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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/21/2026 has been entered.
Status of Rejections
All previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claims 62, 63, 66, and 69 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, and 69 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(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 01/21/2026 have been fully considered but they are not persuasive.
On page(s) 10-11, the Applicant argues that the reading of Konopka is incorrect because Example 7, which is cited in the Office Action, does “not teach or [suggest] any plating of metal onto damage material”. This is not considered persuasive. [0359] states “when the effluent directly contacts the copper alloy…the CSS switches from the monitoring mode using the periodic transverse current to a repair mode…The higher power of the repair mode compensates for the signal attenuation…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”. It is clear from the disclosure that when the exposed copper is detected, the CSS switches into a “repair mode”, in which transverse currents are applied to the current. The repair mode is referring to the electrolytic repair of the exposed metal (see e.g. [0338]). Once the repair mode finishes and the corrosion is halted, the polymer then initiates a self-healing process (“With the corrosion stabilized…the self-healing polymer at the defect can recover”, see e.g. [0360]). It would not make sense for the reference to describe the “repair mode” as the polymer self-healing because this mode is explicitly tied to applying transverse currents to the copper metal.
On page(s) 11-12, the Applicant argues that the combination of Konopka with references that teach electrolytc polymerization of polymer films would render the principle of operation of the reference because “one would have to modify Konopka to form polymer based on affirmative application of a potential instead of to form polymer based on a passive process”. This is not considered persuasive. 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.
On page(s) 12, the Applicant argues that there is no reason provided for why one would combine Konopka with the other prior art. This is not considered persuasive. As stated above, 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. Teng teaches a means of applying a protective polymer coating to copper using electrolytic polymerization. KSR rationale B states that “Simple substitution of one known element for another to obtain predictable result” is obvious. Therefore, it would be obvious to substitute the hydrogen bonding process with the process taught in Teng.
Conclusion
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