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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 5-9) in the reply filed on 06/09/2026 is acknowledged. The traversal is on the ground(s) that “there would not be an undue burden for the Office to conduct a search that encompasses all pending claims.” This is not found persuasive because the restriction is a 371 type unity of invention restriction which does not require undue search burden. Applicant further argues that “Claim 5 is not directed to a generic process, but rather to a process specially adapted to manufacture the product of Claim 1.” The examiner respectfully disagrees because claims 1 and 5 are not recited as applicant alleges being a process specially adapted to manufacture the product of Claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 5 is objected to because of the following informalities: change “the ratio of first average maximum side length to the second average maximum side length” to “the ratio of the first average maximum side length to the second average maximum side length”, to fix the antecedent basis issue. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: change “the ratio of first total weight to the second total weight 1:2 to 5:1” to “the ratio of the first total weight to the second total weight is 1:2 to 5:1”, to fix the antecedent basis issue. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 5-9 are 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 pre-AIA the applicant regards as the invention.
Claim 5 recites “curable phenolic resin.” Claim 5 also recites “a phenolic binder.” It is not clear if the two recitations are the same or different.
Claim 5 recites “removing the abrasive cut-off wheel from the mold.” However, prior to this step, claim 5 recites “placing a mixture … into a mold.” Hence it is not clear what exactly is in the mold, and what exactly is removed from the mold.
Any and all claims rejected herein under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, if rejected with art below under sections 35 U.S.C. 102 and/or 35 U.S.C. 103, are rejected as best understood.
Claims 6-9 are rejected due to their dependency from a previously rejected claim.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 5-8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Schillo-Armstrong et al. (US 2018/0236637), referred to hereafter as Armstrong.
With regard to claim 5, Armstrong discloses a method of making an abrasive cut-off wheel, the method comprising: placing a mixture comprising shaped abrasive particles, curable phenolic resin, and at least one reinforcing scrim into a mold (see Fig. 2 and §178, and example 5 in §174 and Table 1); at least partially curing the curable phenolic resin (§178); and removing the abrasive cut-off wheel from the mold (§178), wherein the abrasive cut-off wheel has a thickness of less than or equal to 1.6 millimeters (see §178, wherein the mixes of examples 5-12 lead to a final thickness of approximately 1.35 mm), wherein the abrasive cut-off wheel comprises the at least one reinforcing scrim (see Fig. 2 and §178) and the shaped abrasive particles retained in a phenolic binder (see example 5 in §174 and Table 1), wherein the shaped abrasive particles comprise first and second triangular abrasive platelets (SAP1 and SAP2), wherein the first triangular platelets have a first average maximum side length and a first total weight (SAP1 with side length of 0.84 mm), wherein the second triangular platelets have a second average maximum side length and a second total weight (SAP2 with side length of 0.63 mm), wherein the first and second total weights combined comprise at least 30 weight percent of the abrasive cut-off wheel (see §174), wherein the ratio of first average maximum side length to the second average maximum side length is 1.25:1 to 5:1 (the ratio is equal to 1.33 in example 5), and wherein the ratio of first total weight to the second total weight 1:2 to 5:1 (1:2 in example 5).
With regard to claim 6, Armstrong further discloses that the first triangular platelets comprise first truncated triangular pyramids (Table 1).
With regard to claim 7, Armstrong further discloses that the second triangular platelets comprise second truncated triangular pyramids (Table 1).
With regard to claim 8, Armstrong further discloses that the first triangular platelets and the second triangular platelets comprise alpha alumina (Table 1).
Allowable Subject Matter
Claim(s) 9 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.
The following is a statement of reasons for the indication of allowable subject matter: with regard to claim 9, Armstrong doesn’t disclose that a majority of the curable phenolic resin by mass has an inclined plate resin flow length of less than 30 mm according to test method ISO 8619:2003 (E). Hong et al. (US 6015338) discloses phenolic resin with ISO 8619 flow length of about 95-105 mm (Col. 5; lines 45-47), but doesn’t disclose that a majority of the curable phenolic resin by mass has an inclined plate resin flow length of less than 30 mm according to test method ISO 8619:2003 (E). It would not have been obvious to one of ordinary skill in the art before the effective filing date of the application, nor any motivation, to modify the prior arts for these deficiencies, because it would require improper hindsight reconstruction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar methods such as US 11697753 and US 12304028.
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/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
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