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 .
Response to Amendment
This Office action is in response to amendment/Remarks filed on 10/10/2025. After entry of this amendment, claims 1-19 are currently pending int his Application.
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.
Claim(s) 1-7 and 10-19 is/are rejected under 35 U.S.C. 103 as being
unpatentable over U.S. Patent Application Publication No. 2017/012075 to Thurber et
al. (hereinafter Thurber) in view of U.S. Patent Application Publication No.
2010/0107509 to Guiselin.
With respect to claims 1 and 2, Thurber discloses a coated abrasive article and
method of making comprising applying a binder material wherein the binder comprises,
at least, partially cured resole phenolic resin and aliphatic tack modifier (i.e. claimed
“organic polymeric tack modifier”), and wherein the concentration of the aliphatic tack
modifier is from 2 to 40 wt% based on the combined weight of the phenolic resin and
tack modifiers, to one side of a substrate/backing, at least partially curing this binder
either before applying the abrasive particles or after applying the abrasive particles
followed by at least partial curing the make layer precursor, then applying the size layer
precursor, followed by curing the layers (Thurber, abstract, Figures, [0020]-[0025],
[0030], [0040]-[0047], [0075], [0081]-[0103]). Furthermore, Thurber discloses a number
of benefits to the use of the tack modifier including preferentially migrating to the surface of the make layer to increase the tackiness desired for the adhering of the abrasive grains and increase the cohesive strength of the make layer (Thurber, [0032]).
The reference clearly discloses that more than one resole phenolic resin and/or
more than one tack modifier may be used (Thurber, [0034]) and continues to disclose
different tack modifier compounds, among which the reference discloses compounds
containing copolymer or polymerized products of acrylates and/or methacrylates
(Thuerber, [0040]-[0047]). The reference discloses aliphatic zwitterionic amphiphilic
acrylic polymers containing both acrylic acid monomer and methacrylic acid monomers,
salts thereof, or combination thereof (Thurber, [0040]-[0041]). Thurber, also, discloses
one embodiment in which a concentration of about 50-95 wt% of polymerized product of acrylic acid, methacrylic acid, salt thereof or blend thereof is present in the zwitterionic polymer, which is part of tack modifier (Thurber, [0041] and [0043]). Although this concentration of acrylates and/or methacrylates is disclosed as part of the disclosed tack modifier component of Thurber, it also reads on the claimed "free-radically polymerizable component" because according to the original specification of the present Application under examination, acrylates and methacrylates are monomers forming free-radically polymerizable components (see specification of the present Application under examination, page 5, line 25 to page 6, line 20) and because Thurber discloses the use of more than one tack modifier.
Although the disclosed concentration of 2-40 wt% of tack modifier is based on
the combined weight of the resole phenolic resin and tack modifier (Thurber, [0030]), it
is taken to render the claimed concentration of 0.001-5 wt% of organic polymer rheology modifier obvious because only a portion of the tack modifier of Thurber may include the acrylates and/or methacrylates polymers which has been taken to render the claimed "free-radically polymerizable component" obvious. This is because the polymerized product of acrylates and/or methacrylate, i.e. claimed free-radically polymerizable component, can be, as an example, 50wt% of the tack modifier; thus, the remaining portion of the tack modifier is other types of tack modifier. Therefore, the disclosure of 2-40 wt% of tack modifier includes both the claimed "organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer" as shown and rendered obvious below, and the claimed "free-radically polymerizable component", and with, for example, 50% of the disclosed tack modifier reading on the claimed free-radically polymerizable component, the remaining 50% of 2-40 wt%, i.e. 1 to 20 wt%, reads on the claimed "organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer", and this amount of approximately 1-20 wt% overlaps with the claimed range of 0.001-5 wt%. It is, however, noted that Thurber discloses the concentration of the polymerized product of acrylate and/or methacrylate to be about 50wt% to about 95wt%; thus, Thurber renders the claimed range of 0.001-5 wt% obvious based on more than one example/approach.
Assuming the above is not found persuasive, it is noted that obtaining the
optimum or workable range of the tack modifier reading on the claimed alkali-
swellable/soluble polymer is taken to be well within the scope of a skilled artisan and
achievable through routine experimentation with the aim of optimizing the tackiness of
the binder in adhering and holding the abrasive particles in position. MPEP 2144.05 Il A states "Generally, differences in concentration or temperature will not support the
patentability of subject matter encompassed by the prior art unless there is evidence
indicating such concentration or temperature is critical. "[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, 105 USPQ
233, 235 (CCPA 1955).
MPEP 2144.05 I states "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).
Although there is no express disclosure on this weight percent being evaluated
on solids basis, it is expected of this weight percentage to have, at least, overlapping
with the claimed concentration based on solids content of the disclosed components
because no solvent has been included in the disclosure of this concentration by
Thurber.
With respect to the claimed sequential step c) of at least partially curing the free-
radically polymerizable component and step d) at least partially curing the phenolic resin component, it is noted that the teaching of the reference on curing the binder, which is taken to read on the make layer precursor, is seen to render the two sequentially claimed steps obvious in the absence of new or unexpected results in the present Application under examination for the specifically claimed sequentially curing steps; this is motivated by the fact that selection of any order of curing is seen to be obvious in light of the teaching of the reference in curing the cumulative binder layers, and in light of the fact that the presence of free-radically polymerizable component as well as phenolic resin in the composition of the reference, inevitably, requires their curing in order to obtain the finally formed hardened coated abrasive article. Again, the original disclosure of the present Application under examination is silent as to any new or unexpected result for the specifically claimed steps c) and d) in the claimed sequential order (see MPEP 2144.04 IV C).
Thurber discloses that the abrasive article comprises a substrate or backing, an
abrasive layer which comprises make layer, size layer, and optional additional layers
(Thurber, [0020]). The binder comprising at least, partially cured resole phenolic resin,
one or more aliphatic tack modifier which includes a compound of acrylates and/or
methacrylate polymer, in essence, is the make coat of the disclosed coated abrasive
article. Thurber discloses applying the binder to one side of the substrate/backing; thus, the backing comprises two sides as also obvious in the Figures, one side has the binder and then abrasive particles applied thereto, and the opposite side (Thurber, Figure 1, [0020]-[0021]). Thurber, also, discloses a method of making such an abrasive article (Thurber, abstract, [0008]-[0012]), and discloses applying a slurry containing the at least disclosed components onto a backing, followed by application of abrasive particles, and followed by at least partially curing (Thurber, [0025], [0081]-[0083]).
Thurber discloses some examples of suitable tack modifier which includes resins and polymers (Thurber, [0033]) as well as polymerized products of acrylates and
methacrylate which has been taken to read on the claimed "free-radically polymerizable component" and discloses the use of more than one tack modifier. However, the reference does not specifically disclose or suggest the particularly claimed category of the organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer selected from hydrophobically-modified ethoxylated urethane polymers, as claimed in present claims 1 and 2. It is important to note that based on the fact that Thurber teaches the use of tack modifiers, said reference would render the use of tack modifiers or rheology modifiers in make layer of a coated abrasive articles obvious despite the fact that the compounds taught by Thurber, as tack modifiers may not, expressly, be the claimed hydrophobically-modified ethoxylated urethane polymers such as that claimed in claims 1 and 2.
Guiselin discloses coated abrasive articles and method of manufacturing the
same, wherein the method involves forming a slurry to be coated onto a backing, and
the slurry comprises components such as binder and rheology modifier as well as other components (Guiseling, abstract, [0021]-[0024], [0073]-[0143]), wherein the rheology modifier can be associative thickeners which are rheology modifiers that are usually water soluble polymer capped with water insoluble hydrophobic groups, wherein the primary thickening mechanism is due to intermolecular associations (Guiselin, [0120]). The associative thickeners, disclosed by Guiselin, include HASE or hydrophobically modified alkali acrylic emulsions, HEUR or hydrophobically modified ethylene oxide urethane rheology modifiers, HEURASE or hybrid HASE/HEUR, and few more (Guiselin, [0119]-[0123]).
It is noted that the original specification of the present Application under
examination, also, discloses the claimed hydrophobically-modified ethoxylated urethane polymers or HEUR are water-soluble polymers containing hydrophobic groups and are classified as associative thickeners because the hydrophobic groups associate with one another in water (see specification, page 7, line 12 to page 8, line 37); moreover, the original disclosure of the present Application under examination discloses HASE as being hydrophobically-modified alkali-swellable/soluble emulsion polymers (see specification of the present Application under examination, page 1, lines 9-14). Guiselin, additionally, teaches the use of a hybrid of HASE/HEUR.
Thus, 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 modified Thurber in order to include an associative thickener, specifically a hybrid of HASE/HEUR or
hydrophobically-modified alkali-swellable/soluble polymer and hydrophobically modified ethylene oxide urethane rheology modifier, as the organic rheology modifier as that taught by Guiselin motivated by the fact that Thurber recognizes the use of organic polymer tack modifier, i.e. rheology modifier, in the solution forming the abrasive layer on a backing of a coated abrasive, and Guiselin, in essence, is an evidence of the fact that the use of a hybrid of HASE/HEUR has been known and recognized in the art of slurries used in forming abrasive layer of a coated abrasive article. Guiselin, also, discloses applying a slurry comprising the composition containing the binder/resin which contains abrasive grains, onto a backing, followed by at least partially curing the composition (Guiselin, [0137]-[0143]).
With respect to claim 3, the combination of references renders the claim obvious; this is, in particular, because Thurber discloses 60-98 wt%, preferably 90-98 wt% of phenolic resin based on the combined weight of phenolic resin and aliphatic tack modifier (Thurber, [0030]); however, in light of the fact the acrylates and/or methacrylate polymers disclosed in Thurber are disclosed as part of tack modifier, the disclosed concentration for the resole phenolic resin by Thurber, is seen to render the claimed concentration of 75-99 wt% of phenolic resin, based on the combined weight of the phenolic resin, tack modifiers, and polymerized product of acrylates and/or
methacrylate, i.e. the three claimed components, obvious.
MPEP 2144.05 states "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).
Although there is no express disclosure on this particular weight percent being
evaluated on solids basis, it is expected of this weight percentage to have, at least,
overlapping, if not substantial overlapping, with the claimed concentration based on
solids content of the claimed components motivated by the fac that the disclosed
concentration is based on the combined weight of the components but no solvent has
been included in the disclosure of this concentration by Thurber.
With respect to claim 4, the combination of references renders the claim obvious; this is, in particular, because Thurber discloses the use of 2-40 wt% of tack modifiers, and discloses the use of one or more tack modifiers; the reference additionally discloses about 50wt% to about 95wt% of the tack modifier comprising a polymerized product of acrylates and/or methacrylate, i.e. claimed free-radically polymerizable component, (Thurber, [0040]-[0047]). Therefore, the concentration of the polymerized product of acrylates and/or methacrylate, or claimed free-radically polymerizable component, can be from about 0.95wt% to 38wt% which overlaps with the claimed range of 1-25 wt%.
MPEP 2144.05 states "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, MPEP 2144.05 states "Similarly, a prima facie case of obviousness
exists where the claimed ranges or amounts do not overlap with the prior art but are
merely close. Titanium Metals Corp. of America V. Banner, 778 F.2d 775, 783,
227 USPQ 773, 779 (Fed. Cir. 1985).
With respect to claim 5, the combination of references renders the claimed
shaped abrasive particles obvious; in particular, Thurber discloses that the abrasive
particles may be shaped (Thurber, [0052], [0057], [0087]-[0088]).
With respect to claim 6, the combination of references renders the claim obvious; this is, in particular, because Thurber, i.e. the primary reference, teaches, not only the use of shaped abrasive particle, but that the use of precisely-shaped abrasive particles (Thurber, [0057]-[0058], [0087]-[0088]).
With respect to claim 7, the combination of references renders the claim obvious; this is, in particular, because Thurber teaches precisely-shaped abrasive particles such as triangular platelets (Thurber, [0058], [0088], and [0099]).
With respect to claim 10, the combination of references renders the claim
obvious; this is, in particular, because Thurber teaches coated abrasive article
comprising a backing/substrate and an abrasive layer, wherein the abrasive layer
comprises abrasive particles, make layer, size layer, and additional layers (Thurber,
[0020]). In an embodiment for the method of making a coated abrasive article, Thurber
discloses applying a prebond coating onto a fiber web backing, curing the prebond,
impregnating the backing with the make layer precursor, applying abrasive particles to
the make layer precursor, at least partially curing the make layer precursor, then
applying a size layer precursor, and curing the size and make layers (Thurber, [0075]).
With respect to claims 11 and 12, Thurber discloses a coated abrasive article
comprising a binder material wherein the binder comprises, at least, partially cured
resole phenolic resin and aliphatic tack modifier (i.e. claimed organic polymeric tack
modifier), and wherein the concentration of the aliphatic tack modifier is from 2 to 40
wt% based on the combined weight of the phenolic resin and tack modifiers. (Thurber,
abstract, Figures, [0020]-[0025], [0030], [0040]-[0047], [0075], [0081]-[0103]).
Furthermore, Thurber discloses a number of benefits to the use of the tack modifier including preferentially migrating to the surface of the make layer to increase the tackiness desired for the adhering of the abrasive grains and increase the cohesive
strength of the make layer (Thurber, [0032]).
The reference clearly discloses that more than one resole phenolic resin and/or
more than one tack modifier may be used (Thurber, [0034]) and continues to disclose
different tack modifier compounds, among which the reference discloses compounds
containing copolymer or polymerized products of acrylates and/or methacrylates
(Thuerber, [0040]-[0047]). The reference discloses aliphatic zwitterionic amphiphilic
acrylic polymers containing both acrylic acid monomer and methacrylic acid monomers,
salts thereof, or combination thereof (Thurber, [0040]-[0041]). Thurber, also, discloses
one embodiment in which a concentration of about 50-95 wt% of polymerized product of acrylic acid, methacrylic acid, salt thereof or blend thereof is present in the zwitterionic polymer, which is part of tack modifier (Thurber, [0041] and [0043]).
Although this concentration of acrylates and/or methacrylates is disclosed as part of the disclosed tack modifier component of Thurber, it also reads on the claimed "free-radically polymerizable component" because according to the original specification of the present Application under examination, acrylates and methacrylates are monomers forming free-radically polymerizable components (see specification, page 5, line 25 to page 6, line 20) and because Thurber discloses the use of more than one tack modifier. Although the disclosed concentration of 2-40 wt% of tack modifier is based on the combined weight of the resole phenolic resin and tack modifier (Thurber, [0030]), it is taken to render the claimed concentration of 0.001-5 wt% of organic polymer rheology modifier obvious because only a portion of the tack modifier of Thurber may include the acrylates and/or methacrylates polymers which has been taken to render the claimed "free-radically polymerizable component" obvious. This is because the polymerized product of acrylates and/or methacrylate, i.e. claimed free-radically polymerizable component, can be, as an example, 50wt% of the tack modifier; thus, the remaining portion of the tack modifier is other types of tack modifier. Therefore, the disclosure of 2-40 wt% of tack modifier includes both the claimed "organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer" as shown and rendered obvious below, and the claimed "free-radically polymerizable component", and with, for example, 50% of the disclosed tack modifier reading on the free-radically polymerizable component, the remaining 50% of 2-40 wt%, i.e. 1 to 20 wt%, reads on the claimed "organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer", and this amount of approximately 1-20 wt% overlaps with the claimed range of 0.001-5 wt%. It is, however, noted that Thurber discloses the concentration of the polymerized product of acrylate and/or methacrylate to be about 50wt% to about 95wt%; thus, Thurber renders the claimed range of 0.001-5 wt% obvious based on more than one example.
Assuming the above is not found persuasive, it is noted that obtaining the
optimum or workable range of the tack modifier reading on the claimed alkali-
swellable/soluble polymer is taken to be well within the scope of a skilled artisan and
achievable through routine experimentation with the aim of optimizing the tackiness of
the binder in adhering and holding the abrasive particles in position. MPEP 2144.05 Il A states "Generally, differences in concentration or temperature will not support the
patentability of subject matter encompassed by the prior art unless there is evidence
indicating such concentration or temperature is critical. "[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, 105 USPQ
233, 235 (CCPA 1955).
MPEP 2144.05 I states "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).
Although there is no express disclosure on this weight percent being evaluated
on solids basis, it is expected of this weight percentage to have, at least, overlapping
with the claimed concentration based on solids content of the disclosed components
because no solvent has been included in the disclosure of this concentration by
Thurber.
Thurber discloses some examples of suitable tack modifier which includes resins and polymers (Thurber, [0033]) as well as polymerized products of acrylates and
methacrylate which has been taken to read on the claimed "free-radically polymerizable component" and discloses the use of more than one tack modifier.
However, Thurber does not specifically disclose or suggest the particularly claimed category of the organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer selected from hydrophobically-modified ethoxylated urethane polymers, as claimed in present claims 11 and 12. It is important to note that based on the fact that Thurber teaches the use of tack modifiers, said reference would render the use of tack modifiers or rheology modifiers in make layer of a coated abrasive articles obvious despite the fact that the compounds taught by Thurber, as tack modifiers may not, expressly, be the claimed hydrophobically-modified ethoxylated urethane polymers such as that claimed in claims 11 and 12.
Guiselin discloses coated abrasive articles and method of manufacturing the
same, wherein the method involves forming a slurry to be coated onto a backing, and
the slurry comprises components such as binder and rheology modifier as well as other components (Guiseling, abstract, [0021]-[0024], [0073]-[0143]), wherein the rheology modifier can be associative thickeners which are rheology modifiers that are usually water soluble polymer capped with water insoluble hydrophobic groups, wherein the primary thickening mechanism is due to intermolecular associations (Guiselin, [0120]). The associative thickeners, disclosed by Guiselin, include HASE or hydrophobically modified alkali acrylic emulsions, HEUR or hydrophobically modified ethylene oxide urethane rheology modifiers, HEURASE or hybrid HASE/HEUR, and few more (Guiselin, [0119]-[0123]).
It is noted that the original specification of the present Application under
examination, also, discloses the claimed hydrophobically-modified ethoxylated urethane polymers or HEUR are water-soluble polymers containing hydrophobic groups and are classified as associative thickeners because the hydrophobic groups associate with one another in water (see specification, page 7, line 12 to page 8, line 37); moreover, the original disclosure of the present Application under examination discloses HASE as being hydrophobically-modified alkali-swellable/soluble emulsion polymers (see specification of the present Application under examination, page 1, lines 9-14). Guiselin, additionally, teaches the use of a hybrid of HASE/HEUR.
Thus, 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 modified Thurber in order to include an associative thickener, specifically a hybrid of HASE/HEUR or
hydrophobically-modified alkali-swellable/soluble polymer and hydrophobically modified ethylene oxide urethane rheology modifier, as the organic rheology modifier as that taught by Guiselin motivated by the fact that Thurber recognizes the use of organic polymer tack modifier, i.e. rheology modifier, in the solution forming the abrasive layer on a backing of a coated abrasive, and Guiselin, in essence, is an evidence of the fact that the use of a hybrid of HASE/HEUR has been known and recognized in the art of slurries used in forming abrasive layer of a coated abrasive article. Guiselin, also, discloses applying a slurry comprising the composition containing the binder/resin which contains abrasive grains, onto a backing, followed by at least partially curing the composition (Guiselin, [0137]-[0143]).
With respect to claim 13, Thurber discloses the binder, also make layer,
comprises phenolic resin in an amount of 60-98 wt% based on the combined weight of
the resole phenolic resin and aliphatic tack modifier (Thurber, abstract, [0030]). As
rendered obvious above, the disclosed tack modifier of Thurber includes both
polymerized product of acrylates and/or methacrylates as well as other tack modifiers
which was rendered obvious to include an alkali-swellable/soluble polymer. Thus, the
disclosed range of 68-98 wt% is, in essence, taken to be the concentration in the
combined weight of phenolic resin, alkali-swellable/soluble polymer, and polymerized
product of acrylates and methacrylates (i.e. claimed free-radically polymerizable
component).
MPEP 2144.05 I states "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).
With respect to claim 14, the combination of references is seen to render the
claim obvious; this is, in particular, because Thurber discloses the use of about 2-40
wt% tack modifiers (Thurber, [0030] as well as the use of more than one type/compound of tack modifiers (Thurber, [0034]), and the fact that as part of tack modifier, a polymerized product of acrylates and/or methacylates, in an amount of about 50-95 wt% of one type of tack modifier may be present (Thurber, [0040]-[0043]). Thus, taking as an example, 50-95% of 2-40wt%, would result in a concentration having substantial overlapping with the claimed range of 1-25 wt% of polymerized product of acrylates and/or methacrylates, i.e. claimed free-radically polymerizable component.
With respect to claim 15, the combination of references renders the claimed
shaped abrasive particles obvious; in particular, Thurber discloses that the abrasive
particles may be shaped (Thurber, [0052], [0057], [0087]-[0088]).
With respect to claim 16, the combination of references renders the claim
obvious; this is, in particular, because Thurber, i.e. the primary reference, teaches, not
only the use of shaped abrasive particle, but that the use of precisely-shaped abrasive
particles (Thurber, [0057]-[0058], [0087]-[0088]).
With respect to claim 17, the combination of references renders the claim
obvious; this is, in particular, because Thurber teaches precisely-shaped abrasive
particles such as triangular platelets (Thurber, [0058], [0088], and [0099]).
With respect to claim 18, the combination of references is seen to render the
claim obvious; this is, in particular, because Thurber is open to the use of more than
one type/compound of tack modifier (Thurber, [0034]), and the reference discloses the
option of using a blend of different monomers, more than one, of acrylic acid as well as
methacrylic acid (Thurber, [0040]-[0044]).
With respect to claim 19, Thurber discloses a coated abrasive article and method
of making comprising applying a binder material wherein the binder comprises, at least,
partially cured resole phenolic resin and aliphatic tack modifier (i.e. claimed organic
polymeric tack modifier), and wherein the concentration of the aliphatic tack modifier is
from 2 to 40 wt% based on the combined weight of the phenolic resin and tack
modifiers, to one side of a substrate/backing, at least partially curing this binder either
before applying the abrasive particles or after applying the abrasive particles followed
by at least partial curing the make layer precursor, then applying the size layer
precursor, followed by curing the layers (Thurber, abstract, Figures, [0020]-[0025],
[0030], [0040]-[0047], [0075], [0081]-[0103]). Furthermore, Thurber discloses a number
of benefits to the use of the tack modifier including preferentially migrating to the surface of the make layer to increase the tackiness desired for the adhering of the abrasive grains and increase the cohesive strength of the make layer (Thurber, [0032]).
The reference clearly discloses that more than one resole phenolic resin and/or
more than one tack modifier may be used (Thurber, [0034]) and continues to disclose
different tack modifier compounds, among which the reference discloses compounds
containing copolymer or polymerized products of acrylates and/or methacrylates
(Thurber, [0040]-[0047]). The reference discloses aliphatic zwitterionic amphiphilic
acrylic polymers containing both acrylic acid monomer and methacrylic acid monomers,
salts thereof, or combination thereof (Thurber, [0040]-[0041]). Thurber, also, discloses
one embodiment in which a concentration of about 50-95 wt% of polymerized product of acrylic acid, methacrylic acid, salt thereof or blend thereof is present in the zwitterionic polymer, which is part of tack modifier (Thurber, [0041] and [0043]). Although this concentration of acrylates and/or methacrylates is disclosed as part of the disclosed tack modifier component of Thurber, it also reads on the claimed "free-radically polymerizable component" because according to the original specification of the present Application under examination, acrylates and methacrylates are monomers forming free-radically polymerizable components (see specification, page 5, line 25 to page 6, line 20) and because Thurber discloses the use of more than one tack modifier.
Although the disclosed concentration of 2-40 wt% of tack modifier is based on
the combined weight of the resole phenolic resin and tack modifier (Thurber, [0030]), it
is taken to render the claimed concentration of 0.001-5 wt% of organic polymer rheology modifier obvious because only a portion of the tack modifier of Thurber may include the acrylates and/or methacrylates polymers which has been taken to render the claimed "free-radically polymerizable component" obvious. This is because the polymerized product of acrylates and/or methacrylate, i.e. claimed free-radically polymerizable component, can be, as an example, 50wt% of the tack modifier; thus, the remaining portion of the tack modifier is other types of tack modifier. Therefore, the disclosure of 2-40 wt% of tack modifier includes both the claimed "organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer" as shown and rendered obvious below, and the claimed "free-radically polymerizable component", and with, for example, 50% of the disclosed tack modifier reading on the claimed free-radically polymerizable component, the remaining 50% of 2-40 wt%, i.e. 1 to 20 wt%, reads on the claimed "organic polymeric rheology modifier comprises an alkali-swellable/soluble polymer", and this amount of approximately 1-20 wt% overlaps with the claimed range of 0.001-5wt%. It is, however, noted that Thurber discloses the concentration of the polymerized product of acrylate and/or methacrylate to be about 50wt% to about 95wt%; thus, Thurber renders the claimed range of 0.001-5 wt% obvious based on more than one example.
Assuming the above is not found persuasive, it is noted that obtaining the
optimum or workable range of the tack modifier reading on the claimed alkali-
swellable/soluble polymer is taken to be well within the scope of a skilled artisan and
achievable through routine experimentation with the aim of optimizing the tackiness of
the binder in adhering and holding the abrasive particles in position. MPEP 2144.05 Il A states "Generally, differences in concentration or temperature will not support the
patentability of subject matter encompassed by the prior art unless there is evidence
indicating such concentration or temperature is critical. "[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, 105 USPQ
233, 235 (CCPA 1955).
MPEP 2144.05 I states "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).
Although there is no express disclosure on this weight percent being evaluated
on solids basis, it is expected of this weight percentage to have, at least, overlapping
with the claimed concentration based on solids content of the disclosed components
because no solvent has been included in the disclosure of this concentration by
Thurber.
With respect to the claimed sequential step b) of at least partially curing the free-
radically polymerizable component, step c) adhering abrasive particles to the partially
cured composition, and step d) at least partially curing the phenolic resin component, it
is noted that the teaching of the reference on curing the binder, which is taken to read
on the make layer precursor, is seen to render the three sequentially claimed steps
obvious in the absence of new or unexpected results in the present Application under
examination for the specifically claimed sequentially curing steps in which first the free-radically polymerizable component is at least partially cured, then particles are applied, and then the phenolic resin is at least partially cured. This is motivated by the fact that selection of any order of curing is seen to be obvious in light of the teaching of the reference in curing the binder material, and in light of the fact that the presence of free-radically polymerizable component as well as phenolic resin in the composition of the reference, inevitably, requires their curing in order to obtain the finally formed hardened coated abrasive article. Again, the original disclosure of the present Application under examination is silent as to any new or unexpected result for the specifically claimed steps b) through d) in the claimed sequential order (see MPEP 2144.04 IV C).
Thurber discloses that the abrasive article comprises a substrate or backing, an
abrasive layer which comprises make layer, size layer, and optional additional layers
(Thurber, [0020]). The binder comprising at least, partially cured resole phenolic resin,
one or more aliphatic tack modifier which includes a compound of acrylates and/or
methacrylate polymer, in essence, is the make coat of the disclosed coated abrasive
article. Thurber discloses applying the binder to one side of the substrate/backing; thus, the backing comprises two sides as also obvious in the Figures, one side has the binder and then abrasive particles applied thereto, and the opposite side (Thurber, Figure 1, [0020]-[0021]). Thurber, also, discloses a method of making such an abrasive article (Thurber, abstract, [0008]-[0012]), and discloses applying a slurry containing the at least disclosed components onto a backing, followed by application of abrasive particles, and followed by at least partially curing (Thurber, [0025], [0081]-[0083]).
Thurber discloses some examples of suitable tack modifier which includes resins
and polymers (Thurber, [0033]) as well as polymerized products of acrylates and
methacrylate which has been taken to read on the claimed "free-radically polymerizable component" and discloses the use of more than one tack modifier.
However, the reference does not specifically disclose or suggest the particularly claimed category of the organic polymeric rheology modifier comprising an alkali-swellable/soluble polymer selected from hydrophobically-modified ethoxylated urethane polymers, as claimed in present claim 19. It is important to note that based on the fact that Thurber teaches the use of tack modifiers, said reference would render the use of tack modifiers or rheology modifiers in make layer of a coated abrasive articles obvious despite the fact that the compounds taught by Thurber, as tack modifiers may not, expressly, be the claimed hydrophobically-modified ethoxylated urethane polymers such as that claimed in claim 19.
Guiselin discloses coated abrasive articles and method of manufacturing the
same, wherein the method involves forming a slurry to be coated onto a backing, and
the slurry comprises components such as binder and rheology modifier as well as other components (Guiseling, abstract, [0021]-[0024], [0073]-[0143]), wherein the rheology modifier can be associative thickeners which are rheology modifiers that are usually water soluble polymer capped with water insoluble hydrophobic groups, wherein the primary thickening mechanism is due to intermolecular associations (Guiselin, [0120]).
The associative thickeners, disclosed by Guiselin, include HASE or hydrophobically modified alkali acrylic emulsions, HEUR or hydrophobically modified ethylene oxide urethane rheology modifiers, HEURASE or hybrid HASE/HEUR, and few more (Guiselin, [0119]-[0123]).
It is noted that the original specification of the present Application under
examination, also, discloses the claimed hydrophobically-modified ethoxylated urethane polymers or HEUR are water-soluble polymers containing hydrophobic groups and are classified as associative thickeners because the hydrophobic groups associate with one another in water (see specification, page 7, line 12 to page 8, line 37); moreover, the original disclosure of the present Application under examination discloses HASE as being hydrophobically-modified alkali-swellable/soluble emulsion polymers (see specification, page 1, lines 9-14). Guiselin, additionally, teaches the use of a hybrid of HASE/HEUR.
Thus, 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 modified Thurber in order to include an associative thickener, specifically a hybrid of HASE/HEUR or
hydrophobically-modified alkali-swellable/soluble polymer and hydrophobically modified ethylene oxide urethane rheology modifier, as the organic rheology modifier as that taught by Guiselin motivated by the fact that Thurber recognizes the use of organic polymer tack modifier, i.e. rheology modifier, in the solution forming the abrasive layer on a backing of a coated abrasive, and Guiselin, in essence, is an evidence of the fact that the use of a hybrid of HASE/HEUR has been known and recognized in the art of slurries used in forming abrasive layer of a coated abrasive article. Guiselin, also, discloses applying a slurry comprising the composition containing the binder/resin which contains abrasive grains, onto a backing, followed by at least partially curing the composition (Guiselin, [0137]-[0143]).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Thurber in view of Guiselin as applied to claim 1 above, and further in view of U.S.
Patent No. 5,368,618 to Masmer et al. (hereinafter Masmer).
With respect to claim 8, the combination of Thurber in view of Guiselin renders
claim 1 obvious as detailed out above. Thurber discloses the presence/use of
polymerized product containing acrylate and/or methacrylate in the binder, which would read on the make coat layer, and polymers of acrylates or methacrylates are known to be free-radically polymerizable polymers as shown above.
However, the combination of Thurber in view of Guiselin does not expressly
and/or literally disclose the use of a free-radical photoinitiator for the polymerized
product of acrylates or methacrylate.
Masmar, directed to coated abrasive articles and method of making the same,
discloses make coat precursor comprising resins curable by a free-radical mechanism
using a catalyst or photoinitiator, wherein examples of such resins are acrylated resins
(Masmar, abstract, col. 4, lines 12-35; col. 5, lines 10-47). Masmar teaches that the
resin of the make coat precursor can comprise a mixture of at least one resin curable by
free radical mechanism and at least one radiation curable resin, a mixture of at least
one resin curable by free-radical mechanism and at least one thermosetting resin, such as phenolic resin, and mixture of other resins (Masmar, col. 5, lines 33-47 and col. 6, lines 13-35).
Thus, 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 modified the combination of Thurber in view of Guiselin in order to utilize a curing agent such as free-radical photoinitiator for the polymerization of the acrylated or methacrylated monomers, as that taught by Masmar motivated by the fact that Masmar, directed to the same field of art of coated abrasive particles comprising mixtures of resins in their make layer precursor wherein such resins include those cured by free-radical mechanism, renders it obvious to use a curing agent or photoinitiator for curing such resins.
With respect to claim 9, the combination of references is seen to render the claim obvious; this is, in particular, because Thurber is open to the use of more than one type/compound of tack modifier (Thurber, [0034]), and the reference discloses the
option of using a blend of different monomers, more than one, of acrylic acid as well as
methacrylic acid (Thurber, [0040]-[0044]).
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Applicant has asserted the curable composition may facilitate in preserving an initial placement and orientation of the abrasive particles during manufacture (Remarks, page 7). Applicant has, also, asserted Thurber merely mentions at least partially curing the whole curable tacky adhesive composition, and is completely silent about sequentially at least partially curing the free-radically polymerizable component and the phenolic resin component to provide the at least partially cured composition, as recited in claim 1 (Remarks, page 8). Moreover, Applicant has asserted that such sequential at least partial curing of the free-radically polymerizable component and then at least partial curing of the phenolic resin component to provide the at least partially cured composition may enable the initial placement and orientation of the abrasive particles on the backing that may result in the final placement and orientation of the abrasive particles without tipping of the abrasive particles, thereby resulting in the higher cut performance of the abrasive article manufactured using the method of claim 1 (Remarks, page 8).
The Examiner, respectfully, submits the teaching of Thurber on curing the binder, which is taken to read on the make layer precursor, is seen to render the two sequential steps obvious in the absence of new or unexpected results in the present Application under examination for the specifically claimed sequentially curing steps; as noted in the previous Office action and hereby above, this is motivated by the fact that selection of any order of curing is seen to be obvious in light of the teaching of the reference in curing the cumulative binder layers, and in light of the fact that the presence of free-radically polymerizable component as well as phenolic resin in the composition of the reference, inevitably, requires their curing in order to obtain the finally formed hardened coated abrasive article. Again, the original disclosure of the present Application under examination is silent as to any new or unexpected result for the specifically claimed steps c) and d) in the claimed sequential order (see MPEP 2144.04 IV C).
Applicant has asserted the specific steps of the method of claim 1 provides at least partially cured composition in which the abrasive particles may be placed and oriented to provide a higher cut performance while using a less amount of the curable composition (Remarks, page 9). Applicant, also, asserted Tables 2 and 3 of the specification of the present Application under examination show the amount of the curable composition (i.e. make layer) and a total cut achieved by the abrasive article made using the curable composition of the method claim 1 (Remarks, page 9). Applicant has, then, concluded that the curable composition made using the method of claim 1 provides unexpected result of the higher total cut (i.e. better cut performance) of the resultant abrasive article and the lower use of the curable composition for making the abrasive article achieving the higher total cut (Remarks, page 9).
The examiner, respectfully, submits Table 3 provides higher cut for using a make resin based on the present Application under examination in which its content, the amount of mineral in make resin, the size amount, and supersize amount are based on what has been provided in Table 2. However, neither Table 3, nor Table 2, show any unexpected result because of the specifically claimed order of steps of sequential curing of the free-radically polymerizable component followed by at least partial curing of the phenolic resin, as claimed in claim 1. If anything, Table 3 shows higher cut for an amount of make coat less than the make coat of the comparative examples, with higher amount of size coat and supersize coat, for which the make coat comprises the components disclosed in specification of the present Application under examination in specific concentrations as disclosed in pages 16-18 of the specification; additionally, the make resin in comparative examples do not contain the same components in the claimed one. Thus, at best the Tables show results based on different make resin composition. Again, there is no evidence showing that the higher cut is the specific result of the claimed order of curing, as claimed in steps c) and d) of claim 1.
Applicant has asserted Thurber mentions use of at least partially cured resole phenolic resin; Applicant has additionally asserted in Thurber, the resole phenolic resin is already partially cured before adhering the abrasive particles (Remarks, page 9). Applicant has, also, asserted in the method of claim 1, the phenolic resin component is at least partially cured after adhering the abrasive particles to the curable composition (Remarks, page 9).
The examiner, respectfully, submits all independent claims recite the open transitional phrase “comprising” which would allow the presence of any other components or steps in the claimed language. Therefore, the reference is not seen to teach away from the claimed language by disclosing at least partially cured phenolic resin.
Applicant has asserted Thurber discloses from 2-40 wt% of the aliphatic tack modifier based on the combined weight of the resole phenolic resin and the aliphatic tack modifier (Remarks, page 9). Applicant has asserted the range of 0.001-5 wt% of the organic polymeric rheology modifier in the curable composition of claim 1 may facilitate the initial placement and orientation of the abrasive particles on the backing during manufacturing, and that this is evidenced from Table 3 (Remarks, page 9). Applicant has, then, concluded a range of 0.001-5 wt% provides unexpected result in achieving the higher cut performance (Remarks, page 9).
The examiner, respectfully, submits there is no evidence showing that any higher cut performance is specifically attributed to the specifically claimed range of 0.001-5 wt% of the claimed organic polymeric rheology modifier; Table 3 does not provide any such unexpected result. Moreover, as detailed out in the previous Office action (see Non-Final rejection mailed on 06/10/2025, page 4) and repeated above, the disclosed concentration of 2-40 wt% overlaps, based on the analysis provided in the previous Office action and hereby above, with the claimed range of 0.001-5 wt%.
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 PEGAH PARVINI whose telephone number is (571)272-2639. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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