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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 31 Dec 2025 has been entered.
Claim Rejections - 35 USC § 112
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.
Claim 1 is 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.
Regarding claim 1, the claim recites “particle shapes of the first three-dimensional particle layer, the second three-dimensional particle layer and the third three-dimensional particle layer are different.” It is unclear which particles must be different from each other to meet this claim limitation. Specifically, it is unclear if the particle shapes of each individual layer must be different from each other layer, if one layer must comprise different particle shapes from the other two layers, or if a particle within any or each of the layers must have a different shape than other particles within that same layer. For the purposes of this examination, this limitation will be read as best can be understood by examiner and is explained in the rejection below.
Further regarding claim 1, the claim recites “the particle shapes of the first three-dimensional particle layer, the second three- dimensional particle layer and the third three-dimensional particle layer are any one of a cone, a pyramid, a sphere, a triangular prism, a cube, a cylinder, and a multi-cube”. It is unclear how this limitation defining that particle shapes of the first second and third particle layer are any one of the listed shapes while also being different as defined in the previous section. It is unclear how these two limitations are meant to coexist. For the purposes of this examination, these limitations will be read as best can be understood by examiner and are explained in the rejection below.
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.
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.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnabel (US 3431689, previously cited) in view of Windisch (US 5712210, previously cited).
Regarding claim 1, Schnabel teaches a composite abrasive paper comprising a first abrasive comprising a first substrate (14), a first three-dimensional particle layer (see annotated figure below) provided on a surface of the first substrate (as described col 4 lines 3-35, coated with abrasive particles 18 depicted in fig 5), and a flexible microsphere layer (layer 16 including microspheres 19; col 4, lines 58-75) provided on a back surface of the first substrate; a second abrasive comprising a second substrate (15), a second three-dimensional particle layer provided on a surface of the second substrate (see annotated figure below), and a third three-dimensional particle layer provided on a back surface of the first substrate (see annotated figure below; as described col 4 lines 3-35, the entire second substrate may be dipped in abrasive, which results in abrasive particle layers on both sides of the substrate); wherein the first abrasive and the second abrasive are connected at an edge to form a connection part (12), and a middle of the first substrate and the second substrate forms a sealed cavity (cavity containing element 16; see annotated figure below), and the third three-dimensional particle layer is provided opposite to the flexible microsphere layer in the sealed cavity (third stereo particle layer is within the sealed cavity on opposite side of microsphere layer from the first substrate), particle shapes of the first three-dimensional particle layer, the second three-dimensional particle layer and the third three-dimensional particle layer are different (see fig 5 depicting particles 18 which differ slightly in shape); the particle shapes of the first three-dimensional particle layer, the second three-dimensional particle layer and the third three-dimensional particle layer are any one of a cone, a pyramid, a sphere, a triangular prism, a cube, a cylinder, and a multi-cube (as shown in fig 5, each of the depicted particles 18 has a generally pyramidal or triangular prismatic shape, but with slight differences; as best understood, this satisfies the claim limitations regarding particle shapes).
Schnabel does not teach a dashed tear line formed by a plurality of discontinuity cuts provided at a junction of the connection part and the sealed cavity. Windisch teaches a composite abrasive including a dashed tear line (fig 2) formed by a plurality of discontinuity cuts (34) provided at an outer edge of the abrasive paper (as shown in figs 2-3, each dashed tear line separates one article from another). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a dashed tear line formed by a plurality of discontinuity cuts at an outer edge of the abrasive paper of Schnabel, which is at the junction of the connection part and sealed cavity (as shown in Schnabel fig 3), as this would allow several abrasive articles to be formed in a roll and individually separated as needed as taught by Windisch (col 2, lines 28-36; col 3, lines 25-35).
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Response to Arguments
Applicant's arguments filed 31 Dec 2025 have been fully considered but they are not persuasive. Applicant argues that Schnabel does not teach the newly claimed “different” particle shapes. However, this limitation raises issues under 112b as described above. As the claims do not identify how the particles differ from each other and it is unclear which particles must be different from each other, figure 5 of Schnabel appears to satisfy these limitations, as it shows abrasive particles with slightly different triangular shapes.
Regarding the claimed dashed tear line, applicant argues that applying the dashed tear line of Windisch to the abrasive paper of Schnabel would result in a misfunction of Schnabel. Examiner respectfully disagrees. As detailed above, the tear line of Windisch is applied to edges between adjacent articles and allows them to be easily separated as needed. As these dashed tear line is selectively removed by a user, there is no expectation that the abrasive paper would become unusable, as the connection part still provides the claimed sealed cavity. In other words, the presence of a selectively torn tear line does not make the abrasive paper of Schnabel unsuitable for its intended purpose, contrary to applicant’s arguments.
Regarding the claimed flexible microspheres, applicant argus that the flexible microsphere layer of Schnabel is not fixedly bonded together with the first substrate and therefore, not “provided on” a back surface of the first substrate as claimed. However, there is no limitation in the claims which requires the microspheres to be fixedly bonded. As the microspheres of Schnabel are in a layer which contacts the back surface of the first substrate, this claim limitation is satisfied.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Other abrasive articles are cited, including those which teach the use of multiple shaped abrasives in a single article.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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