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 amendment filed on 03/24/2026. After entry of this amendment, claims 1-7 are currently pending in this Application.
Any rejection and/or objection made in the previous Office Action and not repeated below is hereby withdrawn.
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 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 mixture of abrasive grains and at least bond material within a three-dimensional matrix ([0026] and [0035]), and this matrix is seen to render the claimed “single layer” obvious. The claimed single layer does not recite whether the single layer comprises one single layer of abrasive grains, but that the claimed structure has a single layer of abrasive. The matrix of Ramanath is not disclosed to be in more than one layer.
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 graded abrasive structure with controlled variation in abrasive content in a single layer 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 differently sized abrasive particles present 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. The tri-modal size distribution is, also, seen to read on the claimed controlled variation for the functionally graded abrasive structure because a mixture of three differently sized abrasive grains would naturally result in smaller sizes to fill the gaps of the larger ones.
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). MPEP 2144.05 states “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).
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
as well as interconnected pores within the body; therefore, the reference 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 to be perfectly the same size and shape between any other two adjacent particles. It is noted that in an article comprising bimodal particle size distribution or any multimodal particle size distribution, there are gaps 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, realized by combining a mixture of different nominal size abrasives", it is noted that Ramanath, in fact, teaches mixing the material, including abrasive grains and the bond material, and at some stage of the process, pressing them, which is taken to render "packing" obvious; however, said recitation of "is achieved through packing efficiencies, realized by combining a 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, 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 mixture of abrasive grains and at least bond material within a three-dimensional matrix ([0026] and [0035]), and this matrix is seen to render the claimed “single layer” obvious. The claimed single layer does not recite whether the single layer comprises one single layer of abrasive grains assuming any support would be present for such a recitation, but that the claimed structure has a single layer of abrasive. The matrix of Ramanath is not disclosed to be in more than one layer of abrasives.
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 graded abrasive structure with controlled variation in abrasive content in a single layer 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 differently sized abrasive particles are present 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. The tri-modal size distribution is also seen to read on the claimed controlled variation for the functionally graded abrasive structure because a mixture of three different sized abrasive grains would naturally result in smaller sizes to fill the gaps of the larger ones.
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). MPEP 2144.05 states “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).
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
as well as interconnected pores within the body; therefore, the reference 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 to be perfectly the same between any other two adjacent particles. It is noted that in an article comprising bimodal particle size distribution or any multimodal particle size distribution, there are gaps between larger particles, but that there would be gaps/spaces between smaller particles as well.
With respect to the recitation of "is 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]).
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable
over U.S. Patent Application Publication No. 2017/0066069 to Rehrig et al. (hereinafter Rehrig).
With respect to claim 1, Rehrig teaches an abrasive article having an elongated body, comprising a taking layer overlying a substrate, and at least two types of abrasive particles, disclosed as first type of abrasive particles and second type of abrasive particles, wherein the two types can be different in at least average particle size, overlying the tacking layer (abstract, [0091], [0098], Figures 10A, 10B, and 10C). Although not claimed in claim 1, the different types of abrasive particles are in one single layer of abrasive particles on the substrate.
The reference, also, discloses controlling the abrasive particles concentration by at least controlling an amount of the particles ([0088]). In light of minimal explanation in the original disclosure of the present Application under examination, and considering the disclosure of the reference, the two different types of abrasive particles which are sized differently, there is, at least, a bimodal particle size distribution of abrasive particles; the disclosure of the reference is, then, taken to render the "controlled" variation obvious. In addition, the disclosure of the reference of the placement of the two different types of particles, differing in, at least, average particle size, is taken to render the claimed “functionally graded abrasive structure with controlled variation in abrasive content in a single layer in one or more directions” obvious.
As for the concentration of the abrasive in the abrasive article, it is noted that Rehrig teaches the importance of the content of the first and second types of abrasive particles ([0106]-[0109]). Considering the fact that the reference teaches the average abrasive particle concentration can be “at least” about 150 particles per mm of substrate ([0198]), and in light of the disclosure of the first and second types of abrasive particles having average particle size of “not greater than about 500 microns” in some embodiments, or particle sizes of at least about 0.1 microns in other embodiments ([0100]-[0101]), the reference is seen to teach, at least, an overlapping range of concentration with the claimed range of from 5% to 60% by volume. The reference, also, teaches other embodiments such as one which would have an average particle concentration of “at least” about 10 particles per mm of substrate ([0192]), which again, based on the disclosure of the particle size ([0100]-[0101]), the claimed concentration of 5-60 vol% is rendered obvious due to, at least, overlapping ranges. MPEP 2144.05 states “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 the claimed porosity, it is noted that the reference recognizes the use of agglomerated particles having a binder within ([0116]-[0120]), and having a concentration of “at least” 1 vol%, even at least about 30 vol%, or at least about 70 vol% ([0121]). The agglomerated particles are part of the abrasive article; thus, the porosity concentration in said particles is considered to read on the claimed porosity of 5-50% of the claimed abrasive structure. Moreover, the reference teaches the porosity can be of various types ([0122]) such as closed and open porosity; thus, the reference is seen to render the claimed “variation in porosity content” obvious.
The claimed recitation of “variation in abrasive content is achieved through packing efficiencies realized by combining a mixture of different nominal size abrasives” 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 2, Rehrig teaches an abrasive article having an elongated body, comprising a taking layer overlying a substrate, and at least two types of abrasive particles, disclosed as first type of abrasive particles and second type of abrasive particles, wherein the two types can be different in at least average particle size, overlying the tacking layer (abstract, [0091], [0098], Figures 10A, 10B, and 10C). Although not claimed in claim 1, the different types of abrasive particles are in one single layer of abrasive particles on the substrate.
The reference, also, discloses controlling the abrasive particles concentration by at least controlling an amount of the particles ([0088]). In light of minimal explanation in the original disclosure of the present Application under examination, and considering the disclosure of the reference, the two different types of abrasive particles which are sized differently, there is, at least, a bimodal particle size distribution of abrasive particles; the disclosure of the reference is, then, taken to render the "controlled" variation obvious. In addition, the disclosure of the reference of the placement of the two different types of particles, differing in, at least, average particle size, is taken to render the claimed “functionally graded abrasive structure with controlled variation in abrasive content in a single layer in one or more directions” obvious.
As for the concentration of the abrasive in the abrasive article, it is noted that Rehrig teaches the importance of the content of the first and second types of abrasive particles ([0106]-[0109]). Considering the fact that the reference teaches the average abrasive particle concentration can be “at least” about 150 particles per mm of substrate ([0198]), and in light of the disclosure of the first and second types of abrasive particles having average particle size of “not greater than about 500 microns” in some embodiments, or particle sizes of at least about 0.1 microns in other embodiments ([0100]-[0101]), the reference is seen to teach, at least, an overlapping range of concentration with the claimed range of from 5% to 60% by volume. The reference, also, teaches other embodiments such as one which would have an average particle concentration of “at least” about 10 particles per mm of substrate ([0192]), which again, based on the disclosure of the particle size ([0100]-[0101]), the claimed concentration of 5-60 vol% is rendered obvious due to, at least, overlapping ranges. MPEP 2144.05 states “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 the claimed porosity, it is noted that the reference recognizes the use of agglomerated particles having a binder within ([0116]-[0120]), and having a concentration of “at least” 1 vol%, even at least about 30 vol%, or at least about 70 vol% ([0121]). The agglomerated particles are part of the abrasive article; thus, the porosity concentration in said particles is considered to read on the claimed porosity of 5-50% of the claimed abrasive structure. Moreover, the reference teaches the porosity can be of various types ([0122]) such as closed and open porosity; thus, the reference is seen to render the claimed “variation in porosity content” obvious.
The claimed recitation of “wherein the graded structure is achieved through the use of fillers and abrasive 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. Nevertheless, the disclosed abrasive article of Rehrig teaches the use of more than one type of abrasive particles differing in, at least, size, compositions, or other features ([0191]).
With respect to claim 3, Rehrig teaches abrasive materials such as diamond, and those of oxide, carbide, nitrides, etc. for the first and second types of abrasive particles ([0092]-[0093]).
With respect to claim 4, as noted above, Rehrig teaches the use of multiple types of abrasive particles including, for example, first type of abrasive particles and second type of abrasive particles ([0091]).
With respect to claim 5, Rehrig teaches different embodiments with respect to average particle size, such as that, in some embodiments, the average particle size can be at least about 0.1 microns, or even at least about 2 microns, or at least about 5 microns ([0100]-[0101]). MPEP 2144.05 states “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, Rehrig teaches the embodiment of having three types of abrasive particles, wherein the material of the third type can be the same or different from the first and second type abrasive particles ([0161]). Considering the fact that the material of the first type and second type of abrasive particles can be oxides, nitride, oxynitride, boride, etc. ([0092]-[0093]).
With respect to claim 7, Rehrig teaches the use of metallic bonding region ([0144]). The barrier layer, and other layers such as outer layer of the abrasive article can be of metal materials too ([0056] and [0059]) wherein said layers also assist in further holding the abrasive particles attached to the substrate; thus, they read on a “bond” material.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant has asserted Ramanath teaches a body consisting of several layers of abrasives packed together within a three-dimensional matrix of bond material, and cited paragraph [0026] of said reference (Remarks, page 4).
The examiner, respectfully, submits that the cited paragraph does not disclose anything about several layer of abrasives.
Applicant has asserted there is a performance advantage achieved by the Applicant’s currently claimed invention over his previous work; then, Applicant refers to the references, which is by the same assignee, and asserted that Ramanath teaches multiple layers of abrasive, and thus, both the bond and the abrasive have to wear at the same rate to maintain cutting action (Remarks, page 4). Applicant has, then, asserted in the case of a single layer, there are no similar design or manufacturing choices which have to be made to match wear rates between multiple layers of bond and abrasive, and therefore, Applicant has asserted, the currently amended claims are patentable at least because not all the limitations of these claims are shown or described by the cited prior art (Remarks, page 4).
The examiner, respectfully, submits that according to Applicant’s original specification (see specification of the present Application under examination, page 1, lines 30-33), there is, in fact, performance disadvantage in using a single layer abrasive. Thus, Applicant’s current remarks contradict Applicant’s own disclosure. Furthermore, previous claim 9 was, in fact, directed to the use of a finite number of layers, which because it was in a claimed language, naturally it was taken as an inventive subject in the present Application under examination.
Moreover, again, it is emphasized that Ramanath does not disclose multiple layers neither in paragraph [0026] which was cited by Applicant nor any other paragraph in said reference.
Finally, it is noted that according to amended claim 1, there is a “single layer” of abrasive which is graded with controlled variation in the claimed abrasive structure, but there is nothing to indicate how thick or thin this layer may be; also, the claim does not specifically recite whether this “single layer” is a single layer of abrasive “grains” or “particles”. Thus, because contrary to what Applicant has asserted, there is a single layer of a mixture of bimodal or multimodal abrasive grains, the reference is still seen to read on and render the claims obvious as detailed out above.
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.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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