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 .
Status of Amendment
The amendment filed on 7 August 2025 fails to place the application in condition for allowance.
Claims 1, 2, 4-9, 11-15, and 17-24 are currently pending and under examination.
Status of Rejections
The rejection of claims 1, 2, 4-9, 11-15, and 17-20 under 35 U.S.C. 102 are herein withdrawn due to Applicant’s Amendment filed 7 August 2025.
New rejections under previously cited art are provided as a response to the amendment filed 7 August 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 2, 4-9, 11-15, and 17-24 are 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.
As to claim 1, the phrase “a set of…” in line 9 is deemed new matter because the claimed phrase is not a part of the as filed specification. While the specification does recite “components”, the phrase “a set of” does not amend those disclosures.
As to claim 1, the recitation of “that is uniform across the working surface” is not found within the as filed specification with respect to the components themselves.
As to claim 6, the recitation of “that is uniform across the working surface” is not found within the as filed specification with respect to the components themselves.
As to claim 11, the phrase “a set of…” in line 15 is deemed new matter because the claimed phrase is not a part of the as filed specification. While the specification does recite “components”, the phrase “a set of” does not amend those disclosures.
As to claim 11, the recitation of “that is uniform across the working surface” is not found within the as filed specification with respect to the components themselves.
As to claim 13, the phrase “a set of…” in line 10 is deemed new matter because the claimed phrase is not a part of the as filed specification. While the specification does recite “components”, the phrase “a set of” does not amend those disclosures.
As to claim 13, the recitation of “that is uniform across the working surface” is not found within the as filed specification with respect to the components themselves.
As to claim 18, the recitation of “that is uniform across the working surface” is not found within the as filed specification with respect to the components themselves.
As to claim 24, the recitation “defines substantially all of a distal surface of the tool body…” is deemed new matter as the phrase is not found within the specification and it is unclear where support is being derived for said limitation.
Dependent 2, 4-9, 12 14, 15, and 17-24claims are rejected for the reasons outlined with respect to the independent claims without rectifying said issues cited above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-9, 11-15, and 17-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “uniform” in claims 1, 6, 11, 13, 18 is a relative term which renders the claim indefinite. The term “uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is indefinite as to what is uniform across the working surface, nor what extent of the set needs to “uniform” or what property is uniform.
Claim 2 recites the limitation "the composition" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the composition" in line 4. There is insufficient antecedent basis for this limitation in the claim.
The term “substantially” in claim 24 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is indefinite what extend of the working surface defines a distal surface because the claim also recites “all” and thus indefinite to what extent substantially all is satisfied. For examination on the merits, the phrase will be interpreted that so long as there is a working surface that coincides with a face of the workpiece, that portion of the working surface would define substantially all of the surface facing the workpiece, regardless as to the existence of alternative working surface also present at a distal end.
Claim Rejections - 35 USC § 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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 6-9, 11-13, 15, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Renault et al (FR 2063608 A5).
As to claims 1 and 2, Renault discloses a pulsed electrochemical machining (pECM) tool, comprising:
a tool body defining a tool axis (#2, Body Fig. 2 and Fig. 3 #3), the tool body comprising
an electrode ([0001] “composite tool electrode”), and configured to move along the tool axis toward a workpiece (Translation pg. 2 “the feed system” claim “an electrode…gradually penetrating into said part…” this configured to move along a tool axis toward a workpiece)
the tool body comprising an electrode (See below)
wherein the electrode comprises an electrically conductive material (Fig. 2 #12 -or graphite and layer 5/6 of embodiment of Fig. 1) and defines a continuous working surface at a distal end of the tool axis configured to face a workpiece (line 10 Fig. 2/3 and contour of fig. 1), and
wherein an electrical conductivity of the electrode varies across the working surface of the electrode, wherein at least one of a composition, density, or a porosity of the electrically conductive material varies across the working surface in a gradient to create the variation in the electrical conductivity (Translation “The location and shape of these elements 6 of good conductive metal are determined by practice, but correspond to places where it is desired to establish preferential current passages.” And further shown with each layer 12/13 “It is obtained from a block 11 composed alternately of good conductive elements 12 (Cu and/or Ag) and elements 13 of lower conductivity (graphite with more or less added copper)” which reads on a variator of composition)
Inoue further discloses the following dependent claim limitations:
Instant: claims 2, 4, and 5: wherein electrode comprises an alloy of two components where one is a conductive component and another is a non-conductive component (pg. 2 “graphite with more or less added copper” of layer 13 and layer 12 of copper due to the relative difference in conductivity one may be deemed to be conductive and the less conductive the non-conductive thus since the composition is varied between the two components of different conductivity the volume ratio is altered in order to alter the conductivity of the layer). Likewise, in Fig. 1 shows more or less copper (#6) in different thicknesses along the working surface of the electrode (pg. 2 “these metallic coatings 6 have a maximum thickness on the faces of the electrode…and tend towards zero on the faces parallel…”
Thus, as to the limitation of “wherein the electrically conductive material includes a set of one or more components that is uniform across the working surface”, it would have been obvious to one of ordinary skill in the art to have used copper as a uniform component that varies across the surface since copper is recognized as both components of layers 12 and 13, and thus since the amount of copper in each location varies, the limitation “of “wherein at least one of a volume ratio of two or more components” is necessarily met via the variation of copper in each layer and/or location as provided above.
As to claim 6, the limitation “wherein the composition of the electrically conductive material is uniform across the working surface” is met via choosing copper as part of both the conductive and less conductive portions above, and “wherein at least one of the density or the porosity of the electrically conductive material varies across the working surface.” Is met via the changing of the composition between each layer.
As to claim 7, Renault discloses the electrode comprises copper or graphite (see citation above).
As to claim 8, Renault discloses the working surface of the electrode defines a distal surface (See Fig. 1/2 end of the electrode), and wherein the distal surface comprises a first portion having a first electrical conductivity and a second portion having a second electrical conductivity, different from the first electrical conductivity. (pg. 3 “the current density in said space is locally increased by increasing the conductivity at the locations of the shaping electrode which must generate maximum hollowing”).
As to claim 9, Renault discloses wherein the working surface of the electrode defines a distal surface and one or more lateral surfaces, and wherein the distal surface has a first electrical conductivity and the one or more lateral surfaces have a second electrical conductivity, different from the first electrical conductivity. (See Fig. 1 different regions of 6 and Fig. 2/3 each layer 12 or 13 changing through the lateral surface 10).
As to claims 11, Renault discloses a pulsed electrochemical machining (pECM) tool, comprising:
a pECM tool comprising a tool body defining a tool axis (#2, Body Fig. 2 and Fig. 3 #3), the tool body comprising
an electrode ([0001] “composite tool electrode”), and configured to move along the tool axis (Translation “penetrate” pg. 3) toward a workpiece (Translation pg. 2 “the feed system” claim “an electrode…gradually penetrating into said part…” this configured to move along a tool axis toward a workpiece)
the tool body comprising an electrode
wherein the electrode comprises an electrically conductive material (Fig. 2 #12 -or graphite and layer 5/6 of embodiment of Fig. 1) and defines a continuous working surface at a distal end of the tool axis configured to face a workpiece (line 10 Fig. 2/3 and contour of fig. 1), and
wherein an electrical conductivity of the electrode varies across the working surface of the electrode, wherein at least one of a composition, density, or a porosity of the electrically conductive material varies across the working surface in a gradient to create the variation in the electrical conductivity (Translation “The location and shape of these elements 6 of good conductive metal are determined by practice, but correspond to places where it is desired to establish preferential current passages.” And further shown with each layer 12/13 “It is obtained from a block 11 composed alternately of good conductive elements 12 (Cu and/or Ag) and elements 13 of lower conductivity (graphite with more or less added copper)” which reads on a variator of composition)
a mechanical system configured to position the working surface of the electrode relative to the workpiece and move the pECM tool along the tool axis (pg. 3 “conductive part forming an electrode …gradually penetrating into said part” thus since movement is required a mechanical system is necessarily provided in order to enable the penetration)
an electrolyte system configured to supply electrolyte to the mechanical system for delivery to an interelectrode gap between the working surface of the electrode and a target surface of the workpiece (pg. 3 “an electrolyte circulating in a laminar flow in an inter-electrode space” thus necessarily possess an electrolyte system to enable the laminar flow in the space); and
a power supply configured to generate an electric potential between the electrode of the pECM tool and the workpiece (pg. 3 “conductive part forming an electrode connected to the positive pole of a direct current source is hollowed by means of an electric current which passes through a composite shaping electrode connected to the negative pole of said source,” emphasis added).
Thus, as to the limitation of “wherein the electrically conductive material includes a set of one or more components that is uniform across the working surface”, it would have been obvious to one of ordinary skill in the art to have used copper as a uniform component that varies across the surface since copper is recognized as both components of layers 12 and 13, and thus since the amount of copper in each location varies, the limitation “of “wherein at least one of a volume ratio of two or more components” is necessarily met via the variation of copper in each layer and/or location as provided above.
As to claim 12, the recitation “wherein the pECM tool is configured to generate the interelectrode gap having a variation in thickness.” is met via Fig. 1 showing different size spaces of the gap near 9 as compared to 8 and 7.
As to claim 13 and 15, Renault discloses a method for manufacturing a pulsed electrochemical machining (pECM) tool, comprising:
forming an electrode from an electrically conductive material (Fig. 2 #12 -or graphite and layer 5/6 of embodiment of Fig. 1)
wherein the electrically conductive material defines a continuous working surface of a tool body defining a tool axis and configured to move along the tool axis toward a workpiece (Translation pg. 2 “the feed system” claim “an electrode…gradually penetrating into said part…” this configured to move along a tool axis toward a workpiece), the working surface at a distal end of the tool axis configured to face a workpiece, (line 10 Fig. 2/3 and contour of fig. 1)
wherein an electrical conductivity of the electrically conductive material varies across the working surface of the electrode, and wherein at least one of a composition, a density, or a porosity of the electrically conductive material varies across the working surface in a gradient to create the variation in the electrical conductivity. (Translation “The location and shape of these elements 6 of good conductive metal are determined by practice, but correspond to places where it is desired to establish preferential current passages.” And further shown with each layer 12/13 “It is obtained from a block 11 composed alternately of good conductive elements 12 (Cu and/or Ag) and elements 13 of lower conductivity (graphite with more or less added copper)” which reads on a variator of composition)
Instant: claims 15, 17, and 18: wherein electrode comprises an alloy of two components where one is a conductive component and another is a non-conductive component (pg. 2 “graphite with more or less added copper” of layer 13 and layer 12 of copper due to the relative difference in conductivity one may be deemed to be conductive and the less conductive the non-conductive thus since the composition is varied between the two components of different conductivity the volume ratio is altered in order to alter the conductivity of the layer).
Thus, as to the limitation of “wherein the electrically conductive material includes a set of one or more components that is uniform across the working surface”, it would have been obvious to one of ordinary skill in the art to have used copper as a uniform component that varies across the surface since copper is recognized as both components of layers 12 and 13, and thus since the amount of copper in each location varies, the limitation “of “wherein at least one of a volume ratio of two or more components” is necessarily met via the variation of copper in each layer and/or location as provided above.
As to claim 19, Renault discloses the working surface of the electrode defines a distal surface (See Fig. 1/2 end of the electrode), and wherein the distal surface comprises a first portion having a first electrical conductivity and a second portion having a second electrical conductivity, different from the first electrical conductivity. (pg. 3 “the current density in said space is locally increased by increasing the conductivity at the locations of the shaping electrode which must generate maximum hollowing”).
As to claim 20, Renault discloses wherein the working surface of the electrode defines a distal surface and one or more lateral surfaces, and wherein the distal surface has a first electrical conductivity and the one or more lateral surfaces have a second electrical conductivity, different from the first electrical conductivity. (See Fig. 1 different regions of 6 and Fig. 2/3 each layer 12 or 13 changing through the lateral surface 10).
As to claim 21, Renault further discloses wherein the electrode includes an axial gradient of the electrical conductivity that increases away from a distal end of the electrode and a radial gradient of the electrical conductivity that increases toward a radial center of the electrode. (See Fig. 1 gradient of layer 6 which is great conductivity further outside space of no layer build 6 or Fig. 3 any layer 12 that is further radial then a relative layer 13).
As to claim 22, Renault further discloses wherein the tool body comprises a support substrate underlying the electrically conductive material (embodiment of Fig. 1 with support material 2 and electrically conductive material 6), and wherein a composition of the support substrate and the electrically conductive material are different. (pg. 2 of the translation “these elements 6 of good conductive metal are determined by practice, but correspond to places where preferential current passages are desired. These elements 6 therefore allow a greater dissolution of the corresponding locations of the workpiece 1, than that which would take place using an electrode exclusively composed of graphite, whose current density would be uniformly distributed on the surface.” “Metallic coatings 6 can also be obtained by other means, for example by bonding the metal to the electrode 2, by brazing or with a blowtorch or by spraying with a metallizing gun. Their structure can be homogeneous or composite, resulting from deposits of identical or different materials”).
As to claim 23, the limitation “wherein the porosity or density of the electrically conductive material varies at least 10% across the working surface of the electrode.” Is not disclosed by Renault. However, one of ordinary skill in the art would recognize that using different combination of copper and graphite inherently amount to different porosity and/or density based upon the different compositions would amount to different properties. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, since the composition may be readily altered by one of ordinary skill in the art, which necessarily results in different properties of each region, it would have been obvious to one of ordinary skill in the art to have provided a variation of at least 10 % in the routine optimization of the electrical conductivity at the working surface because the more copper included, the high the conductivity.
As to claim 24, Renault discloses wherein the working surface of the electrode defines substantially all of a distal surface of the tool body configured to face the workpiece. (See Fig. 1 and 3 where the electrode surface is directly a part of the distal end).
Response to Arguments
Applicant's arguments filed 6 October 2025 have been fully considered but they are not persuasive.
In response to Applicant’s arguments towards Renault, it is noted the previous rejection was provided under 35 U.S.C. 102(a)(1). The instant rejection is provided under 35 U.S.C. 103 in order to account for the new claim limitation of provide a set of one component, copper, that is uniform throughout the electrically conductive surface based on the explicit suggestions of materials for use to make the electrode of Renault. Applicant’s argument that Renault required “a set of components that is uniform across the working surface” is not persuasive as the recitation of “Set” need only be one component, which is explicitly copper of the different compositions of copper and copper/graphite as conceded by Applicant on pg. 9 of the response.
In response to Applicant’s argument that the disclosure of Renault is not a “gradient”, this argument is not persuasive because “Gradual” change does not impart any particular distinction as to an extend of change between components to be a gradient.
No further arguments are presented relative to the standing rejection.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795