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
The amendments filed December 17, 2025 have been entered. Accordingly, claims 1-3, 5, 8-10, 12, 14, 16, 18, 21, 24, 28-31, and 39-40 are currently pending. The examiner acknowledges the amendments of claims 10, 14, 21 and 24. The examiner notes that their appears to be a typographical error of claim 21 being listed as “withdrawn – currently amended”, thus in the interest of compact prosecution, the examiner is examining claim 24. The previous claim objection been withdrawn due to applicant amendments. The previous 103 rejections have been modified due to applicant’s amendments. For the reason(s) set forth below, applicant’s arguments have not been found persuasive. The action is Final.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/18/2025 has been received and considered by the examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10, 12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baratti (US Pub. No. 2017/0106501).
Regarding claim 10, Baratti discloses: a backup pad (Figures 1-4 and see also paragraph 0024-0025) for an abrasive system (element 1), the backup pad comprising:
a tool engaging feature (element 11 and see also paragraph 0039);
an abrasive article engaging feature (element 6 and see also paragraph 0041); and
a compressible pressure-tunning feature (elements 4/5, see also paragraph where the prior art discloses elements 4/5 as “first and second layers”, and see paragraph 0015 where the prior art discloses the first layer and a second layer, “both of which are made of elastically deformable material”, which is well known in the art to be compressible, thus having a compressible pressure-tunning feature) configured to redistribute contact pressure across a radius of an abrasive article attached to the abrasive article engaging feature (see figures 3-4 showing the elements 4/5 attached to an abrasive article (element 3) via the abrasive article engaging feature (element 6) which allows the system to engage a workpiece (element S), see also figure 3 showing redistributing a contact pressure in a straight down (middle portion) and end portions of elements 3/4/5 which are deforming differently in order to accommodate of a curved surface (differ from edges having more pressure than the middle portion), thus giving that the prior art discloses the structure of the compressible pressure-tunning feature and giving that there is no additional structure or structural difference, the prior art would be capable of having the compressible pressure-tunning feature contact pressure across a radius of an abrasive article attached to the abrasive article engaging feature, as recited.).
Regarding claim 12, Baratti discloses: the backup pad of claim 10, wherein the compressible feature is elastically deformable (As per the rejection of claim 10, above, the prior art discloses the compressible feature (element 4/5) is elastically deformable (see paragraph 0015)).
Regarding claim 14, Baratti discloses: the backup pad of claim 10, wherein the compressible feature comprises a material (see paragraphs 0032/0033) which has been patterned, 3D printed, embossed, or engraved (The applicant is claiming a product-by-process limitation (which has been patterned, 3D printed, embossed, or engraved), MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different processes." In this instance, the product taught by Baratti is the same as or makes the product claimed obvious, meeting the limitation of the claim) to provide deformability (see paragraph 0015).
Regarding claim 16, Baratti discloses: the backup pad of claim 10, wherein the compressible feature is made of multiple layers (see paragraph 0026) and/or multiple materials (see paragraphs 0031/32) in a layered (see figure 1 showing the multiple different layers (element 4/5) in a layered construction) or agglomerate construction.
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Baratti (US Pub. No. 2017/0106501) in view of Sventek (WO 2019229610).
Regarding claim 18, Baratti discloses all the limitations as stated in the rejection of claim 10, but appears to be silent wherein the compressible feature includes a material having an elastic modulus of less than about 650 psi.
Sventek is also concern in providing a tool (Figure 1A-1B element 18 and see also paragraph 0035) comprising a pad (element 38) having a compressible feature (see paragraph 0051 where the prior art discloses element 38 as “an elastic layer” that is configured to “deform”, which is well known in the art to be compressible, thus having a compressible feature) and wherein the compressible feature includes a material (see paragraph 0059) having an elastic modulus of less than about 650 psi (see paragraph 0059 where the prior art discloses the elastic layer (element 38) having “a Young’s Modulus of less than about 1.5 MPa (220 psi), less than about 1.1 MPa (160 psi), less than about 0.31 MPa (45 psi)”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Baratti to incorporate the teachings of Sventek to provide wherein the compressible feature includes a material having an elastic modulus of less than about 650 psi. One of ordinary skill in the art would recognize that providing a desired material with a desired elastic modulus including the claimed the elastic modulus of less than about 650 psi would necessarily provide the predictable result of having sufficiently high elasticity, such that the elastic layer compresses against the substrate under normal operating conditions as disclosed by Sventek (see paragraph 0059).
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Baratti (US Pub. No. 2017/0106501) in view of Moon (KR 20100109161).
Regarding claim 21, Baratti discloses all the limitations as stated in the rejection of claim 10, but appears to be silent wherein the hardness of the compressible feature changes across the pad from its center toward its perimeter.
Moon is also concern in providing a pad (Figure 1 element 10 and see also page 004, ll. 14-16) comprising a compressible feature (elements 11a/11b/11c) and wherein the hardness of the compressible feature changes across the pad from its center toward its perimeter (see page 005, ll. 17-21 where the prior art discloses different portions of the compressible feature (elements 11a/11b/11c) having different “Shore D hardness” across the pad from the center (element 11c) towards its perimeter (element 11a)).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Baratti to incorporate the teachings of Moon to provide wherein the hardness of the compressible feature changes across the pad from its center toward its perimeter. One of ordinary skill in the art would recognize that providing the pad with different desired hardnesses at different locations would necessarily provide a single pad with a plurality of different physical properties in order to interact with different workpieces to provide a desired finished without having to alternate/replace the pad with single physical properties.
Regarding claim 24, Baratti discloses all the limitations as stated in the rejection of claims 10 and 21, but appears to be silent wherein the compressible feature comprises of concentric rings with different hardnesses.
Moon is also concern in providing a pad (Figure 1 element 10 and see also page 004, ll. 14-16) comprising a compressible feature (elements 11a/11b/11c), and wherein the compressible feature comprises of concentric rings with different hardnesses (see page 005, ll. 17-21 where the prior art discloses different portions of the compressible feature (elements 11a/11b/11c) having different “Shore D hardness” across the pad from the center (element 11c) towards its perimeter (element 11a) and being arranged “concentrically”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Baratti to incorporate the teachings of Moon to provide wherein the compressible feature comprises of concentric rings with different harnesses. One of ordinary skill in the art would recognize that providing the pad with concentric rings with different harnesses would necessarily provide a single pad with a plurality of different physical properties in order to interact with different workpieces to provide a desired finished without having to alternate/replace the pad with single physical properties.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
On pages 6-8 of the “Remarks” the applicant argues that the prior art of Baratti does not discloses the newly presented limitations of independent claim 10, specifically:
1. Baratti's deformable layers do not redistribute pressure across a radius
Baratti describes two deformable layers (4 and 5) positioned between a rigid support and an abrasive layer. These layers enable conformability to curved surfaces, improved finishing, and reduced edge damage (e.g., 0015-0031). However, nothing in Baratti suggests that these layers:
- create a non-uniform or engineered pressure distribution across a radius,
- are configured to modify the radial pressure profile applied to an abrasive disc,
- are designed to change a radial cut-rate profile.
Instead, the layers flex uniformly in response to surface contour, providing compliance-not radial pressure tuning.
Baratti contains no disclosure or suggestion that its deformable layers:
- provide radially varying stiffness or compression,
- adjust pressure with respect to distance from the center of the pad, or
- alter the cut-rate profile across the radius of an attached abrasive article.
Absent such disclosure, Baratti cannot meet this limitation, either expressly or inherently.
2. Inherency has not been established
The Office Action indicates that because Baratti's layers are elastically deformable, they "would be capable of' changing a cut-rate profile.
However, inherency requires that the missing feature be necessarily present in all embodiments, not merely possible.
Here:
- Deformability alone does not imply deliberate or consistent pressure redistribution across a radius.
- Many deformable layers compress uniformly and therefore do not create any radial pressure gradient.
- Baratti nowhere suggests any structure or function that would cause its layers to compress differently at different radial positions.
Therefore, inherency cannot be asserted.
3. Baratti teaches uniform support-not controlled radial pressure variation
Baratti explicitly states that its second layer provides uniform support to the abrasive layer (e.g., 0036). Uniform support directly contrasts with the claimed feature, which requires non-uniform, radius-dependent pressure redistribution.
Thus, Baratti's teachings run counter to the requirements of amended claim 10.
The examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., create a non-uniform or engineered pressure distribution across a radius, configured to modify the radial pressure profile applied to an abrasive disc, designed to change a radial cut-rate profile, and non-uniform, radius-dependent pressure redistribution) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, as shown in the rejection of claim 10 above, the prior art of Baratti discloses all the structural limitations of the backing pad including a compressible pressure-tunning feature (elements 4/5) being showing portions of the compressible pressure-tunning feature attached to an abrasive article (element 3) via the abrasive article engaging feature (element 6) while also showing the pressure-tunning feature being capable of redistributing a contact pressure in a straight down (middle portion) and end portions of elements 3/4/5 which are deforming differently in order to accommodate of a curved surface (differ from edges having more pressure than the middle portion), thus redistribute contact pressure across a radius. Thus, meeting the claim limitation.
Lastly, the recitation of the compressible pressure-tunning feature being “configured to” redistribute contact pressure across a radius of an abrasive article attached to the abrasive article engaging feature is also a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, arguments have been found unpersuasive.
On pages 8-10 of the “Remarks” the applicant argues that the prior art of combination of Baratti in view of Sventek, specifically:
Sventek does not concern-or even mention-backup pads but rather directed to abrasive rotary tools, the references address fundamentally different problems, the Office Action provides no explanation why a skilled artisan would transplant Sventek's elastic layer into Baratti's backup-pad setting, and Sventek is non-analogous art with respect to backup pads.
The examiner respectfully disagrees. In response to applicant's argument that the prior art of Sventek is related to abrasive rotary tool which address fundamentally different problems and is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the prior art of Sventek is in the same field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned of providing a pad for an abrasive system (i.e. rotary tool)
Furthermore, the examiner is not relying in the teaching of Sventek to address the limitation of the compressible pressure-tuning feature being configured to redistribute contact pressure across a radius of an abrasive article attached to the abrasive article engaging feature, but rather that it is known in the art to have a pad with a compressible feature that includes a material having an elastic modulus of less than about 650 psi (see rejection of claim 18 above).
Lastly, the examiner has provided in the rejection of claim 18 above why one of ordinary skill in modified Baratti to incorporate the teachings of Sventek to provide wherein the compressible feature includes a material having an elastic modulus of less than about 650 psi, in order to provide a desired material with a desired elastic modulus with the added benefits of sufficiently high elasticity, such that the elastic layer compresses against the substrate under normal operating conditions as disclosed by Sventek (see paragraph 0059). Thus, arguments have been found unpersuasive.
On pages 11-15 of the “Remarks” the applicant argues that the prior art of combination of Baratti in view of Moon, specifically:
Moon does not concern backup pads at all-its hardness-varying elements are part of the abrasive article itself. The references solve entirely different problems. The combination would require redesigning Moon's polishing pad into a different tool architecture, not simply substituting known elements. The Office Action's rationale is conclusory and lacks an articulated reasoning. Moon is non-analogous art with respect to the claimed backup-pad feature
The examiner respectfully disagrees. In response to applicant's argument that the prior art of Moon is related to a polishing pad which address fundamentally different problems and is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the prior art of Moon is in the same field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned of providing a pad for an abrasive system. Furthermore, the examiner is not relying in the teaching of Moon to teach a polishing pad or substituting the polishing surfaces into the backup pad of Baratti, but rather that it is known in the art to have a pad with a compressible feature that includes a hardness that changes from the center toward its perimeter (see rejection of claim 21 above).
Lastly, the examiner has provided in the rejection of claim 21 above why one of ordinary skill in modified Baratti to incorporate the teachings of Moon to provide wherein the hardness of the compressible feature changes across the pad from its center toward its perimeter, in order to provide the pad with a desired hardness with the added benefits of having a single pad with a plurality of different physical properties in order to interact with different workpieces to provide a desired finished without having to alternate/replace the pad with single physical properties. Thus, arguments have been found unpersuasive.
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 ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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/A.S./Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723