicant has provided no showing of criticality to the claimed range.
Regarding claim 6, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Esteban further teaches the polymeric polyethylene composition (included based on the teachings of Esteban as described in the rejection of claim 1 above) comprises low density polyethylene, high density polyethylene, or a combination thereof ([0044]).
Regarding claim 7, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid is silent as to the thickness of the polymeric polyethylene layer. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II. A.). Furthermore, Esteban further teaches the polymeric polyethylene layer (described in rejection of claim 1 above) of the backing (101) can be varied in thickness ([0039]), and that the overall thickness of the backing (including the polymeric polyethylene layer) is a results effective variable which has a direct effect on the flexibility of the abrasive article ([0066]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness of the polymeric polyethylene layer through routine experimentation, the thickness being chosen based on the desired flexibility of the abrasive article. Furthermore, applicant has provided no showing of criticality to the claimed range.
Regarding claim 8, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid does not teach the curvature is such that the height of the abrasive article is not greater than 5% of a diameter of the abrasive article. Kirchner teaches a coated abrasive article having a curvature (as shown in fig 1) where a height of the abrasive article is less than or equal to 5% of a diameter of the abrasive article (col 2, lines 7-12; preferred height is between 3/8 inch and 5/8 inch for a diameter of 9 1/8 inch, which is a curvature of between 4.1% and 6.8%, which overlaps 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 to form the abrasive article of Kincaid to have a curvature with a height of less than or equal to 5% of a diameter of the abrasive article, as such a curvature allows the article to fit snuggly against a supporting pad while avoiding cracking as taught by Kirchner (col 1, line 48- col 2, line 12).
Regarding claim 10, Kincaid, as modified, teaches all the limitations of claim 8 as described above. Kincaid is silent as to the thickness of the polymeric acrylate layer. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II. A.). Furthermore, Esteban further teaches the polymeric acrylate layer (described in rejection of claim 1 above) of the backing (101) can be varied in thickness ([0039]), and that the overall thickness of the backing (including the polymeric polyethylene layer) is a results effective variable which has a direct effect on the flexibility of the abrasive article ([0066]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness of the polymeric acrylate layer through routine experimentation, the thickness being chosen based on the desired flexibility of the abrasive article. Furthermore, applicant has provided no showing of criticality to the claimed range.
Regarding claim 11, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid further teaches the backing substrate (110) comprises a polymeric film formed from at least one of polyester and polyethylene terephthalate ([0069]).
Regarding claim 12, Kincaid, as modified, teaches all the limitations of claim 11 as described above. Kincaid further teaches the polymeric film (110) comprises a thickness of 0.02 to 5 millimeters ([0070]; 0.8 mil to 197 mil), fully encompassing the claimed range. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the polymeric film within the claimed thickness, achieving the predictable result of providing a backing with the necessary strength for its intended purpose as taught by Kincaid ([0070]).
Regarding claims 16 and 18, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid further teaches the comprises an epoxy acrylate polymer, an epoxy methacrylate polymer, a butyl acrylate polymer, or a combination thereof ([0096]); the size coat composition comprises an epoxy acrylate polymer, an epoxy methacrylate polymer, a butyl acrylate polymer, or a combination thereof ([0107]).
Regarding claim 20, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid further teaches the abrasive particles comprises a grit size of 5 to 500 microns ([0103]; 5-1500 microns, fully encompasses the claimed range). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05 I.). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed range of abrasive particle size, as abrasive particles within this range are known to achieve the predicable result of providing an abrasive surface to a coated abrasive article as taught by Kincaid.
Regarding claim 21, Kincaid, as modified, teaches all the limitations of claim 11 as described above. Kincaid further teaches the polymeric film of the backing substrate comprises polyethylene terephthalate ([0069]).
Regarding claim 22, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid further teaches the backing substrate (110) comprises a polymeric film formed from polyethylene terephthalate ([0069]) having a thickness of 0.02 to 5 millimeters ([0070]; 0.8 mil to 197 mil, fully encompassing the claimed range), wherein the polymeric polyethylene composition comprises low density polyethylene (rendered obvious by Esteban [0044] as described in the rejection of claim 1 above), and wherein the polymeric acrylate composition comprises a mixture of a copolymer of the ethylene acrylate and butyl acrylate and an ethylene acrylic ester terpolymer (rendered obvious by Esteban [0044] as described in the rejection of claim 1 above; these materials are described [0044] of Esteban). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the polymeric film of Kincaid within the claimed thickness, as Kincaid discloses a thickness range fully encompassing the claimed range for achieving the predictable result of providing a backing with the necessary strength for its intended purpose as taught by Kincaid ([0070]).
Kincaid is silent as to the thickness of the polymeric polyethylene layer. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II. A.). Furthermore, Esteban further teaches the polymeric polyethylene layer (described in rejection of claim 1 above) of the backing (101) can be varied in thickness ([0039]), and that the overall thickness of the backing (including the polymeric polyethylene layer) is a results effective variable which has a direct effect on the flexibility of the abrasive article ([0066]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness of the polymeric polyethylene layer through routine experimentation, the thickness being chosen based on the desired flexibility of the abrasive article. Furthermore, applicant has provided no showing of criticality to the claimed range.
Kincaid does not teach the abrasive article has a curvature, where a height of the abrasive article is less than or equal to 5% of a diameter of the abrasive article. Kirchner teaches a coated abrasive article having a curvature (as shown in fig 1) where a height of the abrasive article is less than or equal to 5% of a diameter of the abrasive article (col 2, lines 7-12; preferred height is between 3/8 inch and 5/8 inch for a diameter of 9 1/8 inch, which is a curvature of between 4.1% and 6.8%, which overlaps 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 to form the abrasive article of Kincaid to have a curvature with a height of less than or equal to 5% of a diameter of the abrasive article, as such a curvature allows the article to fit snuggly against a supporting pad while avoiding cracking as taught by Kirchner (col 1, line 48- col 2, line 12).
Regarding claim 23, Kincaid, as modified, teaches all the limitations of claim 1 as described above. Kincaid further teaches the abrasive article further comprises a supersize coat composition layer (160) disposed on the size coat composition (fig 1; [0066]).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kincaid, Esteban, Kirchner, You, and Masmar as applied to claim 11 above, and further in view of Gaeta (US 8883288, previously cited).
Regarding claim 13, Kincaid, as modified, teaches all the limitations of claim 11 as described above. Kincaid is silent as to a specific surface energy of the polymeric film, but does describe that the backing may be corona treated in order to promote adhesion of the other layers ([0072]). Gaeta teaches a coated abrasive article wherein a polymeric film forming a backing (102; col 4, lines 8-20) is corona treated in order to have a surface energy of at least 40 dyne/cm2 (48-55 dyne/cm2, anticipating the claimed range; col 11, lines 23-27). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to treat the surface of the polymeric film backing substrate of Kincaid to have a surface energy of at least 40 dyne/cm2, as such a treatment achieves the predictable result of promoting adhesion between adjacent layers as taught by Kincaid ([0072]) and Gaeta (col 11, lines 23-27; col 4, lines 31-38).
Regarding claim 14, Kincaid, as modified, teaches all the limitations of claim 13 as described above. Kincaid further teaches the polymeric film is corona treated ([0072]).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kincaid (US 2009/0325466, previously cited) in view of Esteban (US 2016/0001422, previously cited) and further in view of Kirchner (US 2431258, previously cited).
Regarding claim 24, Kincaid teaches a coated abrasive article comprising: an abrasive layer (120) disposed on a backing material (elements 110, 114, 118), wherein the abrasive layer comprises cubic boron nitride, diamond, or a combination thereof ([0099]), and wherein the backing material comprises: a backing substrate (110) having a first side (top side in fig 1) and a second side (bottom side in fig 1); a layer (114) disposed on the first side of the backing substrate (shown in fig 1), wherein the abrasive layer is disposed directly in contact with the layer on the first side (element 130 of abrasive layer 120 is in direct contact); and a layer (118) of polymeric acrylate composition ([0074]) disposed on the second side of the backing substrate (shown in fig 1), wherein the coated abrasive article further comprises a polymeric ([0107]) size coat (150) composition disposed on the abrasive layer (fig 1).
Kincaid does not teach the layer on the first side of the backing substrate is a polymeric polyethylene composition. Esteban teaches a coated abrasive article comprising a backing having a layer thereon (fig 3; [0039]), wherein the layer is a polymeric polyethylene composition ([0044]; “low or high density polyethylene”) disposed on a first side of a backing substrate (fig 3; e.g. layer 102 on first side of substrate 103). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). 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 a polymeric polyethylene composition as the layer on the first side of the backing of Kincaid, as Esteban establishes that polyethylene is suitable for use as a layer in a coated abrasive article backing, achieving the predictable result of promoting adhesion between adjacent layers as taught by Esteban ([0044]).
Kincaid does not explicitly teach the polymeric acrylate composition comprising ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof. Esteban teaches a coated abrasive article comprising a backing having a layer thereon (fig 3; [0039]), wherein the layer is a polymeric acrylate composition disposed on a second side of a backing substrate (fig 3; e.g. layer 108 on second side of substrate 107), the polymeric acrylate composition comprising ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof ([0044]; several of the listed compositions fall within the scope of the listed compositions). It is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). 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 ethyl acrylate, ethylene acrylate, ethylene-methyl acrylate, ethylene-ethyl acrylate, or a combination thereof as the polymeric acrylate composition in Kincaid, as Esteban establishes that these materials are suitable for use as a layer in a coated abrasive article backing, achieving the predictable result of promoting adhesion between adjacent layers as taught by Esteban ([0044]).
Kincaid does not teach the abrasive article has a curvature, where a height of the abrasive article is less than or equal to 10% of a diameter of the abrasive article. Kirchner teaches a coated abrasive article having a curvature (as shown in fig 1) where a height of the abrasive article is less than or equal to 10% of a diameter of the abrasive article (col 2, lines 7-12; preferred height is between 3/8 inch and 5/8 inch for a diameter of 9 1/8 inch, which is a curvature of between 4.1% and 6.8%, which is fully encompassed by 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 to form the abrasive article of Kincaid to have a curvature with a height of less than or equal to 10% of a diameter of the abrasive article, as such a curvature allows the article to fit snuggly against a supporting pad while avoiding cracking as taught by Kirchner (col 1, line 48- col 2, line 12).
Response to Arguments
Applicant's arguments filed 18 Dec 2025 have been fully considered but they are not persuasive. Applicant argues that the amendments to claim 1 overcome the previous 112b rejections. However, there are still issues of clarity as detailed above. Specifically, there is no antecedent basis for “the abrasive particles” in the claim. Additionally, while it appears the “cubic boron nitride, diamond, or a combination thereof” recited in line 3 may be referring to abrasive particles, there is no link between these elements, making it unclear if the described materials are of the particles or not. Furthermore, as can be seen in applicant’s figure 1, the abrasive layer 103 include the make coat 115, abrasive particles 117 and size coat 119. While the claim makes it clear that the size coat is a part of the abrasive layer, the claim does not clarify that the make coat and abrasive particles are a part of the abrasive layer, which leads to confusion as to the structure of the abrasive article, particularly since the claims also necessitate the abrasive layer to be disposed directly in contact with the polymeric polyethylene composition.
Applicant further argues that the prior art does not teach the newly claimed constituents of the polymeric make coat composition. However, the newly relied upon You and Masmar references in combination with Kincaid render these limitations obvious as detailed above.
Applicant further argues that Esteban does not teach the claimed polymeric acrylate composition, stating that the materials disclosed by Esteban are in an “attachment improving layer 126” rather than in an abrasive layer. However, the claimed polymeric acrylate composition is not a part of the claimed abrasive layer. The claimed polymeric acrylate composition is on the second side of the backing substrate and corresponds to applicant’s layer 113, which is not a part of the abrasive layer. Applicant further argues that there is no “reason to try” the polymeric acrylate composition discloses by Esteban, pointing to a lack of reasonable expectation of success. However, the compositions disclosed by Esteban are used in an abrasive article as a back coat layer on an abrasive, which clearly points to an expectation of success with the claimed materials. The fact that Esteban discloses several possible materials for this layer does not point to any lack of expectation of success. In fact, Esteban’s paragraph [0044] provides a clear roadmap to the claimed materials for a person of ordinary skill.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Other coated abrasive articles with similar structures and materials are cited.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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