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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 26, 2025 has been entered.
Status of Claims
This action is in reply to the Amendments/Response filed on September 26, 2025. Claim 1 has been amended. No additional claims have been added. Claim(s) 2-11, 14-18, 20-21, and 23 have been cancelled. Claims 1, 12-13, 19, 22 and 24 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claim 1 filed on September 26, 2025.
The cancellation of limitations “wear life index” and “abrasive segments…distinct and separate” addresses the 112(a)/(b) rejections set forth in the previous action. As such, they no longer apply.
The applicant’s amendments to claim 1 are sufficient to overcome the 35 U.S.C. 103 rejection, which previously indicated the claims as being obvious due to Maoujoud (US patent No. 5868125) in view of Martin et al. (US PG Pub No. 20190375073) by incorporating limitations of the rejected claim 23 in claims filed 06/12/2025, which was previously rejected under 35 U.S.C. 103. Please see the updated rejections set forth in the present action.
Response to Arguments
The applicant’s arguments, see pages 4-6, filed September 26, 2025 with respect to the 35 U.S.C. 103 rejection which previously indicated the claims as being obvious due to Maoujoud (US patent No. 5868125) in view of Martin et al. (US PG Pub No. 20190375073) being unsustainable due to amendments to the claims have been fully considered.
The applicant argues (on pages 4-5) that the office “erroneously identified within Maoujoud two different abrasive segments…Applicants respectfully point the office to Fig. 1 of Maoujoud where abrasive vein 16 and abrasive regions 20a-e are shown. These two abrasive portions….are not separate abrasive segments nor are they arranged in a radial alternating manner…” The examiner respectfully disagrees. The applicant has pointed to fig. 1 of Maoujoud, however the embodiment employed in the previous rejection is described by fig. 2A and 2B. Maojoud’s specification discloses the following:
Col. 4 lines 34-41: FIGS. 2A and 2B show in plan view different embodiments of vein 16 transversing the segment width to connect longitudinal vein parts 18a and 18b and thereby isolating separated abrasive regions 20a and 20b. In the figures, like elements are designated by like reference numerals. As shown in FIG. 2A, the transverse vein part 21 transverses obliquely at angle a with respect to the direction normal to the faces.
Col. 8 lines 5-16: (21) FIG. 3 illustrates a side view of an abrasive tool blade according to the present invention… Each of the abrasive segments 36 and 37, is shown with the inner face towards the viewer, and is seen to comprise a vein 16 of primary abrasive, designated "PA", and several separated abrasive regions of secondary abrasive, e.g. 20b, designated "SA".
As such, Maojoud’s specification supports “isolating separated abrasive regions”, and further that they be separated abrasive regions of “primary abrasives” and “secondary abrasives”. As shown in figures 2A and 3, they are arranged in an alternating radial manner. The applicant’s recitation of “abrasive segments” doesn’t preclude a continuous vein from reading on the limitation. A segment is generally understood as a part, portion, section, or other subdivision of a whole. An element can be continuous with different segments (regions, areas, sections), and they can alternate within. The applicant’s arguments regarding the prior art reading on these limitations are fully considered but not found persuasive.
Additionally (on pages 5-6), the applicant argues that Maojoud fails to anticipate the limitations regarding “the first abrasive segment comprises at least 30% and not greater than 70% abrasive particles for a total weight of the abrasive segment.” The applicant argues that Maojoud teaches away from including a high amount of abrasives since Maojoud discloses “it is an object to provide an abrasive tool…which incorporates less volume concentration of superabrasive component than a comparatively effective, exclusively superabrasive containing tool…abrasive segments were made with 10.6-15% by volume and 2% by volume abrasive particles.”
First, Maojoud discloses volume and not weight. Weight is generally recognized a function of volume and density. As such, abrasive particles that occupy a low volume would be able to constitute a relatively large percentage of the overall weight of an abrasive segment if they were made of a material denser than other elements that the segment is comprised of. Additionally, Maojoud is comparing this volume with other abrasive tool types, regarding how much space of the tool the abrasive segment occupies. The examiner respectfully disagrees that Maojoud teaches away from a certain weight percentage of abrasives within the abrasive segment.
However, in pursuit of compact prosecution, the examiner updated the search in order to provide teaching references showing super abrasives as disclosed by Maojoud occupying similar and overlapping ranges of weight percentages within abrasive segments as disclosed in the claims. The applicant’s arguments are fully considered, but not found persuasive. Please see the updated rejection set forth within the 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, 12-13, 19, 22 and 24 are rejected under rejected under 35 U.S.C. 103 as being unpatentable over Maoujoud (US patent No. 5868125) in view of Martin et al. (US PG Pub No. 20190375073) and Welygan et al. (US PG Pub No. 20040018802).
In regards to claim 1, Maoujoud discloses
a cup wheel (wheel 30, fig. 1-6) comprising:
col. 7 lines 33-36: In another form, the present invention is applicable to all abrasive tools in which the cutting action is performed by one or more segments attached to a core. The most common of such tools are core drilling bits, and rotary and reciprocating saw blades and cup wheels for grinding.
a body comprising a plurality abrasive segments (at least plurality of abrasive segments 36 and 37, fig. 3) coupled to a surface of a substrate (metal disc 32, fig. 3);
wherein the plurality abrasive segments (at least plurality of abrasive segments 36 and 37, fig. 3) include a first abrasive segment (primary abrasive 16, fig. 1-3) and a second abrasive segment (secondary abrasive 20b, fig. 1-3); wherein the first abrasive segment has a first bond composition and the second abrasive segment has a second bond composition (Col. 5 lines 11-18), and
Col. 5 lines 11-18: As indicated above, the vein comprises a primary abrasive and a first bond material and the separated abrasive regions comprise a second bond material. The second bond material can be identical to or different from the first bond material. Optionally, a secondary abrasive can be dispersed within the second bond material. The secondary abrasive can be selected from among a wide variety of abrasive materials.
Col. 6 lines 44-63: It is usually desirable for the vein to have greater abrasive strength than the separated abrasive regions. Hence, the superabrasive substance preferably is a constituent of the primary abrasive. More preferably, the primary abrasive is a superabrasive and the secondary abrasive is non-superabrasive. While the secondary abrasive and second bond material can be different in each secondary abrasive region within a given abrasive segment, it should be easier to produce segments having identical compositions in all secondary abrasive regions within a segment.
the first bond composition comprises a vitreous bond material (Col. 7 lines 16-23) and the second bond composition comprises a resinous bond material (Col. 7 lines 16-23),
Col. 7 lines 16-23: The composition for the first and second bond materials can be any of the general types common in the art. For example, glass or vitrified, resinoid, or metal may be used effectively, as well as hybrid bond material such as metal filled resinoid bond material and resin impregnated vitrified bond. Metal and vitrified bond materials are preferred and metal is more preferred, especially for tools designed to cut tough materials encountered in the construction industry.
Col. 5 lines 12-20: As indicated above, the vein comprises a primary abrasive and a first bond material and the separated abrasive regions comprise a second bond material. The second bond material can be identical to or different from the first bond material. Optionally, a secondary abrasive can be dispersed within the second bond material. The secondary abrasive can be selected from among a wide variety of abrasive materials. However, it is important to achieving desired high performance that the abrasive strengths of the vein and the separated abrasive regions are different.
wherein the plurality of abrasive segments includes a plurality of first abrasive segments (comprising primary abrasives 16) and a plurality of second abrasive segments (comprising secondary abrasives 20b), wherein the first and second abrasive segments are arranged in a radial alternating manner relative to each other (see fig. fig. 2b/3 – ann. 1).
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Maoujoud discloses the abrasive article (see fig. 1 and 2), but fails to disclose “a first set of abrasive particles having a median particle size D50ap1 and a second set of abrasive particles having a median particle size D50ap2, wherein D50ap2/D50ap1 is at least 1.1.”
However, Martin teaches “[0030] …In another embodiment, the abrasive particles included in the first and second abrasive portions can include the same material, but have different shapes, average particle sizes, properties or any combination thereof… [0032] In an embodiment, the first abrasive portion can include abrasive particles having a first average particle size, and abrasive particles within the second abrasive portion can have a second average particle size that is the same as or different than the first average particle size…[0033] In an embodiment, the abrasive article can have a certain ratio (AP1/AP2) of the first average particle size (AP1) to the second average particle size (AP2) to facilitate improved formation and properties of the abrasive article. In an embodiment, the abrasive particle ratio can be at least 1. In another instance, the abrasive particle ratio can be greater than 1. For example, the abrasive particle ratio (AP1/AP2) can be at least 1.1.”
Maoujoud and Martin are considered to be analogous to the claimed invention because they are in the same field of abrasive articles employing at least a first and second abrasive portion, bond materials, and abrasive materials for grinding a workpiece.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Maoujoud to incorporate the teachings of Martin and provide a ratio between groups of abrasive particles within the first segment in order “to facilitate improved formation and properties of the abrasive article (Martin [0033]).
Maojoud fails to explicitly disclose that the first abrasive segment (primary abrasive 16, fig. 1-3) comprises “at least 30% and not greater than 70% abrasive particles for a total weight of the abrasive segment.”
Maoujoud fails to explicitly disclose the percentage by weight of the abrasive particles within the abrasive segment.
However, Welygan, which discloses an abrasive tool, teaches weight percentages of abrasive particles within an abrasive segment.
[0117] The amount of particulate curable binder material used in the particulate curable binder-abrasive particle mixture generally will be in the range from about 5 weight % to about 99 weight % particulate curable binder material, with the remainder about 95 weight % to about 1% comprising abrasive particles and optional fillers...preferably about 50 to about 85 weight % abrasive particles and about 50 to about 15 weight % particulate curable binder material.
Maojoud and Welygan are considered to be analogous to the claimed invention because they are in the same field of abrasive tools with segments comprising different percentages of bond material and abrasive element.
Therefore, pursuant MPEP 2144.05.I, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Maojoud in view of Weylgan, and provide an abrasive segment comprising between 30% and 70% abrasive articles by weight, as Weylgan discloses “more preferably about 50 to about 85 weight % abrasive particles”, as 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))
In regards to claim 12, Maoujoud as modified discloses
the cup wheel of claim 1, wherein the body comprises a first set of abrasive segments having the first bond composition and a second set of abrasive segments having the second bond composition, wherein the first set of abrasive segments provides a first abrasive surface area SA1 and the second set of abrasive segments provides a second abrasive surface area SA2, but fails to disclose that wherein the first abrasive surface area to the second abrasive surface area, SA1/SA2, “is at least 0.15.”
Though Maoujoud fails to explicitly disclose the abrasive surface area ratio range between 0.15 and more, the range of the ratio between abrasive surface areas is recognized as a result-effective variable, i.e. a variable which achieves a recognized result.
In this case, the recognized result is that grinding efficiency. If the ratio between abrasive surface areas is too small, then the perceivable difference between grinding regions would be too large, causing the tool to be ineffective in providing coarse and fine grinding.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a ratio between surface areas as greater than 0.15 as applicant appears to have placed no criticality on the claimed range (see specification: ¶[0013-0018]).
Pursuant of MPEP 2144.05(II), it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the abrasive agents to have a ratio of surface areas within the claimed range, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In regards to claim 13, Maoujoud as modified discloses
the cup wheel of claim 12, wherein the first set of abrasive segments provides a first abrasive surface area SA1 and the second set of abrasive segments provides a second abrasive surface area SA2,
but fails to disclose that the first abrasive surface area to the second abrasive surface area, SA1/SA2, “is not greater than 10.”
Though Maoujoud fails to explicitly disclose the ratio of surface areas between surface areas, the range of possible ratios is recognized as a result-effective variable, i.e. a variable which achieves a recognized result.
In this case, the recognized result is that grinding efficiency. If the ratio between abrasive surface areas is greater than 10, then the perceivable difference between grinding regions would be too large, causing the tool to be ineffective in providing coarse and fine grinding.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a ratio between surface areas being less than 10 as applicant appears to have placed no criticality on the claimed range (see specification: ¶[0013-0018]).
Pursuant of MPEP 2144.05(II), it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the abrasive agents to have a ration of surface areas within the claimed range, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In regards to claim 19, Maoujoud as modified discloses
a method of using the cup wheel of claim 1, comprising edge grinding (col. 1 lines 4-5: a tool for cutting and grinding industrial materials, and, more particularly, to a tool with a crenelated, abrasive segment and a method of making such a tool; Examiner’s note: using the tool as intended with abrasive elements at its outer edge would define edge grinding).
In regards to claim 22, Maoujoud as modified discloses
the cup wheel of claim 1, wherein the first abrasive segment (primary abrasive 16, fig. 1-3) and the second abrasive segment (secondary abrasive 20b, fig. 1-3) comprise abrasive particles comprising an oxide, carbide, nitride, boride, diamond, or any combination thereof (col. 5 lines 50-62).
Col. 5 lines 50-62: The abrasive grains are uniformly dispersed within the bond material. Each of the primary and secondary abrasives can be a single abrasive substance or a mixture of more than one. Very hard abrasive substances, generally known as superabrasives, such as diamond and cubic boron nitride, can be used in the present invention. Non-superabrasive substances also can be employed. Representative non-superabrasives which can be used in this invention include aluminum oxide, silicon boride, silicon carbide, silicon nitride, tungsten carbide, garnet, pumice and the like. Superabrasives and non-superabrasives can be present in either or both of the primary and secondary abrasive portions.
In regards to claim 24, Maoujoud as modified discloses
the cup wheel of claim 1, but fails to explicitly disclose that the second abrasive segment (secondary abrasive 20b, fig. 1-3) comprises “at least 30% and not greater than 70% abrasive particles for a total weight of the abrasive segment.”
Maoujoud fails to explicitly disclose the percentage by weight of the abrasive particles within the second segment.
However, Welygan, which discloses an abrasive tool, teaches weight percentages of abrasive particles within an abrasive segment.
[0117] The amount of particulate curable binder material used in the particulate curable binder-abrasive particle mixture generally will be in the range from about 5 weight % to about 99 weight % particulate curable binder material, with the remainder about 95 weight % to about 1% comprising abrasive particles and optional fillers...preferably about 50 to about 85 weight % abrasive particles and about 50 to about 15 weight % particulate curable binder material.
Maojoud and Welygan are considered to be analogous to the claimed invention because they are in the same field of abrasive tools with segments comprising different percentages of bond material and abrasive element.
Therefore, pursuant MPEP 2144.05.I, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Maojoud in view of Weylgan, and provide an abrasive segment comprising between 30% and 70% abrasive articles by weight, as Weylgan discloses “more preferably about 50 to about 85 weight % abrasive particles”, as 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))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 2770928
US PG Pub No. 20110045739
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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723