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
The supplementary amendment filed 22 April 2026 is accepted. Claims 8–13 and 21–35 are pending, wherein claims 21–35 are new dependent claims. Claims 1–7 and 14–20 have been cancelled by this or a previous amendment.
Claim 8 has been amended to incorporate the subject matter of a claim that was previously indicated to be allowable. This amendment changes the scope of the claim, and therefore overcomes the previous grounds of rejection under 35 U.S.C. 102 and 103. Therefore, the 102 and 103 rejections of claim 8 and its dependent claims are herein withdrawn.
Claims 9 and 11 have been amended to overcome formal objections. The objections to claims 9 and 11 are herein withdrawn.
The amendment to claim 11 also renders the rejection of claim 11 under 35 U.S.C. 112(b) moot, as the indefinite language has been fully removed. The 112(b) rejection of claim 11 is herein withdrawn.
New claims 21–35 find support throughout the specification, and therefore do not constitute new subject matter. Their entry as pending claims is herein accepted.
Claim Interpretation
Newly added claim 35 recites a plurality of abrasive articles, including “an ultra-thin wheel”. This term is not clearly defined in the specification as to inform a person having ordinary skill in the art as to the metes and bounds of the relative term “ultra-thin”. However, the Examiner finds that it is a recognized term of the art, referring to grinding wheels with a thickness of 1 mm or less. Therefore, a person having ordinary skill in the art could reasonably understand the scope of what “an ultra-thin wheel” encompasses. If this interpretation differs from what Applicants seek coverage for, Applicants are respectfully requested to submit a response titled “Comments on Statements of Reasons for Allowance”.
Claim Objections
Claim 11 is objected to because of the following informalities:
Incomplete sentence: Claim 11 recites “wherein a percent ratio of a weight content of potassium to a weight content of lithium of at least 0.01% and not greater than 200%”. The Examiner believes this is meant to read “…to a weight content of lithium is at least 0.01%...”.
Appropriate correction is required.
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 22 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 22 recites the limitation previously rejected as indefinite in claim 11. The indefiniteness arises from the cyclical logic of the claim. Parent claim 8 recites an abrasive particle comprising a core. Child claim 22 limits the core to an abrasive particle. This leads to indefiniteness because it is unclear if the core of the abrasive particle claimed in claim 8 comprises additional abrasive particles which are being limited by claim 22, or if the entire abrasive particle of claim 8 is synonymous with the core of claim 22. It is not clear what claim 22 is actually limiting, if there is even a distinction between “an abrasive particle comprising a core” in claim 8, and the “core comprising an abrasive particle” of claim 22.
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.
Claims 29 and 30 are 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. Parent claim 28 recites the limitation “wherein the coating comprises a lithium content of at least 0.02 wt% and not greater than 20 wt% for a total weight of the coating”, but child claim 29 recites “wherein the lithium content is at least 0.10 wt% for the total weight of the coating”. Claim 29 therefore recites a broader range of lithium content than its parent (0.10–100 wt.% vs 0.02–20 wt.%). 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 30, being dependent on claim 29, inherits its deficiencies, and is rejected on the same grounds.
Allowable Subject Matter
Claims 8–10, 12, 13, 21 and 23–35 are allowed.
Claim 11 stands objected to, but would otherwise be allowable if amended to overcome the grounds of rejection.
Claim 22 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 and to include all of the limitations of the base claim and any intervening claims.
Claims 29 and 30 stand rejected under 35 U.S.C. 112(d), but would otherwise be allowable if amended to overcome the grounds of rejection.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is an examiner’s statement of reasons for allowance:
Claim 8 recites an abrasive particle comprising a body, which comprises a core and a coating overlying at least a portion of the core, wherein the coating comprises an amorphous phase including a lithium-containing material, and wherein the body has a specific surface area of greater than 0.05 m2/g and less than 2.2 m2/g.
The previously cited prior art, believed to be the most pertinent in relation to this application, teaches a comparable abrasive particle, but fails to explicitly teach the claimed specific surface area. Specific surface area is a structural limitation, not merely a result or a fixed property. Specific surface area cannot be reasonably predicted, as variables such as porosity, cracking, surface roughness, coating continuity, etc., can all drastically change the specific surface area. In the previously cited Can reference (US 2008/0168717 A1, Table 2), it can be seen that some coatings increased the specific surface area by 20×, while other coatings decreased it, which further indicates this is not an inherent property.
The claimed specific surface area range of 0.05–2.2 m2/g is much lower than the values typically reported for coated abrasives, and would result in a coated abrasive particle that is more resistant to adsorbing undesirable waste materials over time. The prior art of record does not teach or suggest the claimed range, and shows no predictable relationship between coating parameters and specific surface area that could reasonably lead a person having ordinary skill in the art to arrive at the claimed invention. Additional searches of prior art were conducted, but did not produce any results which can reasonably anticipate or render obvious the claimed subject matter. Accordingly, claim 8 is determined to be allowable over the prior art.
Claims 9, 10, 12, 13, 21, and 23–35, depend from claim 1, and are therefore allowable on the same grounds.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see Supplemental Remarks filed 22 April 2026, with respect to claims 8–13, have been fully considered and are persuasive. The claim objections and rejections under 35 U.S.C. 102, 103, and 112(b) of the above-listed claims have been withdrawn.
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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, Tu, W, F after 5:30 PM and Th from 8 AM to 6 PM.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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