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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/21/2026 has been entered.
Response to Arguments
In the after final response filed 5/26/2026, Applicant submitted arguments without any proposed claim amendments. Examiner responded to all arguments in the Advisory Action mailed on 6/4/2026. In the Request for Continued Examination, Applicant elected to have the submission from 5/26/2026 entered, i.e. also without any claim amendments. In accordance with MPEP 706.07(b), the conditions for a first action final rejection have been met, as the subject matter submitted in the RCE was properly finally rejected in the Final Rejection mailed on 3/20/2026, and the finality of the Final Rejection was maintained in the Advisory Action. Below, Examiner has reproduced the response to arguments provided in the Advisory Action.
Applicant argues that the combination of Johnson in view of Fritz as applied in the previous office action “would render Johnson inoperable for at least one of its intended purposes” (Page 6, Arguments). Applicant cites Col. 4, lines 1-8 of Johnson as evidence for their arguments, i.e. arguing that modifying Johnson to reflect “wherein the dual sided abrasive disc comprises abrasive grain through the thickness” as claimed would render Johnson’s description of “the first and second disc members 2, 3, can contain different grades of abrasive materials on their respective sides…so that a single finishing article can vary the degree of finishing…by simply flipping the finishing article over”.
MPEP 2145 (X.)(D.)(1.) states "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023) ("a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed.") (internal quotations omitted) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009))”.
Johnson’s primary object of the invention is to provide a finishing article which provides two abrasive surfaces for finishing of objects, i.e. the intended purpose of the device of Johnson (Col. 1, lines 33-67). Johnson also describes that each member may comprise a desired grit size (Col. 2, lines 34-45). Johnson only suggests having two different grades of abrasive articles, i.e. the abrasive articles may still comprise the same grade and abrasive grit throughout the thickness, while still being usable on both sides. Furthermore, the claimed invention does not impart that the abrasive grades are the same throughout; in contrast, claim 3 even recites the first abrading face and the second abrading face comprise grains of different grades. The discs (2, 3) of Johnson are modified such that the abrasive disc (comprising both elements 2, 3) comprises abrasive grain throughout. More than one grade can be incorporated on respective sides, and Fritz teaches that the abrasive particles may comprise different sizes and diameters (Col. 3, lines 1-10).
Thus, the combination of Johnson in view of Fritz does not render Johnson inoperable for its intended purpose, and Examiner has not found Applicant’s arguments persuasive for the above stated reasons. This action is made final herein.
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.
Claim(s) 1, 3, 5-7, 9, 10, 12-14, and 37 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).
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.
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.
Regarding claim 3, Johnson in view of Fritz 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 claim 6, Johnson in view of Fritz 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 teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein the fastener is coupled to the center hole using an adhesive (Johnson: see at least Col. 3, lines 6-10, and Col. 2, lines 34-45).
Regarding claims 5 and 9, Johnson in view of Fritz 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 10, Johnson in view of Fritz 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 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 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 teaches the claimed invention as applied above, wherein modified Johnson further teaches wherein a fastener thickness is larger than the thickness (see at least Figure 4, wherein the thickness of the member 25 is greater than the thickness of the abrasive article 1).
Regarding claim 37, Johnson in view of Fritz 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.
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 in further view of Peterson (US 4,551,189).
Regarding claim 8, Johnson in view of Fritz 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) 11 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 in further view of Winter (US 6,136,143).
Regarding claim 11, Johnson in view of Fritz teaches the claimed invention as applied above, however modified Johnson does not explicitly teach wherein the fastener is coupled to the dual sided abrasive disc only along an interior surface of center hole.
From the same or similar field of endeavor of surface treating articles Winter teaches of a fastener hub (12) coupled to the article (14) only along an interior surface of center hole (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).
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 configuration 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.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
Prosecution Insights