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
Claims 9-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/24/2024.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 09/08/2025, has been entered. Claims 1 and 6-8 are amended, no claims are cancelled, no claims are newly added, and claims 9-15 remain withdrawn as described above. Accordingly, claims 1-20 are pending with claims 1-8 and 16-20 considered in this Office Action.
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.
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.
Claims 1-5 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamahara (U.S. 2012/0036790; Cited in IDS 06/07/2021) in view of Berg et al. (U.S. 5,984,988).
Regarding claim 1, Yamahara teaches, at Example 1, a nonwoven fabric abrasive disk (meeting claimed ‘abrasive article’) including a nonwoven fabric composed of nylon 6,6 fibers (Paragraph 0064; meeting claimed ‘non-woven web comprising fiber or filament component’) with aluminum oxide abrasive particles having an average particle size of 1 µm (Paragraph 0064; meeting claimed plurality of individual shaped abrasive particles) and aluminum hydroxide as a reactive inorganic endothermic compound (Paragraph 0064; meeting claimed ‘heat-activated water-forming inorganic component’). Specifically, Yamahara further teaches the inclusion of aluminum hydroxide (Paragraph 0064 and Example 1) which is a metal hydroxide as well as a hydrated aluminum compound. Notably, Paragraph 0053 of Applicant’s specification identifies that the metal of the metal hydroxide can include aluminum.
Example 1 further discloses at Paragraph 0065 that the coating liquid (i.e. the material of Paragraph 0064) is sprayed on ‘both surfaces of the nonwoven fabric’. This indicates that the nonwoven fabric has first and second major surfaces and has a thickness between these surfaces (i.e. a top surface and a bottom surface).
Example 1 fails to teach that the abrasive particles and the reactive inorganic endothermic compound (meeting claimed ‘plurality of individual shaped abrasive particles’ and ‘heat-activated water-forming inorganic component’ respectively) are ‘dispersed through at least a portion of the non-woven web’ and/or ‘dispersed through the non-woven web’.
However, Paragraph 0058 of Yamahara teaches that the nonwoven fabric may be sent out from a roll and then the fabric is impregnated with a mixture of an adhesive agent precursor and abrasive particles.
The person of ordinary skill in the art would recognize and appreciate that the nonwoven fabric disk could be impregnated with the composition of Example 1 instead of spray coated onto both surfaces of the nonwoven fabric disk.
Impregnation of a liquid material into a fibrous component is a known technique that would yield predictable results, that is, the dispersal and complete permeation of the liquid material throughout the fabric material so that the coating liquid is uniformly applied to the fiber segments/surfaces comprising the nonwoven fabric.
With regard to the amended limitation requiring “the individual shaped abrasive particles [to] each have a replicated shape”, Examiner notes that the abrasive of Yamahara is not taught, and, when considering “WA8000” from Example 1, does not appear to be an abrasive having replicated shapes.
Berg et al. (hereinafter “Berg”) teaches abrasive particles having a specified shape (Abstract) and, considering Figures 1-3, it is clear that the shapes are replicated (reproduced below):
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Berg particularly discloses that ‘the use of the abrasive particles of this invention minimizes the formation of flat surfaces on the cutting regions of the abrasive material. These flat surfaces shorten the useful life of the conventional abrasive articles. During the abrading process, the shaped particles of this invention continually fracture to expose fresh cutting surfaces. Accordingly, they sharpen themselves during use” (Col. 3 lines 39-45).
Additionally, Berg teaches the inclusion of hydrated aluminum compounds (Col. 5 lines 1-16… “aluminum oxide hydrates other than boehmite can also be used”).
Thus, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the individually shaped abrasive particles of Berg, which possess a replicated shape, in the abrasive article of Yamahara so as to maximize the useful life of Yamahara’s abrasive article by having the abrasive elements sharpen themselves by way of the exposed fresh cutting surfaces.
Regarding claim 2, Yamahara and Berg teach the article as applied to claim 1 above and further teaches that the fibers are nylon 6,6 (Paragraph 0064; meeting claimed ‘nylon’).
Regarding claim 3, Yamahara and Berg teach the article as applied to claim 1 above but fails to expressly teach that the abrasive particles are ‘distributed throughout the thickness of the non-woven web in a plurality of regions’.
However, Paragraph 0058 of Yamahara teaches that the nonwoven fabric may be sent out from a roll and then the fabric is impregnated with a mixture of an adhesive agent precursor and abrasive particles.
The person of ordinary skill in the art would recognize and appreciate that the nonwoven fabric disk could be impregnated with the composition of Example 1 instead of spray coated onto both surfaces of the nonwoven fabric disk.
Further, the person of ordinary skill in the art would find it obvious to include abrasive particles throughout the thickness of the non-woven fabric so that, as the abrasive disk is used and eventually sustains wear, new abrasive particles will be usable within the disk thickness.
Regarding claim 4, Yamahara and Berg teach the article as applied to claim 1 above and further teaches that the abrasive particles are aluminum oxide (Paragraph 0064; meeting claimed ‘ceramic aluminum oxide’ because products of identical composition cannot have mutually exclusive properties In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998)).
Alternatively, even if the WA8000 aluminum oxide particles by Fujimi is not ceramic aluminum oxide, it would be obvious to select a ‘fused aluminum oxide, a heat-treated aluminum oxide, ceramic aluminum oxide, and/or a sintered aluminum oxide” in view of Yamahara’s teaching of ‘aluminum oxide’.
Regarding claim 5, Yamahara and Berg teach the article as applied to claim 1 above and further teaches that the aluminum hydroxide is contained in an amount of from 10 to 300 parts by weight based on 100 parts by weight of the adhesive agent (claim 6).
However, Yamahara does not teach how much of the coating liquid containing the aluminum hydroxide is applied to the non-woven fabric.
Yamahara does teach at Paragraph 0053 that lower amounts of the reactive inorganic endothermic compound decreases endothermic function and more than 300 parts by weight impairs adhesive strength so as to be inappropriate for a nonwoven fabric abrasive material.
Thus, in the absence of evidence of criticality of unexpected results, it would be prima facie obvious to determine that optimum amount of aluminum hydroxide to include in the final abrasive disk so as to ensure the disk has appropriate adhesive strength without decreasing endothermic function. It has been held that there is motivation to optimize result-effective variables, i.e., a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP 2144.05.
Regarding claim 16, Yamahara and Berg teach the article as applied to claim 1 above and Berg further teaches that the shaped abrasive particles have a three-dimensional shape with a front face and back face and a thickness therebetween (Col. 10 lines 12-17) and continues on to name particular geometric shapes such as triangular, rectangular, circular, elliptical, or that of other regular or irregular polygons (Col. 10 lines 17-20). Berg particularly notes that the shape can be pyramidal (Col. 10 line 53). Examiner notes that the claim utilizes the open-ended language ‘comprises’ and thus, greater than 4 faces and greater than 6 edges is permissible.
Regarding claim 17, Yamahara and Berg teach the article as applied to claim 1 above and Berg further teaches that the shaped abrasive particles have a three-dimensional shape with a front face and back face and a thickness therebetween (Col. 10 lines 12-17) and continues on to name particular geometric shapes such as triangular, rectangular, circular, elliptical, or that of other regular or irregular polygons (Col. 10 lines 17-20). The selection of a triangular shape would result in the triangular abrasive particle to have a first side with a first face having a triangular perimeter as well as a second side with a second face having a triangular perimeter. Berg further describes the thickness between the faces of the particle as well as the ratio of the length of the shortest facial dimension of the abrasive particle to the thickness of the abrasive particle (Col. 10 lines 31-45).
Regarding claim 18, Yamahara and Berg teach the article as applied to claim 1 above and Berg further teaches that the abrasive particles has fractured surfaces (Col. 3 lines 40-45 “continually fracture to expose fresh cutting surfaces” i.e., a fractured surface).
Regarding claim 19, Yamahara and Berg teach the article as applied to claim 1 above and Yamahara teaches that the article is a disk (Abstract, Paragraph 0065-0066, Example 1) but is silent to the orientation of the tips of a portion of the shaped abrasive particles. However, Berg teaches that the abrasive particle can be oriented in a variety of ways (Col. 11 line 50 to Col. 12 line 7) including with a vertex (meeting claimed ‘tip’) pointed away from the backing (Col. 11 line 16) which meets the claimed limitation requiring “a tip oriented in a direction substantially parallel to the center axis of the disk”.
Regarding claim 20, Yamahara and Berg teach the article as applied to claim 1 above and Yamahara teaches that the article is a disk (Abstract, Paragraph 0065-0066, Example 1) but is silent to the orientation of the tips of a portion of the shaped abrasive particles. However, Berg teaches that the abrasive particle can be oriented in a variety of ways (Col. 11 line 50 to Col. 12 line 7) including with a vertex (meeting claimed ‘tip’) pointed away from the backing (Col. 11 line 16) and that there are some particles that “may not be oriented in either of the preceding ways, e.g., they may lay against the backing with the triangular face of the particle being in contact with the make coat” (Col. 11 line 56-59) which meets the claimed limitation requiring “a tip oriented in a direction substantially perpendicular to the center axis of the disk”.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yamahara and Berg as applied to claim 5 above, and further in view of Lux (U.S. 5,928,070).
Regarding claim 6, Yamahara and Berg teach the abrasive article as applied to claim 5 above but fail to teach that the fiber or filament component comprises staple fibers.
Lux teaches a nonwoven abrasive article that provides the advantages of similar cut rate performance to a coated abrasive article but with the advantages of a nonwoven abrasive article such as a reduced tendency to generate heat on the surface of a workpiece during use (Col. 2 lines 35-40). Additionally, the nonwoven abrasive article of Lux is useful for removing surface coatings from substrates (Col. 2 lines 41-42). Specifically, Lux teaches that the abrasive article includes staple fibers (Col. 2 lines 52-54).
It would be obvious to modify the teachings of Yamahara and Berg to include the teachings, such as staple fibers, of Lux so as to achieve similar cut rate performance to a coated abrasive article but with the preserved benefit of a nonwoven abrasive article such as reduced tendency to generate heat on the surface of a workpiece during use and to successfully remove surface coatings from substrates.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
In the instant case, the combination of the teachings of Yamahara, Berg, and Lux are prima facie obvious and would be expected to yield no more than predictable results.
Regarding claim 7, Yamahara, Berg, and Lux teach the abrasive article as applied to claim 6 above and Lux further teaches that the staple fibers have a length between about 20 to 110 mm and a linear density ranging from between about 15 to 2000 denier (Col. 7 lines 11-16) which overlaps the claimed ranges of ‘about 40 to about 60 mm in length’ and ‘a linear density…about 15 denier to about 600 denier’.
Regarding claim 8, Yamahara, Berg, and Lux teach the abrasive article as applied to claim 7 above and Lux further teaches that mullite may be included and the mullite may be crushed (Col. 9 lines 47-53). Lux further posits that the nature of mullite may account for its high cut rate as an abrasive particle and thereby generate new sharp cutting surfaces (Col. 10 lines 12-18). The generation of new sharp cutting surfaces would be motivating and appealing to the person of ordinary skill in the art before the effective filing date of the claimed invention.
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
With regard to Applicant’s comment regarding the Office Action’s statement on page 9, paragraph 11 directed to the supposed plain meaning of the word ‘replicated’ that requires “an exact copy or reproduction”, Examiner respectfully notes that that was a statement in the Response to Arguments section that was intended to make the record clear regarding why the Stalego reference had not been applied again (see Items 10 and 11 in the Non-Final Rejection mailed 04/08/2025).
With regard to Applicant’s comment that “it is unclear what the Office Action is relying upon for the limitation ‘replicated shape’, Examiner respectfully points back to the teachings of Berg as explained at Page 5 of the OA mailed 04/08/2025 with an express reproduction of Figures 1 and 2 of Berg that clearly depicts the use of a mold to form the particles and is confirmed by the text of Berg describing those figures. The use of a mold would produce a replicated shape.
With regard to Applicant’s comment that the claimed invention achieves unexpected results attributable to the presence of the hydrated aluminum compound, Examiner respectfully notes that the showing is not commensurate in scope with the claims. Notably, the claims do not have any features directed to the cut rate, and even if the claims did, this does not appear to be unexpected because Lux teaches improvements in the cut rate from a well-known and routine abrasive article also including hydrated aluminum compounds (see at least aluminum trihydrate in spec of Lux).
While not discounting the specification as a suitable way to demonstrate unexpected results, it is suggested that a declaration or other type of evidence attesting to the unexpected improvement or a more complete explanation/testing that accounts for the notable differences between the many examples to make it clear that the presence of the hydrated aluminum compound is the inventive discovery that produces significant and/or unexpected results. See MPEP 716.02. Examiner also maintains the previous comments made in the Response to Arguments section in the OA mailed 04/08/2025.
Conclusion
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 ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738