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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/16/2026 has been entered.
Response to Arguments
Applicant's arguments filed 9/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the amended subject matter of claim 1 is neither taught nor disclosed by Johnson in view of Fritz. In light of Applicant’s amendments, the rejection of claim 1 has been updated to reflect a combination of Johnson in view of Fritz and Winter. The arguments are moot as the combination of prior art has been updated, as necessitated by amendment.
Applicant argues that modified Johnson does not teach the subject matter of dependent claim 7. Examiner notes that claim 7 is now rejected over Johnson in view of Fritz and Winter; please also see Winter, Col. 6, lines 47-52 and Col. 9, lines 17-30.
Applicant argues that modified Johnson does not teach the subject matter of dependent claim 8, because Peterson does not teach “wherein the adhesive is thermally activated adhesive”. Peterson specifically teaches of a species of adhesive in at least Col. 1, lines 10-23: “…a heat activated adhesive layer”, wherein the combination of Johnson in view of Fritz, Winter, and Peterson teaches the claimed invention, i.e. the location of the adhesive is as claimed. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that Winter “does not disclose a center hole extending through the thickness of an abrasive disc into which a fastener is positioned”, and the coupling of Winter is directed towards dispending a mold, and thus “not by positioning a fastener within a center hole and coupling it along the interior surface of that hole”. Examiner respectfully points out that Winter is used to teach the location of the bond, which is in the central aperture of Winter, as applied to the updated grounds of rejection below. Furthermore, while the molding technique is not combined into the invention of Johnson, the description of a molding technique would still read onto the claimed invention as recited in claim 1.
Applicant then argues that “Winter’s working surface is the outer peripheral surface…” and “Winter’s rotatable body is expressly non-abrasive”. Examiner again kindly points out that the combination of prior art, i.e. Johnson in view of Fritz and Winter (in the context of updated claim 1) renders the claimed invention unpatentable, not solely the teachings of Winter. Johnson provides opposing abrasive surfaces. Lastly, Winter is not bodily incorporated into the invention of Johnson; furthermore, Winter does describe the hub can be used with any rotary driven articles including abrasive articles (Col. 11, lines 44-57).
Applicant argues that “Winter requires that the hub be flush..”. Examiner agrees that Winter describes an optional flush surface arrangement, and supplies that statement as evidence that there is no bond between the central fastener and the opposing surfaces (16, 18), but respectfully points out that the combination of prior art is applied to the rejection. The location of the bond as taught by Winter is combined into the invention of Johnson. Please see below for additional details regarding the updated grounds of rejection. For the above stated reasons, Examiner has not found Applicant’s arguments persuasive.
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.
Claim 40 is 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.
Regarding claim 40, recitation of “the fibers” does not have antecedent basis.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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.
Claim(s) 1, 3, 5-7, 9, 10, 12-14, and 37-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4,951,423) in view of Fritz (US 7,121,924) and Winter (US 6,136,143).
Regarding claim 1, Johnson discloses a dual sided abrasive disc (see Abstract) comprising:
a first side comprising a first abrading face; a second side, comprising a second abrading face, wherein the second side is opposite the first side and separated by a thickness (see discs 2, 3 disposed opposite one another, separated by a thickness, and each having an abrasive material 10 thereon; see Figures 1-4, as well as Col. 2, lines 29-45);
a center hole extending from the first side to the second side through the thickness (see central opening 9, central bore 8, as well as Col. 2, lines 29-35 and 46-52); and
a fastener for coupling the dual sided abrasive disc to a powered tool, the fastener positioned within the center hole (see at Figures 2-4, wherein there are several contemplated embodiments of fastening to a tool, see at least the partially threaded portion 33 of member 25 in Figure 4, as well as the central bore of element 4 having threads 33 in Figures 2 and 3; see also Col. 2 line 53-Col. 3, line 36; see also Col. 3, lines 37-41 regarding the tool).
However, Johnson does not explicitly teach that the discs (2, 3) comprises abrasive grain throughout, i.e. wherein the dual sided abrasive disc comprises abrasive grain throughout the thickness, and wherein the fastener is coupled to the dual sided abrasive disc only along an interior surface of the center hole such that no bond is present between the fastener and either of the first abrading face or the second abrading face.
However, from the same or similar field of endeavor, Fritz teaches of a dual sided abrasive disc, wherein the dual sided abrasive disc comprises abrasive grain throughout the thickness (see Figure 3A; wherein the article 340 comprises abrasive particles dispersed throughout the web 312; see Col. 4, lines 47-65; see also Col. 5, lines 1-7; see also abrasive layer having abrasive particles dispersed in binder resin 232, see also Col. 3, line 62-Col. 4, line 3).
Both Johnson and Fritz are directed towards abrasive articles configured to perform surfacing on a workpiece. Fritz describes several embodiments, including one which instead comprises a coating of abrasive articles (i.e. similar to the disclosure of Johnson), see Col. 1, lines 6-14, Col. 2, lines 46-52, and Col. 3, lines 52-61, and another embodiment which disperses abrasive particles throughout the body of the article. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Johnson in view of the dispersed abrasive article configuration as taught by Fritz. One would be motivated to select an article with abrasive particles dispersed throughout in order to employ an abrasive with a different, longer wear rate than one which only has a surface coated with abrasives. An abrasive article which has particles dispersed throughout the thickness enables gradual wear of the device while exposing new abrasive particles as a result of the wear/usage. This is a beneficial feature in comparison with an abrasive articles with just a coated surface, and thus article replacement frequency is decreased. Furthermore, as can be understood by Fritz presenting several embodiments, including one which overlaps in subject matter with Johnson, the dispersion of abrasive articles throughout is an alternative to a coated abrasive article. Lastly, this modification would be recognized as employing a known technique, i.e. an abrasive element comprised of abrasive particles dispersed throughout, to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success.
However, from the same or similar field of endeavor, Winter wherein the fastener (12) is coupled to the article (14) only along an interior surface of the center hole such that no bond is present between the fastener and either of the first abrading face or the second abrading face (see at least figures 3 and 4, wherein the hub 12 is bonded only to the central portion of the article 14; see also Col. 6, lines 23-52; wherein Col. 5, lines 22-25 teach that the first end 54 of the hub 12 is flush with the surface 16 of the article 14, and second end 56 is flush with the surface 18 of the article 14, i.e. there is no bond between the external surface of the hub and the surfaces 16, 18, and there is no overlapping lip extending from the hub over the surfaces 16, 18 for bonding; thus Winter teaches the coupling takes place in the central aperture region, which is the teaching being incorporated into Johnson).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the coupling as taught by Winter, into the invention of Johnson. Johnson contemplates and suggests a wide variety of central fastening portions, see at least Col. 3, lines 20-27 and Col. 2, lines 39-45. This modification would be recognized as using a known structure, i.e. a centrally mounted hub, to improve a similar device in the same manner, and would yield predictable results with a reasonable expectation of success. Furthermore, the structure taught by Winter beneficially provides an enhanced, secure mechanical interlock (see Col. 6, lines 40-43), thus motivating one to incorporate the teachings of Winter.
Regarding claim 3, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the first abrading face and the second abrading face comprise abrasive grains of different grades (Johnson: see the Abstract disclosing the abrasive surfaces can carry different grades of abrasives, see also Col. 2, lines 29-45 and Col. 4, lines 1-8).
Regarding claims 5 and 9, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, modified Johnson does not explicitly teach wherein the fastener is spun weld within the center hole (claim 5), nor wherein the fastener is ultrasonically welded into the center hole (claim 9).
From the same or similar field of endeavor of abrasive articles, Fritz teaches of attaching elements to be spun weld, as well as ultrasonically welded fasteners (Col. 7, line 56-Col. 8, line 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the fastening techniques as taught by Fritz into the invention of Johnson. Johnson contemplates and suggests several variations in at least Col. 3, lines 20-27 and Col. 2, lines 39-45. One would be motivated to do so because the techniques taught by Fritz are simple, effective, and convenient (see Col. 8, lines 1-3).
Regarding claim 6, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the fastener comprises a thermoplastic or metal (Johnson: wherein Col. 2, lines 53-66 disclose various types of metals and plastics, including steel, brass, copper, aluminum, nylon, polypropylene).
Regarding claim 7, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the fastener is coupled to the center hole using an adhesive (Winter: see at least Col. 6, lines 47-52 and Col. 9, lines 17-30; see also Johnson: see at least Col. 3, lines 6-10, and Col. 2, lines 34-45).
Regarding claim 10, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the fastener comprises internal threading configured to receive an attachment mechanism for coupling to the powered tool (Johnson: see at least the external threading 16 in Figures 5 and 6, and wherein the threaded portion 33 is configured to receive the threading; see Col. 3, lines 1-6 and 23-36).
Regarding claim 12, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein a fastener thickness is smaller than the thickness (Johnson: see at least Figures 2 and 3 showing that the thickness of the fastener is smaller than the overall thickness).
Regarding claim 13, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein a fastener thickness is substantially the same as the thickness (Johnson: wherein under broadest reasonable interpretation, ‘substantially’ the same thickness permits slight deviations from exactly the same thickness, and wherein Johnson discloses a similar thickness in at least Figure 4, and also describes varying thicknesses in Col. 2, lines 60-66).
Regarding claim 14, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, while Johnson describes a variety of thicknesses in Col. 2, lines 60-66, modified Johnson does not presently explicitly teach wherein a fastener thickness is larger than the thickness.
However, Johnson does describe various configurations of the apparatus, including the embodiments shown in Figures 4-6, in which the central mating areas have overall thicknesses which exceed the thickness of the finishing article (1). Johnson shows the central mating area extending outward in the direction distal from the operating abrasive face in Figures 5 and 6. Johnson also describes that modifications to the intermediate member (4) including modifications to the overall dimensions such as thickness can be chosen based on the desired degree of stiffness for a given grinding situation (Col. 2, lines 60-66).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of modified Johnson such that the fastener thickness is larger than the thickness since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of modified Johnson would still provide opposing abrasive surfaces which can be used to perform machining in a similar manner, as evidenced by Johnson providing alternatives pointed out above, and would function appropriately having the claimed thickness. Further, it appears that applicant places no criticality on the size range as claimed, indicating simply that “the fastener has a thickness…between about 50% and 150% of the thickness of the abrasive disc”, and even goes to less than 10%, i.e. less than 10% to 150% (Page 6, lines 16-30 of the Specification).
Regarding claim 37, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, Johnson as presently modified by Fritz does not explicitly teach wherein the dual sided abrasive disc is a nonwoven abrasive disc.
However, previously mentioned Fritz teaches wherein the dual sided abrasive disc is a nonwoven abrasive disc (see Col. 5, lines 4-7; Col. 3, lines 11-14).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the nonwoven as taught by Fritz, into the invention of modified Johnson. One would be motivated to do so in order to provide a reinforcing element, i.e. as described by Col. 5, lines 4-7 of Fritz; the additional option of incorporating the nonwoven provides additional reinforcing structure in the context of a device that undergoes machining operations, i.e. the reinforcing element assists in ensuring the structural integrity of the abrasive article.
Regarding claim 38, Johnson in view of Fritz and Winter teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the fastener is centered on an axis defined by the thickness such that the fastener does not extend to either the first abrasive face or the second abrading face (please see at least Johnson: Figures 1-3 regarding the threaded portion 33 not extending to either of the opposing faces).
Regarding claim 39, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, modified Johnson does not explicitly teach wherein the fastener thickness is less than 20 percent of the thickness.
However, Johnson does describe various configurations of the apparatus, including the embodiments shown in Figures 4-6, in which the central mating areas have overall thicknesses are less than the overall thickness of the finishing article (1). Johnson also describes that modifications to the intermediate member (4) including modifications to the overall dimensions such as thickness can be chosen based on the desired degree of stiffness for a given grinding situation (Col. 2, lines 60-66).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of modified Johnson such that the fastener thickness is less than 20 percent of the thickness since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of modified Johnson would still provide opposing abrasive surfaces which can be used to perform machining in a similar manner, as evidenced by Johnson providing alternatives pointed out above, and would function appropriately having the claimed thickness. Further, it appears that applicant places no criticality on the size range as claimed, indicating simply that “the fastener has a thickness…between about 50% and 150% of the thickness of the abrasive disc”, and even goes to less than 10%, i.e. less than 10% to 150% (Page 6, lines 16-30 of the Specification).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4,951,423) in view of Fritz (US 7,121,924) and Winter (US 6,136,143), and in further view of Peterson (US 4,551,189).
Regarding claim 8, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, modified Johnson does not explicitly teach wherein the adhesive is a thermally activated adhesive.
From the same or similar field of endeavor of fastener subcomponents, Peterson teaches a thermally activated adhesive (see at least Col. 1, lines 10-23, Col. 2, lines 22-38, Col. 3 lines 12-43).
Both Johnson and Peterson contemplate using adhesives, however, Johnson is silent regarding the specific type of adhesive. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used the head activated adhesive, as taught by Peterson, within the device of Johnson. One would be motivated to do so because the variety of adhesive provides a very effective bond, see at least Col. 3, lines 24-29.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4,951,423) in view of Fritz (US 7,121,924) and Winter (US 6,136,143), and in further view of Hsu (20150183090).
Regarding claim 40, Johnson in view of Fritz and Winter teaches the claimed invention as applied above. However, modified Johnson does not explicitly teach wherein the fibers of the nonwoven abrasive disc are partially melted along the interior surface of the center hole and fused to the fastener.
However, from the same or similar field of endeavor, Hsu teaches wherein the fibers of the nonwoven abrasive disc are partially melted along the interior surface of the center hole and fused to the fastener (wherein Hsu teaches of spin welding, wherein the melt bond includes the nonwoven substrate and fibers; see [0025-0027]; wherein [0065] specifically teaches that during spin welding, the material of the articles are softened to melt bond, and wherein [0068] specifically calls out to soften at least one of the fastener and the nonwoven substrate material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the additional teachings of Hsu to include a spun weld partial melt bonding between the central fastener and abrasive article into the invention of modified Johnson. Johnson contemplates and suggests several variations in at least Col. 3, lines 20-27 and Col. 2, lines 39-45.One would be motivated to do so because the bond taught by Hsu is notably stronger and durable ([0065]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fiechter (US 1640032), see Figure 2.
Kaiser (US 5461750), see buffing pad 11 having opposing faces
Arnold (US 5249329), see Figure 2
Ashworth (US 4607412), please see Figures 2-4
MacKay (US 3990124), please see Abstract and Figures 2, 5, and 7.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
