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 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
14. The original disclosure provides no basis for the claimed dimensions for the dimensional growth of the anodic coating. Furthermore, there are no ranges for less than 0.00005 inches mentioned anywhere in the original disclosure. Thus this claim is new matter.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1-11 and 13-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Haga et al., JP H07-074055 A in view of
at least one of Liao et al., U.S. Patent App. Pub. No. 2006/0141751 A1 [hereinafter Liao] or/and Yang et al., U.S. Patent App. Pub. No. 2011/0171600 A1 [hereinafter Yang];
Windsor-Bowen, G.B. 396,743 [hereinafter Windsor];
alternatively at least one of Sun et al., U.S. Patent App. Pub. No. 2014/0363659 A1 [hereinafter Sun], Evans, II et al., U.S. Patent No. 5,124,022 [hereinafter Evans], or/and Hesse, U.S. Patent App. Pub. No. 2004/0004003 A1;
alternatively Iwaki et al., W.O. Int’l Pub. No. 2013-008369 A1; and
as evidenced by Cecchetto et al., U.S. Patent App. Pub. No. 2007/0184213 A1 [hereinafter Cocchetto]; Merriam-Webster, Several (2012); Mettler Toledo, Sulfuric Acid (2012) [hereinafter Toledo] and Mettler Toledo, Potassium Permanganate (2017) [hereinafter Mettler]. A human translation was used for Haga et al. [hereinafter Haga]. A machine translation was used for Iwaki et al. [hereinafter Iwaki].
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references render this claim obvious.
I. Haga
A method of controlling dimensional growth in an anodizing process for aluminum, magnesium or alloys thereof (Applicant’s disclosure teaches that potassium permanganate will control dimensional growth, because the prior art also teaches potassium permanganate, the prior art’s teachings would also control dimensional growth; see App. Spec. [0058]-[0068]) to produce a thin anodic coating (film thickness of several tens of micrometers is thin; Haga [0016]); comprising:
providing an anodizing solution (anodizing solution; Haga [0018]-[0024]) comprising:
an acid solution formed from at least one acid selected from the group consisting of sulfuric acid, phosphoric acid, and boric acid (acidic solution with at least sulfuric acid; Haga [0019]-[0020]), diluted with [ ] water (water; Haga [0022]); and
at least one oxidizing agent selected from the group consisting of potassium permanganate, sodium permanganate, hydrogen permanganate, lithium permanganate, sodium orthovanadate and combinations thereof (potassium permanganate or alkali nitrate; Haga [0024]);
wherein the at least one acid is present in the anodizing solution at a concentration of between about 10% w/v to about 20% w/v (5-35 wt%, or 5-44% w/v; Haga [0023], see also Appendix);
…
placing a metal substrate into the anodizing solution (substrate immersed into solution; Haga [0018]) wherein the metal substrate is aluminum, magnesium or alloys thereof (aluminum; Haga [0015]-[0016], [0019]);
anodizing the metal substrate by applying a [] voltage (voltage would have been applied to get a current; Haga [0025]) for a specified amount of time (10-60 minutes; Haga [0025]) wherein current density is between about 20 amps/ft2 to about 30 amps/ft2 (5-30 mA/cm2 which is 5-28 A/ft2; Haga [0025]); and
removing the anodized metal substrate from the anodizing solution (a person having ordinary skill in the art would have recognized that the substrate would have been removed since the substrate would have been put to use sometime after the treatment and it cannot be put to use if it stays in the solution, furthermore the substrate is subjected to an after-treatment which also requires removal; Haga [0026]);
wherein the thin anodic coating (film thickness of several tens of micrometers is thin in light of the Applicant’s specification, note that examples of the very thin coating of the invention of up to 0.0014 inches - i.e. 36 microns - were made which would overlap Haga’s several tens of micrometers which would mean at least 20 microns thus showing that Haga’s several tens of microns is thin; Haga [0016], App. Spec. [00240]-[00245], see also Merriam-Webster {defining “several” as meaning more than one}) is non-porous (film is sealed getting rid of the pores, hence making the film non-porous; Haga [0026]-[0028], see also Cecchetto {describing how sealing forms a non-porous layer}).
II. Deionized – at least one of Liao and/or Yang
Haga is silent on deionized water.
However, Liao or Yang teaches that deionized water is a suitable type of water for use in anodization. Liao [0023], Yang [0037]. Liao further describes deionized water as pure so a person having ordinary skill in the art would know that deionized water would not have any potential contaminants. See id. A person having ordinary skill in the art would also recognize the same for Yang. See id.
It therefore would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the recited prior art’s medium/water with either Liao or Yang’s deionized water to have a pure form of water which would not have potential contaminants, alternatively to yield the predictable result of having a suitable form of water for anodization. See id.
III. Concentration - Windsor
Haga is silent on wherein the at least one oxidizing agent is present in the anodizing solution at a concentration of between about 0.01% w/v to about 0.05% w/v (i.e. 0.001-0.005 g/L).
However, this limitation is obvious as explained by the PTAB:
Windsor-Bowen discloses an anodizing process which uses an anodizing solution containing sulfuric acid and crystallized sodium sulfate (p. 1, Il. 21-25). The solution can contain 1 percent or less of an oxidizing agent that can be sodium nitrate or potassium nitrate (which are alkali nitrates) (p. 2, 11.29-34).
Because, like Windsor-Bowen’s anodizing solution, Haga’s anodizing solution can contain sulfuric acid and an oxidizing agent, and Haga’s oxidizing agent can be alkali nitrate like Windsor-Bowen’s oxidizing agent or can be potassium permanganate, one of ordinary skill in the art would have had a reasonable expectation of success in using Windsor-Bowen’s oxidizing agent’s 1% or less amount as the potassium permanganate oxidizing agent concentration in Haga’s anodizing solution. See In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success .... For obviousness under § 103, all that is required is a reasonable expectation of success”).”2
Thus, [Applicant’s] claimed method using the recited anodizing solution would have been prima facie obvious to one of ordinary skill in the art.
Ex parte Eidschun, Appeal 2023-003437, 4-5 (PTAB, Oct. 16, 2024).
IV. Constant Voltage
Haga is silent on the voltage being constant. However, Haga must use some kind of voltage form.
This limitation is obvious in view of at least one of Sun, Evans, Hesse, or/and Windsor.
A. Sun
The PTAB found this limitation to be obvious back when it was claim 12 when the PTAB wrote: “[c]laim[s] 11-13: Sun (¶ 22) indicates that suitable voltages and times for anodization in a sulfuric acid bath are about 10-100 V which includes 15 V, for about 1 minute to about 40 minutes which includes about 20 minutes to about 30 minutes.” Eidschun at 7.
It is further noted that Sun teaches a voltage of 10-100 V is a suitable voltage to anodize. Sun [0022]. Since it is “a voltage” the voltage would have been one, constant DC voltage.
B. or/and Evans
Evans teaches that anodization for a capacitor may be done at constant DC current at a formation voltage from 1-400 V DC. Evans col. 5 l. 50 – col. 6 l. 2.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s voltage with Evans’s constant 1-400 V DC to yield the predictable result of having a suitable voltage to anodize for a capacitor.
C. or/and Hesse
Hesse teaches a voltage of 1-30 V is a suitable voltage to anodize. Hesse [0036]. Since it is “a voltage” the voltage would have been one, constant DC voltage.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the aforementioned prior art’s voltage to be Hesse’s constant 1-30 V DC to yield the predictable result of having a suitable voltage to anodize at.
D. or/and Windsor
Windsor teaches a voltage of at least 80 V and preferably 100 V is a suitable voltage to anodize. Windsor p. 2 ll. 68-72. Since Windsor suggests exactly 100 V, the voltage would have been one, constant DC voltage.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the aforementioned prior art’s voltage to be Windsor’s constant DC voltage to yield the predictable result of having a suitable voltage to anodize at.
V. Non-porous – alternatively Iwaki
This is an alternative rejection for non-porous.
Iwaki teaches that a non-porous coating may be formed from the anodization process itself and the coating is corrosion resistant. Iwaki p. 8. A person having ordinary skill in the art would have recognized that skipping the sealing process and directly forming a non-porous coating would increase efficiency.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Iwaki’s non-porous coating which is corrosion resistant in order to increase efficiency.
2. The method of claim 1, further comprising adding an amount of phosphoric acid to the anodizing solution (phosphoric acid which may be mixed with sulfuric acid). Haga [0020].
3. The method of claim 2, wherein the phosphoric acid is present in the anodizing solution at a concentration of about 0.04% w/v (i.e. 0.004 g/L). These claims are rejected by at least one of Haga or/and Hesse.
A. Haga
This claim was found obvious by the PTAB for the following reason: “Haga (¶ 20) encompasses any relative amounts of sulfuric acid and phosphoric acid, including the phosphoric acid concentration in claim 3.” Eidschun at 6-7. Furthermore, Haga recognizes the use of phosphoric acid along with sulfuric acid as suitable acids, including mixtures of the two. Haga [0020].
B. or/and Hesse
Alternatively, it is obvious to combine equivalents for the same purpose. MPEP § 2144.06(I).
Haga teaches using sulfuric acid.
Hesse teaches that phosphoric acid may be used from 0-80 parts by weight and then make up 3-30 wt% of the electrolyte, leading to a total range of 0-24 wt% of the electrolyte. Hesse [0021]. Hesse teaches that sulfuric acid and phosphoric acid were known acids used in anodization baths (in addition to Haga), making the two recognized acid equivalents. Id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the aforementioned prior art’s sulfuric acid with Hesse’s 0-24 wt% phosphoric acid to yield the predictable result of having a suitable combined acid electrolyte for anodization.
4. The method of claim 1, further comprising cooling the anodizing solution to about 60°F prior to placing the metal substrate in the anodizing solution.
This claim is rejected for the reasons stated by the PTAB: “Haga’s disclosure of an approximately 10-50°C solution temperature would have suggested adjusting the acid and oxidizing agent to a temperature within that range such as 60°F.” Eidschun at 7.
5. The method of claim 4, further comprising cleaning the metal substrate prior to placement in the cooled anodizing solution. This claim is rejected by at least one of the following reasons.
I. PTAB
This claim is rejected for the reasons stated by the PTAB: “[o]ne of ordinary skill in the art who desired a clean anodized substrate would have cleaned the substrate before being anodized.” Id.
II. or/and Evans
Evans teaches that “the surface should preferably be cleaned to remove any materials which might interfere with the formation of the [] layer.” Evans col. 5 ll. 19-27.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Evans’s cleaning in order to remove any materials which might interfere with layer formation.
III. or/and Hesse
Hesse teaches dewaxing and rinsing the substrate. Hesse [0047]. A person having ordinary skill in the art would have recognized this would have removed impurities.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s dewaxing and rinsing in order to remove impurities before the impurities reach the cooled anodization solution.
6. The method of claim 1, further comprising cooling the acid solution to room temperature prior to adding the at least one oxidizing agent.
This claim is rejected for the reasons stated by the PTAB: “Haga’s disclosure of an approximately 10-50°C solution temperature would have suggested adjusting the acid and oxidizing agent to a temperature within that range such as 60°F.” Ex parte Eidschun at 7.
7. The method of claim 1, wherein the at least one acid is sulfuric acid (rejected for similar reasons stated in the claim 1 rejection).
8. The method of claim 1, wherein the at least one oxidizing agent is potassium permanganate (rejected for similar reasons stated in the claim 1 rejection).
9. The method of claim 1, wherein the voltage is applied at a temperature between about 60°F to about 75°F.
This claim is rejected for the reasons stated by the PTAB: “Haga’s disclosure of an approximately 10-50°C solution temperature would have suggested adjusting the acid and oxidizing agent to a temperature within that range such as 60°F.” Eidschun at 7.
10. The method of claim 1, wherein the voltage is direct current (DC) (rejected for similar reasons stated in the claim 1 rejection).
11. The method of claim 10, wherein the voltage is applied at about 15 V.
This claim is rejected for the reasons stated by the PTAB: “Sun (¶ 22) indicates that suitable voltages and times for anodization in a sulfuric acid bath are about 10-100 V which includes 15 V, for about 1 minute to about 40 minutes which includes about 20 minutes to about 30 minutes.” Eidschun at 7.
This claim is alternatively rejected for similar reasons stated in the claim 1 rejection under at least one of Evans or/and Hesse.
13. The method of claim 1, wherein the metal substrate is anodized for between about 20 to about 30 minutes (10-60 minutes). Haga [0025].
This claim is alternatively rejected for the reasons stated by the PTAB: “Sun (¶ 22) indicates that suitable voltages and times for anodization in a sulfuric acid bath are about 10-100 V which includes 15 V, for about 1 minute to about 40 minutes which includes about 20 minutes to about 30 minutes.” Eidschun at 7.
14. The method of claim 1, wherein the dimensional growth of the anodic coating is less than or equal to about 0.00005 inches {i.e. 1.27 microns} (Haga teaches thicknesses less than 0.7 microns is undesirable, thus a person having ordinary skill in the art would have recognized that thicknesses above 0.7 microns would be adequate and would have made the thickness to be greater than 0.7 microns to yield the predictable result of having a suitable thickness for an anodic layer). Haga [0012].
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Haga in view of at least one of Liao or/and Yang; Windsor; alternatively Iwaki; and alternatively at least one of Sun, Evans, or/and Hesse as applied to claim 1 above, and further in view of Hubbard et al., U.S. Patent App. Pub. No. 2012/0007273 A1 [hereinafter Hubbard].
3. The method of claim 2, wherein the phosphoric acid is present in the anodizing solution at a concentration of about 0.04% w/v (i.e. 0.004 g/L). This rejection also serves as an alternative rejection to the previous claim 3 rejection.
It is obvious to combine equivalents for the same purpose. MPEP § 2144.06(I).
Haga teaches using sulfuric acid.
Hubbard teaches the use of phosphoric acid as the electrolyte at a concentration of 0.7 M or less. Hubbard [0048]-[0052]. Hubbard teaches that sulfuric acid and phosphoric acid were known acids used in anodization baths (in addition to Haga), making the two recognized acid equivalents. Id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the aforementioned prior art’s sulfuric acid with Hubbard’s 0.7 M or less phosphoric acid to yield the predictable result of having a suitable combined acid electrolyte for anodization.
Claims 4-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Haga in view of at least one of Liao or/and Yang; Windsor; alternatively Iwaki; and alternatively at least one of Sun, Evans, or/and Hesse as applied to claim 1 above and further in view of Kasyan. A machine translation was used for Kasyan et al. [hereinafter Kasyan].
4. The method of claim 1, further comprising cooling the anodizing solution to about 60°F [i.e. 16°C] prior to placing the metal substrate in the anodizing solution. This serves as an alternative rejection to the previous claim 4 rejections.
Haga teaches operating at a temperature of 10-50°C. See Haga [0025].
Kasyan teaches a method regenerating spent anodization solution comprising acids (and no potassium permanganate). Kasyan abstract, [0016]-[0021]. Kasyan teaches heating the solution to homogenize the solution before cooling down to the final desired temperature, which in Kasyan’s case is room temperature. Id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Kasyan’s method comprising heating the prior art’s acids (with no potassium permanganate) and then cooling down to 60°F, which is within the prior art’s temperature range, in order to homogenize the acids. And after the acids are homogenized and ready a person having ordinary skill in the art would then place the substrate.
Alternatively, the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” MPEP § 2144.04(IV)(C) (citing In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). Alternatively, "[o]bvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is an obviousness rationale. MPEP § 2143(I).
The prior art must sequence the cooling and placing the substrate in some order. A person having ordinary skill in the art would have readily known that either the cooling may be done first or the substrate placing be done first and either would have achieved preparing the system for anodization.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method by cooling first and then place the substrate into the solution to have chosen from the finite number of identified, predictable solutions with a reasonable expectation of success.
5. The method of claim 4, further comprising cleaning the metal specimen prior to placement in the cooled anodized solution (this claim is rejected for similar reasons stated in the previous claim 5 rejections).
6. The method of claim 1, further comprising cooling the acid solution to room temperature prior to adding the oxidizing agent. This serves as an alternative rejection to the previous claim 6 rejections.
Kasyan teaches a method regenerating spent anodization solution comprising acids (and no potassium permanganate). Kasyan abstract, [0016]-[0021]. Kasyan teaches heating the solution to homogenize the solution before cooling down to room temperature. Id.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Kasyan’s method comprising heating the prior art’s acids (with no potassium permanganate) and then cooling down to room temperature in order to homogenize the acids.
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Haga in view of at least one of Liao or/and Yang; Windsor; alternatively Iwaki; and alternatively at least one of Sun, Evans, or/and Hesse as applied to claim 1 above and further in view of Critchlow et al., U.S. Patent App. Pub. No. 2008/0213618 A1 [hereinafter Critchlow].
14. This is an alternative rejection of the previous rejection of claim 14.
Critchlow teaches the non-porous coating thickness of about 1-8 microns. Critchlow [0021]. Critchlow teaches that less porous coatings provide corrosion protection. Critchlow [0002].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Critchlow’s thickness of 1-8 microns to yield the predictable result of having a suitable coating thickness and/or provide suitable corrosion protection.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Haga does not teach the current density. Remarks p. 3.
The Examiner respectfully submits that the Haga’s 5-30 mA/cm2 converts to 5-28 A/ft2 which overlaps the claimed range.
The Examiner has considered Applicant’s argument that Haga’s thick coatings teach away from the currently claimed thin coatings. Remarks p. 3.
The Examiner respectfully submits that the claimed thin is read in light of the specification and since Haga’s thicknesses overlap those taught in the spec, that effectively hakes Haga’s thicknesses thin in light of Applicant’s specification.
The Examiner has considered Applicant’s argument that Sun, Hesse, and Windsor do not expressly disclose a constant voltage. Remarks p. 4.
The Examiner respectfully submits that a person having ordinary skill in the art understands English articles and understands “a voltage” means just one voltage, meaning a constant one.
The Examiner has considered Applicant’s argument that Evans is a completely different anodizing process. Remarks p. 4.
The Examiner respectfully submits that all is needed is a reasonable expectation of success.
The Examiner has considered Applicant’s argument that Hubbard has differences. Remarks pp. 4-5.
The Examiner respectfully submits that all is needed is a reasonable expectation of success.
The Examiner has considered Applicant’s argument that Kasyan is performed after anodizing. Remarks p. 5.
The Examiner respectfully submits that the Board upheld the use of Kasyan. Eischun at 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571) 270-7578. The examiner can normally be reached Monday-Wednesday, 9 AM - 6 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794Appendix
According to factual reference Toledo, 5 wt% sulfuric acid solution at atmospheric temperature has a density of about 1.0318 g/mL, leading to a sulfuric acid concentration of 51.59 g/L, or 5% w/v. Toledo table.
According to factual reference Toledo, 35 wt% sulfuric acid solution at atmospheric temperature can be extrapolated to have a density of about 1.2602 g/mL, leading to a sulfuric acid concentration of 441.11 g/L, or 44% w/v. Toledo table.