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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 06/16/2026.
Status of Rejections
All previous rejections are maintained.
New grounds of rejection are presented for claim 70.
Claims 62, 63, 66, 69, and 70 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 62, 63, 69, and 70 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konopka et al (US 2018/0019496 A1) in view of Teng et al (“Polymer Film Coatings on Metal Electrodes Through Electroinitiated Polymerization and Their Evaluation”, J. Electrochem. Soc., 124, 1977, pages 995-1006).
Claim 62: Konopka discloses an adaptive material system (see e.g. Fig 1), comprising:
a metallic matrix material (see e.g. #111 on Fig 1 and [0091]; [0095]; [0253]) having a conformal dielectric coating disposed thereon (“self-healing polymer”, see e.g. [0358]); and
an electrolyte (see e.g. #140 on Fig 1) comprising at least an ion of a first metal (see e.g. [0120]),
a source of potential (see e.g. [0015]), the source configured to give rise to a negative potential that effects plating (see e.g. [0224]), from the electrolyte, an amount of first metal onto the fractured region of the metallic matrix material (see e.g. [0089] and [0097])
the system being configured to deliver the electrolyte to a fractured region of the metallic matrix material (“the defect is repaired”, see e.g. [0095]; [0338]; [0359]), the fractured region being exposed through an opening in the conformal dielectric coating (see e.g. [0359]);
the system being further configured to deposit polymer onto the amount of plated first metal (see e.g. [0360]).
Konopka does not explicitly teach that the system is configured such that an application of a positive potential causes polymerization of the first monomer in the electrolyte so as to deposit polymerized first monomer.
Konopka teaches that the electrolyte can include polymers additives (see e.g. [0123] and [0124]). Konopka further teaches using the system to a treat a copper material with a self-healing polymeric coating that develops a crack and exposes the copper (see e.g. [0357]-[0360]). The polymer layer is a protective coating that blocks electrolyte from contacting the metal and corroding it (see e.g. [0357]). During operation, cracks and defects can form in the coating (see e.g. [0359]). The example of Konopka includes the steps of applying a potential to the material to halt corrosion and repair the defects in the damaged metal (“The higher frequency of the continuous transverse current outpaces the rate of the corrosion reaction, so that the progression of corrosion is halted and the defect is repaired”, see e.g. [0359]). The repairing action of Konopka involves plating metal from the electrolyte onto the damaged material (see e.g. [0155]; [0338]). Following the repair of the metal part of the material, the polymer is then repaired on the deposited metal (see e.g. [0360]). Konopka does not require a specific method of repairing the polymer but suggests using materials in the electrolyte to repair the polymer and suggests using known polymerization reactions (see e.g. [0360]). The process of electropolymerization is a known method of depositing and polymerizing monomers from a solution onto a surface to form a polymer protective layer on top of metal substrates (see e.g. 995, col 1, paragraph starting with “Electroinitiated”), such as copper (see e.g. abstract). The electropolymerization is initiated using positive potentials (see e.g. page 1000, Table IV). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the system of Konopka to incorporate the method of electropolymerization as taught in Teng as the method of repairing polymer because electropolymerization is known method of forming polymers from an electrolyte that is predictable with a reasonable expectation of success. Incorporating Teng would include having a first monomer in the electrolyte and configured so that application of the potential from the source of potential causes polymerization of the first monomer so as to deposit polymerized first monomer.
Claim 63: Konopka in view of Teng discloses a source of a potential configured give rise to the positive potential (see e.g. Teng - page 1000, Table IV).
Claim 69: Konopka in view of Teng teaches that the first monomer is soluble in the electrolyte (see e.g. Teng - page 1000, Table IV) and the polymer derived from the first monomer is not soluble in the electrolyte (the self-healing coating is not dissolved back into the electrolyte).
Claim 70: Konopka in view of Teng teaches that the metallic matrix material comprises the first metal (see e.g. Konopka - [0120]; [0357]).
Claim(s) 66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konopka in view of Teng as applied to claim 62 above, and in further view of Rash et al (US 20110226614 A1).
Claim 66: The limitation claiming “the system is configured to return to a reservoir electrolyte that is delivered to the fractured region of the metallic matrix material” is an intended function/use of the system. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Konopka discloses controlling the flow the electrolyte (see e.g. [0219]), as well as a reservoir for the electrolyte (see e.g. [0231] and [0344]). However, Konopka does not explicitly disclose that the pumps are capable of flowing the electrolyte back into the reservoir.
Rash teaches an electroplating system (see e.g. abstract of Rash) having an electrolyte reservoir (see e.g. #12 on Fig 1) that is pumped to and from the cell (see e.g. [0035] and #13 on Fig 1). This system allows for electrolyte to be reused and the concentration of the electrolyte to be controlled (see e.g. [0023]) via a dosing system (see e.g. #11 on Fig 1). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to modify the system of Konopka to include the recirculation system taught in Rash to reuse and control the concentration of the electrolyte.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive.
On page(s) 10-11, the Applicant argues that the Office Action is based off a misreading of the prior art because Example 7 of Konopka, which is cited in the Office Action, does not plate metal onto the copper tube. The Applicant further argues it would be impossible to plate metal because the water does not contain any copper ions. “Although Konopka paragraph [0155] may teach metal deposition, that paragraph provides only a description of the general physics of metal deposition, not that metal deposition could be performed under the conditions given in Konopka's Example 7”. This is not considered persuasive. Konopka explicitly discloses depositing metal from an electrolyte (see e.g. [0121]) to repair a material surface (see e.g. [0090]). Example 7 discloses that the electrolyte contains metal ions (“The effluent is highly saline water (120 g/kg) with dissolved ammonia and metal ions”, see e.g. [0357]). A current is applied to the damaged copper to that “the defect is repaired” (see e.g. [0359]). As argued in the previous Office Action, the repair mode is referring to the electrolytic repair of the exposed metal (see e.g. [0338]), which would be the deposition discussed in [0121].
On page(s) 11-13, the Applicant argues that the prior art combination is “contrary to the MPEP” because it “would require fundamentally changing the way in which Konopka operates” by “modify[ing] Konopka to form polymer based on affirmative application of a potential to cause polymerization instead of forming polymer based on a passive process”. This is not considered persuasive. The combination is not changing the primary principle of operation. The disclosure of Konopka does not require the hydrogen bonding process to repair the film. It is only listed as an example. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that other processes can be used to repair the polymer layer. Furthermore, Konopka already discloses having a source of potential deliver current to the electrolyte to cause deposition. The addition of the monomers taught in Teng and applying a positive potential to polymerize the monomers and deposit it onto the metal would not change the principle of operation of Konopka. Both the metal layer and the polymer film would still get repaired. KSR rationale B states that “Simple substitution of one known element for another to obtain predictable result” is obvious. The Applicant further argues that “the corrosion suppression system of Konopka is configured to apply only the current necessary to retard corrosion formation, and the office does not identify any disclosure in any reference to establish that a person of ordinary skill in the art who begins with Konopka and Teng would be motivated to modify Konopka's current generator such that the current generator (1) produces a current necessary to monitor the impedance of the lined tube; (2) produces a current necessary to retard corrosion; and (3) produces a current necessary to polymerize monomer in solution. Such modifications would represent a fundamental change to the way in which Konopka operates”. (1) and (2) are already taught in Konopka. The only modification required is to apply a current to initiate the polymerization reaction. As Konopka already teaches applying a current to deposit metal, a person having ordinary skill in the art would be capable of also generating a current to deposit the polymer.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
Prosecution Insights