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(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.
Regarding claims 2-12, the terms “preferably” and “particularly” render these claims indefinite as it’s unclear whether what follows these terms are required by the claims, or merely stating a preference. These terms render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination, the examiner will consider any phrase immediately “followed by “preferably,” “in particular,” or “particularly” to not be required by the claim.
Regarding claim 4, the claimed “a layer width,” “a layer height” and “an outside diameter” are indefinite. While one can assume this refers to the “grinding layer” height, and the “grinding layer” outside diameter, this is not free of uncertainty. Some terms do not require antecedent basis where their structures are inherent. MPEP 2173.05€ sates that “[i]nherent components of elements recited have antecedent basis in the recitation of the elements themselves. For example, the limitation “the outer surface of said sphere” would not require an antecedent recitation that the sphere has an outer surface. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 1218-19 (Fed. Cir 2001) (holding that recitation of “an ellipse” provided antecedent basis for “an ellipse having a major diameter” because “[t]here can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter”).”
In this case, while other structures are not claimed as a layer, they could be considered a layer (i.e. a stratum, or one of a series of layers, levels, or gradations in an ordered system). Or, additionally, there could be an unclaimed layer that this is introducing and/or referring to. Applicant should clearly and explicitly state that these are “of the grinding layer” by either claiming “an outside diameter [of the grinding layer], “a width of the grinding layer,” and “a height of the grinding layer” or an equivalent thereof.
Regarding claims 11 and 12, the claim incorporates “the grinding tool according to claim 1” but then seemingly reintroduces the structure(s) of the grinding tool, like “providing a base body” and “providing a grinding layer.” If the structures are already incorporated into the claim, such as by stating “the grinding tool according to claim 1,” then applicant should refer back to those structures using “the” instead of reintroducing them with “a” or “an.” For the purpose of examination, the examiner will consider any structure with antecedent basis to be “the” respective structure. If Applicant considers these a different structure, however, then Applicant can also give these a different name.
Regarding claim 13, “A use of the grinding tool according to claim 1 for grinding at least one hard-coated brake disc” does not include a transitional word like “comprising of” or “consisting of.” The claim, as is, reads as if “for grinding at least one hard-coated brake disk is intended use akin to “[a] use of the grinding tool according to claim 1 [wherein the grinding tool] is for grinding at least one hard-coated brake disc” rather than “[a] use of the grinding tool according to claim 1, [the use comprising] grinding at least one hard-coated brake disc.”
Furthermore, it’s unclear whether the claim is actually requiring use of “the grinding tool according to claim 1” or whether this is just a “use” that can be (not necessarily “is”) used with the grinding tool according to claim 1. In short, the claim could read simply as a method/use that requires only “grinding at least one hard-coated brake disc” and not “grinding at least one hard-coated brake disc using the grinding tool according to claim 1.” It’s best not to include the “grinding tool according to claim 1” in the preamble of the method as this implies intended use, and not inherently requires the step of using the grinding tool in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 4, 6, 8, 11, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshikawa (US-6,012,977).
Regarding claim 1, Yoshikawa (US-6,012,977) discloses a grinding tool, wherein the grinding tool comprises: a base body (base wheel 3) (Figs. 2A-2C) and a grinding layer (cutting blade 4), wherein the grinding layer comprises diamond grains and CBN grains (“Examples of the abrasive powder used in the inventive abrasive-bladed cutting wheel include particles of natural diamond and synthetic diamond of technical grade and particles of cubic boron nitride, referred to as cBN hereinafter, as well as blends of these abrasive particles. cBN is known as a next hardest material to diamond and is rather more stable against heat and less reactive to steels than diamond. Accordingly, it is an advantageous way to substitute cBN particles for a part or all of diamond particles in the abrasive powder used in the abrasive-bladed cutting wheel of the invention used for cutting of rare earth alloy-based sintered magnet blocks without any decrease in the cutting performance of the cutting wheel.”) [Yoshikawa; col. 4, lines 1-12], wherein the diamond grains and CBN grains are bonded multi-layered (“with a bonding agent onto the outer periphery of the base wheel 3”) in a sintered metal bond and/or resinoid bond in the grinding layer (“The method for bonding of the abrasive particles is not particularly limitative including metal bonding, resin bonding, vitrified bonding and electrodeposition bonding.”) [Yoshikawa; col. 3, lines 49-52], wherein a grain mixing ratio between the diamond grains and the CBN grains is substantially 1:1 (“Synthetic diamond particles having an average particle diameter of 100 .mu.m and particles of cBN as mixed in a weight ratio of 1:1 were bonded by the metal bond method onto the outer periphery of the base wheel”) [Yoshikawa; col. 6, lines 62-66], and wherein the grain sizes of the diamond grains and/or the CBN grains are more than 50 μm (“Studies have further been undertaken for the particle size of the abrasive particles used in the inventive abrasive-bladed cutting wheel to find that the abrasive particles of diamond and cBN should have an average particle diameter in the range from 10 to 500 .mu.m in the cutting wheel”) [Yoshikawa; col. 4, lines 14-18] (“Synthetic diamond particles having an average particle diameter of 100 .mu.m and particles of cBN as mixed in a weight ratio of 1:1 were bonded by the metal bond method onto the outer periphery of the base wheel”) [Yoshikawa; col. 6, lines 62-66].
As for the “grinding tool” being “for grinding at least one hard-coated brake disc,” this is considered intended use. Intended use merely states the intended purpose of the structure and is not inherently structurally limiting as the claimed structure does not change based on whether one uses it “for grinding at least one hard-coated brake disc,” or doesn’t use it “for grinding at least one hard-coated brake disc.” It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 2, Yoshikawa discloses the grinding tool according to claim 1, wherein the grain sizes of the diamond grains and/or the CBN grains are 51 μm to 300 μm, preferably 91 μm to 252 μm (“Studies have further been undertaken for the particle size of the abrasive particles used in the inventive abrasive-bladed cutting wheel to find that the abrasive particles of diamond and cBN should have an average particle diameter in the range from 10 to 500 .mu.m in the cutting wheel”) [Yoshikawa; col. 4, lines 14-18] (“Synthetic diamond particles having an average particle diameter of 100 .mu.m and particles of cBN as mixed in a weight ratio of 1:1 were bonded by the metal bond method onto the outer periphery of the base wheel”) [Yoshikawa; col. 6, lines 62-66].
Regarding claim 4, Yoshikawa discloses the grinding tool according to claim 1, wherein the grinding layer (cutting blade 4) is formed annular (Figs. 2A-2C), in particular wherein: an outside diameter is 200 to 900 mm (“In this regard, the base wheel of a cemented metal carbide is advantageous as compared with conventional materials so that a base wheel has a diameter not exceeding 250 mm”) [Yoshikawa; col. 4, lines 46-49], preferably 260 to 800 mm (“Incidentally, the above mentioned upper limit of 250 mm of the diameter of the base wheel is a value corresponding to 40 mm of the diameter of the rotating shaft to penetrate the center opening of the base wheel. When the rotating shaft has a smaller diameter, it would be better to have a smaller outer diameter of the base wheel correspondingly.”) [Yoshikawa; col. 4, lines 46-49] (The natural conclusion of the latter statement is that the opposite is true, “When the rotating shaft has a [larger] diameter [than what is taught], it would be better to have a [larger] outer diameter of the base wheel correspondingly.” However, this is moot due to the 35 USC 112(b) rejection above.), and/or a layer width is 5 to 40 mm, preferably 15 to 25 mm, and/or a layer height is 5 to 20 mm, preferably 6 to 10 mm, and/or wherein the grinding layer (4) has a grinding surface which is formed substantially flat (Figs. 2A-2C) and/or is arranged orthogonal to an axis of rotation of the grinding tool (Figs. 2A-2C).
Regarding claim 6, Yoshikawa discloses the grinding tool according to claim 1, wherein the grinding layer (4) is applied to the base body by sintering, soldering, welding and/or by a binder, preferably adhesive (“The method for bonding of the abrasive particles is not particularly limitative including metal bonding, resin bonding, vitrified bonding and electrodeposition bonding.”) [Yoshikawa; col. 3, lines 49-52].
Regarding claim 8, Yoshikawa discloses the grinding tool according to claim 1, wherein the base body consists of metal, in particular steel and/or aluminum (“a conventional cutting wheel with a base wheel of an alloy tool steel could well meet the purpose of high-accuracy cutting of a sintered block of a rare earth alloy-based magnet”) Yoshikawa; col. 4, lines 62-65].
Regarding claim 11, Yoshikawa discloses providing the method for producing the grinding tool according to claim 1:
providing a base body (base wheel 3) (Figs. 2A-2C);
providing a grinding layer (4), preferably formed of segments, comprising diamond grains and CBN grains; wherein a grain mixing ratio between the diamond grains and the CBN grains is substantially 1:1 (“Synthetic diamond particles having an average particle diameter of 100 .mu.m and particles of cBN as mixed in a weight ratio of 1:1 were bonded by the metal bond method onto the outer periphery of the base wheel”) [Yoshikawa; col. 6, lines 62-66],, and
wherein the grain sizes of the diamond grains and/or the CBN grains are more than 50 μm (“Studies have further been undertaken for the particle size of the abrasive particles used in the inventive abrasive-bladed cutting wheel to find that the abrasive particles of diamond and cBN should have an average particle diameter in the range from 10 to 500 .mu.m in the cutting wheel”) [Yoshikawa; col. 4, lines 14-18] (“Synthetic diamond particles having an average particle diameter of 100 .mu.m and particles of cBN as mixed in a weight ratio of 1:1 were bonded by the metal bond method onto the outer periphery of the base wheel”) [Yoshikawa; col. 6, lines 62-66]; and
applying, preferably by sintering and/or gluing, the grinding layer to the base body or to a carrier body fastened to the base body (“The method for bonding of the abrasive particles is not particularly limitative including metal bonding, resin bonding, vitrified bonding and electrodeposition bonding.”) [Yoshikawa; col. 3, lines 49-52].
Regarding claim 12, Yoshikawa discloses the method according to claim 11, wherein the provision of the grinding layer comprises:
providing a mixture of the diamond grains, CBN grains, the metal bond and/or resinoid bond (“Examples of the abrasive powder used in the inventive abrasive-bladed cutting wheel include particles of natural diamond and synthetic diamond of technical grade and particles of cubic boron nitride, referred to as cBN hereinafter, as well as blends of these abrasive particles. cBN is known as a next hardest material to diamond and is rather more stable against heat and less reactive to steels than diamond. Accordingly, it is an advantageous way to substitute cBN particles for a part or all of diamond particles in the abrasive powder used in the abrasive-bladed cutting wheel of the invention used for cutting of rare earth alloy-based sintered magnet blocks without any decrease in the cutting performance of the cutting wheel.”) [Yoshikawa; col. 4, lines 1-12] and preferably the fillers; and
compressing the mixture, in particular under controlled pressure and/or temperature conditions (“the base wheel was set in a metal mold for the cutting wheel and the space around the outer periphery of the base wheel was filled with a blend of the diamond particles and a thermosetting phenolic resin as the binder and the diamond-resin blend was compression-molded and heated under the molding pressure for 2 hours at 180.degree. C. in the metal mold”) [Yoshikawa; col. 6, lines 3-9].
Claim Rejections - 35 USC § 103
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US-6,012,977).
Regarding claim 3, Yoshikawa discloses the grinding tool according to claim 1, but fails to disclose wherein the grain size ratio between the CBN grains and the diamond grains is from 0.3 to 2.8, preferably from 0.5 to 1.0.
However, Yoshikawa states that “the abrasive particles of diamond and cBN should have an average particle diameter in the range from 10 to 500 .mu.m in the cutting wheel” [Yoshikawa; col. 4, lines 16-18] and states that “[t]he actual particle diameter of the abrasive particles is selected in this range in consideration of the nature of the cutting works, thickness of the base wheel and other factors. When the abrasive particles are too fine, the efficiency of the cutting work is decreased because the surface of the cutting blade is readily clogged as a consequence of little ejection of the abrasive particles on the surface while, when the abrasive particles are too coarse, the surface of the workpiece as cut is correspondingly rough.” [Yoshikawa; col. 4, lines 18-28]. CBN and diamond inherently have a size in the grinding tool of Yoshikawa, and Yoshikawa states that the sizes range from 10 to 500 micrometers, wherein the sizes are determined based on desired efficiency and roughness. Yoshikawa does not state any desire to make one a different size than the other. Additionally, making one finer and another more coarse would contradict each other, as one would pick one abrasive type to be a desired size based on not being too fine or too coarse, and choosing the other abrasive size to be different would make the overall abrasive disk more fine or more coarse than what was desired. As such, it would’ve been obvious to make the CBN grains and diamond grains of Yoshikawa be the same size (i.e. a ratio of 1.0) in order to provide an overall fineness and/or roughness as desired for the fineness and/or roughness of the workpiece.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US-6,012,977) in view of MacAulay (US-1,663,310).
Regarding claim 5, Yoshikawa discloses the grinding tool according to claim 1, but fails to disclose wherein the grinding layer is formed of segments, which are preferably spaced apart from each other by slits, in particular wherein the slits run substantially radially with respect to an axis of rotation of the grinding tool.
However, MacAulay (US-1,663,310) teaches making a grinding layer formed of segments (Figs. 1-6). Since MacAulay is pertinent to grinding wheels, it therefore would’ve been obvious to one of ordinary skill in the art to modify the grinding layer of Yoshikawa to be in segments in order to be cheaper to produced and handled without the danger of breakage (compared to a solid disk) (“segments are cheaper to produce than a solid wheel, because the labor of molding and burning smaller pieces is very much less, and they can be handled without danger of breakage”) [McAulay; page 1, lines 41-45].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US-6,012,977) in view of Skibo (US-6,752,709).
Regarding claim 7, Yoshikawa discloses the grinding tool according to claim 1, but fails to disclose wherein the base body is formed cup-shaped with a base and a side wall adjoining the base, preferably wherein the base has a centrally arranged drilled hole.
However, Skibo (US-6,752,709) teaches a cup-shaped disk wherein the base body is formed cup-shaped with a base and a side wall adjoining the base (Fig. 4) is a known form of abrasive disk, and an alternative to a disk as shown by Yoshikawa (“In the embodiment of FIG. 1, tool 100 is disk shaped, as will be discussed below in conjunction with the embodiments of FIGS. 2-7, the present invention is also well suited to an embodiment in which tool 100 is shaped other than shown in FIG. 1. As an example, tool 100 may be disk shaped, cupped, as well as many other forms. Tool 100 is well suited to having the shape of a fly cutter, an end mill, a grinding disks, and various other tool shapes. Tool 100 of the present embodiment is also well suited to having complex external radii which permit the forming of contours on a work piece.”) [Skibo; col. 7, lines 1-8]. It therefore would’ve been obvious to one of ordinary skill in the art to modify the shape of the grinding tool of Yoshikawa to be cup-shaped as taught by Skibo in order to create a known desired shape used for various other grinding operations [Skibo; col. 7, lines 1-8].
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US-6,012,977) in view of Herrman (US-2001/0034189).
Regarding claim 9, Yoshikawa discloses an arrangement, but fails to disclose at least two grinding tools, each of the grinding tools corresponding to the grinding tool according to claim 1, and at least one workpiece to be machined by the at least two grinding tools, in particular a hard-coated brake disc, preferably wherein the workpiece to be machined is arranged between the at least two grinding tools, particularly preferably wherein the at least two grinding tools are aligned symmetrically with respect to the workpiece and the grinding layers of the at least two grinding tools are facing the workpiece.
However, Herrman (US-2001/0034189) teaches an arrangement comprising at least two grinding tools (grinding wheels 22, 24), and at least one workpiece (articles 94 to be ground) to be machined by the at least two grinding tools (grinding wheels 22, 24) (Fig. 1) [Herrman; paragraph 0041], in particular a brake disc [Herrman; paragraph 0041], preferably wherein the workpiece to be machined is arranged between the at least two grinding tools (Fig. 1), particularly preferably wherein the at least two grinding tools are aligned symmetrically with respect to the workpiece (94) (Fig. 1) and the grinding layers of the at least two grinding tools are facing the workpiece (94) (Fig. 1). Since Yoshikawa teaches an abrasive circular disk-like configuration made CBN cubic boron nitride or diamond, and Herman teaches that wherein “[e]ach abrasive piece 150 (FIGS. 2-6) is of circular disk-like or wafer configuration and is preferably fabricated from vitrified material with CBN cubic boron nitride or diamond to provide super abrasive abrasive pieces” can be used to grind items like brake rotors [Herman; paragraph 0041], in an arrangement as shown in Figure 1 of Herrman, it therefore would’ve been obvious to use an abrasive disk such as taught by Yoshikawa and adapted it for use to use in the arrangement shown in Figure 1 of Herrman in order to abrade a brake rotor using a disk as desired for Herrman [Herrman; paragraph 0041], particularly as Yoshikawa states that such an abrasive wheel is particularly more stable to heat (“cBN is known as a next hardest material to diamond and is rather more stable against heat and less reactive to steels than diamond”) [Yoshikawa; col. 4, lines 5-7] and more resistant to warping (“The inventors have conducted extensive investigations to select a material of the base wheel which is highly resistant against warping and undulation even under a high stress in the cutting works as compared with base wheels made from conventional alloy tool steels and, as a result, have arrived at an unexpected discovery that several kinds of cemented metal carbides are the most suitable for the purpose.”) [Yoshikawa; col. 2, line 63 – col. 3, line 3].
Regarding claim 10, Yoshikawa, as modified by Herrman, discloses a method for machining a workpiece, preferably a hard-coated brake disc, in an arrangement according to claim 9, wherein the, preferably rotating (“An article carrier 90 is conventionally disposed for rotation about an axis 92 to move articles 94 to be ground through space "S" and between work face 70 of grinding wheel 22 and work face 72 of grinding wheel 24 all in substantially conventional manner.”) [Hermann; paragraph 0033], workpiece is ground (“facilitate grinding faces 100, 102 of articles 94 by movement of faces 70, 72 of grinding wheels 22, 24 towards and into contact with faces 100, 102 of articles 94”) [Yoshikawa; paragraph 0033], preferably on both sides, by the at least one grinding tool (22, 24) (Fig. 1), preferably the at least two grinding tools, by means of rotation of the grinding tool or the grinding tools about their respective axes of rotation (“A first motor 40 serves to provide a rotative drive to spindle 26 and grinding wheel 22 through a drive belt 42 and pulley 44 arrangement; while a second motor 50 serves to provide a rotative drive to spindle 28 and grinding wheel 24 through a drive belt 52 and pulley 54 arrangement. Suitable and conventional power is provided for motors 40, 50 through suitable and conventional controls 60 carried by and/or within machine frame and base 62.”) [Herrman; paragraph 0031].
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US-6,012,977) in view of Herrman (US-2001/0034189), and further in view of DE202020104681).
Regarding claim 13, Yoshikawa discloses a use of the grinding tool according to claim 1, but fails to disclose “the use” is for grinding at least one hard-coated brake disc.
However, Herrman (US-2001/0034189) teaches that can be used for grinding at least at least one brake disc/rotor (“Articles 94 to be ground may be items and parts such as brake rotors, power steering pump rings and rotors, valve plates or the like.”) [Herrman; paragraph 0041]. Since Yoshikawa teaches an abrasive circular disk-like configuration made CBN cubic boron nitride or diamond, and Herman teaches that wherein “[e]ach abrasive piece 150 (FIGS. 2-6) is of circular disk-like or wafer configuration and is preferably fabricated from vitrified material with CBN cubic boron nitride or diamond to provide super abrasive abrasive pieces” can be used to grind items like brake rotors [Herman; paragraph 0041], it therefore would’ve been obvious to one machining/grinding brake rotors to use an abrasive disc such as taught by Yoshikawa, which uses an abrasive disc made of CBN cubic boron nitride and/or diamond, based on the teaching of Herman [Herman; paragraph 0041].
While Herman merely states a brake rotor/disc, and doesn’t mention “hard-coated,” (DE202020104681) teaches that brake disks are often hard coated (“Furthermore, fine dust caused by abrasion of the brake disks and linings should be avoided, so that the brake disks should be low-wear or wear-free. These new requirements are met by laser-coated or plasma-coated brake disks which have a hard metal layer on a base body made of cast aluminum or gray cast iron, which includes, for example, tungsten carbides, titanium carbides or niobium carbides.”) in order to avoid fine dust caused by wearing of the brake disks [DE202020104681 Translation; Page 1, Description, Second Paragraph]. Since the prior art of Herman teaches machining brake disks, and DE202020104681 states that a typical brake disk has a hard coating, it therefore would’ve been obvious, in view of the prior art which teaches grinding brakes disks, to use the grinding tool of Yoshikawa on all disc brakes, hard coated or otherwise.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-2011/0039479 and US-4,361,988 are pertinent to claim 1.
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/JOEL D CRANDALL/Examiner, Art Unit 3723
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