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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/27/2026 has been entered.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Erickson et al. (USP 5,645,619).
Regarding claim 1
Erickson teaches a composition comprising 85.0-99.5 wt % alumina, about 0.25-5.0 wt % iron oxide, and about 0.1-1.0 wt % silica, and about 0.01-1.0 wt % alkali metal oxide (column 2, lines 11-20).
With respect to the amount of alumina and silica, the amounts of the reference overlap the claimed amount. As such, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
With respect to the amount of iron oxide (i.e., components other than the alumina and the silica), it is noted that the reference uses the term about 0.25 wt % which is seen to read on or make obvious claimed 0.18 mass % or less, as the term about has some leeway. In the alternative, one skilled in the art would not have expected a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With respect to the grain size Erickson discloses that crystallite sizes of 0.2-0.3 microns are known, and that the crystallite size is known to be influenced by the amount of silica, and shows that compositions within the claimed silica amount have the claimed crystallite size (column 29, lines 40-44),as such it would have been prima facie obvious to use 0.25 wt % silica to arrive at a crystallite size of 0.2-0.3 microns
With respect to the Vickers hardness this is a property of the composition. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 2
Erickson discloses that most preferably the grains have a density of at least 3.8c/cm3 (column 14, lines 30-35).
Regarding claim 3
It is noted that the 98.75 % alumina of the reference is so close to the claimed 99 % claimed, and the 0.2 microns is also so close to the claimed 0.18 microns, that the skilled artisan would not have expected a difference in properties. Whereas a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Response to Arguments
Applicants argue against the cited prior art.
Applicants argue that the reference does not teach abrasive grains containing components other than alumina and silica have a content of 0.18 % by mass or less. This is not persuasive as the term about allows for some leeway and even if about 0.25 does not overlap with 0.18 there is not such a difference in amount that the skill artisan would expect a difference in properties. Further applicants have provided no evidence of new or unexpected results for the claimed amount of other components.
Applicants argue that Example 30 of the reference uses 1.0 mass % iron oxide. While this may be true it is not persuasive as the reference is good for all that it teaches and is not limited to the preferred embodiments or specific examples.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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