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 .
Election/Restrictions
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the method of making a mixture of needle-shaped and hexagonal-plate structures is distinct from making needle-shaped structures alone.
Since applicant has received an action on the merits for the originally presented invention and/or applicant elected needle-shaped structures in the election dated 1/25/2023, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Objections
Claims 1 & 10 are objected to because of the following informalities. Appropriate correction is required.
1. The limitation “needle-shaped structures” is repeated.
10. Due to there being only 2 options a comma is extraneous.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation 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.
Claims 2, 6, and 21-25 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.
2 & 6. The specification describes how needle-shaped structures were formed with a current density as low as 0.032 A/cm2, but not below this and not down to the claimed 0.02 A/cm2. See App. Spec. [0044]. Thus, this gap constitutes new matter.
21-22 & 24-25. There is no literal support in the specification for these claims. Creating a range from multiple data points and picking between the two end data points involves “cobbling together numbers after the fact.” Indivior UK Ltd. v. Dr. Reddy's Labs. S.A., 18 F.4th 1323, 1329 (Fed. Cir. 2021) (ruling that the separate data points with the low and high points of 48.2 to 58.6 wt % do not support a range of 48.2-58.6 wt %).
The original disclosure’s figures do have separate data points that do fall in the claimed ranges. But because these claims essentially create ranges from these discrete data points involve cobbling together numbers after the fact and are new matter.
23. There is no support for this claim in the original disclosure.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1-3, 6, & 10 are rejected under 35 U.S.C. § 103(a) as obvious over Görtz et al., W.O. Int’l Pub. No. 2021/023778 A1 in view of Seki et al., U.S. Patent App. Pub. No. 2004/0232534 A1 [hereinafter Seki]; Feng et al., U.S. Patent App. Pub. No. 2009/0090636 A1 [hereinafter Feng]; and alternatively Alota et al., U.S. Patent No. 4,952,287 [hereinafter Alota]. Görtz et al., U.S. Patent App. Pub. No. 2022/0275530 A1 [hereinafter Görtz] is used as a translation.
The body of the claim is generally written with parentheses following the limitations indicating the prior art's teachings and/or examiner notes.
Claim 1. The following references teach the claim.
I. Görtz
A method of electrodeposition of zinc (electroplating zinc; Görtz abstract, fig. 1), the method comprising:
independently controlling at least one of an electrical peak current and a cathodic duty cycle (central control unit 12 would control the pulse pattern sequence 10 and pulse pattern 11 which includes both peak current and duty cycle; Görtz [0021]-[0026], [0037]-[0040], [0058], [0068]-[0088], figs. 1 & 6-9), the cathodic duty cycle greater than 1% (Görtz’s example 1 teaches 50%; Görtz [0069]-[0079], fig. 9); and
depositing the zinc on a substrate to form a zinc layer (electroplating zinc; Görtz abstract, fig. 1) …,
wherein the zinc to be deposited is present in a plating bath solution that is maintained at a pH in a range of from about 4 to about 7 (deposition in an electrolyte medium with a pH less than 5.0; Görtz [0020], fig. 1) and wherein the aqueous plating bath solution [comprises] water and zinc ions (aqueous electrolyte with zinc sulfate; Görtz [0067]).
II. Needle-shaped Structures – Seki and alternatively Alota
Görtz is silent on elongated needle-shaped structures. Görtz does teach that zinc coatings provide an adhesion base for later coatings such as paint and plastic. Görtz [0004].
Seki teaches that plating an elongated needle-like crystalline structure “offers an anchoring effect in addition to increasing the bonding area.” Seki [0075], [0077], figs. 18-19.
Alternative reference Alota teaches that needle shapes may be done with platinum. Alota abstract, col. 3 l. 41 – col. 4 l. 46.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Seki’s plating elongated needle-like crystalline structures in order to offer an anchoring effect in addition to increasing the bonding area.
III. Consists Essentially of – Feng
Görtz is silent on wherein the aqueous plating bath solution consists essentially of water and zinc ions.
However, Görtz does teach sulfuric acid. Görtz [0067].
Feng teaches that sulfuric acid and sodium sulfate are both suitable current carrier sources. Feng [0089].
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the aforementioned prior art’s sulfuric acid electrolyte with Feng’s sodium sulfate to yield the predictable result of having a suitable current carrier.
It is noted that the basic and novel characteristic of the claimed invention is that the electrolyte is additive free. See App. Spec. title, [0033]. Sodium sulfate is also part of the claimed invention and is thus not an “additive” as used by the specification and would fit within the constraints of “consists essentially of.” App. Spec. [0033], [0054], [0057].
Claims 2-3. (claim 2) The method of claim 1, wherein the electrical peak current has a density is in a range of from about 0.02 A/cm2 to 156 A/cm2 and (claim 3) the method of claim 2, wherein the electrical peak current has a density is in a range of from about 0.032 mA/cm2 to 1.5 A/cm2 (50 or 100 A/dm2). Görtz [0080], [0088].
Claim 6. The method of claim 1, wherein the electrical peak current has a density in a range of from about 0.02 A/cm2 to 1.5 A/cm2 (rejected for similar reasons as claims 2-3 before).
Claim 10. The method of claim 1, wherein at least one of the electrical peak current and the duty cycle are independently controlled such that the zinc layer comprises a plurality of needle-shaped structures, or a mixture of needle-shaped structures and hexagonal-plate structures (rejected for similar reasons stated in the claim 1 rejection).
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Görtz in view of Feng as applied to claim 1 above, and further in view of Yabuki et al., U.S. Patent App. Pub. No. 2018/0044797 A1 [hereinafter Yabuki].
Claim 9. Görtz is silent on the method of claim 1, wherein the steel comprises stainless steel, carbon steel, or a combination thereof.
However, Görtz’s steel must be some kind of steel. Görtz [0002], [0068], [0082]. Thus a person having ordinary skill in the art would have looked to the prior art for guidance.
Yabuki teaches carbon steel is a high-tensile material that may be used in automobile parts. Yabuki [0003], [0006], [0030], [0064].
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s steel to be Yakubi’s carbon steel to have a high-tensile material that may be used in automobile parts.
Claims 1 and 21-25 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshida et al., JP H03-193892 A in view of Seki, Feng, and alternatively Alota. A machine translation was used for Yoshida et al. [hereinafter Yoshida].
1. The following references teach the claim.
I. Yoshida
A method of electrodeposition of zinc (electroplating zinc; Yoshida abstract, p. 4), the method comprising:
wherein the zinc to be deposited is present in an aqueous plating bath solution … wherein the aqueous plating bath solution consists [comprises] water and zinc ions (Yoshida’s zinc plating bath would have zinc ions and would also have water to dissolve the sulfuric acid and sodium sulfate; Yoshida p. 4).
II. Control and pH – Görtz
Yoshida is silent on independently controlling at least one of an electrical peak current and a cathodic duty cycle, the cathodic duty cycle greater than 1%; and maintained at a pH in a range of from about 4 to about 7.
However, Görtz teaches these limitations. See supra claim 1 rejection. A person having ordinary skill in the art would have recognized Görtz’s control, duty cycle, and pH to be a suitable configuration to plate zinc.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s configuration and pH to be Görtz’s configuration to yield the predictable result of having a suitable setup to plate zinc.
III. Needle-Shaped Structures – Seki and alternatively Alota
Yoshida is silent on depositing the zinc on a substrate to form a zinc layer with elongated needle-shaped structures needle-shaped structures.
However, this limitation is rejected for similar reasons stated in the previous claim 1 rejection.
IV. Consists Essentially of – Feng
Yoshida is silent on wherein the aqueous plating bath solution consists essentially of water and zinc ions.
However, Yoshida does teach sulfuric acid. Yoshida p. 4.
This limitation is rejected for similar reasons stated in the previous claim 1 rejection.
21-22 & 24-25. (Claim 21) The method of claim 1, wherein the zinc layer has a (101) texture having a greater relative texture coefficient (RTC) than a (002) texture; (claim 22) The method of claim 1, wherein the zinc layer has a (101) texture having a greater relative texture coefficient (RTC) than a (002) texture; (claim 24) The method of claim 1, wherein the (101) texture has a relative texture coefficient (RTC) greater than the RTC of each other texture present in the zinc layer; (claim 25) The method of claim 23, wherein the (101) texture has an RTC greater than 50% (the ratio of (101) is greater than or equal to 0.1 which can be greater than 0.5, or 50%, which would be greater than any other index and would also then lead to a greater relative texture coefficient). Yoshida claim 1, original document p. 526.
23. The method of claim 1, wherein the zinc layer is free of a (002) texture (Yoshida teaches (the ratio of (101) is greater than or equal to 0.1, which can go up to 100% or any other percentage that would exclude (002)). Yoshida claim 1, original document p. 526. Alternatively, Yoshida teaches that it is desirable to have as much (101) as possible, thus a person having ordinary skill in the art would have wanted to make other orientations such as (002) zero and make (101) as large as possible. See Yoshida p. 4.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that the sodium sulfate-sulfuric acid substitution requires a change in more than just the solvents.
The Examiner respectfully submits that Feng teaches both sulfuric acid and sodium sulfate, the two may be seen as substitutes no matter the change in temperature, etc.
Applicant’s other arguments are moot in light of the new rejection 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.
A reference made of record and not relied upon is considered pertinent to applicant's disclosure. Fuller et al., Control of Texture and Morphology of Zinc Films through Pulsed Methods from Additive-Free Electrolytes (2011).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794
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