DETAILED ACTION
This communication responds to the application and amended claim set filed May 10, 2023. Claims 1-20 are currently pending.
Claims 1-5 and 13-20 are REJECTED for the reasons set forth below.
Claims 6-12 are OBJECTED TO as depending from a rejected claim, but otherwise contain allowable subject matter.
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 .
Priority
This application is the national stage entry of PCT/IB2021/060220, filed November 4, 2021, which claims priority to US 63/112,898, filed November 12, 2020.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rule et al. (US 9,370,876) in view of Khasat et al. (US 5,480,940).
Regarding claims 1-3, Rule teaches a curable composition comprising dicyclopentadiene, a Grubbs Second Generation catalyst, and aluminum oxide powder (corresponding to the recited abrasive particles). (Ex. 2, col. 10, lines 58-66.)
The difference between Example 2 of Rule and the present claims is that Example 2 does not include a coupling agent with the structure recited in claim 1. Rather, Rule incorporates Irganox 1010, which does not correspond to the structure recited in claim 1. However, other Irganox compounds are known to be useful in dicyclopentadiene curable compositions. For example, Khasat teaches a “Component B” composition comprising dicyclopentadiene and Irganox 1035. (col. 14, lines 52-62.) Irganox 1035 has the following structure:
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This structure corresponds to the recited coupling agent when Z is an -OH group. The part of the Irganox 1035 structure corresponding to X has a molecular weight of 609 g/mol, which is within the claimed range. It would have been obvious to substitute one known Irganox compound in place of another with the expected result of forming a useful curable composition. (See MPEP 2143(I)(B).)
The examiner notes that Irganox compounds are generally considered to be antioxidants, not coupling agents. However, the -OH groups of Irganox 1035 will react with the hydroxyl surface groups that are necessarily present on the surface of the aluminum oxide powder via a hydrolysis reaction. Thus, although Irganox 1035 is not technically a coupling agent, it satisfies the limitations regarding the Z-X-Z compound.
Regarding claim 4, the Grubbs Second Generation catalyst of Rule is a ruthenium-based catalyst. (col. 9, line 64 – col. 10, line 1.)
Regarding claim 5, Rule is silent as to the nominal grade of the aluminum oxide powder. However, given that the grade standards are determined by particle size, the aluminum powder of Rule will necessarily conform to a standard, even if it is not disclosed.
Regarding claim 13, Example 2 of Rule further includes Cabosil M5 (see col. 10, lines 64-65), which is a thickening filler.
Regarding claim 14, Example 2 of Rule teaches only aluminum oxide powder as an abrasive particle or a particle that could be considered a “grinding aid.” However, Rule teaches that other compounds, including silicon carbide, may be included in the abrasive composition. (col. 8, line 67 – col. 9, line 1.) However, “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, and ... the idea of combining them flows logically from their having been individually taught in the prior art." (See MPEP 2144.06(I), quoting In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).)
Regarding claims 15 and 16, Rule teaches that a molded abrasive article is formed upon curing the composition of Example 2. (col. 10, line 58 – col. 11, line 10.)
Regarding claims 17 and 18, Rule teaches that the abrasive articles may comprising a backing, such as polymeric films. (col. 9, lines 19-25.)
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rule et al. (US 9,370,876) in view of Khasat et al. (US 5,480,940) and Christianson (US 5,975,988).
Regarding claims 19 and 20, Rule teaches that structured abrasive articles may be formed by applying the curable composition discussed above to a backing. (col. 9, lines 19-25. See paragraph 11 above, which is incorporated by reference herein.)
Rule does not provide a detailed description of the article formed when the curable composition is applied to the backing and does not teach the layer structure of claims 19 and 20. However, such a structure (backing – make layer – size layer – supersize layer) is known in the art. For example, Christianson teaches an abrasive article comprising a backing, a make layer comprising an abrasive monomer slurry (corresponding to the curable composition of the Example 2 of Rule), a size layer comprising the abrasive monomer slurry, and a supersize layer. (col. 16, line 35 – col. 17, line 19; col. 11, lines 49-54.) It would have been obvious to make the generally disclosed structured abrasive article of Rule according to a known layered structure. (See MPEP 2143(I)(A).)
Allowable Subject Matter
Claims 6-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
After a thorough and complete search, the examiner cannot find prior art teaching or fairly suggesting a coupling agent with the recited structural properties for use in a ROMP polymerization process or to react with hydroxyl groups on an abrasive particle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763