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 .
Election/Restrictions
Applicant’s election with traverse of Group III, claims 97-101 and 82-90, in the reply filed on 09/30/2025 is acknowledged. The traversal is on the ground(s) that claim 91 is amended to refer to claim 90, therefore Groups II and III share the special technical feature of a woven web.
This is not found persuasive because claim 91 depends on canceled claim 11, not claim 90, and the independent claim of Group III (claim 97) does not recite a “woven web”. However, as amended, Groups II-III now share the additional technical feature of a layer comprising a nonwoven fabric and a woven fabric, and a coating comprising a crosslinked binder; however, this is not a special technical feature as it does not make a contribution over the prior art in view of Paramban, et al. (U.S. Pub. No. 2018/0085896-A1) (hereinafter, “PARAMBAN”). PARAMBAN teaches a self-contained buffing article comprising a layer of a combination of woven and nonwoven fabric (see PARAMBAN at Abstract, Fig. 2, and paragraphs [0015], [0017], [0023]-[0024][0024], [0062], [0064] and [0144]) and a coating comprising a crosslinked binder, lubricant and abrasive particles (see PARAMBAN at paragraphs [0015], [0029], [0034], [0054], [0061], [0067], [0069] and [0077]).
The requirement is still deemed proper and is therefore made FINAL.
Claims 91-96 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/30/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “510”, “530”, “610” and “930” (see Figs. 5-6 and 9). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “50”, “540” and “90” (see pg. 16, lines 12 and 15 and pg. 18, line 2). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification fails to provide proper antecedent basis for the subject matter of claims 98 and 86. No reference could be located in the specification to any weight ratio or range of weight ratios of the nonwoven fabric to the woven fabric; Examples 9-12 in Table 6 include nonwoven fabric and woven fabric in a weight ratio of approximately 0.7 or 1.1, but no disclosure supporting a range of 0.5 to 15, as recited by claim 86, or a ratio of 1.5, as recited by claim 98, could be located.
Claim Objections
Claims 97-98 are objected to because of the following informalities:
In claim 97, the semicolon after “comprising” should be a colon; “comprising;” should read “comprising:” (see claim 97 at line 1).
In claim 98, it appears that “non-woven” should read “nonwoven” (see claim 98 at line 2), as this is the spelling used in the other claims (see, e.g., claim 97 at line 2).
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 97-101 and 83-90 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.
Claim 97 recites the limitation “a median diameter of less than about 15 micrometers” (see claim 97 at lines 4-5); the term “about” renders the claim indefinite as it is not clear what range of values would or would not be considered to meet the limitation of “about 15”, and no clarification could be located in the specification.
For purposes of examination, Examiner treated this limitation in claim 97 as meaning a median diameter of less than 15 micrometers. Clarification is requested.
Claim 98 recites the limitation "ratio of non-woven to the woven" (see claim 98 at line 2); “non-woven” and “woven” are adjectives, and it is not clear from this language to what materials “non-woven” and “woven” are meant to refer, rendering the metes and bounds of the claim unclear. I.e., it is not clear whether “non-woven” is meant to refer to the “nonwoven fabric” of claim 97 or to some other, unrecited material, and whether “the woven” is meant to refer to the woven fabric of claim 97 or to some other, unrecited material. Additionally, claim 98 recites a ratio of “about 1.5”, which further renders the scope of the claim indefinite, as it is not clear what range of values would or would not be considered to meet the limitation of “about 1.5”, and no clarification could be located in the specification.
For purposes of examination, Examiner treated this limitation in claim 98 as meaning the weight ratio of the nonwoven fabric to the woven fabric, and treated “about 1.5” as meaning between 1 and 2. Clarification is requested.
Claim 100 recites the limitation “wherein the lubricant comprises at least a fatty acid, mineral oil, and glycerin” (see claim 100 at lines 1-2); this language renders the claim indefinite as the use of “at least” makes it unclear whether this claim is actually meant to recite “at least one of” the recited materials, or whether it is actually meant to require all three of the recited materials as indicated by the word “and”.
For purposes of examination, Examiner treated this limitation in claim 100 as meaning that the lubricant requires at least one of a fatty acid, a mineral oil, and glycerin, as this would appear most in keeping with Applicant’s intent as discussed in the specification at pg. 10-11. Clarification is requested.
Claim 84 recites the limitations “the synthetic fiber” and “the natural fiber” (see claim 84 at line 2). There is insufficient antecedent basis for these limitations in the claim. It is noted that “a synthetic fiber” and “a natural fiber” are positively recited in claim 83, but not in claim 97 from which claim 84 depends.
For purposes of examination, Examiner treated claim 84 as though it depends from claim 83. Clarification is requested.
Claim 87 recites the limitation “wherein the crosslinked binder is selected from the group comprising polyurea, polyurethane…” (see claim 87 at lines 2-3). The use of “comprising” renders the claim indefinite, as this is open language which may include unrecited materials; i.e., it is not clear from the claim language whether or not the crosslinked binder must actually be selected from one of the recited materials, or whether these materials are not actually required and another, unrecited material could be used as the crosslinked binder.
For purposes of examination, Examiner treated claim 87 as though it recites “wherein the crosslinked binder is selected from the group consisting of” the recited materials; i.e., one of the recited materials is actually required by the claim. Clarification is requested
Claims 99, 101, 83, 85-86 and 88-90 are included herein as each depends from a claim which is indefinite for reasons set forth above.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 97, 99-100, 83-85 and 87-90 are rejected under 35 U.S.C. 103 as being unpatentable over PARAMBAN.
Regarding claim 97, PARAMBAN teaches a self-contained buffing article (see PARAMBAN generally at Abstract, Fig. 2 and paragraphs [0015], [0017] and [0023]-[0024], teaching abrasive articles, specifically abrasive wheels, including thin disc shaped abrasive articles) comprising:
at least one layer of a combination of at least one fibrous nonwoven fabric and at least one woven fabric (see PARAMBAN at paragraphs [0024], [0062], [0064] and [0144], teaching reinforcing member layers including a combination of woven materials and nonwoven materials, e.g., a combination of a woven cloth backing and a fibrous nonwoven material);
the combination having a hardened adherent coating comprising a crosslinked binder (see PARAMBAN at paragraphs [0015], [0054], [0061], [0069] and [0077], teaching a cured, crosslinked bond material on the reinforcing member layer), a lubricant (see PARAMBAN at paragraphs [0029], [0034] and [0067]), and abrasive particles (see PARAMBAN at paragraph [0015]),
wherein the abrasive particles have a median diameter overlapping with and thereby rendering obvious the claimed range of less than 15 micrometers (see PARAMBAN at paragraph [0052], teaching a D50 of at least 1 micron; PARAMBAN uses “D50”, “average particle size” and “median particle size” interchangeably throughout the disclosure, see, e.g., paragraphs [0025]-[0026], [0030], [0035], [0052], [0089]-[0090], [0111]-[0112] and [0126]-[0127]).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 99, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the woven fabric comprises cellulose (see PARAMBAN at paragraph [0064], teaching cellulose, e.g., cotton).
Regarding claim 100, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the lubricant comprises at least one of a fatty acid, mineral oil, and glycerin (see PARAMBAN at paragraphs [0029] and [0034], teaching mineral oil).
Regarding claims 83-85, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the nonwoven fabric comprises natural fibers, as recited by claim 85, or a combination of a synthetic fiber and a natural fiber, as recited by claim 83, wherein the synthetic fiber comprises nylon and the natural fiber comprises cellulose, as recited by claim 84 (see PARAMBAN at paragraph [0064], teaching a combination of synthetic and natural fibers, e.g., cotton (cellulose) and nylon).
Regarding claims 87-88, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the crosslinked binder is selected from the group consisting of polyurea, polyurethane, epoxy, acrylic, styrene-acrylics, styrene-butadienes, and phenolic, as recited by claim 87, and wherein the crosslinked binder comprises a polyurethane and an amine, as recited by claim 88 (see PARAMBAN at paragraphs [0054] and [0061], teaching polyurethane and amines).
Regarding claim 89, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the abrasive particles have a median diameter overlapping with and thereby rendering obvious the claimed range of less than 10 micrometers (see PARAMBAN at paragraph [0052], teaching a D50 of at least 1 micron). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 90, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97, wherein the self-contained buffing article is a buffing wheel (see PARAMBAN at paragraphs [0015] and [0017]).
Claims 98, 101 and 86 are rejected under 35 U.S.C. 103 as being unpatentable over PARAMBAN in view of Berger, et al. (U.S. Pat. No. 5,858,140-A) (hereinafter, “BERGER”).
Regarding claims 98, 101 and 86, as applied to claim 97 above, PARAMBAN teaches a self-contained buffing article according to claim 97.
However, PARAMBAN fails to explicitly teach a weight ratio of the nonwoven fabric to the woven fabric of 0.5 to 15, as recited by claim 86, or of about 1.5, as recited by claim 98, and fails to explicitly mention that the woven and nonwoven fabrics are mechanically entangled, as recited by claim 101.
However, it is known in the art of abrasive articles to mechanically entangle the woven and nonwoven fabrics and to include them in the claimed weight ratios. For example, BERGER teaches an abrasive disc comprising an abrasive layer fixed to a reinforcing backing/support layer (see BERGER at Abstract, col. 1, lines 12-14, col. 2, lines 52-56 and col. 4, line 66 - col. 5, line 7) comprising a nonwoven web needled to a woven fabric (see BERGER at col. 6, lines 40-47), wherein the woven cloth may weigh, e.g., 260 g/m2, and the nonwoven web may weighs at least 100 g/m2, e.g., 280 g/m2, as less fiber provides abrasive articles having lower commercial work life (see BERGER at col. 3, lines 24-45 and col. 6, lines 40-47); this is a weight ratio of nonwoven to woven fabric of, e.g., approximately 1.1, which is treated as meeting the limitation of “about 1.5”, as discussed in the 112(b) rejection above. BERGER teaches that needling (i.e., mechanically entangling) the nonwoven material to a woven fabric in such weight ratios provides support for the nonwoven material and provides a suitable, durable support layer for a polymer-coated abrasive article (see BERGER at col. 2, lines 50-56, col. 3, lines 24-45, col. 4, lines 45 - col. 5, line 7, and col. 6, lines 40-47).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the article of PARAMBAN by needling the nonwoven fabric to the woven fabric in a weight ratio of approximately 1.1 as taught by BERGER (see BERGER at col. 3, lines 24-45 and col. 6, lines 40-47). One of ordinary skill in the art could have used mechanically entangled nonwoven and woven fabrics in this ratio with a reasonable expectation of success, yielding the predictable result of providing a suitable support layer for a polymer coated abrasive article, and would have been motivated to do so for the benefit of providing support for the nonwoven fabric and providing a durable abrasive article having an improved commercial work life as taught by BERGER (see BERGER at col. 2, lines 50-56, col. 3, lines 24-45, col. 4, lines 45 - col. 5, line 7, and col. 6, lines 40-47).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731