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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/15/2025 has been entered.
Response to Amendment
In response to the amendment received on 12/15/2025:
claims 1-6, 9-14 and 18-21 are currently pending;
claims 9-10 and 12-14 are withdrawn; and
the prior art ground of rejection based on Boden is withdrawn in light of the amendment that incorporated claim 17 in independent claim 1; the prior art grounds of rejection based on Cotter as a primary reference is withdrawn in light of the amendment that incorporated “each sidewalls being planar and extending between two faces of the plurality of polygonal faces”; the prior art ground of rejection based on Schwabel is withdrawn in light of the amendment that incorporated claims 16-17 in independent claim 1; however, new grounds of rejection are presented below based on Schnyder.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-6 and 20-21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 lines 2-4, claim 6 line 3, and claim 20 lines 2-3 recite “serration extends from… at least one face, the edge, or the sidewall”, which fail to further limit the serration in claim 1 line 5 reciting “wherein the plurality of serrations are located on one of the sidewalls of the shaped abrasive particle…”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 5 and 21 are rejected due to their dependency on claim 4.
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.
Claims 1-4 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schnyder et al. (DE 10 2013 212 690 A1, with reference to the machine translation when referring to the text and the original when referring to the figures) (“Schnyder” hereinafter).
Regarding claim 1, Schnyder teaches a shaped abrasive particle (see Schnyder at [0012] teaching Fig. 1 shows an abrasive grain according to the disclosure with a pyramidal base shape), the pyramidal abrasive grain is taken to meet the claimed shaped abrasive particle based on the structure as outlined below, comprising:
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a plurality of polygonal faces bound by respective polygonal perimeters and joined by… edges… to form the shaped abrasive particle (see Schnyder at Fig. 1 shown above, see Schnyder at [0015] teaching Fig. 1 shows an abrasive grain 10a… with abrasive edges 12a, 14a, 16a); and
a plurality of serrations, adjacent serrations being spaced at constant intervals with respect to each other (see Schnyder at [0015] teaching Fig. 1… the grinding edges 12a, 14a, 16a have protrusions above an ideal edge 36a… the protrusions are designed as tooth-shaped protrusions and each has micro-edges). The protrusions are taken to meet the claimed plurality of serrations, and as shown in Fig. 1, the adjacent protrusions/serrations are spaced at constant intervals with respect to each other,
each serration configured to generate a fracture along a fracture plane extending at least through the serration (see Schnyder at [0004]-[0005] teaching the grinding microstructure is at least partially designed as a sawtooth grinding structure… furthermore, it is proposed that the grinding microstructure has predetermined breaking points… the term “planned weak points” refers in particular to areas which, due to a specially designed structure, have a higher probability of breaking under stress than surrounding areas, for example, by being designed as an area with a lower material thickness than surrounding areas or as an area made of a material that has a higher material fragility compared to the material of surrounding areas… in particular, the predetermined breaking points are designed to create new grinding edges through breakage during the grinding process… in particular, a self-sharpening effect can be achieved and a reduction in the abrasive effect due to abrasion can be counteracted). The predetermined breaking points or “planned weak points” in the sawtooth structure is taken to meet the claimed limitations,
each of the sidewalls being planar and extending between two faces of the plurality of polygonal faces, wherein the plurality of serrations are located on one of the sidewalls of the shaped abrasive particle and are arranged in select regions to control the location where fracture is initiated (the claimed sidewalls and limitations are being treated as being met by Schnyder because Schnyder met the claimed edges and recitations outlined above (see MPEP 2111.04.II)).
Regarding claim 2, Schnyder teaches the limitations as applied to claim 1 above, and Schnyder further teaches wherein the shaped abrasive particle is a tetrahedral shaped abrasive particle comprising four triangular faces joined by six edges terminating at four vertices (see Schnyder at [0005] teaching the abrasive grain has at least… a partially tetrahedral… a “basic shape” should in particular be understood to mean a shape that results from a progression of the ideal edges of the abrasive grain, see Schnyder at [0015] teaching the abrasive grain 10a has a pyramidal basic shape with four side faces… a base and a tip… at which the grinding edges… converge). The pyramidal shape with four side faces is taken to meet the claimed limitations.
Regarding claim 3, Schnyder teaches the limitations as applied to claim 1 above, and Schnyder further teaches wherein the shaped abrasive particle is a truncated pyramid shaped abrasive particle comprising two triangular faces joined by three sidewalls (the claimed limitations are being treated as being met by Schnyder because Schnyder met the claimed edges and the recitations as outlined in claim 1 (see MPEP 2111.04.II)).
Regarding claim 4, Schnyder teaches the limitations as applied to claim 1 above, and Schnyder further teaches wherein the serration extends from an open end defined by an external surface of the at least one… edge (see Schnyder at [0015] teaching the grinding edges 12a, 14a, 16a have protrusions above an ideal edge 36a, which form the grinding microstructure 24a, 26a, 28a… the protrusions are designed as tooth-shaped protrusions and each has micro-edges, see Schnyder at [0004] teaching the grinding microstructure is at least partially designed as a sawtooth grinding structure… a “sawtooth grinding structure” is… a grinding structure consisting of protrusions in which the protrusions are formed as saw teeth… the term “sawtooth”… in particular elevations with micro-edges that converge at an acute angle at a peak and that have an elevation height above an elevation base surface, passing along the ideal edge on the elevation base surface, see Schnyder at Fig. 1, with Examiner annotation below illustrating the recitation).
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Regarding claims 18-19, Schnyder teaches the limitations as applied to claim 1 above, and Schnyder further teaches wherein each serration extends from an open end defined by an outer surface of the sidewall to a closed end along a line extending in a direction substantially perpendicular to the sidewall, or extends in a direction offset from said line in a range of from 1 degree to 60 degrees (claim 18), and wherein a fracture propagation direction substantially along the fracture plane is controlled in accordance with the degree to which individual serrations are aligned with or offset from the line so that selected portions of the shaped abrasive particle are removed in order (claim 19) (the claimed limitations are being treated as being met by Schnyder because Schnyder met the claimed edges and the recitations as outlined in claim 1 (see MPEP 2111.04.II)).
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.
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 5-6, 11 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Schnyder.
Regarding claim 5, Schnyder teaches the limitations as applied to claims 1 and 4 above, and Schnyder further teaches wherein a distance between the open end and the closed end is in a range of from about 0.5 percent depth of the abrasive particle to about 20 percent depth of the abrasive particle (see Schnyder at [0015] teaching Fig. 1 shows an abrasive grain 10a… with abrasive edges… the grinding edges 12a, 14a, 16a have protrusions above an ideal edge 36a, see Schnyder at [0004] teaching the grinding microstructure is at least partially designed as a sawtooth grinding structure… a “sawtooth grinding structure” is… a grinding structure consisting of protrusions in which the protrusions are formed as saw teeth… the term “sawtooth”… in particular elevations with micro-edges that converge at an acute angle at a peak and that have an elevation height above an elevation base surface, passing along the ideal edge on the elevation base surface, which is at least twice… as large as the extent of the elevation base surface, see Schnyder at Fig. 1 with Examiner annotation below). As shown in Fig. 1, it appears that the distance of the protrusion (or serration) between the open end and the closed end is in a range of from about 0.5 percent depth of the abrasive particle to about 20 percent depth of the abrasive particle, as claimed (see MPEP 2144.05(I)).
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Regarding claim 6, Schnyder teaches the limitations as applied to claims 1 and 4-5 above, and Schnyder further teaches wherein the open end extends over a range of from about 0.0025 percent surface area to about 10 percent surface area of the at least one… edge… to a closed end (see Schnyder at [0003] teaching tooth-shaped protrusions, are arranged on the grinding edge, wherein the protrusions each have micro-edges… a “micro-edge” shall in particular be understood to be an edge which has a length which is at most ten percent… of a length of the grinding edge and which extends at least substantially along a principal extension direction of the grinding edge) (see MPEP 2144.05(I)).
Regarding claim 11, Schnyder teaches a coated abrasive article (see Schnyder at [0016] teaching the abrasive grain 10a is applied to an abrasive substrate in such a way that the tip 30a is directed towards a workpiece to be ground during a grinding operation). The abrasive substrate is taken to meet the claimed coated abrasive article based on the structure as outlined below, comprising:
a backing; and a plurality of the shaped abrasive particle of claim 1, attached to the backing (see Schnyder at [0016] teaching for grinding, abrasive grains 10a are sprinkled onto the abrasive backing and fixed to it by means of a layer of a base binder and firmly bonded to the abrasive backing by means of a further layer of a top binder, and see claim 1 rejection).
Regarding claim 20, Schnyder teaches the limitations as applied to claims 1 and 4-5 above, and Schnyder further teaches wherein the serration extends in a direction substantially perpendicular to the external surface of the at least one… edge… to a closed end along… a linear path (see Schnyder at [0004] teaching the grinding microstructure is at least partially designed as a sawtooth grinding structure… a “sawtooth grinding structure” is… a grinding structure consisting of protrusions in which the protrusions are formed as saw teeth… the term “sawtooth”… in particular elevations with micro-edges that converge at an acute angle at a peak and that have an elevation height above an elevation base surface, passing along the ideal edge on the elevation base surface, and see Schnyder at Fig. 1). Fig. 1 illustrates that the protrusions (or serrations) are substantially perpendicular to the edge along a liner path, as claimed.
Regarding claim 21, Schnyder teaches the limitations as applied to claims 1 and 4-5 above, and Schnyder further teaches wherein the closed end comprises… square surface (see Schnyder at Fig. 1, shown with Examiner annotation below illustrating the claimed recitation).
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Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, 11 and 18-21 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.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731