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 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.
Claims 3 and 14 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. Claims 3 and 14 depends from claims 2 and 13, respectively; claims 2 and 13 already recite a “spherical” shape for each of the plurality of pores. However, then claims 3 and 14 claim a sphericity which includes values below 1 such as the claimed end point of 0.2. A sphericity of 1 means a perfect sphere, and the lower the number, it means it is farther from a sphere shape. Thus, claims 3 and 14 are not seen to further limit claims 2 and 13, respectively, because a sphericity of 0.2 or even values above it, but not 1, do not result in a “spherical” shape as claimed in claims 2 and 13. 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.
Claims 6-8 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. Claim 6 recites a “reinforcing portion provided in the interconnecting pore”; claim 6 depends from claim 1 which specifically claims a porosity of 40% or more and 99% or less. However, once the reinforcing portion is inside the pores, the metal-bonded grinding stone would no longer contains pores. For this reason, claim 6 is not seen to further limit claim 1. Claims 7 and 8 are rejected because of depending from claim 6. Nevertheless, it is noted that the language of claim 7 includes the phrase “at least” when reciting how much of the pores would contain the reinforcing portion; again, claim 7, alone, would no longer limit claim 1 either because “at least” include all of the interior space of the pores as well. Claim 7 indirectly depends from 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 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2003/0097800 to Ramanath et al. (hereinafter Ramanath).
With respect to claim 1, Ramanath discloses a porous abrasive article comprising about 40-80 vol% interconnected porosity, wherein the article is useful as a segment for a segmented grinding wheel and comprises a mixture of abrasive grains and a metal bond matrix (abstract, [0008]-[0009], [0013], [0016]). The segments form a metal bonded grinding wheel (Figures); the reference teaches a segmented grinding wheel.
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 4, it is noted that for any “interconnected” porosity, it would, inevitably, be expected of at least two pores to be connected to each other to form an interconnected porosity. A single pore alone does not form “interconnected” pores.
With respect to claim 5, Ramanath discloses an average pore size of about 25-500 microns for their interconnected pores ([0022]). For pores to be “interconnected”, inevitably, it is expected of at least two of them to be connected to each other.
Claim(s) 1, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/0158631 to Furuno et al. (hereinafter Furuno).
With respect to claim 1, Furuno discloses a metal bonded grinding wheel comprising a porosity of 50-65 vol% having a pore diameter of 50-200 microns, and comprising abrasive grains (abstract, [0009]-[0011], [0014]-[0015]).
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 9, Furuno discloses pores, which according to Figure 2, are closed or independent pores, which when such pores open, they serve as chip pocket (Figure 2, [0024]). The pores, as shown, do not communicate with each other.
With respect to claim 10, Furuno teaches a pore diameter of 50-200 microns, which overlaps with the claimed pore diameter, for the independent pores, of 12-100 microns.
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).
Claim(s) 1-5 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2009/0084042 to Ramanath et al. (hereinafter Ramanath).
With respect to claim 1, Ramanath discloses a metal bonded abrasive article which can be a segmented grinding wheel or a monolithic grinding wheel comprising a metallic bond, abrasive grains, and about 40-90 vol% porosity (abstract, [0029], [0039]).
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 2, Ramanath discloses closed porosity as well, wherein the pore inducers have the shape of spheres ([0033]). It is important to note that closed porosities are individual pores which are not connected to other pores; whereas, interconnected pores are the ones that result from the connection of at least two pores. Therefore, the interconnected pores of Ramanath are expected to be the result of the connection between at least two pores, which if not connected would have formed closed pores. As such, the reference is seen to render a shape of spherical for the pores including interconnected pores obvious.
With respect to claim 3, considering the fact that Ramanath is seen to disclose spherical pores, of any type, the reference is seen to read on and render claim 3 obvious because a sphericity of 1 means perfect spheres, and the claim in fact, includes sphericity of less than but close to 1 as well.
With respect to claim 4, Ramanath teaches the metal bonded grinding wheel comprises interconnected porosity ([0031]); for any “interconnected” pore to form, inevitably, at least, two pores should communicate with each other.
With respect to claim 5, as noted above, Ramanath teaches the metal bonded grinding wheel comprises interconnected porosity ([0031]); for any “interconnected” pore to form, inevitably, at least, two pores should communicate with each other. Ramanath, additionally, discloses an average size of 40-400 microns for the interconnected pores ([0031]).
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 claims 9 and 10, Ramanath, additionally, discloses the presence of closed pores having an average size of 5-400 microns ([0031]), which overlaps with the claimed range of “2 µm or more and 100 µm or less” for the claimed “independent pores”.
With respect to claim 11, Ramanath, furthermore, teaches intrinsic pores having a pore size of “below” 40 microns ([0031]). This disclosure is seen to read on and render obvious the claimed “micropores having a pore diameter of 2 µm or more and 10 µm or less”.
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 12, Ramanath discloses that the concentration of intrinsic pores is 0.01-20 vol% ([0031]).
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 13, Ramanath discloses closed porosity as well, wherein the pore inducers have the shape of spheres ([0033]). It is important to note that closed porosities are individual pores which are not connected to other pores; whereas, interconnected pores are the ones that result from the connection of at least two pores. Therefore, the interconnected pores of Ramanath are expected to be the result of the connection between at least two pores, which if not connected would have formed closed pores. As such, the reference is seen to render a shape of spherical for the pores obvious.
With respect to claim 14, considering the fact that Ramanath is seen to disclose spherical pores, of any type, the reference is seen to read on and render claim 14 obvious because a sphericity of 1 means perfect spheres, and the claim in fact, includes sphericity of less than but close to 1 as well.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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