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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 19, 2026 has been entered.
Status of Claims
This action is in reply to the Amendments/Response filed on May 19, 2026. Claim(s) 1 and 11 have been amended. No additional claims have been added. Claim(s) 4 and 6 have been cancelled. Claims 1-3, 5, and 7-12 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claims 1 and 11 filed on May 19, 2026.
The applicant’s amendments to claims 1 and 11 are sufficient to overcome the 35 U.S.C. 103 rejections, which previously indicated claim 1 as being obvious in view of Mizuno (US PG Pub No. 20140349557) and Petroski (US PG Pub No. 20040142637), and claim 11 as being obvious in view of Mizuno, Petroski, Li (US PG Pub No. 20030045221) and Hori (US PG Pub No. 20130026720). As the claims now require the wt% percentage be based upon the combined masses of the binder and filler, Mizuno is no longer a viable base reference. However, upon further search and consideration, see the new rejections set forth, depending upon Tiefenbach (US Patent No. 418874) in place of Mizuno.
Response to Arguments
The applicant’s arguments, see pages 6-12, filed May 19, 2026 have been fully considered.
Claim 1 Rejection: The examiner agrees that the amended limitations are sufficient in overcoming the rejection depending upon Mizuno and Petroski. Applicant has accurately pointed out that the weight percentages of Mizuno address the chemical constituents of vitrified bond/binder, but fails to address the overall percentage of the entire binder mass and the relative amount of filler present. Petroski fails to address these deficiencies. As such, the arguments are persuasive and Mizuno is no longer a viable reference for application to the claims.
Claim 11 Rejection: The examiner agrees that the amended limitations are sufficient in overcoming the rejection depending upon Mizuno, Petroski, Li, and Hori. Applicant has accurately pointed out that the weight percentages of Mizuno address the chemical constituents of vitrified bond/binder, but fails to address the overall percentage of the entire binder mass and the relative amount of filler present. Petroski, Hori, and Li fail to address these deficiencies. As such, the arguments are persuasive and Mizuno is no longer a viable reference for application to the claims.
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.
Claim(s) 1, 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tiefenbach (US Patent No. 4918874) in view of Petroski (US PG Pub No. 20040142637) and Hori (US PG Pub No. 20130026720).
In regards to claim 1, Tiefenbach discloses
a grindstone (abrasive article; col. 1 lines 24-26: abrasive stones) comprising:
abrasive grains (abrasive grits; col. 3 lines 18-24); and
a binder (binder; col. 3 lines 55-65) for fixing the abrasive grains (abrasive grits; col. 3 lines 18-24),
wherein the binder (binder; col. 3 lines 55-65) contains fillers for reinforcing the binder (binder; col. 3 lines 55-65), such that the fillers are ceramic particles (alumina and silica particles; col. 4 lines 21-26),
wherein the fillers are particulate bodies dispersed (col. 4 lines 21-26: mixed together in an aqueous slurry and then plasticized) within the binder (binder; col. 3 lines 55-65), and
wherein a content of the fillers in the binder (binder; col. 3 lines 55-65), based on a combined mass of the binder (binder; col. 3 lines 55-65) and the fillers, is between 60 wt% and 80 wt%.
col. 4 lines 9-15: It is also preferred that the silica content be from about 65 percent to about 90 percent by weight of the densified bond; that the alumina be from about 10 percent to about 30 percent by weight of the densified bond; and that the flux be from about 1 percent to about 5 percent by weight of the densified bond.
Per applicant’s spec, the alumina and silica particles of Tiefenbach meet the definition of a “ceramic” filler.
Tiefenbach is silent regarding the shape of the silica or alumina particles.
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…
Tiefenbach 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 Tiefenbach, 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]).
Tiefenbach as modified fails to explicitly disclose the circularity of the spherical fillers is at least .95.
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.
Therefore, a skilled artisan would recognize a spherical filler would have a shape approaching that of a true sphere (completely round; evidenced by Hori [0066]), thus approaching an eccentricity of 1, which is greater than 0.95.
In regards to claim 3, Tiefenbach as modified discloses
the grindstone according to claim 1, wherein a ratio of a short axis to a long axis of the spherical fillers is not less than 0.7 (as taught by Hori, see rejection of claim 1).
In regards to claim 10, Tiefenbach as modified discloses
the grindstone according to claim 1, wherein the spherical fillers are ceramic particles (alumina and silica particles; col. 4 lines 21-26) formed of aluminum oxide.
Claim Rejections - 35 USC § 103
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tiefenbach, Petroski and Hori as applied to claim1 above, and further in view of Mizuno et al. (US PG Pub No. 20140349557).
In regards to claim 5, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to disclose the binder is a vitrified bond or a resin bond.
Mizuno teaches vitrified bonds as a means for holding abrasives and ceramic fillers together in an abrasive article: [0043] The vitrified bond 32 is preferably configured by, for example, borosilicate glass or crystallized glass...
Tiefenbach and Mizuno 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 bond of Tiefenbach, and adopt the teaching of Mizuno and provide a vitrified bond by a simple substitution, producing the predictable result of providing a bonding matrix to hold abrasives in place.
In regards to claim 12, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to explicitly disclose the grindstone includes a plurality of the grindstones which are arranged in an annular shape on a grinding wheel.
However, Mizuno teaches a grinding wheel with annularly arranged grinding stones (grinding stone strip 26; fig. 1-2).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a plurality of grindstones, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. MPEP 2144.04 (VI-B) St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
To arrange the stones upon the base of a grinding tool additionally would be obvious to one having ordinary skill in the art, as shown by Mizuno, in order to provide means for mounting the stones and then polishing/grinding a workpiece.
Allowable Subject Matter
12. Claims 2 and 7-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regards to claim 2, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to disclose an average particle diameter of the spherical fillers is greater than an average particle diameter of the abrasive grains.
Tiefenbach discloses that the ceramic fillers are smaller than the abrasive grains:
Col. 3 lines 13-22: It is preferred that the silica particles be very small, i.e., of colloidal size, with particles in the range of from about 0.003 micron to about 0.1 micron more preferred, and particles from about 0.01 micron to about 0.1 micron most preferred. In relation to this the grit particles average from about 60 mesh, or about 400 microns, to about 1500 mesh, or about 1.5 microns.
To modify the prior art in the manner as disclosed would be impermissible hindsight reconstruction of the applicant's invention without any disclosures, teaching, or suggestions from the art of record, as is presently the case. Further, such a modification goes against the intention of Tiefenbach, keeping the abrasive grit proportionally larger than the ceramic filler.
In regards to claim 7, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to disclose the particle diameter of the spherical fillers is 4.2 μm (see Tiefenbach col. 3 lines 12-22).
To modify the prior art in the manner as disclosed would be impermissible hindsight reconstruction of the applicant's invention without any disclosures, teaching, or suggestions from the art of record, as is presently the case.
In regards to claim 8, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to disclose the particle diameter of the spherical fillers is 5 μm (see Tiefenbach col. 3 lines 12-22).
In regards to claim 9, Tiefenbach as modified discloses
the grindstone according to claim 1, but fails to disclose the particle diameter of the spherical fillers is 5.4 μm (see Tiefenbach col. 3 lines 12-22).
Claim 11 is allowed.
In regards to claim 11, Tiefenbach discloses
a grindstone (abrasive article; col. 1 lines 24-26: abrasive stones) comprising: abrasive grains (abrasive grits; col. 3 lines 18-24); and a binder (binder; col. 3 lines 55-65) for fixing the abrasive grains (abrasive grits; col. 3 lines 18-24),
wherein the binder (binder; col. 3 lines 55-65) contains fillers for reinforcing the binder (binder; col. 3 lines 55-65), such that the fillers are ceramic particles (alumina and silica particles; col. 4 lines 21-26),
wherein the fillers do not have an angular random shape and are particles having a true spherical shape or a shape resembling a true sphere,
wherein a ratio of a short axis to a long axis of the spherical fillers is not less than 0.7, and
wherein the spherical fillers are particulate bodies dispersed (col. 4 lines 21-26) within the binder (binder; col. 3 lines 55-65), and
wherein a content of the spherical fillers in the binder (binder; col. 3 lines 55-65), based on a combined mass of the binder (binder; col. 3 lines 55-65) and the spherical fillers, is between 60 wt% and 80 wt% (col. 4 lines 9-15).
Tiefenbach as modified fails to disclose “wherein an average particle diameter of the spherical fillers is greater than an average particle diameter of the abrasive grains.”
Tiefenbach discloses that the ceramic fillers are smaller than the abrasive grains:
Col. 3 lines 13-22: It is preferred that the silica particles be very small, i.e., of colloidal size, with particles in the range of from about 0.003 micron to about 0.1 micron more preferred, and particles from about 0.01 micron to about 0.1 micron most preferred. In relation to this the grit particles average from about 60 mesh, or about 400 microns, to about 1500 mesh, or about 1.5 microns. It is preferred to use fine abrasive grits and fine silica particles; however, if it is desired to produce coarse grit abrasive articles, it is still preferred that the finer silica particles be employed. It is in either case required that the size differential be maintained.
To modify the prior art in the manner as disclosed would be impermissible hindsight reconstruction of the applicant's invention without any disclosures, teaching, or suggestions from the art of record, as is presently the case. Further, such a modification goes against the intention of Tiefenbach, keeping the abrasive grit proportionally larger than the ceramic filler.
Conclusion
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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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723
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