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 December 12, 2025. Claims 1-3 have been amended. Claims 6-12 have been added. Claim 4 has been cancelled. Claims 1-3 and 5-12 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claims 1-3 filed on December 12, 2025.
The applicant’s amendments to claim 1 are sufficient to overcome the 35 U.S.C. 102 rejection, which previously indicated the claims as being anticipated by You (US Patent No. 8435098).
The applicant’s amendments to claim 1 are sufficient to overcome the 35 U.S.C. 103 rejection, which previously indicated the claims as being obvious in view of Mcardle et al. (US PG Pub No. 20200187743) and Hori (US PG Pub No. 20130093145).
Please see the new rejection applying Mizuno et al. (US PG Pub No. 20140349557) in place of You (US Patent No. 8435098) regarding the wt% of the binder comprising ceramic, spherical fillers.
Response to Arguments
The applicant’s arguments, see pages 5-9, filed December 12, 2025, have been fully considered.
102 and 103 rejections: The applicant’s arguments that the amendments overcome You and Mcardle in view of Hori, as previously presented, are persuasive. You is silent to the wt% of the fillers within the binder. Mcardle in view of Hori discloses wt% of fillers at 52%, which his less than 60%.
Please see within the present action a new rejection that applies Mizuno in view of Petroski, which has alumina and silica within its filler, and that their weight part composition ranging between 50 and 90 of the composition ([0043]), and support for employing spherical shaped particles. Please see the rejection set forth below.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al. (US PG Pub No. 20140349557) in view of Petroski (US PG Pub No. 20040142637).
In regards to claim 1, Mizuno discloses
a grindstone (grinding wheel 10, fig. 1-3) comprising:
abrasive grains (cbn abrasive grain 34 and diamond abrasive grain 36; fig. 3); and
a binder (vitrified bond 32, fig. 3) for fixing the abrasive grains,
wherein the binder contains fillers ([0043]) for reinforcing the binder, such that the spherical fillers are ceramic particles and the content of the spherical fillers in the binder is between 60 wt% and 80 wt% ([0043]).
[0043] The vitrified bond 32 is preferably configured by, for example, borosilicate glass or crystallized glass... Glass composition desirable as the vitrified bond 32 is, for example, as follows. SiO.sub.2: 40 to 70 wt. part, Al.sub.2O.sub.3: 10-20 wt. part, B.sub.2O.sub.3: 10 to 20 wt. part, RO (alkali earth metal): 20 to 10 wt. part, R.sub.2O: 2 to 10 wt. part
Mizuno the SiO2 or Al2O3 are considered “ceramic” in view of the applicant’s specification, wherein SiO2 and Al2O3 fall under the category of ceramics.
Mizuno is silent regarding the shape of the silica or alumnia particles employed within vitrified bond as filler.
Petroski, which is a polishing pad for use in chemical mechanical polishing of substrates that being made of a porous structure, wherein the porous pad contains nanometer-sized filler-particles that reinforce the structure, imparting an increased resistance to wear as compared to prior-art pads.
Petroski teaches:
[0024] The preferred method of production…conditioning-reinforcing fillers are incorporated…It provides strength to the final product, contributing to an increase in pad life…The conditioning-reinforcing fillers are nanometer-sized particles. Acceptable conditioning-reinforcing fillers include: Colloidal silica, alumina...Of these, the most preferred filler is colloidal silica of 2-130 nanometers in diameter. The size and shape of the nanometer-sized particles is important. Spherical-shaped particles are the most preferred; however, platelet-shaped particles, such as clays, have also proven acceptable...Colloidal silica, as well as other conditioning-reinforcing filler particles, may also be incorporated directly into the resin…
Mizuno and Petroski are analogous to the claimed invention in that they are in the same field of endeavor, polishing apparatuses for grinding/polishing a workpiece.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the alumina and silica particles of Mizuno, and adopt the teaching of Petroski and provide them in spherical shape, as the shape is preferred in improving final strength of the product and improve polishing material life ([0024]).
In regards to claim 5, Mizuno as modified discloses
the grindstone according to claim 1, wherein the binder (vitrified bond 32, fig. 3) is a vitrified bond or a resin bond.
In regards to claim 10, Mizuno as modified discloses
the grindstone according to claim 1, wherein the spherical fillers are ceramic particles formed of aluminum oxide (Mizuno [0043]; alumina is included in the vitrified bond).
In regards to claim 12, Mizuno as modified discloses
the grindstone according to claim 1, wherein the grindstone includes a plurality of the grindstones (grinding stone strip 26; fig. 1-2) which are arranged in an annular shape on a grinding wheel.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mizuno in view of Li (US PG Pub No. 20030045221).
Mizuno fails to explicitly disclose an average particle diameter of the spherical fillers is greater than an average particle diameter of the abrasive grains.
Li, which discloses an abrasive tool includes a superabrasive grain component, a filler component that comprises hollow bodies and a vitreous bond.
Li teaches:
[0012] The superabrasive material is in the form of grain, also known as "grit." … Generally, the superabrasive employed in the present invention has an average particle size in a range of between about 0.5 micrometers (microns, .mu.m) and about 500 .mu.m. Preferably, the particle size is in a range of between about 2 .mu.m and about 200 .mu.m.
[0023] The filler component of the abrasive tool of the invention includes hollow bodies...
[0024] Examples of suitable materials of the hollow bodies include glass ceramic mullite, alumina, glass, ceramic bubbles and spheres...
[0025] In one embodiment, the hollow bodies have an average diameter in a range of between about 10 .mu.m and about 150 .mu.m. Preferably, at least about 90% of the hollow bodies have a particle size within a range of between about 20 .mu.m and about 120 .mu.m.
Li presents the ceramic filler can have an average size (lower end of the range being 10 microns) larger than the super abrasive (lower end range being 2 microns).
Li and Mizuno are considered analogous to the claimed invention because they are in the same field of endeavor, polishing apparatus with abrasive grit and vitrified bond with ceramic fillers.
Therefore, pursuant of MPEP 2143.E, choosing a ceramic filler, either relatively larger or smaller than the abrasive, would be considered obvious to try given there being a finite number of identified, predicatable solutions. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.
Claim(s) 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno in view of Hori (US PG Pub No. 20130026720).
In regards to claim 3, Mizuno as modified discloses
but fails to explicitly disclose a ratio of a short axis to a long axis of the spherical fillers is not less than 0.7.
However, as evidenced by Hori, a skilled artisan would recognize a spherical filler would have a shape approaching that of a true sphere (completely round).
[0066] The term "spherical" of the spherical filler refers to not only a true sphere but shapes that approximate a true sphere. In other words, not less than 90% of the grains are within a form factor range of 1.0 to 1.4. Here, the form factor is calculated from the average value of the ratio of the major axis of several hundred (for example, 200) grains, magnified and observed by a microscope, to the minor axis that is orthogonal to the major axis. Accordingly, the form factor is 1.0 only if the grains are perfectly spherical, and moves further away from 1 as the grains become less spherical. Further, the term amorphous referred to here refers to that which exceeds a form factor of 1.4.
Examiner’s Note: Hori defines a “form factor” ratio, wherein the major (long) axis is divided by the minor (short axis). The form factor of Hori is inverse of the ratio in the instant application. A form factor of 1.4 = (1.4)/1. The inverse is 1/1.4 =0.7. Thus a skilled artisan would recognize the form factor range of 1 – 1.4 to describe the same degree of sphericity as the ratio of 0.7 – 1 as recited in the instant application.
In regards to claim 6, Mizuno as modified discloses
the grindstone according to claim 1, but fails to explicitly disclose the circularity of the spherical fillers is at least .95.
As presented in the rejection of claim 3, a skilled artisan would recognize a spherical filler would have a shape approaching that of a true sphere (completely round; evidenced by Hori [0066])
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno in view of Petroski and in further view of You (US PG Pub No. 20080092455).
In regards to claim 7, Mizuno as modified discloses
the grindstone according to claim 1, but is silent to the particle diameter of the spherical fillers as being 4.2 μm.
You discloses an abrasive article includes a backing having first and second major surfaces, an abrasive layer overlying the first major surface, a backsize layer is formed from a formulation including a cationically polymerizable component, a radically polymerizable component, and at least 5% by weight of a nano-sized filler based on the weight of the formulation.
You teaches:
[0101] In a particular embodiment, the coating formulation may include at least two particulate fillers. Each of the particulate fillers may be formed of a material selected from the materials described above in relation to the particulate filler... For example, each of the particulate fillers may be formed of silica. In an alternative example, one filler may be formed of silica and another filler may be formed of alumina…a second particulate filler has an average particle size greater than about 1 micron, such as about 1 micron to about 10 microns, or about 1 micron to about 5 microns. Alternatively, the second particulate filler may have an average particle size as high as 1500 microns. In a particular embodiment, a coating formulation including a first particulate filler having a submicron average particle size and a second particulate filler having an average particle size greater than 1 micron advantageously provides improved mechanical properties when cured to form a binder.
Pursuant of MPEP 2144.05.II.A-B (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)), it has been found that where the general conditions of a claim are disclosed int he prior art, the discovery of optimum or workable ranges by routine experimentation is not inventive, given a lack of evidence indicating the claimed range is critical:
[0039] … Specifically, a grindstone A containing aluminum oxide of an angular shape as the filler, a grindstone B containing spherical aluminum oxide as the filler, and a grindstone C containing spherical silicon dioxide as the filler were formed. More specifically, two kinds of grindstones A, four kinds of grindstones B, and three kinds of grindstones C, which were different in particle diameter of the filler, were prepared. The particle diameters of the filler (aluminum oxide of angular shape) contained in the two kinds of grindstones A were 0.5 μm and 2 μm. The particle diameters of the filler (spherical aluminum oxide) contained in the four kinds of grindstones B were 0.7 μm, 4.2 μm, 5 μm, and 5.4 μm…
As such, it would have been routine optimization to arrive at the claimed invention, as the Supreme Court held that "obvious to try" is a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. In the case of the instant application, You teaches micron sizes above 1 micron improve mechanical properties, which would address design needs and market demands. As such, a skilled artisan would reach spherical fillers of 4.2 microns through experimentation.
In regards to claim 8, Mizuno as modified discloses
the grindstone according to claim 1, but is silent to the particle diameter of the spherical fillers as being 5 μm. You teaches the advantages of spherical fillers being between 1 to 10 microns, with 5 microns being preferable (You [0101]).
Pursuant of MPEP 2144.05.II.A-B (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)), it has been found that where the general conditions of a claim are disclosed int he prior art, the discovery of optimum or workable ranges by routine experimentation is not inventive, given a lack of evidence indicating the claimed range is critical ([0039]). It would have been routine optimization to arrive at the claimed invention, as the Supreme Court held that "obvious to try" is a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. In the case of the instant application, You teaches micron sizes above 1 micron improve mechanical properties, which would address design needs and market demands. As such, a skilled artisan would reach spherical fillers of 5 microns through experimentation.
In regards to claim 9, Mizuno as modified discloses
the grindstone according to claim 1, but is silent to the particle diameter of the spherical fillers as being 5.4 μm. You teaches the advantages of spherical fillers being between 1 to 10 microns, with 5 microns being preferable (You [0101]).
Pursuant of MPEP 2144.05.II.A-B (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)), it has been found that where the general conditions of a claim are disclosed int he prior art, the discovery of optimum or workable ranges by routine experimentation is not inventive, given a lack of evidence indicating the claimed range is critical ([0039]). It would have been routine optimization to arrive at the claimed invention, as the Supreme Court held that "obvious to try" is a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. In the case of the instant application, You teaches micron sizes above 1 micron improve mechanical properties, which would address design needs and market demands. As such, a skilled artisan would reach spherical fillers of 5.4 microns through experimentation.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al. in view of Petroski (US PG Pub No. 20040142637), Li (US PG Pub No. 20030045221) and further in view of Hori (US PG Pub No. 20130026720).
In regards to claim 11, Mizuno discloses
a grindstone (grinding wheel 10, fig. 1-3) comprising:
abrasive grains (cbn abrasive grain 34 and diamond abrasive grain 36; fig. 3); and
a binder (vitrified bond 32, fig. 3) for fixing the abrasive grains,
wherein the binder contains fillers ([0043]) for reinforcing the binder, such that the fillers are ceramic particles ([0043]).
Petroski, which is a polishing pad for use in chemical mechanical polishing of substrates that being made of a porous structure, wherein the porous pad contains nanometer-sized filler-particles that reinforce the structure, imparting an increased resistance to wear as compared to prior-art pads.
Petroski teaches:
[0024] The preferred method of production…conditioning-reinforcing fillers are incorporated…It provides strength to the final product, contributing to an increase in pad life…The conditioning-reinforcing fillers are nanometer-sized particles. Acceptable conditioning-reinforcing fillers include: Colloidal silica, alumina...Of these, the most preferred filler is colloidal silica of 2-130 nanometers in diameter. The size and shape of the nanometer-sized particles is important. Spherical-shaped particles are the most preferred; however, platelet-shaped particles, such as clays, have also proven acceptable...Colloidal silica, as well as other conditioning-reinforcing filler particles, may also be incorporated directly into the resin…
Mizuno and Petroski are analogous to the claimed invention in that they are in the same field of endeavor, polishing apparatuses for grinding/polishing a workpiece.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the alumina and silica particles of Mizuno, and adopt the teaching of Petroski and provide them in spherical shape, as the shape is preferred in improving final strength of the product and improve polishing material life ([0024]).
Mizuno fails to explicitly disclose an average particle diameter of the spherical fillers is greater than an average particle diameter of the abrasive grains.
Li, which discloses an abrasive tool includes a superabrasive grain component, a filler component that comprises hollow bodies and a vitreous bond.
Li teaches:
[0012] The superabrasive material is in the form of grain, also known as "grit." … Generally, the superabrasive employed in the present invention has an average particle size in a range of between about 0.5 micrometers (microns, .mu.m) and about 500 .mu.m. Preferably, the particle size is in a range of between about 2 .mu.m and about 200 .mu.m.
[0023] The filler component of the abrasive tool of the invention includes hollow bodies...
[0024] Examples of suitable materials of the hollow bodies include glass ceramic mullite, alumina, glass, ceramic bubbles and spheres...
[0025] In one embodiment, the hollow bodies have an average diameter in a range of between about 10 .mu.m and about 150 .mu.m. Preferably, at least about 90% of the hollow bodies have a particle size within a range of between about 20 .mu.m and about 120 .mu.m.
Li presents the ceramic filler can have an average size (lower end of the range being 10 microns) larger than the super abrasive (lower end range being 2 microns).
Li and Mizuno are considered analogous to the claimed invention because they are in the same field of endeavor, polishing apparatus with abrasive grit and vitrified bond with ceramic fillers.
Therefore, pursuant of MPEP 2143.E, choosing a ceramic filler, either relatively larger or smaller than the abrasive, would be considered obvious to try given there being a finite number of identified, predicatable solutions. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.
Mizuno fails to explicitly disclose a ratio of a short axis to a long axis of the spherical fillers is not less than 0.7. However, as evidenced by Hori, a skilled artisan would recognize a spherical filler would have a shape approaching that of a true sphere (completely round).
[0066] The term "spherical" of the spherical filler refers to not only a true sphere but shapes that approximate a true sphere. In other words, not less than 90% of the grains are within a form factor range of 1.0 to 1.4. Here, the form factor is calculated from the average value of the ratio of the major axis of several hundred (for example, 200) grains, magnified and observed by a microscope, to the minor axis that is orthogonal to the major axis. Accordingly, the form factor is 1.0 only if the grains are perfectly spherical, and moves further away from 1 as the grains become less spherical. Further, the term amorphous referred to here refers to that which exceeds a form factor of 1.4.
Examiner’s Note: Hori defines a “form factor” ratio, wherein the major (long) axis is divided by the minor (short axis). The form factor of Hori is inverse of the ratio in the instant application. A form factor of 1.4 = (1.4)/1. The inverse is 1/1.4 =0.7. Thus a skilled artisan would recognize the form factor range of 1 – 1.4 to describe the same degree of sphericity as the ratio of 0.7 – 1 as recited in the instant application.
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 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