DETAILED ACTION
Status of Claims
Claims 1-5, 7 and 10-23 are pending.
Claims 1-5, 7, 15 and 20 are withdrawn from consideration.
Claims 6 and 8-9 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 .
Status of Objections and Rejections
All previous grounds of rejection are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by amendment.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 November 2025 was filed after the mailing date of the Non-Final Office action on 5 September 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 16-19 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2019/0299309) in view of Arvin et al. (US 2012/0043216).
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); and
Electrically conductive coatings (630) formed on respective first portions (620) [0084] configured to face a workpiece (600) [0061] (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 and defines a working surface configured to face a workpiece, wherein the working surface of the electrode substantially mirrors the deposition surface of the support substrate). 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.
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], however, Yang discloses other metallic materials including nickel and chrome [0036]. Arvin discloses that metal such as copper can be electroplated [0002]. It would have been obvious to utilize any of the metals of Yang or Arvin to produce the metal conductive coatings (630). 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). Arvin discloses that a surface to be electroplated comprises a conductive surface therefore one of ordinary skill in the art would expect that the electrode (616) would be rendered conductive with the use of a conductive layer for example [0050]. 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]. Arvin discloses copper [0002]. 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. copper [0032], polyvinyl [0033]).
Regarding claim 17, Yang discloses the device comprising a power supply with leads that is configured for applying a voltage between the electrode and workpiece (abstract, [0041]).
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 claims 22-23, the instant claims are 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.
Response to Arguments
Applicant's arguments filed 24 November 2025 have been fully considered. The remarks on pages 7-9 are directed towards the previous grounds of rejection which have been withdrawn in view of Applicant’s amendment and therefore will not be specifically addressed at this time. New grounds of rejection are necessitated by amendment.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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