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 .
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.
Claim(s) 1, 3-7, 10-12, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2018/0290264, previously cited) in view of Matthee (US 6042886, previously cited) and further in view of Kasashima (US 2009/0165768, previously cited).
Regarding claim 1, Li teaches an abrasive article comprising a body including: an abrasive portion (162) having an annular shape (fig 15) defined by an inner annular surface (surface connected to backing 160), the abrasive portion including abrasive particles contained in a bond material ([0116]), and wherein the abrasive portion comprises at least one groove in an outer annular surface (fig 16; concave groove on surface 168); and a backing (160) coupled to the inner annular surface of the abrasive portion (fig 16), wherein the backing comprises a first radial surface, a second radial surface opposite the first radial surface (top and bottom surfaces as viewed in fig 16), and an inner annular backing surface extending between the first radial surface and second radial surface (annular surface backing the abrasive portion as shown in fig 16), and wherein the backing does not comprise abrasive particles ([0115]; backing includes only a metal or metal alloy).
Li is silent as to an average surface roughness of the first radial surface, second radial surface, or inner annular backing surface being at least 0.1 microns. However, “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” (MPEP 2144.05 II. A.). Applicant has provided no showing of criticality for the claimed range. Additionally, Matthee teaches an abrasive article comprising a backing (1) wherein the surfaces (col 4, lines 59-64; entire body can be made of a material that provides the roughness, which would include all surfaces) of the backing have an average surface roughness of at least 0.1 microns (col 4, lines 45-52 describes roughness of abrasive layer is same as roughness of backing (not “leveled out” by abrasive coating); col 6, lines 4-5 describes roughness of 10 microns). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a surface roughness of the surfaces of the backing of Li, including the first and second radial surfaces and inner annular backing surface, as providing the backing with a particular surface roughness improves the bonding capabilities of the backing layer as taught by Matthee (col 4, lines 11-14).
Li does not teach the backing comprises a radial width that is at least 0.1% greater than a radial width of the abrasive portion. However, “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” (MPEP 2144.05 II. A.). Applicant has provided no showing of criticality to the relative radial widths of the backing or abrasive portion. Furthermore, Kasashima teaches an abrasive article comprising a backing (element 24 in fig 1D including elements 22a and 22b) and an abrasive portion (element 28 in fig 1D), recognizing that a radial width of the backing (H1 labeled in fig 1C) has a direct effect on the ability of the backing to reinforce the tool ([0045]), and a radial width of the abrasive portion (labeled H2 in fig 1C) has a direct effect on the tool life and deformation of the abrasive ([0048]). As Kasashima establishes the radial width of the backing and abrasive portion are both results effective variables, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the radial widths of the backing and abrasive portion of Li such that the radial width of the backing is at least 0.1% greater than the radial width of the abrasive portion, achieving the predictable result of optimizing reinforcement, tool life, and deformation as taught by Kasashima.
Regarding claim 3, Li, as modified, teaches all the limitations of claim 1 as described above. Claim 3 provides an upper limit to the range of relative widths recited in claim 1. As this has been established as a results effective variable, the range of claim 3 is obvious for substantially the same reasons as discussed in the rejection of claim 1 above.
Regarding claim 4, Li, as modified, teaches all the limitations of claim 1 as described above. Li as modified by Matthee further teaches average surface roughness of the first radial surface, second radial surface and inner annular backing surface is no greater than 25 microns (as described in the rejection of claim 1 above, Matthee teaches an average roughness of 10 microns; col 6, lines 4-5).
Regarding claim 5, Li, as modified, teaches all the limitations of claim 1 as described above. Li as modified by Matthee further teaches the first radial surface, second radial surface and inner annular backing surface of the backing comprises an average surface roughness of at least 0.1 microns (as described in the rejection of claim 1 above, Matthee teaches making the entire backing with the roughened surface, which would include each of these surfaces when applied to the backing of Li).
Regarding claim 6, Li, as modified, teaches all the limitations of claim 1 as described above. Li is silent as to a particular hardness of the backing. However, “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” (MPEP 2144.05 II. A.). Applicant has provided no showing of criticality for the claimed range. Additionally, Li further teaches the hardness of the backing can be selected to prevent cracking of the abrasive ([0122]). Therefore, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed hardness of at least 76 HRB, as the hardness of the backing is a known results effective variable which effects the amount of deformation of the backing and the tendency of the abrasive to crack as taught by Li ([0122]).
Regarding claim 7, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the backing comprises an axial thickness of no greater than 1% greater than an axial thickness of the abrasive portion (fig 16; thicknesses are equal).
Regarding claims 10 and 11, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches there is only one contact surface between the abrasive portion (162) and the backing (160), wherein the contact surface is the inner annular surface of the abrasive portion and an outer annular surface of the backing (as shown in figs 15 and 16).
Regarding claim 12, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the bond material of the abrasive portion comprises tungsten ([0118]).
Regarding claims 15-17, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the abrasive article is configured to fit (note that the cover plate and mounting plate are not positively recited and are therefore not necessary to meet the claimed article; the claimed article need only be capable of being used with a cover plate in the claimed way) between a cover plate (108) and a mounting plate (140; unlabeled bottom plate in fig 4; shown labeled in fig 10) such that at least 1% and no greater than 99% of a first and radial surface of the abrasive portion (top and bottom surface) and of the first radial surface of the backing is configured to contact the cover plate (fig 22; see geometry of bottom cover plate with small groove allowing the backing to be partially, but not fully in contact with the radial surfaces of both the backing and abrasive portion; this geometry can be applied to either cover plate to achieve the desired contact area; note that the cover plates are not positively recited as a part of the claimed article).
Regarding claims 18 and 19, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the abrasive article is configured to fit (note that the cover plate and mounting plate are not positively recited and are therefore not necessary to meet the claimed article; the claimed article need only be capable of being used with a cover plate in the claimed way) between a cover plate (108) and a mounting plate (140; unlabeled bottom plate in fig 4; shown labeled in fig 10) and the mounting plate and the cover plate and mounting plate have a harness of between 50 and 100HRB (note that the mounting plate and cover plate are not positively recited and their exact hardness is not required to meet the claims; as the abrasive article of Li is capable of fitting between a mounting plate and cover plate as shown in fig 22, and the plates could be of any hardness, Li is seen as teaching the claimed capability).
Regarding claim 20, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the backing comprises no more than 3 openings or holes (fig 15; single opening 164).
Claim(s) 8 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li, Matthee, and Kasashima as applied to claim 1 above, and further in view of Wiand (US 2013/0217315, previously cited).
Regarding claims 8 and 14, Li, as modified, teaches all the limitations of claim 1 as described above. Li does not teach the backing comprises a material that is the same material as the bond material of the abrasive portion or the difference between coefficients of thermal expansion of the backing and abrasive portion being no greater than 1%. Wiand teaches an abrasive article wherein a material of a backing (320) is the same material as a bond material of an abrasive portion ([0071]), the portions having the same material necessarily resulting in the same coefficient of thermal expansion. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the backing of Matthee out of the same material as the bond material and therefore have the same coefficient of thermal expansion, as using the same material provides improved bond strength between the abrasive and backing as taught by Wiand ([0136]).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li, Matthee, and Kasashima as applied to claim 1 above, and further in view of Yoshikawa (US 6517427, previously cited).
Regarding claim 13, Li, as modified, teaches all the limitations of claim 1 as described above. Li does not teach the backing comprises tungsten. However, it is obvious to select “a known material based on its suitability for its intended use” (MPEP 2144.07). Yoshikawa teaches an abrasive article including a backing (1) comprising tungsten (col 5, lines 19-26; col 5, line 64-col 6, line 12). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the backing of Li out of tungsten, as tungsten is known to be suitable as an abrasive backing, providing the strength and bond capabilities necessary in an abrasive cutting wheel as taught by Yoshikawa (col 5, lines 19-30; col 5, line 64-col 6, line 12).
Response to Arguments
Applicant's arguments filed 12 Sep 2025 have been fully considered but they are not persuasive. Regarding claim 1 and its dependents, applicant argues that element 24 identified in Kasashima is integral to the abrasive portion and includes abrasive grains, and therefore does not constitute a backing as claimed. Examiner respectfully disagrees. As described in paragraph [0047] of Kasashima, the backing may “consist of metal bond 24 (FIG. 1D),” which is a clear description and showing of a blade having a backing with only a metal bond, which is clearly separate from the abrasive portion which includes metal bond and abrasive grains 26. This delineation is clearly shown in fig 1D of Kasashima. The observation that these sections are integrally bonded together does not negate the fact that there is a clear backing in Kasashima, which is akin to the backing of Li. Applicant further argues that the backing of Kasashima comprises abrasive particles and therefore does not teach the backing of the claim. However, the backing of Li does not comprise abrasive particles, as detailed in the rejection above. Furthermore, as discussed above, Kasashima clearly teaches embodiment of figure 1D has a backing which may “consist of metal bond” ([0047]), indicating that there are no abrasive particles in the backing of this embodiment.
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 MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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/MARCEL T DION/Examiner, Art Unit 3723 /BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723