3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardOct 20, 20212021002165 (P.T.A.B. Oct. 20, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/028,682 04/11/2016 Jilliann M. Nelson 74274US008 1026 32692 7590 10/20/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER CRANDALL, JOEL DILLON ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 10/20/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JILLIANN M. NELSON, SCOTT W. PETERSON, and CHARLES J. STUDINER IV Appeal 2021-002165 Application 15/028,682 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 15–29. See Appeal Br. 2. Claims 1–14 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota.” Appeal Br. 2. Appeal 2021-002165 Application 15/028,682 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to coated abrasive articles and methods of making them.” Spec. 1:5. Method claim 15 and apparatus claim 22 are independent. Claim 15 is illustrative of the claims on appeal and is reproduced below. 15. A method of making a coated abrasive article, the method comprising: providing a structured abrasive article comprising: a polymeric film backing having first and second opposed major surf aces; and an abrasive layer secured to the first major surface of the backing, the abrasive layer comprising pyramidal precisely-shaped abrasive composites secured to the first major surface of the backing, the abrasive layer having an abrading surface opposite the second major surface of the backing, wherein the pyramidal precisely-shaped abrasive composites comprise abrasive particles retained in a binder matrix, and wherein the abrading surface has a first projected area on the first major surf ace of the backing; and contacting a portion of the abrading surface with a laser beam to provide at least one microporous surface region comprising a plurality of laser-treated pyramidal precisely- shaped abrasive composites in the abrading surface, wherein a majority of the microporous surface region comprises the binder matrix, wherein the at least one microporous surface region has a surface roughness greater than in portions of the abrading surface immediately adjacent to the at least one microporous surface region, wherein a projection of the at least one microporous surface region onto the first major surface in a direction perpendicular to the first major surface has a second projected area on the first major surface of the backing, and wherein the ratio of the second projected area to the first projected area is from 0.15 to 0.90, inclusive. Appeal 2021-002165 Application 15/028,682 3 EVIDENCE Name Reference Date Bruxvoort et al. (“Bruxvoort”) US 5,958,794 Sept. 28, 1999 Roy et al. (“Roy”) US 2009/0053976 A1 Feb. 26, 2009 Bajaj et al. (“Bajaj”) US 2015/0044951 A1 Feb. 12, 2015 REJECTION Claims 15–29 are rejected under 35 U.S.C. § 103 as unpatentable over Bajaj, Bruxvoort, and Roy. ANALYSIS Appellant presents arguments for each of independent claims 15 and 22. See Appeal Br. 4–5. No separate arguments are presented with respect to dependent claims 16–21 and 23–29. See Appeal Br. generally. We select claims 15 and 22 for review, with the dependent claims standing or falling with their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 15 The Examiner primarily relies on the teachings of Bajaj for disclosing the recited method steps. See Non-Final Act. 3–4; Ans. 13. However, the Examiner relies on Bruxvoort for teaching both a polymeric film backing plate and pyramidal precisely-shaped abrasive composites (see Non-Final Act. 4; Ans. 13–14), and relies on Roy for teaching the recited range of a ratio of the projected areas (see Non-Final Act. 4–5). The Examiner provides reasons for the combination of Bruxvoort and Roy with Bajaj. See Non-Final Act. 4, 5; Ans. 14. Appeal 2021-002165 Application 15/028,682 4 Addressing Bajaj, Appellant contends that the primary reference “neither teaches nor properly suggests using laser ablation on an already textured surface such as those taught by Bruxvoort et al. or Roy.” Appeal Br. 4. Appellant’s contention regarding Bajaj is not persuasive. This is because the Examiner identifies Bajaj’s surface 110 as the surface being worked by Bajaj’s laser 120. See Non-Final Act. 3 (referencing Bajaj Fig. 4); Ans. 13. Bajaj identifies surface 110 as a “polishing surface,” stating “[t]he texture 215 on the polishing surface 110 may be formed from a composite material (i.e., the first material 125A and the second material 125B).” Bajaj ¶ 28. Bajaj Fig. 1B further depicts textured surface 130 upon polishing surface 110. Additionally, Appellant does not explain how Bajaj’s polishing surface 110 could actually perform the step of polishing if it lacked texture. It strains credibility to assert that a polishing surface is without any texture, and Appellant presents no evidence to support that assertion. As such, we are not persuaded the Examiner erred in relying on Bajaj on this point, or that Bajaj’s polishing surface 110 lacked any texture prior to being worked by laser 120. In other words, we are not persuaded that Bajaj fails to teach “laser ablation on an already textured surface” as Appellant asserts. Appeal Br. 4. Appellant also contends that, regarding Bruxvoort’s backing plate, “it is submitted that Bajaj et al. would have necessarily already addressed this problem (i.e., by reducing the load bearing fraction of the abrading surface as in Bruxvoort et al.).” Appeal Br. 4–5. To be clear, Bajaj does not expressly mention a backing plate, focusing instead on the abrasive. See Bajaj generally. Bruxvoort, on the other hand, teaches that if a “backing is not sufficiently uniform in thickness,” then there may be variations in the Appeal 2021-002165 Application 15/028,682 5 load applied. Bruxvoort 17:11–17. One way Bruxvoort resolves this irregular load bearing issue is by providing “backings that are more rigid.” Bruxvoort 17:18–20. It is this teaching of rigidity that the Examiner relies upon when stating that it would have been obvious “to combine the abrasive article of Bajaj with the backing of Bruxvoort in order to provide a desired rigidity to the abrasive article.” Non-Final Act. 4; see also Bruxvoort 17:15–17 (“If the backing is not sufficiently uniform in thickness, a greater variability in the wafer surface and wafer thickness after planarization may result.”). Further on this argument, Appellant appears to be arguing that Bajaj would have “necessarily already addressed this problem” because another reference, Bruxvoort, addresses it. Appeal Br. 4. Appellant does not explain why, just because one reference addresses a rigid backing, other references would have also “necessarily already addressed this problem.” Instead, as expressed above, Bajaj focuses on the abrasive and the Examiner relies on Bruxvoort for teaching an abrasive on a backing that is rigid for better load bearing characteristics. See Non-Final Act. 4. Appellant’s contention above does not explain how the Examiner’s logic or rationale is faulty. Appellant additionally states, regarding Bruxvoort’s backing that is “incorporated into Bajaj et al., there would be no need to further modify it using a laser.” Appeal Br. 5. However, Bajaj’s laser is not modifying any backing. Instead, Bajaj teaches laser modification of the abrasive which, as the Examiner suggests, is located on Bruxvoort’s backing. See Non-Final Act. 3–4. Regarding the teachings of Roy, Appellant simply contends, “Roy does not overcome this deficiency.” Appeal Br. 5. Appeal 2021-002165 Application 15/028,682 6 Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claim 15, and dependent claims 16–21, as being obvious over Bajaj, Bruxvoort, and Roy. Claim 22 Appellant contends that a skilled person “would understand the terms abrasive layer and backing as used in claim 152 to refer to distinct elements, not regions of a single element.” Appeal Br. 5. Appellant’s contention distinguishing between “distinct elements” and “regions of a single element” is misplaced. This is because claim 22 recites an “article” that comprises both a backing layer and an abrasive layer. See Appeal Br. 8 (Claims Appendix). Appellant does not explain how these “distinct elements” are not also “regions of a single element” as illustrated in Appellant’s Figures 1B and 1C. Thus, Appellant’s attempt to cast aspersions on the Examiner’s combination, which likewise involves “distinct elements” (abrasive layer and backing layer) that are also “regions of a single element,” is not persuasive of Examiner error. Appellant further contends that the Examiner relied “on improper hindsight reasoning” when combining Roy with Bajaj and Bruxvoort. Appeal Br. 5. However, Appellant merely replicates a portion of Appellant’s Specification where support for the recited range can be found and simply states that “beneficial abrading results” occur. Appeal Br. 5. There is no dispute that Appellant’s Specification describes a beneficial result, but it is not explained how Appellant’s range is not also a 2 As independent claim 22 is distinct from independent claim 15, we understand that this reference to “claim 15” is likely a typographical error, and that Appellant actually intended to reference claim 22, not claim 15. Appeal 2021-002165 Application 15/028,682 7 range that overlaps with that of Roy. Appellant does not explain how an unexpected result was obtained with Appellant’s recited ratio being between 0.15 and 0.90 (nearly the entire ratio spectrum between 0 and 1). Nor does Appellant indicate how the Examiner erred when stating “that 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).” Non-Final Act. 9. In short, we are not persuaded the Examiner’s reliance on Roy for such teachings is in error. See Non-Final Act. 8–9. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claim 22, and dependent claims 23–29, as being obvious over Bajaj, Bruxvoort, and Roy. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 15–29 103 Bajaj, Bruxvoort, Roy 15–29 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation