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 .
Response to Amendment
The amendment filed on 03/28/2025 has been entered. Claim(s) 3 and 15 are canceled. Claims 16-20 have been withdrawn from consideration. Claim(s) 1-2, 4-14 and 21-22 remain pending and have been examined below.
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 8-9 and 13-14 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 8 (Original), the limitation “wherein the plurality of fabric layers comprises a woven fabric, a nonwoven fabric, or a combination thereof” is indefinite because Markush group is selected from an open list. Per MPEP 2173.05(h) it is held that “If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim”. In the instant case the recitation uses the term “comprises” which is an open list. For examination purposes the claim will be interpreted to read as “wherein the plurality of fabric layers consists of a woven fabric, a nonwoven fabric, or a combination thereof”.
Claim 9 is rejected as being dependent on claim 8.
Regarding claim 9 (Original), the limitation “wherein the plurality of fabric layers comprises at least 2 layers, at least 4 layers, at least 6 layers, at least 8 layers, at least 10 layers, at least 12 layers, at least 15 layers, at least 20 layers, or at least 25 layers to not greater than 100 layers, not greater than 50 layers, not greater than 25 layers, not greater than 20 layers, not greater than 15 layers, or not greater than 12 layers” is indefinite because the overlap of the ranges is confusing since the range could be from "at least 20 layers but not greater than 15 layers" where this would produce no layers, which would make the buff no longer exist (see MPEP 2173.05(c)(II)).
Regarding claim 13 (Original), the limitation “wherein the abrasive particles comprise silica, alumina (fused or sintered), zirconia, zirconia/alumina oxides, zirconium silicate, silicon carbide, garnet, diamond, cubic boron nitride, silicon nitride, ceria, titanium dioxide, titanium diboride, boron carbide, tin oxide, tungsten carbide, titanium carbide, iron oxide, chromia, flint, emery, or a combination thereof” is indefinite because Markush group is selected from an open list. Per MPEP 2173.05(h) it is held that “If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim”. In the instant case the recitation uses the term “comprise” which is an open list. For examination purposes the claim will be interpreted to read as “wherein the abrasive particles consist of silica, alumina (fused or sintered), zirconia, zirconia/alumina oxides, zirconium silicate, silicon carbide, garnet, diamond, cubic boron nitride, silicon nitride, ceria, titanium dioxide, titanium diboride, boron carbide, tin oxide, tungsten carbide, titanium carbide, iron oxide, chromia, flint, emery, or a combination thereof”.
Claim 14 is rejected as being dependent on claim 13.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 7-11, 13-14, and 21-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Buck (US PGPUB No. 2020/0215665), hereinafter referred to as Buck.
Regarding claim 1 (Previously Presented), Buck discloses a fixed abrasive buff [Buck, fig 1, 20], comprising:
a central hub [Buck, fig 1, center of 20 and page 9, pp 0068 teaching that 20 is attached to a power tool];
a plurality of fabric layers affixed to the central hub [Buck, fig 2, 26]; and
an abrasive composition [Buck, fig 2, and page 9, pp 0069 34] comprising a polymeric binder [Buck, page 9, pp 0069, 29] and a plurality of abrasive particles dispersed in the polymeric binder [Buck, page 9, pp 0069, 33], wherein a content of the abrasive particles at an outer edge of the plurality of fabric layers is higher than a content of the abrasive particles at an inner edge of the plurality of fabric layers [Buck, page 12, pp 0085-0087, teaching that the abrasives are within a plurality of mm thick band around the edge of the substrate, thus having a higher concentration and thus a higher concentration of abrasives, further that beyond this band, there is a dispersement of the coating that is reduced], wherein the abrasive buff comprises particles in both the inner edge and outer edge [Buck, page 12, pp 0086, teaching that the thickness of the coating, and hence the abrasives is reduced], and
wherein an add-on weight of the abrasive composition at the outer edge of the plurality of fabric layers is higher than an add-on weight of the abrasive composition at the inner edge of the plurality of fabric layers [Buck, page 12, pp’s 0085-0087, where the office interprets the add-on weight to be component that is the non-abrasive particles of the abrasive composition or coating, where there is a lubricant added to the coating, and this is also in a higher concentration in the band at the periphery of the fabric, but is still dispersed at a reduction below line 35 in figure 2, so that as wear occurs, some of the abrasive and lubricant from the top band, migrate downwards and has even found to further improve performance during wear].
Regarding claim 5 (Previously Presented), Buck further discloses the fixed abrasive buff of claim 1, wherein a total weight of the fixed abrasive buff at the outer edge of the plurality of fabric layers is higher than a total weight at the inner edge of the plurality of fabric layers [Buck, page 12, pp’s 0085-0087, since both the abrasive and the lubricant and binder of the coating is higher within the millimeter thick band at the top, then the total weight is higher than at the inner portion of the buff].
Regarding claim 7 (Original), Buck further discloses the fixed abrasive buff of claim 1, wherein the inner edge is adjacent the central hub, and wherein the outer edge is radially furthest from the central hub [Buck, fig 1, showing the inner edge of 20 is adjacent the central mounting for the power tool and the outer edge of 20 has the band 35].
Regarding claim 8 (Original), Buck further discloses the fixed abrasive buff of claim 1, wherein the plurality of fabric layers comprises a woven fabric, a nonwoven fabric, or a combination thereof [Buck, page 9, pp 0068].
Regarding claims 9 (Original) and 10 (Original), Buck further discloses the fixed abrasive buff of claim 8, wherein the plurality of fabric layers comprises at least 2 layers, at least 4 layers, at least 6 layers, at least 8 layers, at least 10 layers, at least 12 layers, at least 15 layers, at least 20 layers, or at least 25 layers to not greater than 100 layers, not greater than 50 layers, not greater than 25 layers, not greater than 20 layers, not greater than 15 layers, or not greater than 12 layers [Buck, page 10, pp 0076] (clm 9); and
wherein the abrasive composition is dispersed on or in each of the plurality of fabric layers [Buck, page 10, pp 0076] (clm 10).
Regarding claim 11 (Original), Buck further discloses the fixed abrasive buff of claim 1, wherein the abrasive composition comprises: 10 wt.% to 80 wt.% of the polymeric binder [Buck, page 8, pp 0056, 30% and 65%, which overlaps the claimed invention]; and 20 wt.% to 90 wt.% of abrasive particles [Buck, page 8, pp 0056, the remaining composition makes up between 45% and 70%, which overlaps the claimed invention].
Regarding claims 13 (Original) and 14 (Previously Presented), Buck further discloses the fixed abrasive buff of claim 11, wherein the abrasive particles consist of silica, alumina (fused or sintered), zirconia, zirconia/alumina oxides, zirconium silicate, silicon carbide, garnet, diamond, cubic boron nitride, silicon nitride, ceria, titanium dioxide, titanium diboride, boron carbide, tin oxide, tungsten carbide, titanium carbide, iron oxide, chromia, flint, emery, or a combination thereof [Buck, page 4, pp 0030, alumina] (clm 13); and
wherein the abrasive particles comprise an average particle size of at least 5 micrometers, at least 10 micrometers, at least 15 micrometers, at least 20 micrometers, or at least 25 micrometers to not greater than 500 micrometers, not greater than 250 micrometers, not greater than 100 micrometers, or not greater than 50 micrometers [Buck, page 4, pp 0031] (clm 14).
Regarding claim 21 (Previously Presented), Buck as modified further discloses the fixed abrasive buff of claim 1, wherein the polymeric binder is selected from the group consisting of an epoxy composition, an acrylic composition, a polyurethane composition, a polysiloxane composition, an acrylic latex composition, a thermoset rubber composition, a thermoset elastomer composition, an acrylonitrile-butadiene rubber composition, a polybutadiene composition, and combinations thereof [Buck, page 6, pp 0043].
Regarding claim 22 (Previously Presented), Buck discloses a fixed abrasive buff [Buck, fig 1, 20], comprising:
a central hub [Buck, fig 1, center of 20 and page 9, pp 0068 teaching that 20 is attached to a power tool];
a splayed plurality of fabric layers affixed to the central hub [Buck, figs 1 and 2, showing splayed fabric layers]; and
an abrasive composition [Buck, fig 2, and page 9, pp 0069 34] comprising a polymeric binder [Buck, page 9, pp 0069, 29] and a plurality of abrasive particles dispersed in the polymeric binder [Buck, page 9, pp 0069, 33], wherein a content of the abrasive particles at an outer edge of the splayed plurality of fabric layers is higher than a content of the abrasive particles at an inner edge of the splayed plurality of fabric layers [Buck, page 12, pp 0085-0087, teaching that the abrasives are within a plurality of mm thick band around the edge of the substrate, thus having a higher concentration and thus a higher concentration of abrasives, further that beyond this band, there is a dispersement of the coating that is reduced], wherein the abrasive buff comprises particles in both the inner edge and outer edge [Buck, page 12, pp 0086, teaching that the thickness of the coating, and hence the abrasives is reduced], and
wherein an add-on weight of the abrasive composition at the outer edge of the plurality of splayed fabric layers is higher than an add-on weight of the abrasive composition at the inner edge of the plurality of fabric layers [Buck, page 12, pp’s 0085-0087, where the office interprets the add-on weight to be component that is the non-abrasive particles of the abrasive composition or coating, where there is a lubricant added to the coating, and this is also in a higher concentration in the band at the periphery of the fabric, but is still dispersed at a reduction below line 35 in figure 2, so that as wear occurs, some of the abrasive and lubricant from the top band, migrate downwards and has even found to further improve performance during wear].
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 2, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Buck (US PGPUB No. 2020/0215665) alone, hereinafter referred to as Buck.
Regarding claim 2 (Original), Buck discloses the fixed abrasive buff of claim 1, but may not explicitly disclose wherein the content of the abrasive particles at the outer edge of the plurality of fabric layers is at least 10%, at least 15%, at least 20%, at least 25%, at least 30%, at least 35%, at least 40%, at least 45%, or at least 50% higher than the content of the abrasive particles at the inner edge of the plurality of fabric layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the buff of Buck to have the content of the abrasive articles be at least 10% to 50% higher than the content of the abrasive particles at the inner edge because per MPEP 2144.04(IV)(A) 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 Sys., inc., 725.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied 469 U.S. 830, 225, SPQ 232 (1984). In the instant case, the device of Buck would not operate differently with the claimed content of the abrasive particles at the edge higher than at the inner edge since the buff is intended to have a higher concentration of particles at the outer edge within the multiple millimeter band, therefore the buff would function appropriately having the claimed content of the abrasive particles. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the content “may” be within the claimed ranges (specification pp [0038]).
Regarding claim 4 (Previously Presented), Buck discloses the fixed abrasive buff of claim 1, but may not explicitly disclose wherein the add-on weight of the abrasive composition at the outer edge of the plurality of fabric layers is at least 10%, at least 15%, at least 20%, at least 25%, at least 30%, at least 35%, at least 40%, at least 45%, or at least 50% higher than the add-on weight of the abrasive composition at the inner edge of the plurality of fabric layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the buff of Buck to have the add-on weight of the abrasive compositon be at least 10% to 50% higher than the add-on weight of the abrasive composition at the inner edge because per MPEP 2144.04(IV)(A) 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 Sys., inc., 725.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied 469 U.S. 830, 225, SPQ 232 (1984). In the instant case, the device of Buck would not operate differently with the claimed add-on weight of the abrasive composition at the outer edge higher than at the inner edge since the buff is intended to have a higher concentration of add-on weight at the outer edge within the multiple millimeter band, therefore the buff would function appropriately having the claimed content of the abrasive particles. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the content “may” be within the claimed ranges (specification pp [0039]).
Regarding claim 6 (Original), Buck discloses the fixed abrasive buff of claim 5, but may not explicitly disclose wherein the total weight of the fixed abrasive buff at the outer edge of the plurality of fabric layers is at least 10%, at least 15%, at least 20%, at least 25%, at least 30%, at least 35%, at least 40%, at least 45%, or at least 50% higher than the total weight at the inner edge of the plurality of fabric layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the buff of Buck to have the total weight of the fixed abrasive buff at the outer edge be at least 10% to 50% higher than the total weight of the abrasive buff at the inner edge because per MPEP 2144.04(IV)(A) 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 Sys., inc., 725.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied 469 U.S. 830, 225, SPQ 232 (1984). In the instant case, the device of Buck would not operate differently with the claimed total weight of the abrasive buff at the outer edge higher than at the inner edge since the buff is intended to have a higher total weight at the outer edge within the multiple millimeter band, therefore the buff would function appropriately having the claimed content of the abrasive particles. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the content “may” be within the claimed ranges (specification pp [0040]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Buck (US PGPUB No. 2020/0215665) as applied to claim 11 above, and in further view of Wang et al (US PGPUB No. ), hereinafter referred to as Buck and Wang, respectively.
Regarding claim 12 (Previously Presented), Buck further discloses the fixed abrasive buff of claim 11, wherein the polymeric binder comprises a self-crosslinking composition [], but may not explicitly disclose wherein the polymeric binder comprises a self-crosslinking carboxylated styrene-butadiene composition.
Wang teaches a fixed abrasive buff [Wang, fig 1, 100], comprising:
a central hub [Wang, page 10, pp 0199 and fig 1, center of 100];
a plurality of fabric layers affixed to the central hub [Wang, fig 1, 102]; and
an abrasive composition [Wang, page 1, pp 0018] comprising a polymeric binder [Wang, page 1, pp 0018] and a plurality of abrasive particles dispersed in the polymeric binder [Wang, page 1, pp 0018], wherein the polymeric binder comprises a self-crosslinking carboxylated styrene-butadiene composition [Wang, page 6, pp 0094].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included within the polymeric binder of Buck the self-crosslinking carboxylated styrene-butadiene composition as taught by Wang because per MPEP 2143(I)(A) the combination of old elements is held to be obvious over the prior art. Where in the instant case, to include the carboxylated styrene-butadiene composition as taught by Wang in the system of Buck, each individual element and its function are shown in the prior art, albeit shown in separate references. The only difference between the claimed invention and the prior art is the lack of actual combination of the elements in a single prior art reference. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the carboxylated styrene-butadiene composition as taught by Wang in the system of Buck because the claimed invention is merely a combination of old elements, the elements being self-crosslinking composition of Buck and the crosslinking carboxylated styrene-butadiene composition. In the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination gave the predictable result of binding the abrasives to the fabric.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. For this reason a second non-final office action has been issued and in order to afford the applicant the opportunity to fully respond to the new prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT NEIBAUR whose telephone number is (571)270-7979. The examiner can normally be reached M - F 8:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT F NEIBAUR/Primary Examiner, Art Unit 3723
Prosecution Insights