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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered.
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 2-3, 6, and 10-11 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.
2-3, 6, and 11. These claims have a combination of a duty cycle of greater than 50% and a current density of 32-156 or 0.02-1.5 A/cm2. However, these combinations were not in the original disclosure. Thus these claims are rejected for containing new matter.
10-11. The combination of a duty cycle of greater than 50% and hexagonal-plate structures was not disclosed in the original disclosure. Thus this claim is rejected for new matter.
Claims 3, 6, & 10-11 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
3, 6, & 11. The portion of the specification dealing with the “Effect of Peak Current” describes how performing testing at a constant duty cycle of 10% shows how below 0.032 A/cm2 results in hexagonal-plate structures while starting at 0.032 A/cm2 a transition mix of both hexagonal-plate structures with needle-shaped structures form. App. Spec. [0043]-[0044], see also Fuller et al., Control of Texture and Morphology of Zinc Films through Pulsed Methods from Additive-Free Electrolytes § 2.1 (2021) [hereinafter Fuller].
However, the claims’ 0.02 A/cm2 goes below this lower threshold of 0.032 A/cm2 which the testing shows would not form needle-shaped structures.
Achieving this would also require undue experimentation because: (A) the breadth of the claims go beyond what was tested; (C) the state of the prior art did not test this; (F) the amount of direction provided by the inventor is nonexistent; and (G) the existence of working examples is nonexistent.
Thus the claims are unenabled.
10. The “Effect of Duty Cycle” in the specification showed that a 50% duty cycle at 2 A/cm2 yielded just needle-shaped structures with no hexagonal-shaped plates. App. Spec. [0052]. There is no discussion in the application on how to achieve any hexagonal-shaped plates at this high of a duty cycle.
Achieving this would also require undue experimentation because: (A) the breadth of the claims go beyond what was tested; (C) the state of the prior art did not test this; (F) the amount of direction provided by the inventor is nonexistent; and (G) the existence of working examples is nonexistent.
Thus the claim is unenabled.
11. It is further noted that the specification’s “Effect of Peak Current” shows that current densities above 0.5 A/cm2 were needle-shaped structures without hexagonal-plate structures. App. Spec. [0044]. However, here current densities above that are claimed showing that only needle-shaped structures would form and not the claimed mixture with hexagonal-plate structures.
Achieving this would also require undue experimentation because: (A) the breadth of the claims go beyond what was tested; (C) the state of the prior art did not test this; (F) the amount of direction provided by the inventor is nonexistent; and (G) the existence of working examples is nonexistent.
Thus the claim is unenabled.
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 10 are rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
3. Claim 2 has a lower bound of 32 mA/cm2. However, claim 3 then expands this lower bound down to the equivalent of 20 mA/cm2.
10. Claim 1 first claims just needle-shaped structures. But then claim 10 then expands on this to not just needle-shaped structures but also to just hexagonal-shaped structures too.
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, & 10-11 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 Feng et al., U.S. Patent App. Pub. No. 2009/0090636 A1 [hereinafter Feng]. 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; alternatively 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 central control unit to control the peak current and duty cycle in order to impart desired characteristics to the pulse pattern; Görtz [0021]-[0026], [0037]-[0040], [0058], [0068]-[0088], figs. 1 & 6-9), the cathodic duty cycle greater than 50% (Görtz’s example 1 teaches 50% which is infinitesimally close to just over 50% where a person having ordinary skill in the art would have expected the two to have virtually the same properties; Görtz [0069]-[0079], fig. 9); and
depositing the zinc on a substrate to form a zinc layer (electroplating zinc; Görtz abstract, fig. 1) with elongated needle-shaped structures (the specification teaches that a 1-50% duty cycle and more than a 0.5 A/cm2 current density will lead to needle-shaped structures and that a current density between 0.032-0.5 A/cm2 will lead to a mixture; Görtz’s example 1 teaches a 50% duty cycle with a 100 A/dm2 current density which would thus lead to needle-shaped structures; App. Spec. [0044], [0052]; Görtz [0068]-[0088], fig. 9.),
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. 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 32 mA/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 0.02 A/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, hexagonal-plate structures, or a mixture thereof (rejected for similar reasons stated in the claim 1 rejection).
Claim 11. 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 duty cycle wherein the electrical peak current (rejected for similar reasons stated in the claim 1 rejection) has a density in a range of from about 0.02 A/cm2 to 1.5 A/cm2 (100 A/dm2, i.e. 1 A/cm2; Görtz [0080]) and the duty cycle is greater than 50% (rejected for similar reasons stated in the claim 1 rejection); and
depositing the zinc on a substrate to produce a zinc layer, wherein the zinc layer comprises a mixture of needle-shaped structures and hexagonal-plate structures (because the prior art teaches the claimed current density and duty cycle values, the claimed structures would inherently form),
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, and wherein the plating bath solution consists essentially of water and zinc ions (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.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Görtz’s 50% example is a comparative example that teaches away. Remarks pp. 5-6.
The Examiner respectfully submits that there is no indication that Görtz’s 50% example is comparative. To the contrary, Görtz’s example references figure 9, which is described as “a fourth embodiment of a pulse pattern that can form part of the pulse pattern sequence.” Görtz [0052]. This shows that Görtz’s 50% example is an embodiment of the invention.
Conclusion
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