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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/01/2025 has been entered.
Response to Amendments
The amendments filed May 1, 2026 have been entered. Accordingly, claims 1-20 are currently pending and have been examined. The Examiner acknowledges the amendments of claims 1-6, 10, and 20. Claims 10-19 are withdrawn. Claims 21-37 are cancelled by applicant. The previous 103 rejections have been modified due to applicant’s amendments.
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.
Claims 1-7, 9,and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Berg (US Patent No. 5,201,916).
Regarding claim 1, Berg discloses: an abrasive article (Figure 3 element 30 and see also col. 12, ll. 14-17) comprising:
a first set of shaped abrasive particles (element 36 and see also figure 3 annotated below Detail A), wherein the first set of shaped abrasive particles are oriented with respect to a backing (element 32) in a first orientation (see annotated figure 3 below showing the first set of shaped abrasive particles (element 36/Detail A) oriented with respect to the backing (element 32) in a first orientation (tip portion facing upward)); and
a second set of shaped abrasive particles (element 36 and see also figure 3 annotated below Detail B), wherein the second set of shaped abrasive particles are oriented with respect to the backing in a second orientation (see annotated figure 3 below showing the second set of shaped abrasive particles (element 36/Detail B) oriented with respect to the backing (element 32) in a second orientation (tip portion facing downward)), and wherein the second orientation differs from the first orientation (see annotated figure 3 below),
wherein the first set of shaped abrasive particles are positioned on the backing such that plurality of spacings (see annotated figure 3 below Detail C) exist between adjacent particles, wherein the second set of shaped particles are positioned in the plurality of spacings (see annotated figures 3 below showing the first set of shaped abrasive particles having spacings (Detail C) and the majority of the second set of shaped particles (Detail B) are positioned in the plurality of spacings), and
wherein the first and second set of shaped abrasive particles are embedded within a make coat layer (element 34 and see also col. 12, ll. 15-16 where the prior art discloses element 34 as a “make coat”) on the backing.
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However, Berg does not explicitly discloses wherein the second set of shaped abrasive particles is 25% by weight or less of a combined weight of the first and second sets of shaped abrasive particles.
However, Berg further discloses a plurality of abrasive particles (element 36) being either the first set of shaped abrasive or the second set of shaped abrasive (see figure 3 annotated above, i.e. being the same particle with the same weight at different orientations) and see also col. 12, ll. 14-36 where the prior art discloses element 36 being “triangular-shaped abrasive particles” and having “from about 35% to about 65% are oriented on the backing with a vertex 40 of the triangle pointing away from the backing” (first set of shaped abrasive particles), with “the remainder of these triangular-shaped abrasive particles are oriented with a base 42 of the triangle pointing away from the backing” (second set of shaped abrasive particles) and “up to 20% of the particles may not be oriented in either of the preceding ways, e.g., they may lay against the backing with the triangular face of the particle being in contact with the make coat”. Therefore, having a range of the second set of shaped abrasive particles between 15% to 45%, and thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select second set of shaped abrasive particles is 25% by weight or less of a combined weight of the first and second sets of shaped abrasive particles as applicant appears to have placed no criticality on the claimed range (see page 32-33 indicating the weight “may” be within the claimed range and offering additional acceptable ranges (20%, 15%, 10%, 5%, 2%, 1%, and 0.5%) and since it has been held that “[i]n 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).
Regarding claim 2, Berg modified discloses: the abrasive article of claim 1, wherein each of the first set of shaped abrasive particles includes a base portion (element 42) and an abrading portion (element 40), and wherein in the first orientation, the base portion is embedded within the make coat layer and the abrading portion faces away from the backing (see figure 3).
Regarding claim 3, Berg modified discloses all the limitations as stated in the rejection of claim 1 and further shows the second set of shaped abrasive particles (see annotated figure 3 Detail B above (see pages 4-5) oriented at a certain angle. However, Berg does not explicitly disclose wherein the second set of shaped abrasive particles are oriented at least 90° with respect to the first set of shaped abrasive particles.
However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Berg to provide wherein the second set of shaped abrasive particles are oriented at least 90° with respect to the first set of shaped abrasive particles, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Berg would not operate differently with the claimed angle and would function appropriately having the claimed angle. Lastly, applicant has not disclosed that the following claim limitations solves any stated problem, indicating that the angle orientation “may be” 90° and offering other acceptable angle orientation (e.g. , 180° see page 26, ll. 1-6) and therefore there appears to no criticality placed on the angle claimed such that it produces an unexpected result.
Regarding claim 4, Berg modified discloses all the limitations as stated in the rejection of claim 1 and further shows the second set of shaped abrasive particles (see annotated figure 3 Detail B above (see page 6) oriented at a certain angle. However, Berg does not explicitly disclose wherein the second set of shaped abrasive particles are oriented up to 180° with respect to the first set of shaped abrasive particles.
However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Berg to provide wherein the second set of shaped abrasive particles are oriented at least 180° with respect to the first set of shaped abrasive particles, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Berg would not operate differently with the claimed angle and would function appropriately having the claimed angle. Lastly, applicant has not disclosed that the following claim limitations solves any stated problem, indicating that the angle orientation “may be” 180° and offering other acceptable angle orientation (e.g. 90° see page 26, ll. 1-6) and therefore there appears to no criticality placed on the angle claimed such that it produces an unexpected result.
Regarding claim 5, Berg modified discloses: the abrasive article of claim 1, further comprising a third set of abrasive particles (see annotated figure 3 below Detail C) forming a closed coat on the backing (Per the applicants disclosure page 13, ll. 13-15, “a third set of particles may also be present and used to create a closed coat (i.e., substantially the maximum possible number of abrasive particles of nominal specified grade(s) that can be retained in the abrasive layer)”, similarly the that the prior art discloses an additional third set of abrasive particles (Detail C) on the backing (element 32), thus having a maximum number of abrasive particles retained in the abrasive layer and forming a closed coat.).
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Regarding claim 6, Berg modified discloses: the abrasive article of claim 1, wherein the first set of shaped abrasive particles are oriented with respect to each other such that faces of adjacent abrasive particles are parallel (see annotated figure 3 below showing face portions of the first set of shaped abrasive particles (Detail A) being parallel (dotted lines) with a face of adjacent abrasive particles).
Regarding claim 7, Berg modified discloses: the abrasive article of claim 6, wherein the second set of shaped abrasive particles is at least 5% by weight of the first and second sets of shaped abrasive particles (see rejection of claim 1 above (page 5-6) where the prior art disclose the range of the second set of shaped abrasive particles between 15% to 35%, and therefore having at least 5% by weight of the first and second sets of shaped abrasive particles).
Regarding claim 9, Berg modified discloses: the abrasive article of claim 1, wherein the first set of shaped abrasive particles comprise:
a shape selected from the group consisting of: rods, tetrahedrons, right angle triangular prisms, isosceles triangular prisms, equilateral triangular prisms, scalene triangular prisms, trapezoidal prisms, crescents, stars, cubes, dual tapered, irregular polygonal faces, shape-on-shape, variable cross-sectional area; or
a feature selected from the group consisting of: a sloping sidewall (see annotated figure 3 below Detail A), a groove, a recess, a facet, a fractured surface, a cavity, more than one vertex, sharp edges (see annotated figure 3 below Detail B), a non- shaped portion, a notch, a rake angle and / or a low roundness factor.
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Regarding claim 20, Berg discloses: an abrasive article (Figure 3 element 30 and see also col. 12, ll. 14-17) comprising:
a backing (element 32);
a coating layer (element 34) applied to the backing (see figure 3);
a first set of shaped abrasive particles (element 36 and see also figure 3 annotated below Detail A), each of the first set of shaped abrasive particles comprising a first base edge (element 42) and a first cutting portion (element 40), wherein each of the first set of shaped abrasive particles are in a first orientation comprising the first base edge embedded within the coating layer and the first cutting portion oriented away from the backing (see annotated figure 3 below showing each of the first set of shaped abrasive particles (Detail A) having the first base edge (element 42) embedded in the coating layer (element 34) and the first cutting portion (element 40) oriented away from the backing (element 32), thus the first set of shaped abrasive particles are in a first orientation); and
a second set of shaped abrasive particles (element 36 and see also figure 3 annotated below Detail B), each of the second set of shaped abrasive particles comprising a second base edge (element 42) and a second cutting portion (element 40), wherein each of the second set of shaped abrasive particles are in a second orientation comprising the second cutting portion embedded within the coating layer and the second base edge facing away from the backing (see annotated figure 3 below showing each of the second set of shaped abrasive particles (Detail B) having the second cutting portion (element 40) embedded in the coating layer (element 34) and the second base edge (element 42) oriented away from the backing (element 32), thus the second set of shaped abrasive particles are in a second orientation).
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However, Berg does not explicitly discloses wherein the second set of shaped abrasive particles is 25% by weight or less of a combined weight of the first and second sets of shaped abrasive particles.
However, Berg further discloses a plurality of abrasive particles (element 36) being either the first set of shaped abrasive or the second set of shaped abrasive (see figure 3 annotated above, i.e. being the same particle with the same weight at different orientations) and see also col. 12, ll. 14-36 where the prior art discloses element 36 being “triangular-shaped abrasive particles” and having “from about 35% to about 65% are oriented on the backing with a vertex 40 of the triangle pointing away from the backing” (first set of shaped abrasive particles), with “the remainder of these triangular-shaped abrasive particles are oriented with a base 42 of the triangle pointing away from the backing” (second set of shaped abrasive particles) and “up to 20% of the particles may not be oriented in either of the preceding ways, e.g., they may lay against the backing with the triangular face of the particle being in contact with the make coat”. Therefore, having a range of the second set of shaped abrasive particles between 15% to 45%, and thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select second set of shaped abrasive particles is 25% by weight or less of a combined weight of the first and second sets of shaped abrasive particles as applicant appears to have placed no criticality on the claimed range (see page 32-33 indicating the weight “may” be within the claimed range and offering additional acceptable ranges (20%, 15%, 10%, 5%, 2%, 1%, and 0.5%) and since it has been held that “[i]n 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).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Berg (US Patent No. 5,201,916) as evidence by Teja (NPL Article, found at “https://www.sciencedirect.com/science/article/pii/S0960897408000168”).
Regarding claim 8, Berg modified discloses: the abrasive article of claim 1, wherein one of the first and second sets of abrasive particles are magnetically responsive (The prior art of Berg discloses under “procedures of making the shaped abrasive particles” and further discloses a list of materials used including “iron oxide” (see col. 13, ll. 53-60), which is known to be magnetically responsive, as evidence by Teja (see annotated figure below), thus having wherein one of the first and second sets of abrasive particles are magnetically responsive).
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Response to Arguments
Applicant's arguments filed 05/01/2026 have been fully considered but they are not persuasive.
On pages 6-7 of the “Remarks”, the applicant argues the rejection of claim 1, specifically:
The rejection misreads the orientation disclosure in Berg et al.
The Final Office Action relies on the disclosure of triangular abrasive particle orientation in Berg et al. and appears to reason that Berg et al. discloses a first set of particles oriented tip-up and a second set of particles oriented tip-down while also acknowledging Berg's statement that up to 20% of the particles may be oriented in neither of those two ways.
Berg et al. states that about 35% to about 65% of the triangular particles are oriented with a vertex pointing away from the backing, the remainder are oriented with a base pointing away from the backing; and up to 20% may be oriented in neither of those two ways.
The Office Action then appears to treat the "up to 20%" group as though it may be subtracted from the second set alone, concluding that the second set can be reduced to 15% to 35%. That reasoning is unsupported.
Berg et al. does not teach or suggest reallocating the "neither" group exclusively out of the second orientation class. To the contrary, Berg et al. identifies three categories: particles with vertex away from the backing; particles with base away from the backing; and particles not oriented in either of those ways.
The third category is not disclosed as a subset of the second category, nor is there any basis in Berg et al. for assigning all such particles against only one of the two identified orientation classes. The rejection therefore relies on an unsupported reinterpretation of Berg et al., not on what Berg et al. actually teaches.
Put differently, if some particles are in neither the first nor second orientation, that fact does not, by itself, establish that the second set becomes as low as 15%. The Office Action does not identify any disclosure in Berg et al., or any technical reasoning, that would justify that reassignment.
Accordingly, the rejection's asserted range for the claimed "second set" is not taught by Berg et al.
Moreover, the currently amended claims further clarify what constitutes the first set and second set and that the percentage 25% by weight or less is based on a combined weight of the first and second sets of shaped abrasive particles, not including some other population of particles not in the first or second set.
The examiner respectfully disagrees. It is noted that the examiner is not teaching or suggesting in reallocating the "neither" group (i.e. third category of abrasive shaped particles that is not oriented in neither of those two ways of the first and second set of shaped abrasive particles) exclusively out of the second orientation class and relying solely on the second set when subtracting the percentage, but rather the entire plurality of abrasive particles that are made up of the three categories.
As stated in the rejection above, the prior art of Berg (see col. 12, ll. 14-36) discloses a plurality of shaped abrasive particles (element 36, i.e. 100% of the total combined weight), while also further disclosing a range of about 35% to 65% of the plurality of abrasive particles being oriented on the backing with a vertex of the triangle pointing away from the backing (i.e. first set of shaped abrasive particles), the remainder of these triangular-shaped abrasive particles are oriented with a base of the triangle pointing away from the backing (i.e. second set of shaped abrasive particles), and further disclosing up to 20% of the particles may not be oriented in either of the preceding ways.
Therefore, the examiner selects the plurality of shaped abrasive particles of element 36 which comprises 100% of total combined weight minus the 20% of the particles that are not oriented in either of the preceding ways (i.e. first and second set of shaped abrasive particles) in order to have a remaining percentage of 80% of the remaining total combined weight (i.e. total combined weight of the combination of both the first and second set of shaped abrasive particles). Furthermore, the examiner selects the remaining percentage of 80% of the remaining total combined weight (i.e. total combined weight of the combination of both the first and second set of shaped abrasive particles) and minus 65% to 35% of the weight of the first set of shaped abrasive particles in order to have a remaining weight of the second set of shaped abrasive particles in the range of 45% to 15% of the combined weight (i.e. 80%) of the first and second sets of abrasive particles. Thus, having overlapping ranges as indicated in the rejection above on pages 3-6 (claim 1) and 11-13 (claim 20). Therefore, arguments are found unpersuasive.
On pages 7-8 of the “Remarks”, the applicant argues that the prior art of Berg does not disclose or suggest the claimed range of 25% by weight or less for the second set, that there is no overlap between the claimed upper limit and the range disclosed in Berg et al, and the overlapping-range case law, including In re Wertheim and In re Woodruff Those authorities do not apply here because the threshold factual predicate-overlap between the claimed range and the prior art range-is absent..
The examiner respectfully disagrees. As stated in the rejection above and described in the first response to arguments, the second set of shaped abrasive particles in the range of 45% to 15% of the combined weight (i.e. 80%) of the first and second sets of abrasive particles. Thus, having overlapping ranges as indicated in the rejection above on pages 3-6 (claim 1), 11-13 (claim 20), and therefore the 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) case law is applicable and appropriate. Therefore, arguments are found unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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/A.S./Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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