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 the amendment filed on 12/18/2025; after entry of this amendment, claims 16-35 are currently pending in this Application.
Any rejection and/or objection made in the previous Office action but not repeated below is hereby withdrawn.
Although previous claim 28 was indicated as an allowable subject matter, the limitation of which has now been incorporated into independent claim 16, upon further examination, it was concluded that said limitation is not found allowable (see below for details). As such, the present Office action is made Non-Final.
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.
Claims 16, 18, 27-28, 30-31 and 33 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.
With respect to claim 16, the claim recites, in part, “a content of silica, at least 10% of friable silica, not greater than 27% loos silica, or any combination thereof”; however, it is not clear whether the claimed percentages are based on weight percent or volume percent.
With respect to claim 18, the claim recites, in part, “the content of silica, at least 15% of bonded silica”; however, it is not clear whether the claimed percentage is in weight or volume percent.
With respect to claim 27, the claim recites, in part, “the coating comprises at least 15% of bonded silica”; however, it is not clear whether this percentage is in volume or weight percent.
With respect to claim 28, the claim recites, in part, the coating comprises relative to the content of silica, at least 10% of friable silica, not greater than 27% loos silica, or any combination thereof”; however, it is not clear whether this percentage is in volume of weight.
With respect to claim 30, the claim recites, in part, “the total content of silica is at least 15%”; however, it is not clear whether this percentage is in volume or weight.
With respect to claim 31, the claim recites, in part, “the coating comprises relative to the content of silica, at least 10% of friable silica, not greater than 27% loose silica, or any combination thereof”; however, it is not clear whether this percentage is in volume or weight.
With respect to claim 33, the claim recites, in part, “wherein the coating comprises a percentage of crystallinity of at least 1% and not greater than 63%”; however, it is not clear whether this percentage is in volume or weight.
Claims 25 (depending from claim 32), 32, 34 and 35 are, also, rejected as depending from a rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 depends from claim 16, and claim 16 recites, in part, “wherein the sintered coating comprises for the content of silica, at least 15% of bonded silica”; however, according to now amended claim 16, the silica in the sintered coating can only be friable silica, loose silica, or a combination of both. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 16-18, 20, and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. U.S. Patent Application Publication No. 2009/0235591 to Yener et al. (hereinafter Yener).
With respect to claim 16, Yener discloses abrasive particles comprising a core-shell structure, wherein the core comprises polycrystalline alpha alumina and the shell, i.e. claimed "coating", is a layer of a material such as silica (Abstract, [0008], [0050]).
Yener teaches the shell layer substantially encapsulate the core such that the shell layer overlies not less than about 90%, or even not less than about 95%, or even not less than about 98%, or even essentially all of the external surface of the core ([0046]).
It is noted that Yener teaches a process for forming the disclosed core-shell structure during which, after combining the components, the combination is fired to form the shell layer ([0038]); thus, Yener is seen to render the shell layer being a "sintered coating" comprising silica obvious.
Furthermore, the reference reads on the new amendment “wherein the sintered coating comprises for a content of silica, at least 10% of friable silica, not greater than 27% loose silica, or any combination thereof”; this is because “not greater than” is inclusive of zero, and because Yener does not disclose any loose silica in the coating, the reference is seen to read on the last two lines of amended claim 16.
With respect to claim 17, Yener is taken to render claim 17 obvious; this is because the shell or coating layer includes a polycrystalline material ([0045]-[0050]), and by nature, a polycrystalline material comprises multiple particles bonded adjacent to each other. Therefore, the coating or shell comprises domains.
With respect to claim 18, Yener discloses different embodiments, and the
reference encompasses an embodiment having a shell layer of silica, which is formed after combining the starting components and firing them ([0008], [0038], and [0050]).
Thus, inevitably, it is expected of the silica to be bonded to the core as also taught by Yener ([0039]). Also, considering the fact that an embodiment having only silica in the shell layer is within the teachings of the reference, the limitation of "at least" 15% of bonded silica is met as well; it is noted that as taught by Yener, the shell can be "zirconia, or silica, or compound oxides of silicon and zirconium" (see [0050]). Thus, Yener is certainly open to having only silica present in the shell, and bonded to the core.
Thus, the limitation of "at least 15% of bonded silica" is met.
With respect to claim 20, Yener teaches the thickness of the shell layer to be not greater than about 3.0 microns ([0047]), and this range is inclusive of all values below 3.0 microns. Considering the fact that the thickness of the shell layer, i.e. claimed "coating", can be any and all values below 3.0 microns, such as 130 nm or smaller, it is reasonable to expect that the domain size cannot be a value thicker than the thickness of the shell layer.
With respect to claim 22, Yener discloses the shell layer, i.e. claimed "coating", substantially encapsulate the core such that not less than 90% of the external surface of the core is encapsulated ([0046]). This is seen to render the claimed "at least 86%" of a surface of the core being covered by the coating obvious.
With respect to claim 23, Yener teaches the core comprises alpha alumina, and discloses that it can be polycrystalline alpha alumina (abstract, [0042]). Alpha alumina is a ceramic material.
Allowable Subject Matter
Claims 19, 21, and 26 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: The prior art do not disclose or suggest the cumulative limitations of claims 16 and 19, also the cumulative limitations of claims 16 and 21, and cumulative limitations of claims 16 and 26.
Yener discloses the shell layer is "not less" than 0.5 wt% (i.e. about 5000 ppm) of the weight of the abrasive particles; thus, the content of the shell or silica layer is more than the claimed 1000 ppm. Also, Yener discloses the shell layer, i.e. claimed "coating", to have "not less than about 90%" polycrystalline material. Additionally, Yener does not disclose or render obvious "an absolute value of the domain size standard deviation is at most 50% of the average domain size".
Claims 25, 27, 28, and 30-35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and/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.
Yener discloses the shell layer, i.e. claimed "coating", to have "not less than
about 90%" polycrystalline material; thus, the refences teaches a range for the
crystallinity of the material of the shell/coating to be outside of the claimed range.
Claims 24 and 29 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art do not disclose or suggest a plurality of abrasive particles, wherein each of the plurality of abrasive particles comprises a coating overlying a core, wherein the coating comprises an oxide material comprising silica, and the plurality of abrasive particles comprise an average domain size of the coating of not greater than 130 nm, and an average coating coverage of greater than 85% of a surface of the core, wherein silica is in contact of at most 1000 ppm relative to a weight of the plurality of abrasive particles.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731