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Claims 5-8 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. See Final Office Action mailed 09/13/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/04/2025 was filed after the mailing date of the Non-Final Rejection on 03/04/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendment and Status of Claims
Applicant's amendment, filed 06/04/2025, has been entered. Claims 1 and 2 are amended, claims 5-8 remain withdrawn, no claims are cancelled, and claims 9-13 are newly added. Accordingly, claims 1-13 are pending with claims 1-4 and 9-13 considered in this Office Action.
Suezaki Declaration of 06/23/2025
The declaration under 37 CFR 1.132 filed 06/23/2025 is insufficient to overcome the rejection of claims 1-4 based upon Taura and/or Yamazaki as set forth in the last Office action because: the declaration is opinion evidence that Taura and Yamazaki do not render the claims obvious.
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
Insofar as the declaration is directed to the facts supporting their statement of what was not obvious to them, Examiner notes the following:
The declaration restates facts from the references (see Item 5 a and b) and states at 5 c that “[w]hen the abrasive grains are agglomerated, the particle size should be measured for secondary particles, not primary particles”. However, none of the facts from the references support that the particles are agglomerated. While Declarant believes that Taura and Yamazaki do not meet the claimed invention because the abrasive grains are agglomerated, this is unpersuasive because neither Taura or Yamazaki describe agglomerated particles nor are agglomerated particles disavowed from the current claims.
Declarant does not dispute that Taura or Yamazaki teach particles having overlapping ranges of particle diameters but instead draws a distinction that the particles of the prior art do not meet the claimed particles because they are in an agglomerated form.
To make the record clear, Taura at Paragraph 0017 expressly states (highlighting provided by Examiner):
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In the interest of the clarity of the record, the first four claims of Yamazaki are reproduced below:
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Therefore, when considering all the evidence of record including the express teachings of the prior art references, the declaration is unpersuasive.
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.
Claim 9 is 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.
Specifically, claim 9 depends from claim 1 and requires the abrasive grains to comprise a second set of small-diameter particles having a particle diameter of not greater than 100 nm and being present in an amount of not less than 90% and less than 100% with respect to the mass of the abrasive grains. The metes and bounds of the claimed invention as indefinite because this feature overlaps and contradicts the features of claim 1 requiring a ‘first set of small-diameter particles having a particle diameter of not greater than 30 nm, the first set of small-diameter particles being present in an amount of not less than 75% and less than 100% with respect to the mass of the abrasive grains.
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 1-4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Taura et al. (U.S. 2017/0266781; Cited in IDS of 05/12/2021).
Claim Interpretation Note: the application is not directed to the actual ferrule but, instead, a polishing material for a multi-core ferrule as would be understood by persons of skill reading Applicant’s specification- see at least Examples of disclosure such as Sample 1 which is directed to the polishing material that is intended to be used for a ferrule.
Regarding claims 1 and 9, Taura et al. (hereinafter “Taura”) teaches an abrasive film (Claim 1) used to polish a ferrule (Paragraph 0030) including a binder and abrasive layer including abrasive particles, of no less than 85% (Paragraph 0012), comprising first abrasive particles having a primary particle diameter of no less than 10 nm and less than 50 nm (meeting claimed “first set of small-diameter particles having a particle diameter of not greater than 30 nm” due to the shared overlap of particle size; claim 3 of Taura) in an amount of no less than 55% and no greater than 80% (claim 3 of Taura) which overlaps the claimed range of not less than 75% and less than 100%, second abrasive particles having a primary particle diameter of no less than 50 nm and less than 250 nm (meeting claimed “ second set of small-diameter particles having a particle diameter of not greater than 100 nm presented in Applicant’s instant claim 9 due to the shared overlap of particle size; claim 3 of Taura) in an amount of no less than 15% and no greater than 45% which overlaps the claimed range of “not less than 90% and less than 100%” when summed with the first abrasive particles to obtain a content of 70% to 100% which overlaps the claimed feature.
Additionally, the abrasive film includes particles having a primary particle size of no less than 100 nm and less than 250 nm (claim 4) which meets the claimed feature requiring “particles having the particle diameter of 100 nm or more” and the abrasive particles are silica (Claim 6; Paragraph 0016).
With regard to the state of the silica particles being “spherical silica particles, crushed silica particles, or both”, Examiner notes that the shape of the silica particles would not patentably distinguish the claimed invention from the prior art of Taura because Taura teaches silica particles (Claim 6 and Paragraph 0016) and that changes in shape are generally obvious absent evidence of criticality or unexpected results (MPEP 2144.05.IV.B. and In re Dailey 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Taura also teaches that the binder material may be resinous (i.e. a resin material) (Paragraph 0023).
Regarding claim 2, Taura teaches the polishing material as applied to claim 1 above and further teaches first abrasive particles having a primary particle diameter of no less than 10 nm and less than 50 nm (claim 3 of Taura) which meets the claimed “first set of small-diameter particles are particles having a peak top particle diameter of not greater than 20 nm”.
Regarding claims 3 and 4, Taura teaches the polishing material as applied to claim 1 and/or 2 above and further teaches that the abrasive particles may have a diameter of less than 250 nm (Paragraph 0036) which meets the claimed feature requiring the abrasive grains comprise particles having a peak top particle diameter of not less than 120 nm due to the peak top particle diameter of ‘not less than 120 nm’ being entirely within the disclosed range of ‘less than 250 nm’.
Regarding claims 10 and 11, Taura teaches the polishing material as applied to claims 1 and/or 2 above and further teaches the abrasive particles are present in an amount of no less than 85% (Paragraph 0012). However, Taura also teaches that the first abrasive particles having a primary particle diameter of no less than 10 nm and less than 50 nm (meeting claimed “first set of small-diameter particles having a particle diameter of not greater than 30 nm” due to the shared overlap of particle size; claim 3 of Taura) in an amount of no less than 55% and no greater than 80% (claim 3 of Taura) which lies slightly outside of the claimed range of “not less than 85% and less than 100% with respect to the mass of the abrasive grains”.
It has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claims 12 and 13, Taura teaches the polishing material as applied to claims 1 and/or 2 above and teaches that the diameter of the abrasive grains is measured by scanning electron microscope (SEM) or transmission electron microscope (TEM) (Paragraph 0017) which is not the claimed laser diffraction/scattering and dynamic light scattering.
However, the manner of measuring the diameter of the particles is a product by process limitation (MPEP 2113).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the structure, i.e. the particle diameter of the particles, while determined by a different method, i.e. SEM or TEM, is the same structure as that claimed by Applicant.
Claims 1-4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (U.S. 2004/0005460).
Claim Interpretation Note: the application is not directed to the actual ferrule but, instead, a polishing material for a multi-core ferrule as would be understood by persons of skill reading Applicant’s specification- see at least Examples of disclosure such as Sample 1 which is directed to the polishing material that is intended to be used for a ferrule.
Regarding claims 1 and 9, Yamazaki et al. (hereinafter “Yamazaki”) teaches a polishing film including a plastic film and a polishing layer formed on its surface (the polishing layer meeting claimed ‘multi-core ferrule polishing material’) having a mixture of a first group of silica particles with a first average diameter and a second group of silica particles with a second average diameter (the silica particles meeting claimed abrasive grains) fixed in a resin binder (the resin binder meeting claimed ‘binder formed from a resin material’ and the silica particles being “fixed in a resin binder” meeting claimed “abrasive grains dispersed in the binder”) (Abstract).
Also, Yamazaki teaches that the mixing ratio of the mixed particles with respect to the resin binder solution is within the range of 1:99-99:1 (alternatively capable of being expressed as silica particles 1-99% and resin binder 99-1%). Thus, the abrasive grains (i.e. the silica particles) are contained in an amount that lies within the claimed range of “more than 88.5%”.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Further, Yamazaki teaches that the first and second groups of silica particles each have an average diameter, where the first and second group diameters are different (thus, satisfying the claim limitation requiring the presence of ‘small-diameter particles’) and are both within the range of 0.001-10 µm (equivalent to 1 nm to 10,000 nm) (Abstract and Paragraphs 0022).
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Yamazaki also teaches that “the ratio of mixing silica particles of the first group and the second group may be selected appropriately” (Paragraph 0026) and provides a particularly preferred ratio range of small:large particles of 9:1-6:4 (which can alternatively be expressed as small particles 60-90% and large particles of 10-40%) (Paragraph 0027). Thus, Yamazaki’s disclosure encompasses a teaching that the small-diameter particles have a particle diameter of ‘not greater than 30 nm’ (due to the overlapping ranges disclosed at Paragraph 0022) and are present in an amount of ‘not less than 75% and less than 100%’ (due to the overlapping range disclosed at Paragraph 0027).
Further, and with particular to the new limitation requiring the abrasive grains to “comprise particles having the particle diameter of 100 nm or more”, Yamazaki’s disclosure of 0.001-10 µm (equivalent to 1 nm to 10,000 nm) (Abstract and Paragraphs 0022) meets this feature because Applicant’s claimed range of 100 nm or more overlaps the range taught by Yamazaki. Additionally, the selection of a second set of small-diameter particles having a particle diameter of not greater than 100 nm and being present in an amount of not less than 90% and less than 100% with respect to the mass of the abrasive grains is embraced by the disclosure of Yamazaki and would be routine for the person of ordinary skill in the art to achieve absent evidence demonstrating that the selected sets of abrasive particles are critical or produce an unexpected result. Again, Yamazaki provides a preferred ratio range of small:large particles of 9:1-6:4 (which is alternatively expressed as small particles 60-90% and large particles of 10-40%).
Thus, it would be obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to determine the suitable proportions and dimensions of the abrasive silica grains as taught by Yamazaki.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
As an additional finding of fact, it is noted that Yamazaki teaches that the polishing film is used for polishing the surface of precision instruments such as optical fiber connectors (Paragraph 0001) and discusses ferrules at Paragraph 0002.
With regard to the state of the silica particles being “spherical silica particles, crushed silica particles, or both”, Examiner notes that the shape of the silica particles would not patentably distinguish the claimed invention from the prior art of Yamazaki because Yamazaki teaches silica particles (Claim 1 of Yamazaki) and that changes in shape are generally obvious absent evidence of criticality or unexpected results (MPEP 2144.05.IV.B. and In re Dailey 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 2, Yamazaki teaches the polishing material as applied to claim 1 above. In the interest of the clarity of the record, paragraph 0017 of Applicant’s specification is noted for the disclosure regarding what a ‘peak top’ particle diameter is. In the instant case, Figure 7 of Yamazaki discloses an embodiment where two particle top peaks are depicted in the granular distribution of the silica particles. To make the record clear, the small-diameter particle top peak is around 200 nm as shown which does not meet the claimed range of ‘not greater than 50 nm’.
However, Yamazaki teaches that the particle diameter of the silica particles is in the range of 0.001-10 microns (equivalent to 1 nm to 10,000 nm) which overlaps the claimed range of ‘not greater than 20 nm’.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, is would be obvious to the person of ordinary skill in the art to select a different small particle diameter within the disclosed range of Yamazaki. Further, there is no showing on the record that a small particle diameter having a peak top particle diameter of ‘not greater than 20 nm’ is critical or produces unexpected results.
Regarding claim 3, Yamazaki teaches the polishing material as applied to claim 1 above. In the interest of the clarity of the record, paragraph 0017 of Applicant’s specification is noted for the disclosure regarding what a ‘peak top’ particle diameter is. In the instant case, Figure 7 of Yamazaki discloses an embodiment where two particle top peaks are depicted in the granular distribution of the silica particles. To make the record clear, the small-diameter particle top peak is around 200 nm as shown which does not meet the claimed range of ‘not greater than 120 nm’.
However, Yamazaki teaches that the particle diameter of the silica particles is in the range of 0.001-10 microns (equivalent to 1 nm to 10,000 nm) which overlaps the claimed range of ‘not greater than 120 nm’.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, is would be obvious to the person of ordinary skill in the art to select a different small particle diameter within the disclosed range of Yamazaki. Further, there is no showing on the record that a small particle diameter having a peak top particle diameter of ‘not greater than 120 nm’ is critical or produces unexpected results.
Regarding claim 4, Yamazaki teaches the polishing material as applied to claim 2 above. In the interest of the clarity of the record, paragraph 0017 of Applicant’s specification is noted for the disclosure regarding what a ‘peak top’ particle diameter is. In the instant case, Figure 7 of Yamazaki discloses an embodiment where two particle top peaks are depicted in the granular distribution of the silica particles. To make the record clear, the small-diameter particle top peak is around 200 nm as shown which does not meet the claimed range of ‘not greater than 120 nm’.
However, Yamazaki teaches that the particle diameter of the silica particles is in the range of 0.001-10 microns (equivalent to 1 nm to 10,000 nm) which overlaps the claimed range of ‘not greater than 120 nm’.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, is would be obvious to the person of ordinary skill in the art to select a different small particle diameter within the disclosed range of Yamazaki. Further, there is no showing on the record that a small particle diameter having a peak top particle diameter of ‘not greater than 120 nm’ is critical or produces unexpected results.
Regarding claims 10 and 11, Taura teaches the polishing material as applied to claims 1 and/or 2 above and further teaches that “the ratio of mixing silica particles of the first group and the second group may be selected appropriately” (Paragraph 0026) and provides a particularly preferred ratio range of small:large particles of 9:1-6:4 (which can alternatively be expressed as small particles 60-90% and large particles of 10-40%) (Paragraph 0027). Thus, Yamazaki’s disclosure encompasses a teaching that the small-diameter particles have a particle diameter of ‘not greater than 30 nm’ (due to the overlapping ranges disclosed at Paragraph 0022) and are present in an amount of ‘not less than 85% and less than 100%’ (due to the overlapping range disclosed at Paragraph 0027).
Regarding claims 12 and 13, Yamazaki teaches the polishing material as applied to claims 1 and/or 2 above but is silent to the claimed laser diffraction/scattering and dynamic light scattering.
However, the manner of measuring the diameter of the particles is a product by process limitation (MPEP 2113).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the structure, i.e. the particle diameter of the particles, is the same structure as that claimed by Applicant.
Response to Arguments
Applicant's arguments filed 06/23/2025 have been fully considered but they are not persuasive.
Applicant argues that Taura and Yamazaki do not meet the claimed invention because both references describe agglomerated particles which is unpersuasive. There is no evidence of record to support that the prior art particles are aggregated or agglomerated nor is there any language in the claims that disavows agglomerated or aggregated particles.
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