DETAILED ACTION
Claim Rejections - 35 USC § 112
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 3 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. Claim 3 is dependent on claim 1 and recites “the alumina component of the inorganic filament is 85% by weight or more”. Since claim 1 sets forth the alumina content in the range from 80 to 90% by weight, claim 3 fails to include the upper limit of the alumina content. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita et al. (US 20180304444 A1), hereinafter referred to as MATSUSHITA, in view of Katsuoka et al. (JP H10183427 A) with reference to the provided machine translation, and Ohshima et al. (US 20150354099 A1), hereinafter referred to as OHSHIMA.
Regarding claim 1, MATSUSHITA discloses a wire-shaped grinding element for a polishing brush (see MATSUSHITA at paragraph [0006]: a polishing brush including a plurality of wire-shaped grinding elements), comprising:
inorganic filaments; and
a resin that impregnates the inorganic filaments and solidifies (see MATSUSHITA at paragraph [0022]: each wire-shaped grinding element is formed of an assembly of alumina filaments as inorganic filaments impregnated and hardened with a thermosetting binder resin such as epoxy resin).
While MATSUSHITA teaches alumina filaments as inorganic filaments impregnated with epoxy resin, MATSUSHITA is silent with respect to the inorganic filaments containing 80 to 90% by weight of an alumina component and 20 to 10% by weight of a silica component, the inorganic filaments having a crystal structure including mullite crystals and intermediate alumina.
However, KATSUOKA discloses a processing material suitable for processing such as cutting, drilling and polishing of a metal or non-metal, an alumina-based ceramic fiber used as a processing element of the processing material (see KATSUOKA at paragraph [0001]). KATSUOKA teaches the ceramic fiber for processing material of the present invention is a ceramic fiber used as a processing element of the processing material, comprising 80 to 90% by weight of alumina component and 20 to 10% by weight of silica component; and the crystal structure of the ceramic fiber is mainly composed of mullite crystals and intermediate alumina (see KATSUOKA at paragraph [0004]). KATSUOKA also teaches that that the resin binder for binding the ceramic fibers is an epoxy resin (see KATSUOKA at paragraph [0004]). While KATSUOKA discloses the ceramic fiber comprising mullite crystals having an average particle diameter of 25 to 70 nm (see KATSUOKA at paragraph [0006]), KATSUOKA is silent with respect to the mullite crystals having an average particle size less than 25 nm. However, alumina fiber containing alumina and silica in amounts disclosed by KATSUOKA, and having mullite size less than 25 nm is known in the art, as evidenced from the disclosure of OHSHIMA. OHSHIMA discloses an alumina fiber containing from 70 to 98% by mass of alumina and from 2 to 30% by mass of silica, having an average fiber diameter of from 3.0 to 8.0 μm and a size of a mullite crystallite contained in each fiber of from 10 to 1500 Å/0.1 to 150 nm (see OHSHIMA at Abstract). OHSHIMA teaches that examinations have been made by particularly focusing on the size of the mullite crystallite contained in each of the alumina fibers, as a result thereof, it was found that the strength of fibers is increased until the size of the mullite crystallite becomes a certain level (see OHSHIMA at paragraph [0030]); and that the size of the mullite crystallite contained in each of the fibers is preferably from 10 Å to 1000 Å/1 nm to 150 nm (see OHSHIMA at paragraph [0035]).
It is noted, that KATSUOKA and OHSHIMA disclose similar methods for producing ceramic fiber: KATSUOKA teaches that the precursor fiber is obtained by dry spinning an aqueous spinning stock solution composed of basic aluminum chloride, colloidal silica, and polyvinyl alcohol (see KATSUOKA at paragraph [0004]), and OHSHIMA discloses a method of preparing the spinning dope of alumina fiber comprising blending alumina source such as an aluminum oxychloride aqueous solution and a silica source such as a silica sol, and adding a viscosity imparting agent such as polyvinyl alcohol (see OHSHIMA at paragraph [0019]). However, OHSHIKA teaches lower temperature of the crystalline process: from 1000°C to 1300°C (see OHSHIKA at paragraph [0026]), as compared to the temperature of 1400 °C disclosed by KATSUOKA (see KATSUOKA at paragraph [0013]).
One of ordinary skill in the art would have anticipated success when modifying the wire-shaped grinding element of MATSUSHITA by utilizing the ceramic fiber of KATSUOKA comprising 80 to 90% by weight of alumina component and 20 to 10% by weight of silica component, wherein the crystal structure of the ceramic fiber is mainly composed of mullite crystals and intermediate alumina, based on the teachings of MATSUSHITA describing alumina filaments used as inorganic filaments impregnated with epoxy resin (see MATSUSHITA at paragraph [0022]). Furthermore, one of ordinary skill in the art would have been motivated to adjust the average size of mullite crystals of ceramic fibers of KATSUOKA by lowering the temperature of the crystalline process to 1000-1300°C as disclosed by OHSHIMA since OHSHIMA explicitly teaches that the strength of fibers is increased when the size of the mullite crystallite contained in each of the fibers is in the range from 10 Å to 1000 Å/1 nm to 150 nm (see OHSHIMA at paragraphs [0030] and [0035]).
According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have utilized the ceramic fiber of KATSUOKA as inorganic filaments in the wire-shaped grinding element of MATSUSHITA, based on teachings of KATSUOKA describing that the disclosed alumina-based ceramic fibers are suitable for processing such as cutting, drilling and polishing. Moreover, one of ordinary skill in the art would be motivated to modify the inorganic filaments of MATSUSHITA as modified by KATSUOKA by adjusting the size of the mullite crystallite contained in each of the fibers to be in the range from 10 Å to 1000 Å/1 nm to 150 nm in order to increase the strength of fibers.
Regarding claim 2, MATSUSHITA as modified by KATSUOKA and OHSHIMA teaches the wire-shaped grinding element for a polishing brush according to claim 1, wherein the average grain size of the mullite crystals is 20 nm or less (see rejection of claim 1 above and OHSHIMA at paragraph [0035]: the size of the mullite crystallite contained in each of the fibers is in the range from 10 Å to 1000 Å/1 nm to 150 nm). OHSHIMA teaches range which overlaps and renders obvious the claimed range. 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. See MPEP §2144.05(I).
Regarding claim 3, MATSUSHITA as modified by KATSUOKA and OHSHIMA teaches the wire-shaped grinding element for a polishing brush according to claim 1, wherein the alumina component of the inorganic filaments is 85% by weight or more (see rejection of claim 1 above and KATSUOKA at paragraph [0004]: 80 to 90% by weight of alumina component). KATSUOKA teaches range which overlaps and renders obvious the claimed range.
Regarding claim 4, MATSUSHITA as modified by KATSUOKA and OHSHIMA teaches the wire-shaped grinding element for a polishing brush according to claim 1, wherein the resin is an epoxy resin (see MATSUSHIMA at paragraph [0022]: thermosetting binder resin such as epoxy resin, and KATSUOKA at paragraph [0004]: the resin binder for binding the ceramic fibers is an epoxy resin).
Regarding claim 5, MATSUSHITA as modified by KATSUOKA and OHSHIMA teaches the wire-shaped grinding element for a polishing brush according to claim 1, wherein the average grain size of the mullite crystals is calculated using the formula, based on a diffraction chart obtained by irradiating the inorganic filaments with X-rays [Formula 1]; Dhkl: average grain size of a (210) plane λ: X-ray wavelength θ: X-ray grazing incidence angle β1/2: half width of a diffraction line from the (210) plane of mullite with a crystal structure by X-ray diffraction with 2θ appearing at around 26° (see rejection of claim1 above and KATSUOKA at paragraph [0014]: the crystal structure by X-ray diffraction, and the half-value width (β1 / 2) of the diffraction line on the (210) plane of mullite where 2θ appears around 26° (where Dhkl: average particle diameter of (210) plane, λ: wavelength of X-ray, θ: oblique angle of view of X-ray)).
Regarding claim 6, MATSUSHITA teaches a polishing brush comprising:
a plurality of wire-shaped grinding elements disposed in parallel with each other (see MATSUSHITA at Fig. 2 and paragraph [0006]: a polishing brush including a plurality of wire-shaped grinding elements); and
a grinding element holder that holds one end portion of each of the wire-shaped grinding elements (see MATSUSHITA at paragraph [0006]: a grinding element holder holding the wire-shaped grinding elements, characterized in that the grinding element holder has a groove, and that first end portions of the wire-shaped grinding elements are inserted in the groove and fixed to the grinding element holder),
wherein each of the wire-shaped grinding elements is the wire-shaped grinding element for a polishing brush according to claim 1 (see rejection of claim 1 above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANASTASIA KUVAYSKAYA whose telephone number is (703)756-5437. The examiner can normally be reached Monday-Thursday 7:00am-5:00pm.
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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