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 .
Election/Restrictions
Applicant’s election without traverse of Group II and the species of carrier fluid having a kinematic velocity greater than 100,000 cSt, which read on claims 2, 4, 5, 7-11, 15-30 and 44-47, in the reply filed on 12/22/2025 is acknowledged.
Claims 3, 6 and 38-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/22/2025.
Specification
The disclosure is objected to because of the following informalities:
At [0026] and [0100], the phrase “a ratio of the number of the solid lubricant nanoplatelets (NSL) or the number of the abrasive particles (NAP) is at least 500” is objected to grammatically because it is unclear what the ratio is being established between. This objection can be overcome by changing the word “or” to “to” which is supported by at least [0100].
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2, 4, 5, 8-11, 15-30 and 44-47 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.
In claim 2, the term “nanoplatelets” is a term of degree that renders the claim indefinite. It is unclear how big the platelets can be and still be considered “nano” in size as thicknesses or diameters of any size can be measured in nm. For purposes of examination, any size will read on the nanoplatelets. The rejection can be overcome by including at least the thickness limitations of claim 7.
In claims 19 and 44, the limitations of “a ratio of the number of the solid lubricant nanoplatelets (NSL) or the number of the abrasive particles (NAP) is at least 500” renders the claim indefinite as it is unclear what the ratio is being established between. The limitations are linked by the word “or” which means either of these are part of the ratio, and therefore it is unclear what is being compared. This rejection can be overcome by changing the word “or” to “to” which is supported by at least [0100].
Claim Rejections - 35 USC § 102
Claims 2, 4, 15, 21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bose et al. (US 2007/0210274).
With regard to claims 2, 4, 15 and 21, Bose et al. teach a magnetorheological fluid, which reads on applicants’ brush composition, that comprises a magnetic material, which reads on applicants’ magnetic particles, a non-magnetic inorganic material that may be flake-like mica, which reads on applicants’ solid lubricant nanoplatelets as the mica will inherently function as a lubricant, a carrier medium that may be synthetic oil, and a silicon carbide additive for abrasively surface treatment of workpieces, which reads on applicants’ abrasive particles [0024], [0026], [0038] and [0041]. The magnetic particles can be carbonyl iron powder, which is a ferromagnetic iron particle, and since Bose et al. teach that the material is mixed using an agitator, all of the materials will be dispersed in the carrier fluid [0049] and [0050].
With regard to claim 24, the magnetorheological fluid can also contain a dispersion agent lecithin, which will also read on a viscosity-control agent as it will necessarily modify the viscosity to some extent [0049].
Claims 2, 4, 5, 9, 11, 15-23, and 26-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (“Experimental and Statistical Study on Magnetic-Field Assisted Finishing of Mold Steel Using Nano-Scale Lubricant and Abrasive Particles”, Proc. of ASME, 2018., pg. 1-7) as evidenced by “MKnano hexagonal boron nitride” (https://mknano.com/nanoparticles/carbides-nitrides-and-other-compounds/hexagonal-boron-nitride-nanopowder/).
With regard to claims 2, 4, 9, 15 and 21, Lee et al. teach a slurry, which reads on applicants’ brush composition, including cubic boron nitride (cBN), which reads on applicants’ abrasive particles, hexagonal boron nitride (hBN) with a 70 nm thickness, which reads on applicants’ solid lubricant nanoplatelets as a thickness will necessarily imply a plate shape, iron particles, which reads on applicants’ ferromagnetic iron particles, and silicone oil, which reads on applicants’ carrier fluid (pg. 3, right column). Since these are all mixed together, all the particles will be dispersed in the slurry.
With regard to claims 5, 11, 17, 23 and 26-30, the hBN is present at 2 wt% of the slurry, which reads on claim 11. This also means the cBN (0.5 g), iron particles (0.5 g) and the silicone oil (0.75 g) will make up the other 98 wt% (pg. 3, right column). Given the mass of these materials, the total mass of the slurry will be approximately 1.786 g (= (0.5 + 0.5 + 0.75)/0.98) and the cBN, iron particles and silicone oil will be present at approximately 28 wt%, 28 wt% and 42 wt% of the slurry, respectively. These weight percentages read claims 5, 17, 23, 26-28 and 45. The weight ratio of the cBN to iron is 1:1 in this example, and the weight ratio of cBN and iron relative to the silicone oil is 1.333:1, which reads on claims 29 and 30, respectively.
With regard to claim 16, in the run 3 of Table 2, the cBN has a grain size of 40-50 microns, which reads on the average diameter claimed (pg. 4, left column).
With regard to claim 18, the hBN has the tradename “MK-hBN-70” (pg. 3, right column). As evidenced by “MKnano hexagonal boron nitride”, this tradename is a platelet having an average particle size of 70 nm, which would be understood by one of ordinary skill as its longest dimension and read on the average diameter of the lubricant (pg. 3). The average diameter of the cBN in run 3 of Table 2 is at least 5 times the average diameter of the hBN.
With regard to claims 19 and 20, given the fact that the materials of the lubricant and abrasive particles are the same, and that the materials are present in the same proportions as preferentially claimed, the cBN and hBN of the prior art will inherently possess the ratio of the number of lubricant nanoplatelets to abrasive particles claimed and the ratio of surface areas claimed absent objective evidence to the contrary.
With regard to claim 22, the iron particle has a diameter of 336 microns, which reads on the average diameter claimed (pg. 3, right column).
Claim Rejections - 35 USC § 103
Claims 5, 7, 8, 11, 16-20, 22, 23, 26-30, 44 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Bose et al. (US 2007/0210274).
Bose et al. teach all of the limitations of claim 2 above. They also teach that the non-magnetic particle can have a particle size of 0.01 to 200 microns, the magnetic particles can have a particle size of 1 micron to 1 mm, the carrier medium can be from 20 to 90% by volume of the magnetorheological fluid [0004], [0026], [0042]; however, they do not specifically teach the properties of the particles or the relative amounts of materials claimed.
With regard to claim 5, assuming that the carrier fluid was 90% by volume of the polyalphaolefin (density = 0.8 g/cc) and the remaining 10% volume was the high density carbonyl iron (density = 7.86 g/cc), this would equate to approximately a weight % of approximately 48 wt% carrier fluid ( = 0.72/(0.72+0.786)), which overlaps with the range claimed. Please note that the other materials, including mica would lower the mass of the remaining 10% by volume of the fluid as mica has a lower density.
Given the overlap in the prior art reference, a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claims 7 and 8, the particle size of the mica overlaps with the average diameter claimed; hence, a prima facie case of obviousness exists. The average particle size of a flake would be the longest dimension of the flake as would be understood by one having ordinary skill, and therefore this would read on the average diameter claimed.
Since the mica is in the shape of a flake, this means the thickness would necessarily be less than the particle size. It would have been obvious to one having ordinary skill to have made the thickness of the flake any amount less than the particle size, including from 0.3 to 20 nm as claimed, such that the particle had a flake shape and did not lead to sedimentation while in the composition. It would also have been obvious to have made the aspect ratio any amount, including from 100 to 10000 as claimed, such that the particle had a flake shape and did not lead to sedimentation while in the composition. Given the fact that the mica is the same shape, has the same diameter, thickness and aspect ratio, it will intrinsically possess the specific surface area claimed.
With regard to claim 11, the mica is present at 4.409 g relative to the 266.523 g of Example 1 (please note that the Examiner is interpreting example 1 as using 220.47 g of carbonyl iron powder as this is the amount used in every other example), this teaches approximately 1.65 wt % of mica in the composition. It would have been obvious to one having ordinary skill in the art to have used the same weight percentage of mica in the composition that also included the abrasive particles as the examples gives guidance to one having ordinary skill on how much to include.
With regard to claim 16 and 18, it would have been to one having ordinary skill in the art to have made the average diameter of the abrasive particles any amount, including from 5 to 500 microns, such that the abrasive would provide the correct surface smoothness to the workpiece that was being treated. Larger particles would provide a more matte surface while finer particles would provide a more polished surface, and therefore it would have been obvious to have made the particles any size depending on the desired surface finish by the end user. It would also have been obvious to have made the ratio of the average diameter of the abrasive particle to the average diameter of the mica flakes any amount, including 5 or greater, depending on the surface smoothness desired as large abrasive particles would represent a higher ratio of average diameters.
With regard to claims 17, 23, 26-30 and 45, these claims represent changes in the weight percentages of the magnetic particles, the abrasive particles and the carrier fluid. The weight percentage of the carrier fluid was rendered obvious above with regard to claim 5 and the amount of mica was taught with regard to claim 11 above.
It would have been obvious to one having ordinary skill in the art to have made the magnetic particles and the abrasive particles any weight percentage of the magnetorheological fluid, including making each of them be from 25 to 50 wt% of the fluid, depending on the desired end use and properties of the surface treatment fluid. Making the fluid have more abrasive particles would allow it to abrade surfaces more quickly. These amounts would overlap with the weight ratios of claims 29 and 30.
With regard to claim 19, it would have been obvious to have made the ratio of the number of mica particles to the number of abrasive particles any amount, including at least 500, such that there was the proper amount of abrasive particles for the desired end use while having enough mica particles so that sedimentation did not occur.
With regard to claim 20, it would have been obvious to have made the ratio of the surface area of the mica flakes to be any amount relative to the abrasive particles, including at least 20, so that the abrasive particles were more spherical so that they could perform they role as abrasives and the mica flakes could perform their roles in preventing sedimentation in the fluid.
With regard to claim 22, the magnetizable particle size of [0004] overlaps with the range claimed, and therefore a prima facie case of obviousness exists. It would have been obvious to one having ordinary skill to have made the particle size of the prior art be within the average diameter range claimed.
With regard to claim 44, these features have all been rendered obvious above with regard to claims 7, 8 and 18-20.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Bose et al. (US 2007/0210274) in view of Fuchs et al. (6,527,972).
Bose et al. teach all of the limitations of claim 2 above. They also teach that silicone oils can be used as the carrier medium and it can be in the form of a gel [0038] and [0039]; however, they do not specifically teach a carrier medium with the kinematic viscosity claimed.
Fuchs et al. teach that magnetorheological fluids are known for polishing optical lenses (col. 1, lines 26-27). They teach that the magnetorheological fluids can be silicone gels (col. 7, lines 19-35). The off-state viscosity can be selected depending on the desired application of the material and may be 20 to 5000000 cp (col. 8, lines 33-39). Dividing this viscosity by the density of the silicone gel, which would be approximately 0.97, would lead to a kinematic viscosity range of approximately 20.6 to 5150000 cSt, which overlaps with the range claimed.
It would have been obvious to one having ordinary skill in the art to have substituted the carrier medium in the magnetorheological fluid of Bose et al. with the carrier medium of Fuchs et al. The results of such a substitution would have been predictable as they are both known as carrier gels for magnetorheological fluids. It would also have been obvious to have made the silicone gel have any viscosity within the range taught in the prior art, including from 500000 to 1200000 cSt as claimed as the prior art overlaps with this range.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (“Experimental and Statistical Study on Magnetic-Field Assisted Finishing of Mold Steel Using Nano-Scale Lubricant and Abrasive Particles”, Proc. of ASME, 2018., pg. 1-7) as evidenced by “MKnano hexagonal boron nitride” (https://mknano.com/nanoparticles/carbides-nitrides-and-other-compounds/hexagonal-boron-nitride-nanopowder/).
Lee et al. teach all of the limitations of claim 2 above. The hBN has the tradename “MK-hBN-70” (pg. 3, right column). As evidenced by “MKnano hexagonal boron nitride”, this tradename is a platelet having specific surface area of 15-30 m2/g, which overlaps with the range claimed (pg. 3).
Since there is an overlap in the range, a prima facie case of obviousness exists to make the specific surface area be from 25-30 m2/g. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (“Experimental and Statistical Study on Magnetic-Field Assisted Finishing of Mold Steel Using Nano-Scale Lubricant and Abrasive Particles”, Proc. of ASME, 2018., pg. 1-7) in view of Fuchs et al. (6,527,972).
Lee et al. teach all of the limitations of claim 2 above; however, they do not specifically teach a carrier medium with the kinematic viscosity claimed or one of the additives claimed.
Fuchs et al. teach that magnetorheological fluids are known for polishing optical lenses (col. 1, lines 26-27). They teach that the magnetorheological fluids can be silicone gels with additives such as diluents, which read on applicants’ viscosity-control agents (col. 6, lines 22-25 and col. 7, lines 19-35). The off-state viscosity can be selected depending on the desired application of the material and may be 20 to 5000000 cp (col. 8, lines 33-39). Dividing this viscosity by the density of the silicone gel, which would be approximately 0.97, would lead to a kinematic viscosity range of approximately 20.6 to 5150000 cSt, which overlaps with the range claimed.
It would have been obvious to one having ordinary skill in the art to have substituted the silicone oil in the magnetorheological fluid of Lee et al. with the carrier medium and diluent of Fuchs et al. The results of such a substitution would have been predictable as they are both known as carrier materials for magnetic fluids for polishing purposes. It would also have been obvious to have made the silicone gel have any viscosity within the range taught in the prior art, including from 500000 to 1200000 cSt as claimed as the prior art overlaps with this range.
Allowable Subject Matter
Claims 10, 46 and 47 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art does not teach or suggest the specific composition of claims 10 or 46 including exfoliated graphite nanoplatelets as the solid lubricant nanoplatelets and having the dimensions of the nanoplatelet specified. The closest prior art is [0041] of Bose et al., but there would have been no reason save improper hindsight to have combined the two alternative embodiments of this paragraph into a single composition because the graphite reduces abrasion phenomena, while the abrasive particles, e.g. silicon carbide, would increase abrasion phenomena. The graphite gives the opposite property desired in the compositions for surface treatment embodiments, and therefore there is no reason to combine them.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785