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 12/05/2025 and the Supplemental Amendment filed on 01/28/2026.
Claims 1-6 and 9-13 are presently pending and under examination; claims 7-8 are canceled; claims 1, 9, 11 and 13 are amended.
The objections to the drawings and abstract are withdrawn in light of the amendments to the drawings, abstract and specification.
The objections to claims 1 and 13 are withdrawn in light of the amendments to the claims.
The 35 U.S.C 112(b) rejection of claims 1-6 and 12 is withdrawn in light of the amendments to the claims; the 35 U.S.C 112(b) rejections of claims 9 and 11-13 are maintained; the rejection of claims 7-8 is moot as these claims have been canceled.
The 35 U.S.C. 102 rejection of claims 1-6 and 9-13 over GIVOT is withdrawn in light of the amendments to the claims; the rejection of claims 7-8 is moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 9-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, it is noted that the amendment to claim 1 recites the limitation “sintering the ceramic abrasive particle precursor; and after sintering, impregnating the ceramic abrasive particle precursor… to form the formed ceramic abrasive particle” (see claim 1 at lines 6-8 and 18). As such, the Examiner has been unable to locate any disclosure that would support the impregnation step being the step that forms the formed ceramic particle as claimed. The specification (and the present claim 1 prior to amendment) explicitly states that sintering is the step that turns the precursor into the formed ceramic particle (see the present specification at, e.g., pg. 2, lines 1-2, pg. 23, lines 27-28, pg. 29, lines 11-12 and 21-25, pg. 33, lines 21-27 and pg. 35, lines 11-17, etc.) and that the modifying additive is introduced to the precursor via impregnation before the subsequent sintering step which forms the formed ceramic particle (see the present specification at, e.g., pg. 24, line 32 - pg. 25, line 1 and pg. 29, lines 7-10). It is noted that on pg. 2, the specification mentions that “Impregnating the ceramic abrasive particle precursor occurs after drying, calcining or sintering”; however, this contradicts the rest of the disclosure, which explicitly states throughout that the precursor is impregnated, and that after the precursor is sintered, the formed ceramic particle is formed and is no longer a precursor, which makes it clear that the precursor no longer exists after sintering and therefore the precursor cannot be impregnated after sintering as it does not exist. Although this one sentence mentions impregnating the “precursor” after sintering, the disclosure does not appear to provide any support for the impregnation step being the step that forms the formed ceramic particle as claimed.
With respect to claims 2 and 12, claims 2 and 12 depend from claim 1, and after amendment now recite “after sintering, impregnating the ceramic abrasive particle precursor with a mixture… wherein impregnating comprises exposing the ceramic particle precursor to a mixture comprising the one or more of the first group or the second group in a nitrate solution” (see claim 1 at lines 8-9 and claim 2 at lines 1-3), and “wherein impregnating comprises saturating the formed ceramic abrasive particle in the mixture” (see claim12 at lines 1-2). While the specification provides support for the ceramic particle precursor being exposed to a nitrate solution and saturated prior to sintering (see the present specification at pg. 33, lines 21-26 and pg. 35, lines 11-16), no support could be located for the precursor or the formed ceramic abrasive particle being exposed to a nitrate solution and saturated after sintering as now required by the claims.
With respect to claim 4, claim 4 depends from claim 1, and after amendment now recites “after sintering, impregnating the ceramic abrasive particle precursor with a mixture… wherein impregnating limits growth of ceramic oxide crystals” (see claim 1 at lines 8-9 and claim 4 at lines 1-2). While the specification provides support for impregnation of the precursor with the recited mixture prior to sintering limiting the growth of ceramic oxides during firing, i.e., during subsequent sintering (see the present specification at pg. 4, lines 7-11), no support could be located for impregnation with the claimed mixture after sintering limiting growth of ceramic oxide crystals as now claimed.
Claims 3, 6, 9-11 and 13 are included herein as each depends from a claim which is rejected for the reasons set forth above.
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 1-6 and 9-13 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.
Claim 1 recites the limitation “sintering the ceramic abrasive particle precursor; and after sintering, impregnating the ceramic abrasive particle precursor… wherein impregnating the ceramic abrasive particle precursor occurs after drying, calcining or sintering to form the formed ceramic abrasive particle” (see claim 1 at lines 6-8 and 16-18); however, it is not clear how impregnating the ceramic abrasive particle precursor could occur after sintering to form the formed abrasive particle, as the present specification indicates that the sintering step forms the formed ceramic abrasive particle (i.e., the specification indicates that after sintering, the “precursor” no longer exists and therefore could not be impregnated; see the present specification at, e.g., pg. 2, lines 1-2, pg. 23, lines 27-28, pg. 29, lines 11-12 and 21-25, pg. 33, lines 21-27 and pg. 35, lines 11-17, etc.). It is not clear from the claims in the context of the disclosure whether the precursor as claimed still exists after the sintering step, and it is not clear how the impregnation step forms the formed ceramic abrasive particle when the specification indicates that the sintering step turns the precursor into the formed ceramic abrasive particle. Further, the limitation of “wherein impregnating the ceramic abrasive particle precursor occurs after drying, calcining or sintering” indicates that the impregnating occurring after sintering is merely optional and is not required, whereas the previous limitation indicates that it is required, rendering the metes and bounds of the claim further indefinite as it cannot be determined from this language whether or not the impregnation step must actually occur after sintering.
Claim 9 recites the limitation “wherein impregnating further comprises: exposing the formed ceramic abrasive particle to the mixture” (see claim 9 at lines 1-2) and claim 12 recites the limitation “wherein impregnating comprises saturating the formed ceramic abrasive particle in the mixture” (see claim 12 at lines 1-2); however, claim 1, from which claims 9 and 12 depend, recites the limitation “impregnating the ceramic abrasive particle precursor with a mixture” (see claim 1 at line 7). Therefore, it is not clear how the step of impregnating the ceramic abrasive particle precursor with a mixture recited in claim 1 could comprise exposing the formed ceramic abrasive particle to the mixture, as claim 1 indicates that the precursor and the formed particle are different materials. No disclosure regarding exposing or saturating the “formed ceramic abrasive particle” with the mixture could be located in the specification, which describes exposing/saturating the precursor with the mixture prior to sintering to form the formed abrasive particle.
For purposes of examination, Examiner treated claim 1 as requiring impregnation after sintering rather than this order being optional. Clarification is requested.
Claim 11 recites the limitation "the plurality of edges" (see claim 11 at line 2). There is insufficient antecedent basis for this limitation in the claim. It is noted that “a plurality of edges” is positively recited in claim 10, but not in claim 1 from which claim 11 depends.
Claims 2-6, 10 and 13 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
Response to Arguments
Applicant's arguments, see Remarks at pg. 9, filed 12/05/2025, with respect to claims 1-6 and 9-13, have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claims 1-6 and 9-13 over GIVOT has been withdrawn. However, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(a) and 112(b) for claims 1-6 and 9-13 as set forth above.
It is noted that although the prior art of record fails to teach nor would one of ordinary skill in the art have considered it obvious to include a step of impregnating the ceramic abrasive particle precursor with the recited mixture after sintering to form the formed ceramic abrasive particle as claimed by amended claim 1, as set forth above, this subject matter fails to comply with the written description requirement and is therefore not considered allowable subject matter.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731