Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/27/2025 has been entered.
Specification
The amendment filed 10/27/2025 and 05/13/2021 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The added material which is not supported by the original disclosure is as follows: claims 1, 24 are introduced new matter with a language “consisting of”. See explanations below. Applicant is required to cancel the new matter in the reply to this Office Action. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 6, 20, 24-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 24 introduce new matter with the language of "consisting of", which is not support by the original specification. When employing “consisting of” language, the claim must recite all significant disclosed parts. The specification, Par. 0026 discloses that “a disk-shaped base body, which preferably consists of a composite material, that uses, for example, a synthetic resin matrix similar to a cutting disk”, however the claim recites “a base body having a pair of flanks…composite material including resin and abrasive grains” and later, the claim recites “a grinding and or polishing agent at least one flanks”. Moreover, The specification, Par. 0037 recites “an optical wear indicator…color codes in Par. 0068”. Also, there must be aiding solvent or agent to apply or mix the abrasive grains on the resin…during making a disk-shaped cutting tool, for an example, Par. 0059 discloses “an abrasive paper-like form by gluing…spraying”. Therefore, the base body have many parts, not only resin and abrasive grains. Thus, the language of "consisting of" is new matter.
All claims dependent from claims 1 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent from the rejected parent claims.
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, 6, 20, 24-26 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.
Claims 1 and 24, a language of "consisting of" is unclear. The specification discloses many structures of a base body, however as the claim is written, it recites only resin and abrasive grains. What should be given the language of "consisting of"? Without the aiding solvent or additional chemical solvent or glue…, can the resin and abrasive grains be made the disk-shaped cutting tool (a base body)?
Moreover, claims 1 and 24, the term “the base body consists of a composite material including resin and abrasive grains” is unclear whether the base body only includes resin and abrasive grains or only includes a composite material having many materials including resin and abrasive grains.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claims 1 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claims.
Claim Rejections - 35 USC § 102
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 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 1-3, 6, 20, 24-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by William (US 3867795) and as evidenced by Mc Kenna (US 3271911).
Regarding claim 1, as best understood, William shows a disk-shaped cutting tool (Figures 1-3 and Abstract “cutting”), for cutting of a stationary clamped workpiece with radial advance of the disk-shaped cutting tool with respect to an axis of rotation whereby the clamped workpiece is elongated orthogonally to a radial advance direction (this is intended use statement and this tool is able to be performed it), the disk-shaped cutting tool comprising:
a base body (a composite disc or a layer 20, Figures 1-2) having a pair of flanks (14, 26, 28, 22) and an outer circumferential region (where the cutting edge 16), wherein the base body consists of (see the issue above) a composite material (see the title “composite” including resin and abrasive grains (Abstract “resin” and the layer 20 is a primary abrasing layer, Figures 1-3), the base body extending from the outer circumferential region toward a radial center of the base body (see Figures 1-3), and the abrasive grains providing a cutting edge on an outer circumferential surface of the base body (see the peripheral edge 16 formed all layers in Figures 1-3);
a grinding and/or polishing agent (the abrading layer 26 that means it has a grinding agent) layered in an axial direction on at least one flank of the pair of flanks of the base body, the grinding and/or polishing agent thickening the at least one flank and producing one or more gradations on the at least one flank between layers of the grinding and/or polishing agent and the base body (Figures 1-3); and
an axial fastening opening (18) positioned at the radial center, wherein the disk-shaped cutting tool is formed for rotating the base body, cutting of the workpiece at the outer circumferential region, and grinding and/or polishing of the workpiece at the at least one flank (as this is written, it is unclear what the workpiece is and how the workpiece is made of, therefore, the peripheral edge of this disc can be used to cut some materials);
wherein the abrasive grains are non-uniformly distributed in the base body (see the grains at the layer 20, Figures 1-2, are non-uniformly distributed), and wherein the cutting of the workpiece at the outer circumferential region defines a cutting gap (the thickness of the peripheral edge);
wherein the non-uniform distribution of the abrasive grains (Figures 1-3, all grains are non-uniform distribution) causes an axial deflection in the base body within the cutting gap in the axial direction such that the grinding and/or polishing agent contact a surface of the workpiece defined by the cutting gap (see Figures 1-4 and please note that the wheel is 7 inches diameter and ¼ inch thickness as discussed in Col. 6, lines 54-55 that can be slightly deflected during operation. Moreover, this invention is directly to a disk-shaped cutting tool; it can be deflected in many different ways, for examples, high or slow rotation speeds of driving machines or grains of the disk rotatably contact the workpiece during cutting…. Please note that MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent" while it is used to cut the workpiece.).
Regarding claim 2, William shows that the disk-shaped cutting tool has a defined flexibility and a defined impact (as it is written, it is unclear how much it can be flexed and impacted, therefore, see the discussion above and this cutting tool can be slightly flexibility in some degrees during operating).
Regarding claim 3, William shows that the at least one flank is thickened extending axially away from the base body in comparison to a material thickness in a radially outer peripheral region (see Figures 1-3 for abrasive materials 20, 26).
Regarding claim 6, William shows that the disk-shaped cutting tool comprises at least one wear indicator (as this written, it is unclear what type of the wear indicator, therefore, the abrasive materials 20, 26, 22 are also considered as a wear indicator while it is shown the worn).
Regarding claim 20, William shows all of limitations as stated above including that the abrading layer 26 is less grinding or cutting of unwanted material and the abrading layer 20 is more durable faster cutting as discussed in Col. 6, lines 43-53 and see claim 1 of William “a primary abrading portion … having resin bonded primary abrasive particles of co-fused alumina-zirconia abrasive material” and claim 6 of William “the alumina-zirconia particles are of larger and coarser grit size than the secondary abrasive particles” that means the grinding and/or polishing agents are is formed of fine grains having a smaller grain size than the abrasive grains.
Regarding claim 24, William shows all of the limitations as stated in claim 1 and other dependent claims above.
Regarding claim 25, William shows that the grinding and/or polishing agent also grinds and/or polishes the workpiece at the flank in the radial advance direction (Figures 1-4).
Regarding claim 26, William shows all of limitations as stated above including that the abrading layer 26 is less grinding or cutting of unwanted material and the abrading layer 20 is more durable faster cutting as discussed in Col. 6, lines 43-53 and see claim 1 of William “a primary abrading portion … having resin bonded primary abrasive particles of co-fused alumina-zirconia abrasive material” and claim 6 of William “the alumina-zirconia particles are of larger and coarser grit size than the secondary abrasive particles” that means the grinding and/or polishing agents are is formed of fine grains having a smaller grain size than the abrasive grains.
Response to Arguments
Applicant’s arguments with respect to claims 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. See the new art above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached on (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 11/7/2025