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
Independent claim 1 recites “A functionally graded abrasive structure with controlled variation in abrasive content in one or more directions ranging from 5% to 60% by volume, together with variation in porosity content ranging from 5% to 50% within the structure, wherein the variation in abrasive content is achieved through packing efficiencies, mixture of different nominal size abrasives”.
The only support, in the form of the same statement being disclosed in the original specification, that has been provided for “controlled variation in abrasive content” are found in the abstract, the summary of the invention in the specification, and claim 1. No further explanation has been provided.
For the phrase “A functionally graded abrasive structure”, support can be found in abstract, the same summary section of the specification, page 3 of the specification in lines 9 and 10 which refers to the Figures 2-8, and pages 4 and 5 of the specification, as well as claim 1. In particular, in page 4, lines 4-6, the specification discloses “Additionally, alternatively and/or optionally, the abrasive concentration or amount varies with the layer which is termed by the inventors as “functionally graded” abrasive structure. FIGS. 2-8 are schematic illustrations of functionally graded abrasive structures, in accordance with exemplary embodiments of the invention.”
Therefore, the based on the explanation provided in the specification as well as the demonstration shown by Figures 2 to 8, the “functionally graded” abrasive structure having “controlled variation” in abrasive content is interpreted to mean any of the demonstrations shown in Figure 2 to 8, which either one layer of abrasive grains or more than one layer of abrasive grains, wherein there can abrasive grains of the same size in each layer, or there can be layers of abrasive grains of the same size having the spaces therein filled with abrasive grains of smaller size. Furthermore, as noted, the claim is interpreted to include embodiments containing only one layer of abrasive grains, or more than one layer of abrasive grains.
Additionally, the claimed concentrations are interpreted to mean the concentration of the total content of the abrasive grains and porosity within the abrasive structure.
Finally, although the statement reciting “together with variation in porosity content ranging from 5% to 50% within the structure” has been found in few places in the original specification; however, no further explanation has been provided. It is noted that for an abrasive structure comprising only of one layer of abrasive grains, which is one of the embodiment fulfilling the recitation of claim 1, there cannot be a “variation” of porosity, and no explanation has been provided how could there be variation in porosity for such an embodiment.
Therefore, the recitation of claim 1 regarding “variation in porosity content” is interpreted to mean that as long as the concentration of porosity is from 5% to 50% and as long as there is multimodal, such as a bimodal, particle size distribution for abrasive particles, a reference would read on the claimed limitation regarding porosity; this interpretation is made having the factor in mind that when there is a mixture of differently sized abrasive particles, the porosity within them varies between any two particles from any other two particles.
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.
Claim 2 is 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.
The language of the claim is found indefinite because the claim recites in part, “wherein the graded structure could also be achieved through the use of fillers and abrasive at different content levels.” Thus, it is not clear as to whether achieving the claimed graded structure through the use of fillers and abrasive at different levels is required or optional.
Claim 6 is 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.
The language of the claim is found indefinite because the claim recites in part, “wherein a filler when present could comprise of an oxide, nitride, boride, oxynitride, silicide or carbide”. Thus, it is not clear as to whether the filler being comprises of oxide, nitride, boride, oxynitride, silicide or carbide is required or optional.
Claim 7 is 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 7 is rejected for two reasons:
First, claim 7 recites the limitation "the bond" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Second, the language of the claim is found indefinite because the claim recites in part, “wherein the bond holding the structure could be a metal or metal alloy”. Thus, it is not clear as to whether the material of the bond being metal or metal alloy is required or optional.
Claim 8 is 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 8 is rejected for two reasons:
First, claim 8 recites the limitation "the bond" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Second, the language of the claim is found indefinite because the claim recites in part, “wherein the bond holding the structure could be glass or glass ceramic”. Thus, it is not clear as to whether the material of the bond being metal or metal alloy is required or optional.
Claim 9 is 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 9 is rejected for three reasons:
First, regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Second, 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). In the present instance, claim 9 recites the broad recitation “10 layers”, and the claim also recites “optionally 5 layers” as well as “optionally 2 layers” which is the narrower statement of the range/limitation. 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.
Third, the presence of the term “optionally” in claim 9 makes the language of the claim indefinite because it is not clear as to what are recited after “optionally” are required or not.
For the purpose of examination, it is assumed the claim is interpreted to mean the broadest claimed limitation/range, i.e. “a finite number of layers”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites in part “wherein the graded structure could also be achieved through the use of fillers and abrasives at different content levels”; thus, the claim does not further limit claim 1, but that in fact, it adds a new embodiment which has not been recited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2012/0055098 to Ramanath et al. (hereinafter Ramanath).
With respect to claim 1, Ramanath teaches an abrasive article comprising abrasive grains, and a bond material comprising a metal or metal alloy, wherein the abrasive grains comprise a mixture of differently sized abrasive grains such as having a multi-modal such as bimodal, tri-modal, or quad-modal particle size distribution, wherein the concentration of the abrasive grains in the abrasive article is at least about 30 vol% (abstract, [0032]-[0033], [0061]).
The reference discloses a multi-modal, such as a bimodal, particle size distribution, a mixture of different sized abrasive grains results in having smaller grains occupying the spaces between larger grains; this is taken to render the claimed functionally grade abrasive structure with controlled variation in abrasive content in one or more directions obvious per the claim interpretation provided above. It is noted that for a bimodal particle size distribution, there are only two sizes of abrasive particles wherein the smaller ones generally are in the spaces/gaps of the larger ones; this is taken to render the “controlled” variation obvious, again, in light of minimal explanation in the original disclosure of the present Application under examination, and in light of the Figures.
Also, a concentration of at least about 30 vol% or greater overlaps with the claimed concentration of “ranging from 5 to 60 vol%”, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Furthermore, Ramanath discloses a porosity concentration of at least 5 vol% ([0063]). The reference, also, discloses that a majority, such as at least 60% (i.e. 60% of the at least 5 vol%) of the porosity within the body of the abrasive article is interconnected porosity ([0064]). Thus, the reference is open to having closed pores within the body as well as the interconnected pores, which is taken to render a variation in porosity content obvious.
Nevertheless, as noted above under the claim interpretation, because the reference discloses a bimodal particle size distribution for the abrasive grains and the presence of porosity in a concentration of at least 5 vol%, the porosity within any two differently sized abrasive particles inevitably is not exactly and perfectly the same between any other two particles. It is noted that in an article comprising bimodal particle size distribution, there is gap between larger particles, but that there would be gaps/spaces between smaller particles as well.
With respect to the recitation of “is achieved through packing efficiencies, mixture of different nominal size abrasives”, it is noted that although Ramanath, in fact, teaches mixing the material, including abrasive grains and binder, and at some stage of the process, pressing them, which is taken to render “packing” obvious, said recitation of “is achieved through packing efficiencies, mixture of different nominal size abrasives” is a process limitation in a product claim, and as such, does not add patentable weight to the examination of the product claim.
With respect to claim 2, it is noted that said claim does not further limit claim 1 as noted above; thus, it is considered rejected with claim 1.
However, and in the alternative, the recitation of wherein the graded structure “could also be achieved through the use of fillers and abrasives at different content levels” is an implied process limitation in a product claim. Process limitations in a product claim do not add patentable weight to the examination of a product claim.
With respect to claim 3, Ramanath discloses abrasive grain materials such as diamond, cubic boron nitride, alumina, silicon carbide, boron carbide, and more ([0028]).
With respect to claim 4, Ramanath discloses an embodiment in which two differently sized grains of abrasive are used; this is taken to render the claimed “two different abrasive types” obvious due to the fact that the claim does not clarify what is meant by “type” in the language of the claim. Therefore, a bimodal particle size distribution for abrasive particles is taken to render the claimed language obvious.
In the alternative, Ramanath discloses the abrasive grains comprising a mixture of abrasive grains, which may be the same composition but having varying mechanical properties or grades ([0033]). Thus, the reference is seen to render the claim obvious.
With respect to claim 5, Ramanath discloses an average grit size of not greater than about 1000 microns, and within a range of 1 to 1000 microns ([0029]). MPEP 2144.05 “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 6, Ramanath discloses the use of fillers such as oxides, carbides, borides, silicides, oxynitrides, carbides, and more ([0045]-[0046]).
With respect to claim 7, Ramanath discloses metal or metal alloy bond (abstract, [0069]-[0070]).
With respect to claim 9, Ramanath renders claim 1 obvious as detailed out above, and discloses a mixture of differently sized abrasive grains, such as a bimodal particle size distribution. This is taken to render the claimed “finite number of layers” obvious. This is because as a result of using a mixture of differently sized grains, there would, inevitably, be at least one layer of a mixture of large and smaller abrasive grains because of the fact that there is a bimodal particle size distribution.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramanath as applied to claim 1 above, and further in view of U.S. Patent No. 4,334,895 to Keat.
Ramanath discloses an abrasive article comprising abrasive grains such as diamond or cubic boron nitride, filler, a metallic bond, and porosity which is at least 5 vol%. Ramanath does not disclose a bond material comprising glass or glass ceramic.
Keat, directed to bonded abrasive article such as grinding wheel, discloses the use of glass as the bonding material (Keat, abstract). Keat, also, discloses the use of filler, abrasive grains such as diamond and cubic boron nitride, as well as having porosity in low level (Keat, abstract). Keat discloses the use of metal clad particulate lubricant (Keat, col. 1, line 60 to col. 2, line 10).
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to have modified Ramanath in order to incorporate the use of a glass or glass-ceramic bonding material motivated by the fact that the use of glass and glass-ceramic as a bonding material in grinding wheel has long been recognized as that taught by Keat. It is, additionally, noted that glass and ceramic has been used in the teachings of Ramanath, along with metal and metal alloy, as some of the materials used in coating abrasive grains to improve bonding of the abrasive grains and the bond material (Ramanath, [0031]).
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731