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 .
Response to Amendment
This office action is in response to the Amendment filed on 07/27/2026.
Claims 1-3, 5-9 and 11-18 are presently pending and are under examination; claims 4 and 10 are canceled; claims 1 and 9 are amended; claims 17-18 are new.
The objections to claims 1 and 9 are withdrawn in light of the amendments to the claims; new objections to claims 1 and 9 are present herein in light of the amendments to the claims.
The 35 U.S.C. 103 rejections of claims 9 and 11-14 over VENKATARAYAPPA in view of TAMARESELVY, claims 1-3 and 5-8 over VENKATARAYAPPA in view of TAMARESELVY and GOERS, claims 9, 11-14 and 16 over VENKATARAYAPPA in view of GUISELIN, claims 1-3, 5-8 and 15 over VENKATARAYAPPA in view of GUISELIN and GOERS are maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
In claim 1, “900 C” and “1020 C” should read “90 °C” and “102 °C”, respectively (see claim 1 at line 13).
In claim 9, “410 C” should read “41 °C” (see claim 9 at line 12).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “precisely-shaped abrasive particles” as recited in claims 7 and 13 (see claim 7 at lines 1-2 and claim 13 at line 2) is interpreted as meaning particles having shapes that are at least partially determined by the shapes of cavities in a production tool used to make them, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at pg. 9, lines 16-18.
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.
Claims 9, 11-16 and 18 are 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.
Claim 9 recites the limitation “the size layer precursor” (see claim 9 at line 12). There is insufficient antecedent basis for this limitation in the claim.
Claims 11-16 and 18 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
Claim Rejections - 35 USC § 103
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 9, 11-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Venkatarayappa, et al. (WO-2020/165683-A1) (hereinafter, “VENKATARAYAPPA”) in view of Tamareselvy, et al. (U.S. Pub. No. 2003/0207988-A1) (hereinafter, “TAMARESELVY”).
Regarding claim 9, VENKATARAYAPPA teaches a coated abrasive article (see VENKATARAYAPPA generally at Abstract and pg. 1, lines 16-23) comprising:
a backing having first and second opposed major surfaces (see VENKATARAYAPPA at pg. 1, lines 16-18 and 26-27, pg. 3, lines 30-32, and Fig. 1),
a make layer disposed on at least a portion of the first major surface and bonding abrasive particles to the backing (see VENKATARAYAPPA at pg. 1, lines 17-20, pg. 3 lines 30-32, and Fig. 1),
and a size layer overlaid on at least a portion of the make layer and the abrasive particles (see VENKATARAYAPPA at pg. 1, lines 21-23, pg. 3 lines 30-32, and Fig. 1),
and an optional supersize layer (see VENKATARAYAPPA at pg. 1, lines 24-25),
wherein at least one of the size layer or the optional supersize layer comprises an at least partially cured resole phenolic resin (see VENKATARAYAPPA at pg. 1 lines 21-23, pg. 2, lines 24-28 and 33, pg. 5 line 17 - pg. 6, line 1, pg. 11, line 32 - pg. 12 line 2, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an at least partially cured resole phenolic resin)
and an organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 24-29, pg. 7, lines 1-2, pg. 11, line 32 – pg. 12, line 1, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an aqueous polyurethane dispersion, which is an organic polymeric rheology modifier, and other rheology modifying additives)
and wherein the amount of the at least partially cured resole phenolic resin comprises an amount overlapping with the claimed range of from 75 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
VENKATARAYAPPA teaches that the aqueous polyurethane dispersion can include another rheological modifier as an additive (see VENKATARAYAPPA at pg. 7, lines 1-2).
However, VENKATARAYAPPA fails to explicitly teach that the organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer.
TAMARESELVY teaches alkali-swellable/soluble polymers (see TAMARESELVY at Abstract and paragraph [0002]), which can be used to suspend abrasives (see TAMARESELVY at paragraph [0012]) and are employed as rheology modifiers (see TAMARESELVY at paragraph [0013]). TAMARESELVY teaches that the alkali-swellable/soluble polymers are particularly useful as thickeners in coating applications (see TAMARESELVY at paragraph [0013]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coated abrasive article of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with alkali-swellable/soluble polymers as taught by TAMARESELVY (see TAMARESELVY at paragraphs [0002] and [0012]-[0013]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, TAMARESELVY teaches that alkali-swellable/soluble polymers are known organic rheology modifiers for use in coating and abrasive applications (see TAMARESELVY at paragraphs [0012]-[0013]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
VENKATARAYAPPA does not explicitly mention that during an include test at 41 °C, the size layer precursor has a flow of less than about 17 millimeters on a device having 48.7° incline from horizontal for one minute; however, it is first noted that there is no “size layer precursor” claimed in the present claim, therefore the claim cannot be limited by characteristics of a size layer precursor that is not part of the claimed coated abrasive article. It is also noted that if the claimed size layer were produced from a size layer precursor having these characteristics, this would be considered product-by-process claim language which is not given patentable weight in the present product claim. “Even 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); see MPEP § 2113. Finally, it is noted that VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article as claimed by claim 9, therefore the coated abrasive article would be expected to have the same or overlapping properties as the claimed coated abrasive article. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 11, as applied to claim 9 above, VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article according to claim 9, wherein the amount of the at least partially cured resole phenolic resin comprises an amount overlapping with the claimed range of from 85 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
Regarding claim 12, as applied to claim 9 above, VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article according to claim 9, wherein the abrasive particles comprise shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 13, as applied to claim 12 above, VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article according to claim 12, wherein the shaped abrasive particles comprise precisely-shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 14, as applied to claim 12 above, VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article according to claim 12, wherein the shaped abrasive particles comprise precisely-shaped three-sided platelets (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 18, as applied to claim 9 above, VENKATARAYAPPA in view of TAMARESELVY teaches a coated abrasive article according to claim 9. VENKATARAYAPPA does not explicitly teach that the amount of the at least partially cured resole phenolic resin comprises from 92 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier; however, VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15). 91% is very close to 92%; as set forth in MPEP § 2144.05, 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); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 1-3, 5-8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over VENKATARAYAPPA in view of TAMARESELVY and Goers, et al. (U.S. Pub. No. 2017/0225298-A1) (hereinafter, “GOERS”).
Regarding claim 1, VENKATARAYAPPA teaches a method of making a coated abrasive article (see VENKATARAYAPPA generally at Abstract and pg. 1, lines 16-23) comprising:
providing a backing having first and second opposed major surfaces (see VENKATARAYAPPA at pg. 1, lines 16-18 and 26-27, pg. 3, lines 30-32, and Fig. 1),
wherein a make layer is disposed on at least a portion of the first major surface and bonds abrasive particles to the backing (see VENKATARAYAPPA at pg. 1, lines 17-20, pg. 3 lines 30-32, and Fig. 1);
coating a size layer precursor over at least a portion of the make layer and the abrasive particles (see VENKATARAYAPPA at pg. 1, lines 21-23, pg. 3 lines 30-32, and Fig. 1),
wherein the size layer precursor comprises a resole phenolic resin (see VENKATARAYAPPA at pg. 2, lines 24-28, pg. 5 line 17 - pg. 6, line 1, pg. 11, line 32 - pg. 12 line 2, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising a resole phenolic resin)
and an organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 24-29, pg. 7, lines 1-2, pg. 11, line 32 – pg. 12, line 1, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an aqueous polyurethane dispersion, which is an organic polymeric rheology modifier, and other rheology modifying additives),
and, on a solids basis, wherein the amount of the resole phenolic resin comprises an amount overlapping with the claimed range of from 75 to 99.99 weight percent of the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious. As set forth in MPEP § 2144.05, 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));
and at least partially curing the size layer precursor to provide a size layer (see VENKATARAYAPPA at pg. 1 lines 21-23, pg. 2, line 33, and pg. 12, lines 13-15).
VENKATARAYAPPA teaches (i) that the aqueous polyurethane dispersion can include another rheological modifier as an additive (see VENKATARAYAPPA at pg. 7, lines 1-2), and (ii) that curing the curable compositions can include multiple stages at curing temperatures of, e.g., 80 °C and 103 °C, which are very close to the claimed temperatures of 90 °C and 102 °C (see VENKATARAYAPPA at pg. 25, lines 5-7).
However, VENKATARAYAPPA fails to explicitly teach that (i) the organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer, or (ii) the size layer precursor is at least partially cured at 90 °C and 102 °C.
Regarding (i) above, TAMARESELVY teaches alkali-swellable/soluble polymers (see TAMARESELVY at Abstract and paragraph [0002]), which can be used to suspend abrasives (see TAMARESELVY at paragraph [0012]) and are employed as rheology modifiers (see TAMARESELVY at paragraph [0013]). TAMARESELVY teaches that the alkali-swellable/soluble polymers are particularly useful as thickeners in coating applications (see TAMARESELVY at paragraph [0013]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with alkali-swellable/soluble polymers as taught by TAMARESELVY (see TAMARESELVY at paragraphs [0002] and [0012]-[0013]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, TAMARESELVY teaches that alkali-swellable/soluble polymers are known organic rheology modifiers for use in coating and abrasive applications (see TAMARESELVY at paragraphs [0012]-[0013]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding (ii) above, GOERS teaches a method of making a coated abrasive article comprising a make layer, shaped abrasive particles, and a size layer precursor comprising resole phenolic resin (see GOERS at paragraphs [0005], [0030]-[0031], [0071] and [0117]-[0118]), wherein the precursor may be cured at multiple temperatures, e.g., by heating to 90 °C then heating to 110 °C (i.e., heating from 90 °C to 110 °C would include curing at 102 °C) (see GOERS at paragraph [0196]). GOERS further teaches that bonded abrasives with organic resinous binders are typically heated at temperatures up to 200 °C for sufficient time to cure the thermosetting material and form a durable binder material (which encompasses and thereby renders obvious the claimed temperatures of 90 °C and 102 °C), that curing temperatures of the binder material precursors vary with and depend on the nature of the binder material precursor and the intended bonded abrasive article, and that selection of suitable conditions is within the capability of one of ordinary skill in the art (see GOERS at paragraphs [0116] and [0125]-[0126]). GOERS therefore explicitly teaches that the curing temperature(s) of the precursor composition is a result-effective variable which should be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the method of VENKATARAYAPPA by at least partially curing the size layer precursor at temperatures of up to 200 °C, e.g., temperatures of 90 °C to 110 °C, as GOERS teaches that these are known in the art as typical curing temperatures for organic resinous binders (see GOERS at paragraphs [0125]-[0126] and [0196]). As set forth in MPEP § 2144.05, 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)). Additionally, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the curing temperatures for the size layer precursor, including temperatures of 90 °C and 102 °C as claimed, in order to achieve sufficient curing and desired binder properties as taught by GOERS (see GOERS at paragraphs [0116] and [0125]-[0126]).
Regarding claim 2, as applied to claim 1 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 1, wherein said at least partially curing the size layer precursor occurs in a festoon oven (see VENKATARAYAPPA at pg. 12, lines 30-35; VENKATARAYAPPA teaches using a festoon oven as a source of thermal energy to sufficiently cure the size layer precursor).
Regarding claim 3, as applied to claim 1 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 1, wherein the size layer precursor has a basis weight of 5 to 1,100 grams per square meter (see VENKATARAYAPPA at pg. 12, lines 7-12; VENKATARAYAPPA teaches that the basis weight of the size layer precursor is in the range of 5 to 500 or more grams per square meter).
Regarding claim 5, as applied to claim 1 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 1, wherein, on a solids basis, the amount of the resole phenolic resin comprises an amount overlapping with the claimed range of from 85 to 99.99 weight percent of the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
Regarding claim 6, as applied to claim 1 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 1, wherein the abrasive particles comprise shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 7, as applied to claim 6 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 6, wherein the shaped abrasive particles comprise precisely-shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 8, as applied to claim 6 above, VENKATARAYAPPA in view of TAMARESELVY and GOERS teaches a method according to claim 6, wherein the shaped abrasive particles comprise precisely-shaped three-sided platelets (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 17, as applied to claim 1 above, VENKATARAYAPPA in view of TAMARESELVY teaches a method according to claim 1. VENKATARAYAPPA does not explicitly teach that the amount of the at least partially cured resole phenolic resin comprises from 92 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier; however, VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15). 91% is very close to 92%; as set forth in MPEP § 2144.05, 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); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 9, 11-14, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over VENKATARAYAPPA in view of Guiselin (U.S. Pub. No. 2010/0107509-A1) (hereinafter, “GUISELIN”).
Regarding claims 9 and 16, VENKATARAYAPPA teaches a coated abrasive article (see VENKATARAYAPPA generally at Abstract and pg. 1, lines 16-23) comprising:
a backing having first and second opposed major surfaces (see VENKATARAYAPPA at pg. 1, lines 16-18 and 26-27, pg. 3, lines 30-32, and Fig. 1),
a make layer disposed on at least a portion of the first major surface and bonding abrasive particles to the backing (see VENKATARAYAPPA at pg. 1, lines 17-20, pg. 3 lines 30-32, and Fig. 1),
and a size layer overlaid on at least a portion of the make layer and the abrasive particles (see VENKATARAYAPPA at pg. 1, lines 21-23, pg. 3 lines 30-32, and Fig. 1),
and an optional supersize layer (see VENKATARAYAPPA at pg. 1, lines 24-25),
wherein at least one of the size layer or the optional supersize layer comprises an at least partially cured resole phenolic resin (see VENKATARAYAPPA at pg. 1 lines 21-23, pg. 2, lines 24-28 and 33, pg. 5 line 17 - pg. 6, line 1, pg. 11, line 32 - pg. 12 line 2, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an at least partially cured resole phenolic resin)
and an organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 24-29, pg. 7, lines 1-2, pg. 11, line 32 – pg. 12, line 1, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an aqueous polyurethane dispersion, which is an organic polymeric rheology modifier, and other rheology modifying additives)
and wherein the amount of the at least partially cured resole phenolic resin comprises an amount overlapping with the claimed range of from 75 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
VENKATARAYAPPA teaches that the aqueous polyurethane dispersion can include another rheological modifier as an additive (see VENKATARAYAPPA at pg. 7, lines 1-2).
However, VENKATARAYAPPA fails to explicitly teach that the organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer, as required by claim 9, or wherein the alkali swellable/soluble polymer comprises a hydrophobically-modified alkali-swellable/soluble emulsion (HASE) polymer, as required by claim 16.
GUISELIN teaches a method of making a coated abrasive article (see GUISELIN generally at Abstract and paragraphs [0047] and [0134]-[0137]) comprising a curable binder precursor comprising a phenolic resin and/or a polyurethane dispersion (see GUISELIN at paragraphs [0047], [0049], [0076], [0080] and [0082] and claim 12) and an organic polymeric rheology modifier comprising HASE polymers, which are alkali-swellable/soluble polymers (see GUISELIN at paragraph [0119]). GUISELIN teaches that rheology modifiers such as HASE polymers may be used to control the thickness of the abrasive coating, to prevent settling of the abrasive particles, and to modify the rheology of the coating solution to optimize coating conditions (see GUISELIN at paragraphs [0117]-[0119]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coated abrasive article of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with HASE polymers as taught by GUISELIN (see GUISELIN at paragraph [0119]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, one of ordinary skill in the art would have been motivated to use a HASE polymer for the benefit of controlling the thickness of the abrasive coating, preventing settling of the abrasive particles, and modifying the rheology of the coating solution to optimize coating conditions as taught by GUISELIN (see GUISELIN at paragraphs [0117]-[0119]). Further, GUISELIN teaches that alkali-swellable/soluble HASE polymers are known organic rheology modifiers for use in coating and abrasive applications (see GUISELIN at paragraphs [0118]-[0119]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
VENKATARAYAPPA does not explicitly mention that during an include test at 41 °C, the size layer precursor has a flow of less than about 17 millimeters on a device having 48.7° incline from horizontal for one minute; however, it is first noted that there is no “size layer precursor” claimed in the present claim, therefore the claim cannot be limited by characteristics of a size layer precursor that is not part of the claimed coated abrasive article. It is also noted that if the claimed size layer were produced from a size layer precursor having these characteristics, this would be considered product-by-process claim language which is not given patentable weight in the present product claim. “Even 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); see MPEP § 2113. Finally, it is noted that VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article as claimed by claim 9, therefore the coated abrasive article would be expected to have the same or overlapping properties as the claimed coated abrasive article. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 11, as applied to claim 9 above, VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article according to claim 9, wherein the amount of the at least partially cured resole phenolic resin comprises an amount overlapping with the claimed range of from 85 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
Regarding claim 12, as applied to claim 9 above, VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article according to claim 9, wherein the abrasive particles comprise shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 13, as applied to claim 12 above, VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article according to claim 12, wherein the shaped abrasive particles comprise precisely-shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 14, as applied to claim 12 above, VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article according to claim 12, wherein the shaped abrasive particles comprise precisely-shaped three-sided platelets (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 18, as applied to claim 9 above, VENKATARAYAPPA in view of GUISELIN teaches a coated abrasive article according to claim 9. VENKATARAYAPPA does not explicitly teach that the amount of the at least partially cured resole phenolic resin comprises from 92 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier; however, VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15). 91% is very close to 92%; as set forth in MPEP § 2144.05, 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); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 1-3, 5-8, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over VENKATARAYAPPA in view of GUISELIN and GOERS.
Regarding claims 1 and 15, VENKATARAYAPPA teaches a method of making a coated abrasive article (see VENKATARAYAPPA generally at Abstract and pg. 1, lines 16-23) comprising:
providing a backing having first and second opposed major surfaces (see VENKATARAYAPPA at pg. 1, lines 16-18 and 26-27, pg. 3, lines 30-32, and Fig. 1),
wherein a make layer is disposed on at least a portion of the first major surface and bonds abrasive particles to the backing (see VENKATARAYAPPA at pg. 1, lines 17-20, pg. 3 lines 30-32, and Fig. 1);
coating a size layer precursor over at least a portion of the make layer and the abrasive particles (see VENKATARAYAPPA at pg. 1, lines 21-23, pg. 3 lines 30-32, and Fig. 1),
wherein the size layer precursor comprises a resole phenolic resin (see VENKATARAYAPPA at pg. 2, lines 24-28, pg. 5 line 17 - pg. 6, line 1, pg. 11, line 32 - pg. 12 line 2, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising a resole phenolic resin)
and an organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 24-29, pg. 7, lines 1-2, pg. 11, line 32 – pg. 12, line 1, and pg. 12, lines 13-15; VENKATARAYAPPA teaches a size layer precursor, which may be the same as or similar to the make layer precursor, comprising an aqueous polyurethane dispersion, which is an organic polymeric rheology modifier, and other rheology modifying additives),
and, on a solids basis, wherein the amount of the resole phenolic resin comprises an amount overlapping with the claimed range of from 75 to 99.99 weight percent of the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious. As set forth in MPEP § 2144.05, 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));
and at least partially curing the size layer precursor to provide a size layer (see VENKATARAYAPPA at pg. 1 lines 21-23, pg. 2, line 33, and pg. 12, lines 13-15).
VENKATARAYAPPA teaches (i) that the aqueous polyurethane dispersion can include another rheological modifier as an additive (see VENKATARAYAPPA at pg. 7, lines 1-2), and (ii) that curing the curable compositions can include multiple stages at curing temperatures of, e.g., 80 °C and 103 °C, which are very close to the claimed temperatures of 90 °C and 102 °C (see VENKATARAYAPPA at pg. 25, lines 5-7).
However, VENKATARAYAPPA fails to explicitly teach that (i) the organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer, as required by claim 1, or wherein the alkali swellable/soluble polymer comprises a hydrophobically-modified alkali-swellable/soluble emulsion (HASE) polymer, as required by claim 15, or (ii) the size layer precursor is at least partially cured at 90 °C and 102 °C.
Regarding (i) above, GUISELIN teaches a method of making a coated abrasive article (see GUISELIN generally at Abstract and paragraphs [0047] and [0134]-[0137]) comprising a curable binder precursor comprising a phenolic resin and/or a polyurethane dispersion (see GUISELIN at paragraphs [0047], [0049], [0076], [0080] and [0082] and claim 12) and an organic polymeric rheology modifier comprising HASE polymers, which are alkali-swellable/soluble polymers (see GUISELIN at paragraph [0119]). GUISELIN teaches that rheology modifiers such as HASE polymers may be used to control the thickness of the abrasive coating, to prevent settling of the abrasive particles, and to modify the rheology of the coating solution to optimize coating conditions (see GUISELIN at paragraphs [0117]-[0119]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with HASE polymers as taught by GUISELIN (see GUISELIN at paragraph [0119]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, one of ordinary skill in the art would have been motivated to use a HASE polymer for the benefit of controlling the thickness of the abrasive coating, preventing settling of the abrasive particles to which the coating is adhered, and modifying the rheology of the coating solution to optimize coating conditions as taught by GUISELIN (see GUISELIN at paragraphs [0117]-[0119]). Further, GUISELIN teaches that alkali-swellable/soluble HASE polymers are known organic rheology modifiers for use in coating and abrasive applications (see GUISELIN at paragraphs [0118]-[0119]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding (ii) above, GOERS teaches a method of making a coated abrasive article comprising a make layer, shaped abrasive particles, and a size layer precursor comprising resole phenolic resin (see GOERS at paragraphs [0005], [0030]-[0031], [0071] and [0117]-[0118]), wherein the precursor may be cured at multiple temperatures, e.g., by heating to 90 °C then heating to 110 °C (i.e., heating from 90 °C to 110 °C would include curing at 102 °C) (see GOERS at paragraph [0196]). GOERS further teaches that bonded abrasives with organic resinous binders are typically heated at temperatures up to 200 °C for sufficient time to cure the thermosetting material and form a durable binder material (which encompasses and thereby renders obvious the claimed temperatures of 90 °C and 102 °C), that curing temperatures of the binder material precursors vary with and depend on the nature of the binder material precursor and the intended bonded abrasive article, and that selection of suitable conditions is within the capability of one of ordinary skill in the art (see GOERS at paragraphs [0116] and [0125]-[0126]). GOERS therefore explicitly teaches that the curing temperature(s) of the precursor composition is a result-effective variable which should be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the method of VENKATARAYAPPA by at least partially curing the size layer precursor at temperatures of up to 200 °C, e.g., temperatures of 90 °C to 110 °C, as GOERS teaches that these are known in the art as typical curing temperatures for organic resinous binders (see GOERS at paragraphs [0125]-[0126] and [0196]). As set forth in MPEP § 2144.05, 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)). Additionally, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the curing temperatures for the size layer precursor, including temperatures of 90 °C and 102 °C as claimed, in order to achieve sufficient curing and desired binder properties as taught by GOERS (see GOERS at paragraphs [0116] and [0125]-[0126]).
Regarding claim 2, as applied to claim 1 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 1, wherein said at least partially curing the size layer precursor occurs in a festoon oven (see VENKATARAYAPPA at pg. 12, lines 30-35; VENKATARAYAPPA teaches using a festoon oven as a source of thermal energy to sufficiently cure the size layer precursor).
Regarding claim 3, as applied to claim 1 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 1, wherein the size layer precursor has a basis weight of 5 to 1,100 grams per square meter (see VENKATARAYAPPA at pg. 12, lines 7-12; VENKATARAYAPPA teaches that the basis weight of the size layer precursor is in the range of 5 to 500 or more grams per square meter).
Regarding claim 5, as applied to claim 1 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 1, wherein, on a solids basis, the amount of the resole phenolic resin comprises an amount overlapping with the claimed range of from 85 to 99.99 weight percent of the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15; VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier), therefore rendering the claimed range obvious (see MPEP § 2144.05).
Regarding claim 6, as applied to claim 1 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 1, wherein the abrasive particles comprise shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 7, as applied to claim 6 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 6, wherein the shaped abrasive particles comprise precisely-shaped abrasive particles (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 8, as applied to claim 6 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 6, wherein the shaped abrasive particles comprise precisely-shaped three-sided platelets (see VENKATARAYAPPA at pg. 8, lines 23-33 and pg. 9 lines 7-8; VENKATARAYAPPA teaches shaped abrasive particles, wherein the preferred abrasive particles are molded sol-gel derived alpha alumina triangular abrasive platelets).
Regarding claim 17, as applied to claim 1 above, VENKATARAYAPPA in view of GUISELIN and GOERS teaches a method according to claim 1. VENKATARAYAPPA does not explicitly teach that the amount of the at least partially cured resole phenolic resin comprises from 92 to 99.99 weight percent of the combined weight of the at least partially cured resole phenolic resin and the organic polymeric rheology modifier; however, VENKATARAYAPPA teaches that the make layer precursor and/or size layer precursor includes the resole phenolic resin in an amount of 56 to 91% by weight, based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier (see VENKATARAYAPPA at pg. 2, lines 28-31 and pg. 12, lines 13-15). 91% is very close to 92%; as set forth in MPEP § 2144.05, 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); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 9, 11-16 and 18 and under 35 U.S.C. 103 for claim 17 over VENKATARAYAPPA in view of TAMARESELVY and GOERS and VENKATARAYAPPA in view of GUISELIN and GOERS and for claim 18 over VENKATARAYAPPA in view of TAMARESELVY and VENKATARAYAPPA in view of GUISELIN as set forth above.
Applicant argues:
“TAMARESELVY provides no teaching or suggestion as to how the polymers would behave at elevated temperatures in the presence of a chemically reactive, condensing the resole phenolic resin. Such uncertainty would not motivate the skilled person to combine VENKATARAYAPPA and TAMARESELVY” (see Remarks at pg. 8).
“GUISELIN TAMARESELVY provides no teaching or suggestion as to how the polymers would behave at elevated temperatures in the presence of a chemically reactive, condensing the resole phenolic resin. Such uncertainty would not motivate the skilled person to combine VENKATARAYAPPA and GUISELIN” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that there is no motivation for a skilled person to combine VENKATARAYAPPA and GUISELIN/TAMARESELVY because GUISELIN/TAMARESELVY do not mention behavior of polymers at elevated temperatures in the presence of resole phenolic resin, the Examiner respectfully disagrees. As discussed in the rejections above, it would have been obvious to one of ordinary skill in the art to have modified the coated abrasive article of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with alkali-swellable/soluble polymers as taught by TAMARESELVY (see TAMARESELVY at paragraphs [0002] and [0012]-[0013]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, TAMARESELVY teaches that alkali-swellable/soluble polymers are known organic rheology modifiers for use in coating and abrasive applications (see TAMARESELVY at paragraphs [0012]-[0013]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”., it would have been obvious to one of ordinary skill in the art to have modified the method of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with HASE polymers as taught by GUISELIN (see GUISELIN at paragraph [0119]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, one of ordinary skill in the art would have been motivated to use a HASE polymer for the benefit of controlling the thickness of the abrasive coating, preventing settling of the abrasive particles to which the coating is adhered, and modifying the rheology of the coating solution to optimize coating conditions as taught by GUISELIN (see GUISELIN at paragraphs [0117]-[0119]). Further, GUISELIN teaches that alkali-swellable/soluble HASE polymers are known organic rheology modifiers for use in coating and abrasive applications (see GUISELIN at paragraphs [0118]-[0119]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Additionally TAMARESELVY explicitly teaches combining the polymers with other resins (see TAMARESELVY at paragraphs [0113] and [0116]), and GUISELIN explicitly teaches combining the polymers with curable resins such as phenolic resins and heating/curing them (see GUISELIN at paragraphs [0046]-[0049], [0076], [0080], [0082], [0119], [0143] and claim 12).
Applicant argues:
“VENKATARAYAPPA does not focus on controlling the viscosity or flow of the size layer. Accordingly… a skilled person would not think of adding a rheology modifier that changes viscosity of the size layer” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that a skilled person would not add a rheology modifier to the size layer of VENKATARAYAPPA, the Examiner respectfully disagrees; as discussed in the rejection above, VENKATARAYAPPA explicitly discloses adding rheological modifiers (see VENKATARAYAPPA at pg. 7, lines 1-2). One of ordinary skill in the art would understand that rheological modifiers are added to modify rheology, i.e., change viscosity.
Applicant argues:
“VENKATARAYAPPA discloses an exemplary embodiment of the curable composition which is applied on a stencil side of a backing, and the curable composition includes a slurry of the binder precursor and abrasive particles. To that extent, the size layer precursor of amended claim 1 and the binder precursor of VENKATARAYAPPA are not comparable. Consequently, the heating of the binder precursor at the temperature of 80 degrees and 103 degrees in VENKATARAYAPPA… is not comparable” (see Remarks at pg. 8-9).
“para. [0196] of GOERS discloses different temperatures at which the cut-off wheel precursor is heated in a ramp temperature, i.e., increasing temperature during a 30 hr cure cycle. However, GOERS does not disclose curing the size layer precursor at 900 C and 1020 C” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because VENKATARAYAPPA discloses an example where a slurry of binder precursor and abrasive particles is cured at 80 and 103 degrees and GOERS does not disclose curing the size layer precursor at 90 and 102 degrees, the Examiner respectfully disagrees. As discussed in the rejection above, GOERS teaches a size layer precursor comprising resole phenolic resin which, wherein the precursor may be cured at multiple temperatures, e.g., by heating to 90 °C then heating to 110 °C (see GOERS at paragraphs [0005], [0030]-[0031], [0071], [0117]-[0118], and [0196]). Heating from 90 °C to 110 °C would include curing at 102 °C. GOERS further teaches that bonded abrasives with organic resinous binders are typically heated at temperatures up to 200 °C for sufficient time to cure the thermosetting material and form a durable binder material (which encompasses and thereby renders obvious the claimed temperatures of 90 °C and 102 °C), that curing temperatures of the binder material precursors vary with and depend on the nature of the binder material precursor and the intended bonded abrasive article, and that selection of suitable conditions is within the capability of one of ordinary skill in the art (see GOERS at paragraphs [0116] and [0125]-[0126]). GOERS therefore explicitly teaches that the curing temperature(s) of the precursor composition is a result-effective variable which should be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). One of ordinary skill would find it obvious to at least partially cure the size layer precursor at temperatures of up to 200 °C, e.g., temperatures of 90 °C to 110 °C, as GOERS teaches that these are known in the art as typical curing temperatures for organic resinous binders (see GOERS at paragraphs [0125]-[0126] and [0196]). As set forth in MPEP § 2144.05, 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)). Additionally, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the curing temperatures for the size layer precursor, including temperatures of 90 °C and 102 °C as claimed, in order to achieve sufficient curing and desired binder properties as taught by GOERS (see GOERS at paragraphs [0116] and [0125]-[0126]).
Applicant argues:
“GUISELIN does not disclose a specific combination for the size layer precursor including the resole phenolic resin and the organic rheology modifiers” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the rejection above, VENKATARAYAPPA teaches resole phenolic resin and rheology modifiers, and GUISELIN teaches phenolic resin and HASE organic polymeric rheology modifiers, and it is the combination of the references which renders the claimed invention obvious.
Applicant argues:
“the problem of particle settling in a room-temperature slurry being solved by GUISELIN is completely distinct from the problem of gravitational resin flow during a high-temperature curing cycle solved by the present invention. Accordingly, it is not obvious for a skilled person to arrive at the method of amended claim 1, merely by referring to VENKATARAYAPPA, GUISELIN and GOERS” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because GUISELIN addresses a different problem than is discussed in the present application, the Examiner respectfully disagrees. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). The motivation for using the rheology modifier does not have to mention the exact problem discussed in the present application to render the claimed invention obvious. As discussed in the rejection above, it would have been obvious to one of ordinary skill in the art to have modified the method of VENKATARAYAPPA by simply substituting the unspecified rheology modifier additive (see VENKATARAYAPPA at pg. 7, lines 1-2) with HASE polymers as taught by GUISELIN (see GUISELIN at paragraph [0119]). One of ordinary skill in the art could have used alkali-swellable/soluble polymers as the rheology modifier additive with a reasonable expectation of success, yielding the predictable results of modifying the rheological properties (i.e., viscosity) of the size layer precursor used to coat the abrasive particles. Further, one of ordinary skill in the art would have been motivated to use a HASE polymer for the benefit of controlling the thickness of the abrasive coating, preventing settling of the abrasive particles to which the coating is adhered, and modifying the rheology of the coating solution to optimize coating conditions as taught by GUISELIN (see GUISELIN at paragraphs [0117]-[0119]). Further, GUISELIN teaches that alkali-swellable/soluble HASE polymers are known organic rheology modifiers for use in coating and abrasive applications (see GUISELIN at paragraphs [0118]-[0119]), and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Applicant argues:
“the specification, in Tables 10-11, provides the unexpected result of the size layer precursor of amended claim 9” (see Remarks at pg. 11).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s arguments that the present invention is nonobvious because the size layer precursor of amended claim 9 provides unexpected results, the Examiner respectfully disagrees. Arguments regarding unexpected results are discussed in MPEP 716.02. It is noted that there is no size layer precursor in the coated abrasive article of claim 9, there is a “size layer”. Additionally, Applicant has not explained what the “unexpected result” is or in what way it would be considered unexpected. If the unexpected result is meant to be the flow of less than 17 mm in Tables 10-11, it is not clear how this result is unexpected as comparative examples CE-E and CE-F both have a flow of less than 17 mm, and of less than Examples 14 and 26. The results of Tables 10-11 are also not commensurate in scope with the claimed invention; CE-A includes about 42% of resole resin, other specific additives and 77.4% solids, CE-B includes about 35% of resole resin, other specific additives and 83% solids, and Examples 1-26 shown in Tables 10-11 include 99.25-99.75 g of CE-A or CE-B and 0.05-0.8 g of the alkali swellable/soluble organic polymeric rheology modifier, and these examples are not commensurate in scope with claim 9 which can include 75-99.99% of the resole phenolic resin based on the combined weight of the resole phenolic resin and the organic polymeric rheology modifier, any amount of solids, etc.
Applicant argues:
“VENKATARAYAPPA explicitly teaches a range of 56% to 91% for the resole phenolic resin. The range of 92% to 99.99% of the phenolic resin in the size layer precursor of claim 17 is entirely outside the range disclosed by VENKATARAYAPPA” (see Remarks at pg. 12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because VENKATARAYAPPA does not teach the claimed range of 92% to 99.99% of the phenolic resin in the size layer precursor of claim 17, the Examiner respectfully disagrees. As discussed in the rejections above and as acknowledged by Applicant, VENKATARAYAPPA teaches up to 91% by weight of the resole phenolic resin based on the total solids weight of the phenolic resin component a and the aqueous dispersion of polyurethane component b (which includes the polyurethane and the additional rheology modifier – see VENKATARAYAPPA at Abstract and pg. 7, lines 1-2 and 23-24). 91% is very close to 92%; as set forth in MPEP § 2144.05, 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); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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