DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/08/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 09/08/2025.
Claims 1-3, 5-9 and 11-16 are presently pending and are under examination; claims 4 and 10 are canceled; claims 1-2, 9 and 15-16 are amended.
The objections to claims 1-2 are withdrawn in light of the amendments to the claims.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The rejections of claims 15-16 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejections of claims 1-3 and 5-8 over VENKATARAYAPPA in view of TAMARESELVY and of claims 1-3, 5-8 and 15 over VENKATARAYAPPA in view of GUISELIN are withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejections of claims 9 and 11-14 over VENKATARAYAPPA in view of TAMARESELVY and of claims 9, 11-14 and 16 over VENKATARAYAPPA in view of GUISELIN 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 claims 1 and 9, there should be a space between numbers and units; “900C” and “1020C” should read “90 °C” and “102 °C”, respectively (see claims 1 and 9 each at line 13).
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9 and 11-14 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).
The limitation of “wherein for forming the size layer, a size layer precursor is cured at 90 °C and at 102 °C” is 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.
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)”.
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).
Claims 1-3 and 5-8 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).
Claims 9, 11-14 and 16 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).
The limitation of “wherein for forming the size layer, a size layer precursor is cured at 90 °C and at 102 °C” is 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.
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)”.
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).
Claims 1-3, 5-8 and 15 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).
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant argues:
“the use of rheology modifiers is optional and is not necessary in VENKATARAYAPPA. On the contrary, in the claimed method, the size layer precursor required the resole phenolic resin and the organic polymeric rheology modifier to achieve a desired viscosity and thickness of the size layer precursor” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s arguments that VENKATARAYAPPA does not teach a method including both resole phenolic resin and an organic polymeric rheology modifier because the use of rheology modifiers is optional, the Examiner respectfully disagrees. The disclosure of VENKATARAYAPPA must be considered as a whole; the teaching of embodiments which do not require a rheology modifier does not negate VENKATARAYAPPA’s explicit teaching of including a rheology modifier.
Applicant argues:
“VENKATARAYAPPA does not mention / teach at least partially curing the first curable binder precursor and/or the second curable binder precursor at 90°C and at 102°C, as recited in amended claim 1” (see Remarks at pg. 8).
“the combination of VENKATARAYAPPA and TAMARESELVY still fails to disclose the step of curing the binder at a temperature as recited in claim 1” (see Remarks at pg. 8).
“GUISELIN does not specify any temperature for curing the abrasive slurry” (see Remarks at pg. 9).
“the remarks provided for amended claim 1 apply, mutatis mutandis, to amended claim 9. Hence, amended claim 9 is non-obvious over teachings of VENKATARAYAPPA and TAMARESELVY, and VENKATARAYAPPA and GUISELIN” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
Applicant’s arguments regarding the references not teaching methods wherein the binder precursor is cured at 90 °C and at 102 °C have been considered but are moot as these arguments do not apply to the new combination of references as set forth in the grounds of rejection above.
In regard to Applicant’s arguments that claim 9 is non-obvious because the references do not teach that a binder precursor is cured at 90 °C and at 102 °C, the Examiner respectfully disagrees. As set forth in the rejections above, the claim 9 limitation of “wherein for forming the size layer, a size layer precursor is cured at 900C and 1020C” is product-by-process claim language which is not given patentable weight in the present product claims. “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.
Applicant argues:
“GUISELIN does not mention a step of curing the abrasive slurry after coating the backing using the abrasive slurry. In fact, GUISELIN mentions the step of curing as an optional step. In other words, GUISELIN does not necessitate curing of the abrasive slurry, and hence, does not address the problem of controlling the flow” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
Applicant’s argument that GUISELIN does not mention a step of curing because GUISELIN mentions the step of curing as an optional step, the Examiner respectfully disagrees. As acknowledged by Applicant, GUISELIN does teach the step of curing. The teaching of embodiments which do not require curing does not negate GUISELIN’s explicit teaching of curing.
Applicant argues:
“it is not possible for a skilled person to arrive at the claimed method without any reference, or without referring to the present invention, i.e., in hindsight” (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 examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731