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 .
Claim Interpretation
Claim 5 recites the limitation “wherein the at least one organic bonding material is substantially fully cross-linked in the hot-pressing step”. This is worded ambiguously, as it is unclear whether the organic bonding material is cross-linked as a result of the hot-pressing step, or if the claim merely requires that the organic bonding material be cross-linked once the hot-pressing step occurs. Since the specification fails to clarify this, the Examiner believes the broadest reasonable interpretation of this limitation is that the organic bonding material must be cross-linked, and that the cross-linked material must be present during the hot-pressing step. This interpretation does not require the cross-linking to necessarily occur during, or as a result of, the hot-pressing step.
Claims 10, 11 and 19 each recite the limitation wherein various recited volume compositions “together amount to at most 100 vol.%”. Since the total volume of a product is necessarily 100 vol.%, this limitation will be considered inherently met by any prior art that teaches a comparable product, whether or not the art explicitly states that the volume fractions add up to 100 vol.%.
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 1–19 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.
Regarding claims 1, 3, 4, 6, 11 and 13–16, the phrases “in particular”, “preferably”, or “it is preferably provided” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, any such limitations will be considered examples or preferred embodiments, and the Examiner will not treat them as limiting the scope of the claim.
Claims 2, 5, 7–10, and 12, being dependent on claim 1, inherit its deficiencies, and are rejected on the same grounds. Claims 17–19, being dependent on claim 11, inherit its deficiencies, and are rejected on the same grounds.
Claims 2, 7–11, 15 and 19 each recite a broad range followed by a narrower “preferable” range. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, the Examiner will consider the broader range as the broadest reasonable interpretation of claim scope, and the narrower limitations as non-limiting examples thereof.
The term “substantially” in claims 2, 5, 7 and 15 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In addition, “substantially” is used to as an adverb to modify conflicting adverbs. For example, “substantially entirely” in claim 2 is indefinite because “entirely” denotes absolute completion, while “substantially” denotes an approximation falling short of that absolute; “substantially entirely” could reasonably be interpreted as “less than 100%”, but “substantially” doesn’t provide any metric for how much less than 100%. For purposes of examination, “substantially” will herein be treated as “within 10% of the absolute”, which the Examiner feels is the broadest reasonable interpretation a person having ordinary skill in the art would arrive at, encompassing the approximation of “substantially” while still approaching the absolutes of “entirely” or “fully”.
Claim 11 recites “at least one inorganic bonding material”, and subsequently recites “a bond volume of a bonding material”. This leads to ambiguity because a person having ordinary skill in the art could not reasonably determine whether “a bond volume of a bonding material” refers back to the “at least one inorganic bonding material”, or if it is referring to a second bonding material. Based on Applicants’ disclosure, the Examiner believes claim 11 is meant to recite “a bond volume of the bonding material”, which unambiguously refers back to the “at least one inorganic bonding material”. Accordingly, for purposes of examination, the Examiner will herein treat “a bond volume of a bonding material” as referring to the antecedent “at least inorganic bonding material”.
The term “low-temperature baking bond” in claim 16 is a relative term which renders the claim indefinite. The term “low-temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, the Examiner will interpret this claim as requiring an inorganic bonding material that is fused or sintered to a functional bond at a peak firing temperature of up to 1000 °C, since typical high-temperature bond materials fuse or sinter above 1000 °C.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1–4, 6, 9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiao et al. (CN 105598857 B, hereinafter “Xiao”).
Regarding claim 1, Xiao teaches a method for producing a ceramically bonded grinding tool (see generally abstract), comprising the following method steps carried out in chronological order:
in a first method step, at least one abrasive, at least one inorganic bonding material, and at least one organic bonding material are provided and blended (see Xiao, paragraph 0031 teaching the mixing of a superabrasive, inorganic ceramic bond, and organic temporary binder);
the at least one abrasive, at least one inorganic bonding material and at least one organic bonding material are pre-pressed in a cold-pressing step to form a cold-pressed green body (see paragraph 0031 teaching step S2 as a cold-pressing step);
the cold-pressed green body is pressed in a hot-pressing step to form a hot-pressed green body (see paragraph 0031 teaching step S5 as a hot-pressing step);
the hot-pressed green body is fired in a firing step to form a grinding tool blank, wherein the at least one organic bonding material is at least partly burned off during the firing step (see paragraph 0038 teaching the hot-pressed material as being held at sintering temperature without added pressure, which is functionally equivalent to a firing step [no firing temperature is claimed, and firing merely requires the material to be held at elevated temperatures so bonds can form]; also see paragraph 0071 indicating that the temporary organic binder is expelled as a gas);
the grinding tool blank is post-processed in a subsequent method step to form the grinding tool, in which the abrasive is embedded (see paragraph 0039 teaching post-processing shaping and sharpening, which forms a grinding tool).
Regarding claim 2, Xiao teaches the method according to claim 1, and further teaches the limitation wherein the at least one organic bonding material is substantially entirely burned off during the firing step, and/or is burned off to such an extent that an organic bond volume is at most 15 vol.% of the grinding tool blank (see paragraph 0071 teaching the temporary organic binder as being driven off; the extent to which the binder is burned off is not known, however, paragraph 0025 teaches that it is only 5–11 wt.% of the starting composition, and paragraph 0031 teaches the organic binder as liquid dextrin [density of up to 1.45 g/cc]; assuming the composition comprises 100 g total, up to 11 g can be organic binder, which means the starting volume of liquid dextrin could be up to 7.59 mL [11 g ÷ 1.45 g/mL]; the material is hot-pressed to a density of 2.5 g/mL [paragraph 0038], and so 100 g of the material is expected to have a final volume of about 40 mL; if none of the binder is driven off during the firing step, there would be 7.59 mL of binder in a total volume of 40 mL, which is 19.0 vol.%, a value already close to the claimed maximum [see MPEP 2144.05(I) regarding the obviousness of ranges that don’t overlap, but are merely close]; since Xiao teaches at least some of the binder as being driven off, it is reasonable to conclude that the final volume of binder will fall below the claimed maximum of 15 vol.%; as an example, 15 vol.% of 40 mL is 6 mL of liquid dextrin, which corresponds to a mass of 8.7 g and means only about 20% of the initial liquid dextrin would need to be burned off to meet the limitation).
Regarding claim 3, Xiao further teaches the limitation wherein the cold-pressing step and the hot-pressing step are carried out in separate press molds (see paragraph 0035 teaching the use of a cold-pressing mold; see paragraph 0037 teaching the hot-pressing mold as needing to be assembled around the cold-pressed billet; a person having ordinary skill in the art would reasonably interpret this as requiring a separate mold for the hot-pressing step, since the cold-pressing mold wasn’t taught as being assembled).
Regarding claim 4, Xiao teaches the method according to claim 1, and further teaches the limitation wherein the cold-pressed green body is pressed to a first extent in the cold-pressing step, and the hot-pressed green body is pressed to a second extent that is different from the first extent in the hot-pressing step (see paragraph 0035 teaching the material as being cold-pressed to a density of 2 g/cc [a first extent]; also see paragraph 0038 teaching the material as being hot-pressed to a density of 2.5 g/cc [a second extent which is different from a first extent]).
Regarding claim 6, Xiao further teaches the limitation wherein the at least one inorganic bonding material is fused in the firing step (see paragraphs 0037 and 0038 teaching the material as being sintered in a sintering furnace; sintering is a thermal process that forms bonds between powdered inorganic materials, so Xiao inherently teaches the fusion of inorganic bonding material in the firing step).
Regarding claim 9, Xiao further teaches the limitation wherein the firing step is carried out at a temperature between 600–1300 °C (see paragraph 0038 teaching the sintered material as being held at 780–830 °C, which falls within the claimed range).
Regarding claim 12, Xiao teaches a grinding tool produced by the method according to claim 1 (see paragraph 0024 teaching the abrasive as being shaped and sharpened, which a person having ordinary skill in the art would understand to mean the product is shaped and sharpened to function as a tool).
Claims 11 and 13–19 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bright (US 2003/0194947 A1, hereinafter “Bright”).
Regarding claim 11, Bright teaches a ceramically bonded grinding tool (see generally abstract teaching a bonded abrasive tool; also see paragraph 0071 teaching the use of ceramic bond), comprising:
a main body (see paragraph 0101 teaching abrasive tools, which constitute a main body);
at least one abrasive that is embedded in the main body by means of at least one inorganic bonding material (see paragraph 0102 teaching abrasive tools comprising abrasive grains and bond; also see paragraph 0071 teaching the bond as comprising at least one of several inorganic materials), wherein
a grain volume of the abrasive is in the range between 50 vol.% and 65 vol.% (see paragraph 0101 teaching the abrasive grain volume as about 5–75 vol.%; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges), and
a bond volume of a bonding material is in the range between 10 vol.% and 35 vol.% (see paragraph 0102 teaching the bond volume as about 3–25 vol.%; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges),
of the grinding tool, wherein the grain volume and the bond volume together amount to at most 100 vol.% of the grinding tool (see the above Claim Interpretation section regarding this limitation; since a product necessarily has a maximum volume of 100 vol.%, this limitation is considered inherently met).
Regarding claim 13, Bright teaches the grinding tool according to claim 11, and further teaches the limitation wherein the main body is annular and/or formed in one piece (see paragraph 0101 teaching the abrasive tools as monolithic, i.e., formed in one piece; the use of the conjunction “and/or” means that the claim can be satisfied by just one of the recited limitations).
Regarding claim 14, Bright further teaches the limitation wherein the at least one abrasive is formed at least in part of, inter alia, SiC, aluminum oxide, and/or a superabrasive (see paragraph 0067 teaching suitable abrasives as including silicon carbide [SiC], alumina [aluminum oxide], diamonds and cubic boron nitride [both superabrasives]).
Regarding claim 15, Bright teaches the grinding tool according to claim 11, and further teaches the limitation wherein the grinding tool comprises at most 15 vol.% organic bond volume (see paragraph 0102 teaching a bond volume of 3–25 vol.%; note that the subsequent limitations are all “preferable” or “preferably provided”, and are therefore not considered limiting [see the above 112(b) rejection of claim 15]).
Regarding claims 16 and 17, Bright further teaches the limitation wherein the grinding tool comprises at least one inorganic bonding material, wherein the at least one inorganic bonding material is in the form of a low-temperature baking bond (see paragraph 0077 teaching high-temperature fusing binding materials as being preferred, but also indicating that other types of binder may also be suitable; also see MPEP 2123(II) indicating that non-preferred embodiments constitute prior art), and wherein the at least one inorganic bonding material comprises SiO2, Al2O3, B2O3, and/or at least one oxide comprising an alkali and/or alkaline earth (see pg. 11, Table 2 teaching the inorganic bonding material as comprising SiO2, Al2O3, B2O3, Alkaline Earth oxide RO, and Alkali oxide R2O, in varying amounts).
Regarding claim 18, Bright further teaches the limitation wherein the grinding tool has an external diameter between 50 mm and 450 mm, an internal diameter between 20 mm and 300 mm, and/or a width between 10 mm and 90 mm (see paragraph 0238 teaching a grinding wheel with dimensions of 4.57×2.54×1.60 cm [45.7×25.4×16.0 mm]; Bright does not clarify which value corresponds to which dimension, but one of the values corresponds to width of the grinding wheel, and all three values fall within the claimed width range, so Bright’s dimensions are at least considered to satisfy that particular limitation).
Regarding claim 19, Bright further teaches the limitation wherein the grinding tool comprises a pore volume in the range between 10 vol.% and 40 vol.% (see paragraph 0106 teaching a porosity of at least 30 vol.%, which falls within the claimed range), wherein the grain volume, the bond volume and the pore volume together amount to at most 100 vol.% of the grinding tool (the volumes necessarily add up to a maximum of 100 vol.%, so this limitation is considered inherently met.
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao as applied in claim 1 above, and further in view of Wu et al. (Int. J. Sustain. Eng., 2020, 13(4), 280–287, hereinafter “Wu”).
Regarding claim 5, Xiao teaches the method according to claim 1 (see the above 102 rejection of claim 1), but fails to teach the limitation wherein the at least one organic bonding material is substantially fully cross-linked in the hot-pressing step (see paragraph 0031 teaching the use of liquid dextrin as an organic bonding material; dextrin can be cross-linked, but Xiao does not explicitly teach cross-linked dextrin). Wu teaches an abrasive tool made with cross-linked polysaccharide-based organic binder (see Wu, generally abstract), which is comparable to the abrasive tool made with dextrin organic binder (a polysaccharide of repeating glucose monomers) taught by Xiao. Wu explicitly teaches cross-linked polysaccharides as improving the mechanical strength of the abrasive tool over non-cross-linked polysaccharides (see pg. 280, final paragraph, continuing to pg. 281, first paragraph). Additionally, Wu teaches the polysaccharide as comprising repeating glucose units (see pg. 280, section “Polysaccharide bonded abrasive tool”, first paragraph), which means it is chemically identical to dextrose. The motivation to modify Xiao according to Wu most closely aligns with KSR Rationale C, which states it is prima facie obvious to use a known technique (cross-linking polysaccharide-based organic binder) to improve similar devices (Xiao’s and Wu’s abrasive tools) in the same way (improving the mechanical strength of the abrasive tool). Both Xiao and Wu teach dextrose-based polysaccharides, so a person having ordinary skill in the art would have a reasonable expectation of success. Claim 5 is therefore rendered obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao. Evidentiary support for typical cold-pressing temperatures is provided by Guo et al. (Adv. Funct. Mater. 2016, 26, 7115–7121, hereinafter “Guo”).
Regarding claim 7, Xiao fails to explicitly teach the limitation wherein a pressure between 20 bar and 300 bar, and/or substantially room temperature is/are used in the cold-pressing step (see paragraph 0014 describing the cold-pressing process, but failing to explicitly teach pressure or temperature conditions). However, absent any evidence to the contrary, a person having ordinary skill in the art would reasonably conclude that Xiao is following standard practices for cold-pressing. Guo teaches that cold sintering (i.e., cold-pressing) takes place between room temperature and 200 °C (see Guo, abstract; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; the use of the conjunction “and/or” means that only one of the claimed conditions needs to be met to render the claim obvious, and a cold-pressing temperature of 20–200 °C overlaps with the “substantially room temperature” limitation).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao as applied in claim 1 above and further in view of Zhang et al. (CN 104669128 A, hereinafter “Zhang”).
Regarding claim 8, Xiao teaches the method according to claim 1 (see the above 102 rejection of claim 1), but fails to explicitly teach the limitation wherein a pressure between 270 bar and 310 bar, and/or a temperature between 150 °C and 200 °C, is/are used in the hot-pressing step (see paragraph 0016 teaching a pressure of 5–10 MPa [50–100 bar]; also see paragraph 0038 teaching a temperature of 780–830 °C). Zhang teaches a superhard abrasive prepared with an inorganic-organic composite binder (see Zhang, paragraph 0002), which is comparable to the abrasive tool prepared with inorganic-organic composite binder taught by Xiao. Zhang explicitly teaches the hot-pressing temperature as 180 °C (see paragraph 0013), which falls within the claimed range. Furthermore, there is motivation to modify the hot-pressing conditions taught by Xiao according to Zhang, because temperature and pressure in hot-pressing are result-effective variables (hot-pressing requires heat, pressure, and time, and changing any of those three variables can affect the resulting product). The motivation to modify Xiao according to Zhang most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Xiao’s hot-pressing conditions) for another (Zhang’s hot-pressing conditions) to obtain predictable results (a hot-pressed abrasive tool). Since Xiao and Zhang both teach an abrasive bonded with inorganic-organic composite binder via hot-pressing, a person having ordinary skill in the art would have a reasonable expectation of success. Claim 8 is therefore rendered obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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