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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The abstract of the disclosure is objected to because the language “According to one aspect” should be deleted since there are many aspects as disclosed in the specification and claims. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: in the Paras. 46-150, the language “Embodiment 1…Embodiment 105” should be deleted since it appears the specification discussed only one embodiment.
In the Para. 36, the reference “120” are called two different parts, “a tie layer” and “the backing 120”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-18, 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2-3, the “ILTave” is unclear what it is representing. This “ILTave” should be spelled one in the claim.
Claim 4 “pyramidal shapes” is unclear. Looking at Figure 5, it is not a pyramidal shape. See the pyramidal shape below (it has a single top apex). Thus, it is unclear how the pyramidal shapes of claim 4 can be considered as pyramidal shapes.
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Claim 5 “height” is unclear since it is not depending on claim 4, therefore, the language “height” is unclear where it refers to (since this invention is a portable device capable of achieving an infinite number of orientations during use and including orientations where the height would not be the height. It is recommended that terms be utilized that are true regardless of orientation). Claims 6-7 have the same issue “height”. Claim 18 also has the same issue since it is “underlying”.
Claim 8 “a density of at least at least 50 kg/m3 and no greater than 175 kg/m3” is unclear whether it refers the density in claim 1 or an additional density.
Claim 16 “the backing comprises foam” is unclear whether it refers the foam in claim 1 or an additional foam since it misses an article.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
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 8 and 16 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 8 “a density…” and Claim 16 “a foam…” do not refer back to and further limit the claim from which it depends. 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.
Double Patenting
Examiner notes that as current claims of this pending application is NOT rejected on the ground of nonstatutory double patenting as being unpatentable over claims of a copending application 19/000949.
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.
Claims 1, 4, 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 11701755) hereinafter Chen in view of Eckel et al (US 2013/0344784) hereinafter Eckel.
Regarding claims 1, 8, 16, Chen shows an abrasive article (only Figure) comprising:
a backing (11),
an abrasive layer (13, 16) overlying the backing, the abrasive layer comprising a plurality of shaped structures (see their protrusions in Figure) comprising abrasive particles (13) and a binder (16),
an interlayer (12) between the backing and the abrasive layer, wherein the backing comprises a foam (Col. 6, line 1 “foams”), however, it is unclear whether the foam has a density of at least 50 kg/m3 and not greater than 175 kg/m3 or not.
Eckel shows an abrasive article (Figure 1) having a foam backing (12, Figure 1 and Para. 21), wherein the foam backing has a density of at least 50 kg/m3 and not greater than 175 kg/m3 (Para. 24 “a density … 48 kg/m3 113 kg/m3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the foam of Chen’s backing to have a density of at least 50 kg/m3 and not greater than 175 kg/m3 (within the claimed range), as taught by Eckel, in order to provide structural integrity to the polyurethane foam backing without compromising flexibility (Para. 24 of Eckel).
Regarding claim 4, as best understood, the modified abrasive article of Chen shows the shaped structures comprise pyramidal shapes (Col. 16, line 17 “pyramid”).
Regarding claim 9, the modified abrasive article of Chen shows the abrasive particles comprise a median particle size of at least 1 micron and no greater than 20 microns (see Col. 16, lines 61-63 of Chen discussed some sizes of the particles within the claimed range).
Regarding claims 10-11, the modified abrasive article of Chen shows that the abrasive particles comprise alumina… (see Col. 16, line 50 of Chen “alumina…”) and wherein the abrasive particles comprise silicon carbide (see Col. 16, line 29 of Chen “silicon carbide …”).
Regarding claims 12-15, the modified abrasive article of Chen shows that the binder comprises a radiation curable binder (Col. 17, line 67 “The anti-loading composition can be cured by radiation”), wherein the interlayer (12, Chen’s figure) comprises interlayer particles and an interlayer binder (this is inherent limitations since all materials have particles and the layer 12 adhered to the layer 16 is an interlayer binder), wherein the interlayer has the same composition as the abrasive layer (see Chen’s Figure, the particles between layers 12 and 16), and wherein the interlayer (12) has a different composition than the abrasive layer (13, 16, see Chen’s Figure).
Regarding claim 17, the modified abrasive article of Chen shows that the abrasive article comprises a coat weight, wherein the coat weight comprises the weight of the interlayer and the abrasive layer, wherein the coat weight is at least 17 g/m2 and no greater than 75 g/m2 (see Col. 17, lines 53-59 of Chen “ from 45 to 65 gsm”).
Regarding claim 18, the modified abrasive article of Chen shows that a tie layer underlying the inter layer (see the layer 11a of Chen’s figure that ties the layers 11 and 12 together).
Regarding claim 19, the modified abrasive article of Chen teaches a method of making an abrasive article comprising: providing a backing; depositing an interlayer and abrasive layer overlying the backing, the abrasive layer comprising a plurality of shaped structures comprising abrasive particles and a binder, wherein the backing comprises a foam having a density of at least 50 kg/m3 and not greater than 175 kg/m3 (see the discussion in claim 1 above).
Regarding claim 20, the modified abrasive article of Chen teaches a method of using the abrasive article claim 1, to polish a workpiece, wherein the workpiece comprises an automotive clear coat, acrylic, paint, isocyanate, urethanes, polymeric layers, or coatings (see the 1st paragraph of the summary of Chen’s art).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 11701755) hereinafter Chen in view of Eckel et al (US 2013/0344784) hereinafter Eckel and Gaeta (US 2015/0266162).
Regarding Claims 2-3, as best understood, the modified abrasive article of Chen shows all of the limitations as stated above including a discussion of thickness of the layer 12 at least 1mm, however, it is silently discussed the ILTave is 4 microns to 17 microns.
Gaeta shows an abrasive article (Figure 1) having thickness of an inner layer 116 at least 1mm, however, it is silently discussed the ILTave is 4 microns to 17 microns (Para. 34 “adhesion enhancement layer 116 has a thickness of not greater than about 5 microns”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the inner layer of Chen to be 4 microns to 17 microns, as taught by Gaeta, in order to properly provide an adhesive bonding the backing and abrasive layer and reduce cost manufacture (since it is thin coating or adhesive).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 11701755) hereinafter Chen in view of Eckel et al (US 2013/0344784) hereinafter Eckel and Yoko (WO 2019135180 A2).
Regarding claim 5, as best understood, the modified abrasive article of Chen shows all of the limitations as stated above except that the shaped structures comprise a height of at least 10 microns and no greater than 50 microns.
Yoko discusses an example A-4, the diamond abrasive grains with an average particle size of 20 microns and in page 8, the 2nd paragraph discusses the average particle size of the abrasive grains that are wide ranges, “not less than 0.3 µm, and is preferably not less than 0.5 µm and more preferably not less than 10 µm. In addition, the average particle size of the abrasive grains may be, for example, not greater than 50 µm, and is preferably not greater than 35 µm and more preferably not greater than 20 µm. Further, when the abrasive grains are concentrated, the average particle size thereof may be, for example, not less than 5 µm, and is preferably not less than 10 µm and more preferably not less than 20 µm. In addition, the average particle size of concentrated abrasive grains may be, for example, not greater than 5 mm, and is preferably not greater than 1 mm and more preferably not greater than 500 µm”.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the structures of Chen to have the diamond abrasive grains with an average particle size (an inherent height of at least 10 microns and no greater than 50 microns), as taught by Yoko, in order to allow polishing or grinding a smooth surface with minimal unevenness can be formed easily (see the means for solving the problem of Yoko as discussed in claim 4 above).
Moreover, it would have been obvious to one having ordinary skill in the art to have the diamond abrasive grains with an average particle size (an inherent height of at least 10 microns and no greater than 50 microns) of any reasonable range including the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The claimed range would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. These are known discovering the optimum or workable ranges depending on how smooth or fine surfaces requirements to be polished.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 11701755) hereinafter Chen in view of Eckel et al (US 2013/0344784) hereinafter Eckel, Yoko (WO 2019135180 A2), Adefris et al (US 6319108) hereinafter Adefris.
Regarding claims 6-7, the modified abrasive article of Chen shows all of the limitations as stated above except an average interlayer thickness to an average structure height ratio of at least 1:10 or an average interlayer thickness to an average structure height ratio of no greater than 5:1.
As the applicant had not pointed out the criticality of why the average interlayer thickness to average structure height ratio is at least 1:10 or the average interlayer thickness to average structure height ratio is no greater than 5:1.
Chen shows an average interlayer thickness (12) to an average structure height ratio of at least 1:1 (see Chen’s Figure).
Yoko shows an average interlayer thickness (23) to an average structure height ratio of at least 1:2 (see Yoko’s Figure 2).
Adefris shows an average interlayer thickness to an average structure height ratio of at least 1:10 (Col. 6, lines 10-15 “the backing…0.3-10mm” and Col. 6, line 64 discusses “ about 45mm” for abrasive particle size).
Based on the teachings above, almost any number of ratio of the average interlayer thickness to average structure height would be considered obvious. This gives the manufacture a choice to consider between fine or coarse polishings or grindings and material agents for holding the abrasive particle.
Further, Applicant had not pointed out or demonstrated the criticality of a specific limitation such as the ration as set in the claims, it would have been an obvious matter of design choice to have the ratio of the average interlayer thickness to average structure height would be considered obvious (to be claimed range), since such a modification would have involved a mere change in the size of a component and material to be used. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955) for properly smooth or fine polished.
Conclusion
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/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 9/29/2026
