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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/202/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20 and 23-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 20 has been amended to include a recitation including the phrases of “integral precursor article” and “precursor article”; however, there is no support for neither of these phrases in the original disclosure of the present Application under examination.
Claims 23-26 are rejected as depending from a rejected base claim.
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 20 and 23-26 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 20 has been amended with a new recitation including the phrase “precursor article”; however, the claim, in line 1, is directed to “an abrasive particle precursor”. Thus, the new limitation has made the language of the claim vague and indefinite because it is not clear as to whether the claims are directed to “an abrasive particle precursor” or to an “article precursor”.
Claims 23-26 are rejected for depending from rejected claim 20.
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.
Claim(s) 20 and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/172470 to Erickson et al. (hereinafter Erickson).
With respect to claim 20, Erickson teaches elongate shaped abrasive particles which have a shape such that there are two ends joined together by at least two longitudinal sidewalls parallel to each other, wherein at least one of said sidewalls is concave (abstract, Figure 2; page 1, lines 24-27). Erickson teaches a general method in producing said elongate shaped abrasive particles which involves producing a precursor composition, filling up mold cavities, removing the shaped abrasive particle precursor, and converting the precursor to the final abrasive particles through heat treatment (page 1, line 33 to page 2, line 11; pages 3 to 8). However, Erickson, also, teaches a preferred embodiment in which the mold is made of combustible material and after being filled with the precursor composition for the shaped abrasive particle, the combination of the mold and the precursor composition filling the mold is heated to burn off the mold material and convert the precursor composition into ceramic elongate shaped ceramic bodies by calcining and/or sintering at elevated temperature (page 8, lines 20-31).
Therefore, as evidenced by Erickson, the mold material, in one particular embodiment, is one section or layer of the precursor of the shaped abrasive particles, with the other section or layer being the precursor composition. As such, before the burning off of mold material as that taught by Erickson, the shaped abrasive particle precursor comprises one layer of the precursor composition which would convert to the final shaped abrasive particles after burning off the mold and calcining and/or sintering, and another layer which is the original mold material which is combustible, and as such disappears after the heat treatment. The composition used in producing the final shaped abrasive particles comprise abrasive material including alumina (pages 3 and 4); the combination of the combustible mold material and the precursor composition as those taught by Erickson, are taken to read on the claimed abrasive particle "precursor". Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have recognized that one preferred embodiment of Erickson teaching the mold material being combustible and teaching that the finally formed abrasive particles are, in fact, released by combusting and removing the mold material, renders the claimed invention of the abrasive particle precursor obvious.
Additionally, as that taught by Erickson, both the mold and the shaped abrasive particle produced after the heat treatment and combustion of the mold material, have curvatures (Figures 1A, 1C, and Figure 2, page 3, lines 15-18) and that the curvatures are parallel to each other (Figure 2 and page 3, lines 15-18). This is because the shaped abrasive particles have curvature which are two curved sidewalls parallel to each other, and this can be only resulting from the shaped abrasive particles being produced in a mold cavity/groove having such a shape; therefore, the mold cavity/groove also has curvature. Thus, the mold material, which is taken to read on one of the claimed precursor layers, is also curved and parallel with the curvature of the finally produced shaped abrasive particles.
According to Erickson, the precursor composition fills the mold cavities; at the point of the precursor composition touching the mold material, there is an interface between the two, i.e. between the combustible mold material and the precursor composition. Also, it is important to note that because once the mold material is combusted, the finally shaped ceramic abrasive particles are released, the combustible mold material and the precursor composition, prior to heat treatment, are separable, which results to the release of the shaped ceramic abrasive particles after the combustion of the mold material as a result of a heat treatment.
With respect to the new amendment of “wherein the first and second layers are each deposited into a mold cavity as precursor compositions and together form an integral precursor article; wherein the first and second layers contact each other along an internal interface within the precursor article”, it is noted that the claims under examination are not directed to a method of manufacturing or producing abrasive particles, but that the claims are directed to an abrasive particle precursor. Therefore, process steps such as the claimed limitation of the first and second layers, each being deposited into a mold cavity as precursor compositions, i.e. “wherein the first and second layers are each deposited into a mold cavity as precursor compositions” is not seen to add patentable weight to the examination of the product claims under examination, with the product being “abrasive particle precursor”. MPEP 2113 “[E]ven 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).
The precursor composition, as taught by Erickson, fills combustible mold cavities, and after heat treatment, the mold combusts and disappears. Prior to heat treatment, the point or surface of contact between the precursor composition and the mold, is an internal interface. The mold material, prior to heat treatment, and the precursor composition, read on and renders the claimed first and second precursor layers obvious.
With respect to claim 23, the material of the mold as that taught by one embodiment of Erickson, is combustible, and as such burns off by heat; therefore, the mold in that particle embodiment is a sacrificial layer, which is not suitable for abrasive operation (page 8, lines 20-31).
With respect to claim 24, Erickson teaches the combustible material can include polymeric organic material (page 8, lines 27-31).
With respect to claim 25, Erickson teaches the use of polymeric organic material as the combustible material, which burns off or sacrificed, during heat treatment to convert the shaped abrasive particle precursor to the final shaped abrasive particle. The material which does not burn off as a result of the heat treatment, and is the material forming the final shaped abrasive particle, is the material suitable for abrading, and includes ceramic materials such as alumina (page 3, line 35 to page 4, line 17). Alumina is harder than polymeric organic material.
With respect to claim 26, based on the finally shaped abrasive particles of
Erickson, as shown and taught in Figures such as Figure 2, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, that the precursor of such a shaped particle of Figure 2, which is shaped using the mold cavities/grooves, is expected to have a plurality of corners wherein the curvature causes the plurality of corners to curve in the same direction, such that all the plurality of corners face the same direction. This is evidenced, again, from the finally shaped abrasive particle as shown in Figure 2.
Nevertheless, it is noted that the limitation of claim 26 is an implied process
limitation; whereas, the claims under examination are product claims directed to “an
abrasive particle precursor”. Thus, how the corners face the same direction is not seen to add patentable weight to the examination of this claim. MPEP 21 "[E]ven 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).
As such, in the alternative, claim 26 is considered rejected with claim 20.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
Applicant has asserted Erickson fails to disclose multiple structural elements required by the claim; also, Applicant has asserted the independent claim 20 has been amended to highlight certain aspects to help address the Examiner’s confusion about treating a mold as a precursor layer, which according to Applicant’s assertion, is legally and technically incorrect (Remarks, page 6).
Applicant has then listed six reasons based on which they believe Erickson does not disclose the limitation of the claims under examination.
First, Applicant has asserted Erickson does not disclose two precursor layers, and as asserted by Applicant, Erickson describes only a single homogeneous precursor composition filled into grooves of a mold (Remarks, page 6).
Second, Applicant has asserted Erickson contains no disclosure of depositing two precursor compositions, layering, co-laminating, or forming a precursor having multiple layers (Remarks, page 6). Applicant has asserted the Office Action’s treatment of the mold as a precursor layer is inconsistent with Erickson because Erickson defines the mold as external tooling, not part of the precursor body and points to page 8, lines 3-20 of Erickson (Remarks, page 6).
Third, Applicant has asserted Erickson does not disclose layers separable along an interface as required by claim 20; Applicant has, then, asserted the mold taught by Erickson does not form a separable interface with the precursor; instead it is simply removed by burning. Applicant has again asserted no separable precursor interface exists in Erickson (Remarks, pages 6 and 7).
Fourth, Applicant has asserted Erickson does not disclose that each layer has curvature; Applicant has asserted claim 20 requires both precursor layers to exhibit curvature (Remarks, page 7). Applicant has, additionally, asserted Erickson mentions curvature only with respect to the shape of the precursor body not with respect to multiple precursor layers (Remarks, page 7). Applicant has, then, asserted because Erickson discloses only one precursor material, it cannot disclose curvature of two layers (Remarks, page 7).
Fifth, Applicant has asserted Erickson does not disclose that one precursor layer comprises abrasive material and the other comprises combustible or soluble material (Remarks, page 7). Also, Applicant has asserted Erickson discloses that the precursor contains abrasive material in pages 3 to 4, and that the mold may contain polymeric combustible material in page 8, lines 27-31 (Remarks, page 7). Applicant has asserted the mold is external to the precursor and is not deposited as part of the precursor (Remarks, page 7). Applicant has asserted the mold is not described as a precursory “layer” (Remarks, page 7).
Sixth, Applicant has asserted an external mold used to shape a precursor article is not and cannot reasonably be interpreted as a “layer” of the precursor article itself (Remarks, page 7). Applicant has asserted the Examiner is treating the mold as precursor layer which is, as asserted by Applicant, is legally and technically incorrect (Remarks, page 7). Applicant has asserted a precursor layer must be part of the precursor article not part of the external tooling (Remarks, page 7). Applicant has asserted that to help point out the differences, Applicants have amended the claims to recite the following: wherein the first and second layers are each deposited into a mold cavity as precursor compositions and together form an integral precursor article; wherein the first and second layers contact each other along an internal interface within the precursor article.
The Examiner, respectfully, submits with respect to the first argument, it is noted because of the fact that Erickson discloses an embodiment in which the mold material is of combustible material (Erickson, page 8, lines 20-24), the mold itself is taken to read on one of the claimed precursor layers. In fact, Erickson, also, teaches certain polymeric material as the materials for the mold (Erickson, page 8, lines 25-31). In the teaching of Erickson, in the embodiment disclosing the use of a combustible material for the mold, the material of the mold, prior to any heat treatment, is in essence a “precursor” material. In fact, according to the claimed language, out of the two claimed precursor layers, one is “combustible” and “sacrificial”; therefore, only the materials of one of the claimed precursor layers remain in the final product because the material of the other layer combusts and disappears.
With respect to the second argument, the claims are directed to an “abrasive particle precursor” not a process of producing/manufacturing an abrasive particle nor to a final abrasive particle. There is no distinction in the claims, if there is any support for such in the original disclosure, as to a specific definition of a “layer” of precursor material; the only definition that is present is that one of the precursor layers is of combustible material. This is fully addressed by an embodiment of Erickson, as detailed out above and in previous Office Actions; this is because the material containing a composition containing abrasive fills the cavities of a combustible mold. The embodiment which Applicant has referred to in their assertion is not the embodiment that the previous or present Office Action have relied; Erickson teaches more than one embodiment. In the embodiment of Erickson, which Applicant has relied on, the material of the mold is combustible; as a result, it reads on a “precursor” material. Again, according to claim 20, the material of one of the precursor layers is combustible, and according to dependent claims 23-25, it is a “sacrificial layer”. All of these recitations in the claims clearly indicate that the material of one of the claimed precursor layers is not part of the final abrasive particle and that this material disappears or is removed.
With respect to the third argument, once the precursor composition of Erickson is applied into the cavities of the combustible mold, the two materials, i.e. the precursor composition as disclosed by Erickson and the combustible material of the mold as taught by Erickson, do not integrate and intermixed with each other. In fact, after heat treatment, the mold material of the embodiment of Erickson is combusted/removed leaving behind an abrasive particle which clearly indicates that there is an interface between the precursor composition, which would result in the final abrasive particle, and the combustible mold material, which disappears after the heat treatment. In fact, on the basis that the two materials are different in that embodiment of Erickson, because one is of a polymeric combustible material but the other is of a precursor composition which is not combusted or removed throughout the process of Erickson, there is inevitably an interface between them separating them. Again, if there was no interface, the embodiment of the Erickson would not have resulted in the final abrasive particles in the shape of the cavities of the mold.
With respect to the fourth argument, the finally shaped abrasive particles of Erickson have curvatures which is the result of the curvature of the cavities of the mold into which the disclosed precursor composition is applied (see Erickson, Figures 1A, 1C, 2; page 3, line 16). Thus, once the precursor composition of Erickson is applied into the mold cavities, the precursor composition also takes a shape comprising curvature, which is the result of the cavities having curvature; the cavities are of the mold, which according to an embodiment of Erickson, is of combustible material, which implies it disappears, which implies that prior to disappearance, this combustible material reads on one of the claimed “precursor” layers.
With respect to the fifth argument, as noted in the previous Office Action and hereby above, the material forming the mold is of combustible material and the precursor composition comprising abrasives of materials such as alumina (Erickson, pages 3 and 4). As detailed out above and previous Office Actions, the mold material is taken to read on one of the claimed precursor layers, and thus, that precursor layer comprises a combustible material. Also, as detailed out above, and in previous Office Actions, the disclosed precursor composition of Erickson reads on the other claimed precursor layer, and this disclosed precursor composition comprises alumina, i.e. an abrasive material. It is, also, important to note that independent claim 20 and its dependent claims recite an abrasive particle “precursor”; the claims under examination are not directed to a finally formed abrasive particle. Thus, considering the disclosed mold material as part of the “precursor” structure is proper in the interpretation of the reference in light of the recitation of the claims, and as such, the mold is not considered external to the disclosed precursor composition. Furthermore, the disclosed mold by Erickson is properly interpreted to read on one of the claimed precursor layers because its material is precursor to the formation of the finally formed abrasive particle, and because it is of combustible material which is part of the claimed language. It is noted the reference needs not to disclose that the deposition of the mold material because the claims under examination are not directed to any method of production or manufacturing the claimed abrasive particle precursor.
With respect to the sixth argument, because the claims under examination are directed to an abrasive particle “precursor”, the mold material is properly taken to read on one of the claimed precursor layers. The mold material, prior to heat treatment, is part of the claimed abrasive particle “precursor”, which is what claims 20 and 23-26 are directed to; the mold material is combusted and thus removed after the heat treatment.
With respect to the new amendment made to independent claim 20, it is noted that the claims under examination including the independent claim 20 are not directed to any process of manufacturing an abrasive particle; whereas the claimed amendments made to claim 20 are directed to a process of manufacturing an abrasive particle. As such, claim 20 is now treated as a product-by-process claim in which the process limitations do not add patentable weight to the examination of the claim (see MPEP 2113).
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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