DETAILED ACTION
Status of Claims
Claims 1-5, 7, 10-16 and 18-24 are pending.
Claims 1-5, 7, 15 and 20 are withdrawn from consideration.
Claims 6, 8-9 and 17 are cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 May 2026 has been entered.
Status of Objections and Rejections
The previous grounds of rejection under 35 U.S.C. 103 are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by amendment.
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.
Claim(s) 10-14, 16, 18-19 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2019/0299309) in view of Jabado et al. (US 2006/0249396).
Regarding claim 10, Yang discloses a pulsed ECM machining system (abstract, [0003], [0041]) (= a pulsed electrochemical machining (pECM) tool), comprising:
An electrode (616) [0061] (Figure 6) (= a tool body defining a tool axis, the tool body comprising):
First portions (620) made from a rigid plastic including polyvinyl, polyethylene, etc. [0078] (= a support substrate configured to maintain dimensional stability and resist deformation during a pECM process, wherein the support substrate comprises an electrically non-conductive material);
A negative lead (726) positioned with the support substrate and configured to electrically couple to a power source (722) (Figure 7) [0066]-[0068] (= an electrical conductor positioned with the support substrate and configured to electrically couple to a power supply); and
Electrically conductive coatings (630) formed on respective first portions (620) [0084] configured to face a workpiece (600) [0061], the electrode (616) is electrically coupled to the negative lead (726) (Figure 10) (= an electrode on a deposition surface of the support substrate, wherein the electrode comprises one or more layers of an electrically conductive material electrically coupled to the electrical conductor and defines a working surface configured to face a workpiece, and wherein the working surface of the electrode substantially mirrors the deposition surface of the support substrate).
Yang discloses the negative lead (726) electrically coupled with the electrode. Yang is silent in regards to the actual coupling of the lead with the electrode therefore in order to produce the device of Yang, one of ordinary skill in the art would necessarily look to the related art and arrive at a reference such as Jabado.
Jabado discloses a device for electrochemically machining a workpiece including a nozzle charged as the cathode (8) and a machining tool (7) that comprises a lead or electrical coupling to the power source (Figure 1). The lead (not labeled) is positioned within the machining tool to thereby electrically couple the cathode to carry out the process of electrochemical machining [0003], [0021]-[0022].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to position an electrical conductor within a support substrate (e.g. electrode with first portions of Yang) because Jabado discloses a similar device as Yang wherein the electrical lead connected to the power terminal is within the machining tool. Moreover, it would have been obvious to one of ordinary skill in the art to position an electrical lead along any portion between the power source and electrode in order to electrically couple the power source to the electrode.
Regarding claim 11, Yang discloses wherein the electrically non-conductive material (620) comprises a polymer [0078].
Regarding claim 12, Yang discloses wherein the electrically conductive material (630) comprises a metal [0084].
Regarding claim 13, Yang does not identify the metal of the electrically conductive coatings (630) [0084], [0086], however, Yang discloses other metallic materials including nickel and chrome [0036]. Selection of any of the metal materials would have been obvious to produce the same or similar result of a metal electroplated layer.
Regarding claim 14, Yang discloses forming electrically conductive coatings (630) on first portions and electrically conductive strips (632) on second portions (622) (Figure 10). The coatings of Yang are coplanar. Regarding forming the conductive coatings as a multilayer and/or the conductive strips as a multilayer, the mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP § 2144.04 VI B). Moreover, Yang discloses that the electrode (616, e.g. plastic portions) may be formed in a layer by layer fashion using additive manufacturing [0079] therefore the concept of multiple layers is disclosed in the prior art.
Regarding claim 16, Yang discloses metals including nickel and chromium [0036]. Yang discloses the non-conductive material comprising polyvinyl or polyethylene [0078]. The instant specification indicates that these materials fall within the claimed ranges (e.g. nickel [0032], polyvinyl [0033]).
Regarding claim 18, Yang discloses the workpiece for example being on the micrometer thickness [0034] therefore one of ordinary skill in the art would recognize that the electrode which is inserted into the micron-sized workpiece would be inclusive of layers within the micron scale.
Regarding claim 19, the instant claim language appears to be a duplication of parts. The mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP § 2144.04 VI B). Moreover, the second portions (622) of Yang read on the claimed second electrode [0065]. The instant specification does not provide further structural requirements for a second electrode.
Regarding claim 21, Yang discloses utilizing rigid plastics such as polyvinyl and polyethylene which the instant specification identifies as satisfying the claimed hardness [0033].
Regarding claim 22, the instant claim is directed towards product-by-process claim language. Product by process claim language is not limited to the manipulations of the recited steps, only the structure implied by the steps. Both electroplating and vapor deposition produce thin metal layers.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2019/0299309), in view of Jabado et al. (US 2006/0249396) and in further view of Arvin et al. (US 2012/0043216).
Regarding claim 23, the instant claim is directed towards product-by-process claim language. Product by process claim language is not limited to the manipulations of the recited steps, only the structure implied by the steps. Both electroplating and vapor deposition produce thin metal layers. The coatings and support of the electrode of Yang are coplanar.
Regarding the phrase “wherein a thickness of the electrically conductive material has a variation across the working surface that is less than 10 nanometers”, Yang does not explicitly disclose a thickness variation across the working surface, however, Yang discloses that the coating is formed with electroplating [0086]-[0087].
To further address thickness variation of electroplating, Arvin is herein cited to disclose that a metal such as copper can be formed on a surface with a variation of thickness across a deposition substrate less than 5% (standard deviation) or less than 3% for a plating thickness for a coating of 100 nm to 2 microns [0035], [0069]. The percentage based on the thickness of the electroplating layer would fall within the claimed range.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a machining tool that has a thickness variation across a working surface less than 10 nanometers because Yang discloses a tool that has an electrode tool comprising a rigid plastic covered by an electroplated metal that is to be inserted into a shaped workpiece and as Arvin discloses that an electroplating layer may have a variation of thickness of less than 3%. It would have been obvious to produce a uniform electrode surface in order to treat the shaped workpiece uniformly since ECM is a surface electrochemical process.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2019/0299309), in view of Jabado et al. (US 2006/0249396) and in further view of Trimmer et al. (US 2018/0001406).
Regarding claim 24, Yang discloses electrical coupling [0021]. Yang discloses the electrode substrate or base being a mandrel. Jabado teaches that an electrical lead may be positioned within a machining tool in order to connect or couple the tool and lead to the power source as described above. Yang in view of Jabado fails to disclose wherein the support substrate defines a cavity extending to the electrode, and wherein the electrical conductor is positioned within the cavity.
Trimmer discloses a tool for use in machining a conductive workpiece (title) comprising electrically conductive portions (e.g. 148) [0033] along with insulating portions (e.g. dielectric sheath) of the drilling tool (112). The drilling tool includes the electrically conductive sheath (148) coupled to the forward electrode tip (134). The electrical current is provided to the conductive sheath from a power source to the electrode. The insulating portions of Trimmer include a cavity by which the electrode is extending from. The electrical connection is positioned within the cavity (Figure 2). Trimmer discloses that the electrically conductive sheath allows sufficient electrical current to flow therethrough that facilitates removal of material from conductive workpiece (102) while also having the flexibility to enable drilling tool to make tight radius curves when forming a bore hole [0033].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a tool comprising wherein the support substrate defines a cavity extending to the electrode, and wherein the electrical conductor is positioned within the cavity because in a similar field of electrochemical machining, Trimmer discloses an insulating support substrate having a cavity whereby electrical contact is made to the electrode. It would have been obvious to provide the mandrel of Yang with an interior electrical connection to the conductive electrode parts to allow sufficient electrical current to flow therethrough.
Response to Arguments
Applicant's arguments filed 26 May 2026 have been fully considered. The remarks on pages 7-8 are directed towards the previous grounds of rejection which have been withdrawn and therefore will not be specifically addressed at this time. New grounds of rejection are necessitated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795
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