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 .
Status of Claims
This action is in reply to the appeal brief filed October 31, 2025.
In view of the appeal brief and ensuing discussion, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
Response to Arguments
The applicant’s arguments, see pages 3-12, filed have been fully considered.
103 Rejection applying Wiand in view of Tanaka: The applicant’s arguments were found persuasive. Structurally, applying the teaching of Tanaka to create guide grooves on the outer surface of Wiand would fail to make obvious grooves on the axial outer surface. Wiand in view of Tanaka fails to teach or make obvious claim 1.
Please see the new rejection set forth in the 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 1-16 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. Claim 1 reads in lines 6-8 that the grinding while structured such that at least one guide groove “is produced in an axial outer surface of one of the two outer layers when the multilayer circular grinding wheel is used to grind balls.” The claim is written such that grooves are produced as the grinding wheel is used. However, the applicant’s specification does not support this, but rather the grooves being formed during a manufacturing process.
As claims 2-16 are dependent upon claim 1, they are similarly rejected.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5-7, 9, 11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US PG Pub No. 20110177760).
In regards to claim 1, Tanaka discloses
a multilayer circular grinding wheel (rotating disk 10, fig. 2) comprising:
at least three substantially planar layers (holding layer 19, abrasive grain layer 18, surface plate body 17, fig. 1-2) including an inner layer (abrasive grain layer 18, fig. 1-2) and two outer layers (holding layer 19, surface plate body 17, fig. 1-2) immediately adjacent to the inner layer (see fig. 2),
of which at least the inner layer (abrasive grain layer 18, fig. 1-2) has a proportion of diamond abrasive grit such that the proportion of diamond in the abrasive grit is greater in the inner layer than in the outer layers ([0047]: the first embodiment of Tanaka discloses only the abrasive grain layer 18 having diamond abrasives; therefore, the proportion of abrasive grit in the inner layer is greater than the proportion in the outer layers since they don’t have any abrasive grit);
wherein the multilayer circular grinding wheel (rotating disk 10, fig. 2) is structured such that at least one guide groove (at least one of the groove portions 11, fig. 1-2) is produced in an axial outer surface (see fig. 2 – ann. 1) of one of the two outer layers when the multilayer circular grinding wheel (rotating disk 10, fig. 2) is used to grind balls.
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Tanak fails to disclose the groove is produced…when the multilayer circular grinding wheel is used to grind balls. However, pursuant of MPEP 2113.1, 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. The grinding disk of Tanaka anticipates the claimed grinding wheel structure, and is formed through a process, (see [0018-0021]), and as such meets the limitation that a product in the prior art made by a different process can anticipate a product-by-process claim.
Pursuant of MPEP 2115, claim analysis is understood as highly fact-dependent, thus is only limited by positively recited elements. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Otto, 312 F.2d 937, 136 USPQ 458, 459; see also In re Young, 75 F.2d 996, 25 USPQ 69. As such, Tanaka does not need to explicitly disclose “balls,” though its disclosure does present the structure and configuration capable of applying an abrasive surface in order to grind balls, or any other shaped workpiece.
In regards to claim 5, Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the outer layers (holding layer 19, surface plate body 17, fig. 1-2) each have a proportion of less than 90% by weight diamond in the abrasive grain (as there is no abrasive grain, the percentage is less than 90%).
In regards to claim 6, Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the outer layers (holding layer 19, surface plate body 17, fig. 1-2) each have a proportion of less than 75% by weight diamond in the abrasive grain(as there is no abrasive grain, the percentage is less than 75%).
In regards to claim 7, Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the outer layers (holding layer 19, surface plate body 17, fig. 1-2) each have a proportion of less than 50% by weight of diamond in the abrasive grain (as there is no abrasive grain, the percentage is less than 50%).
In regards to claim 9, Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the outer layers (holding layer 19, surface plate body 17, fig. 1-2) have a same structure or substantially a same structure (both are layers of relatively the same thickness), and a same axial thickness or substantially a same axial thickness (see fig. 2)
In regards to claim 11, Tanaka as modified discloses
a method of using the grinding wheel (rotating disk 10, fig. 2) according to claim 1.
In regards to claim 13, Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the grinding wheel (rotating disk 10, fig. 2) is structured such that, when the grinding wheel (rotating disk 10, fig. 2) grinds the balls, guide grooves (at least one of the groove portions 11, fig. 1-2) are defined in the axially outermost surface (see fig. 2).
In regards to claim 14,
the grinding wheel according to claim 13, wherein the guide grooves (groove portions 11, fig. 1-2) are defined by concentric, circular circumferential grooves which are symmetrically and concentrically aligned ([0043]) with respect to an axis of rotation (see fig. 1) of the grinding wheel (rotating disk 10, fig. 2).
[0043] Referring to FIGS. 1 and 2, rotating disk polishing surface 10A has a plurality of (three in the present embodiment) concentric ring-like groove portions 11 formed therein and having the center at the point of intersection of rotating axis a and rotating disk polishing surface 10A. In other words, rotating disk polishing surface 10A has three groove portions 11 formed therein and extending circumferentially along rotation of rotating disk 10.
In regards to claim 15, Tanaka as modified discloses
the grinding wheel according to claim 13, wherein the guide grooves permit portions of the balls in contact with the axially outermost surface to contact the inner layer (abrasive grain layer 18, fig. 1-2).
[0047:... Groove portions 11 are formed to penetrate holding layer 19 from rotating disk polishing surface 10A, which is a surface of holding layer 19 on the side opposite to abrasive grain layer 18, and in a depth direction and to reach abrasive grain layer 18. In other words, groove portion 11 has a bottom portion located within abrasive grain layer 18. Also, groove portion 11 has, in a cross-section perpendicular to a direction in which it extends, a wall surface having an arc-like shape. This results in that abrasive grain layer 18 is exposed at the bottom portion of groove portion 11 which contributes to polishing a material ball 91)
In regards to claim 16, Tanaka as modified discloses
the grinding wheel according to claim 1, further comprising: an axial front side on which the axial outer surface of one of the two outer layers (holding layer 19, surface plate body 17, fig. 1-2) is located; wherein the at least one guide groove is produced on a majority of the axial outer surface (see fig. 2, several groove portions are disclosed by Tanaka across the surface, thus covering a majority of the axial outer surface).
Claim(s) 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US PG Pub No. 20110177760) in view of Wiand (US Patent No. 4131436).
In regards to claim 2, Tanaka as modified discloses
the grinding wheel according to claim 1, but fails to explicitly disclose the inner layer (abrasive grain layer 18, fig. 1-2) has a proportion of at least 50% by weight of diamond in the abrasive grain.
However, the range of diamond proportion is recognized as a result-effective variable, i.e. a variable which achieves a recognized result.
Wiand, which is also an abrasive wheel employing diamond for the abrasive grain, identifies that in this case, the recognized result is increased tool efficiency and longevity : “a circumferential grinding layer made of a diamond-containing metallic matrix having a relatively greater concentration of diamond in the center than toward the edges. This provides a wheel which tends to remain flat or true longer during use and which can be re-trued easier than conventional wheels (col. 2 lines 5-11).” Too little diamond abrasive grain in the middle layer greatly reduces the ability to grind workpieces effectively.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Tanaka to disclose the proportion of diamond by weight within the abrasive grain to range between50%-100% as applicant appears to have placed no criticality on the claimed range
[0015]: For example, the inner layer 2 may have a proportion of 50% by weight (wt%), 75% by weight or even 90% by weight of diamond in the abrasive grain. This specification is the proportion in the abrasive grain without the bond matrix. In a preferred embodiment, the abrasive grain may also consist of 100% diamond.)
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 range of diamond proportion per weight 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 3 , Tanaka as modified discloses
the grinding wheel according to claim 1, wherein the inner layer (abrasive grain layer 18, fig. 1-2) has a proportion of at least 75% by weight of diamond in the abrasive grain.
However, the range of diamond proportion is recognized as a result-effective variable, i.e. a variable which achieves a recognized result.
Wiand, which is also an abrasive wheel employing diamond for the abrasive grain, identifies that in this case, the recognized result is increased tool efficiency and longevity : “a circumferential grinding layer made of a diamond-containing metallic matrix having a relatively greater concentration of diamond in the center than toward the edges. This provides a wheel which tends to remain flat or true longer during use and which can be re-trued easier than conventional wheels (col. 2 lines 5-11).” Too little diamond abrasive grain in the middle layer greatly reduces the ability to grind workpieces effectively.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Tanaka to disclose the proportion of diamond by weight within the abrasive grain to range between 75%-100% as applicant appears to have placed no criticality on the claimed range
[0015]: For example, the inner layer 2 may have a proportion of 50% by weight (wt%), 75% by weight or even 90% by weight of diamond in the abrasive grain. This specification is the proportion in the abrasive grain without the bond matrix. In a preferred embodiment, the abrasive grain may also consist of 100% diamond.)
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 range of diamond proportion per weight 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 4, Tanaka as modified discloses
the grinding wheel according to claim 1, but fails to explicitly disclose the inner layer (abrasive grain layer 18, fig. 1-2) has a proportion of at least 90% by weight of diamond in the abrasive grain.
However, the range of diamond proportion is recognized as a result-effective variable, i.e. a variable which achieves a recognized result.
Wiand, which is also an abrasive wheel employing diamond for the abrasive grain, identifies that in this case, the recognized result is increased tool efficiency and longevity : “a circumferential grinding layer made of a diamond-containing metallic matrix having a relatively greater concentration of diamond in the center than toward the edges. This provides a wheel which tends to remain flat or true longer during use and which can be re-trued easier than conventional wheels (col. 2 lines 5-11).” Too little diamond abrasive grain in the middle layer greatly reduces the ability to grind workpieces effectively.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Tanaka to disclose the proportion of diamond by weight within the abrasive grain to range between 90%-100% as applicant appears to have placed no criticality on the claimed range
[0015]: For example, the inner layer 2 may have a proportion of 50% by weight (wt%), 75% by weight or even 90% by weight of diamond in the abrasive grain. This specification is the proportion in the abrasive grain without the bond matrix. In a preferred embodiment, the abrasive grain may also consist of 100% diamond.)
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 range of diamond proportion per weight 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).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US PG Pub No. 20110177760) in view of Sato (US PG Pub No. 20180311683).
In regards to claim 10, Tanaka as modified
the grinding wheel according to claim 1, but fails to explicitly disclose that the inner layer (abrasive grain layer 18, fig. 1-2) and the outer layers (holding layer 19, surface plate body 17, fig. 1-2) “are made of a synthetic resin bond.”
Tanaka discloses a holding layer, an abrasive grain layer, and surface plate body layer. The surface plate body layer is formed of iron and cast metal, which fails to meet the requirement of being made of a synthetic resin bond.
Tanaka does disclose an embodiment wherein the holding layer (59) comprises the bonding agent and abrasive grains of the abrasive layer, allowing for efficient fabrication ([0061-0062]). As such, Tanaka discloses an embodiment wherein the holding layer and abrasive grain layer both have resinoid bonds for the bonding agent ([0018]-[0020], [0061-0062]).
However the base surface plate body layer is made of metal. Sato, which discloses a spherical ball grinding/polishing apparatus, teaches metal and synthetic resins being used as the base for a grinding wheel:
[0075] Referring to FIG. 14, spiral groove disk 11 as the first member in the fifth embodiment is formed by a spiral groove disk base portion 14 including a resin material or a metal material similarly to spiral groove disk 11…
Sato and Tanaka are considered analogous to the claimed apparatus as they are in the same field of endeavor, grinding/polishing disks with embedded abrasives.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to provide a synthetic resin as the material for the base support layer of Tanaka as a substitute for metal, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US PG Pub No. 20110177760) in view of Buell (US Patent No. 2398408).
In regards to claim 12, Tanaka as modified discloses
the method according to claim 11, but fails to disclose that wherein the grinding wheel is bonded with an outer side to a “metallic” support plate. Tanaka is silent to the materiality of the support plate.
However, Buell teaches an abrasive article, “any of the abrasive materials in common use may be employed, such as silicon carbide, diamonds, boron carbide (col. 3 lines 67-69).” Further, Buell teaches “An abrading tool comprising a metal spindle and an abrading body secured about a portion thereof…(claim 3).”
Tanaka and Buell are considered to be analogous to the claimed invention because they are in the same field of abrasive grinding wheel with a mixture of diamond and other abrasive grains bonded to a support structure.
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 Tanaka to incorporate the teachings of Buell and provide a metallic spindle as metals are durable would maintain structural integrity in the midst of grinding use of the tool.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 8, Tanaka as modified
the grinding wheel according to claim 1, but fails to disclose or make obvious the grinding wheel (rotating disk 10, fig. 2) includes “exactly three layers including abrasive grains.”
Tanaka discloses a holding layer, an abrasive grain layer, and surface plate body layer. The surface plate body layer is formed of iron and cast metal, and there doesn’t appear to be a cohesive motivation to change the bottom layer from a cast metal to an abrasive layer. Tanaka does disclose an embodiment wherein the holding layer (59) comprises the bonding agent and abrasive grains of the abrasive layer, allowing for efficient fabrication ([0061-0062]). However the claim requires exactly “three layers including abrasive grains.” As Tanaka discloses two at most, the limitation is considered allowable in view of the cited art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KHALIL HAWKINS whose telephone number is (571)272-5446. The examiner can normally be reached M-F; 8-5PM.
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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723