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 .
Status of Claims
This action is in reply to the Amendments/Response filed on November 18, 2025. Claim 2 has been amended. Claims 3-7 have been added. No claims have been cancelled. Claim 1 was previously withdrawn in the restriction filed 07/29/2025. Claims 2-7 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claim 2 filed on November 18, 2025.
The applicant’s amendments to claim 1 are sufficient to overcome the 35 U.S.C. 103 rejection, which applied Suzuki et al. (US PG Pub No. 20030032382) in view of Sabau et al. (US PG Pub No. 20160265570).
Response to Arguments
The applicant’s arguments, see pages 5-7, filed November 18, 2025 have been fully considered.
103 Rejections: The examiner agrees the prior art fails to disclose or make obvious the entirety of the newly amended claim 2.
Newly Added Claims: On page 7, applicant remarks that new claims 8 and 9 were added. However, the claims submitted November 18, 2025 added claims 3-7. If there further claims 8 and 9, they will have be to submitted in order to be considered.
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 3-5 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 2 recites that the side or bottom surface of the annular slot include a “third surface unevenness that is formed in the first surface unevenesses and second surface unevenesses…” In claim 2, the applicant has established that the third unevenness (4e3) is formed in/within/on the first (4e1) and second (4e2), shown clearly in figure 3A and 3B of the applicant’s disclosure.
However, claim 3 recites that the third surface unevennesses (4e3) on the side surface include the surfaces of the first surface unevenness and a plurality of holes formed on the side surface. There is first an issue of antecedence with the term “the surfaces of the first surface,” as antecedence for these surfaces hasn’t been established. Further confusion is created as claim one recites that the third is formed in the first and/or second surface unevenesses. Now this claim appears to make the third unevenness dominant, as the surfaces of the first unevenesses are included in the third.
Fig. 3 appears to show the third surface unevenesses are formed on a surface of the first unevenesses and comprise holes formed on said surface. As presented, the claim appears to contradict the relationship between unevenesses established in claim 2.
Claim 4, dependent upon claim 3, suffers from the same contradictory language applied to the bottom surface of the annular slot.
Claim 5 is identical to claim 4, but is dependent upon claim 2. As such, it is similarly rejected.
Allowable Subject Matter
Claims 2 and 6-7 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, Suzuki and Sabau, considered the closet art of record, when evaluated as a whole, alone or in combination, neither anticipates nor renders obvious the complete combination of the recited elements as presented within the claim.
The references disclose/make obvious a grinding wheel (grinding wheel 2, fig. 1-5) comprising an annular base (base 4, fig. 1-5) having an annular slot (annular groove 34, fig. 1-5) defined in a surface (under surface 10 of base 4, see fig. 2-5) thereof along circumferential directions thereof (along the plane of the undersurface 10); a plurality of grindstones (grinding stones 36, fig. 1-5) fixed to the annular slot (annular groove 34, fig. 1-5) by an adhesive ([0019]), the annular slot having a side surface and bottom surface (see fig. 5 – ann. 1) .
Sabau discloses a method of joining of materials with adhesives, surface preparation for joining materials with adhesives, and to materials joined with adhesives.
The first surface unevenesses would be projected from the first surface (see fig. 5 – ann. 1), and made up peaks and valleys (see Sabau fig. 13) that travel along the surface, therein having periodicy in “directions perpendicular to the circumferential directions”. The second surface unevenesses would be projected up from the bottom surface (see fig. 5 – ann. 1) and made up of peaks and valleys that travel along the bottom surface perpendicular to circumferential and thicknesswise directions (See fig. 5 – ann. 2).
As Sabau discloses the capacity to change depths and periodic arrangement (see [0010], [0052-53], [0060]), Suzuki in view of Sabau would be capable of having different depths and periods along the same surface, meeting the limitation of a “third surface unevenesses” on either first or second surface.
However, it fails to show that the third surface unevennesses are formed “in the first surface unevenesses and the second surface unevenesses” while having a depth smaller than the of the first and second. The first and second unevenesses provide a foundation for the further unevenness to be formed on top of them. Suzuki failed to disclose unevenesses, and rather the modification was taught in by Sabau. The unevenesses Sabau teaches do not anticipate stacking one unevenness on top of another, but rather arranging them periodically. Claim 2 is considered allowable in light of the cited art of record.
Claims 6-7 are allowable due to their dependence upon claim 2.
Claims 3-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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 JASON KHALIL HAWKINS whose telephone number is (571)272-5446. The examiner can normally be reached M-F; 8-5PM.
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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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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723