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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/3/2026 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.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a concentration of the viscosity modifier of 0.1 to less than 20 wt%, does not reasonably provide enablement for 20-50 wt%. This is because claim 1 requires at least 80 wt% to be ionic solvent in addition to some ionizable material, so any viscosity modifier at 20 wt% or more would add up to more than 100 wt%, which is impossible.
The factors which show that 20 wt% or more is unenabled are as follows:
(B) The nature of the invention would not allow over 100 wt%;
(C) The state of the prior art would not allow over 100 wt%;
(D) The level of one of ordinary skill would not figure out how to get over 100 wt%;
(F) The amount of direction provided by the inventor is nonexistent on how to get over 100 wt%; and
(G) The existence of working examples on over 100 wt% is nonexistent.
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.
Claims 4-5 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
4-5. It is unclear whether “saturated solution” is meant to be saturated as the term suggests, or not saturated since the rest of these claims go on to say that the solution may be below the saturation point. For this reason these claims are indefinite.
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, 3-7, 9-11, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Zhu et al., U.S. Patent App. Pub. No. 2004/0050715 A1 [hereinafter Zhu] and alternatively Inman et al., U.S. Patent App. Pub. No. 2011/0303553 A1 [hereinafter Inman] as evidenced by Sigma-Aldrich, Sodium chloride (2018).
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. It is noted that this claim is an electrolyte solution product and some components of the claim have a product-by-process aspect. For this reason, each component shall be interpreted with its contribution to the final electrolyte solution product. Thus the claim’s water-based inorganic salt solution and the substantially water free ionic solvent shall be interpreted as water, an inorganic salt, and an ionic solvent.
The following references render this claim obvious.
I. Zhu
An electrolyte solution (electrolyte solution; Zhu abstract) for an electrochemical machining process (this is intended use, see the end of the claim rejection) the electrolyte solution comprising:
a substantially water free ionic solvent comprising ethylene glycol, wherein the concentration of the substantially free ionic solvent in the electrolyte is at least 80 wt. % (an alkylene glycol from 75-99 wt % such as ethylene glycol; Zhu [0005]-[0006], [0020]);
an ionisable material in the form of an inorganic salt (chloride salts such as potassium chloride; Zhu [0005], [0007]) and
a viscosity modifier (sodium chloride which may be used in combination with other chloride salts; Zhu [0007]) wherein …
the viscosity modifier comprises a water-based (0.001-5 wt% water; Zhu [0008], [0024]) inorganic salt solution (sodium chloride, it is noted that Zhu teaches a combination of chloride salts may be used; Zhu [0007]), and
the pH of the electrolyte solution is in the range of 5 to 9 (since there is water with no other proton or hydroxide donors, the pH would be about 7).
The “for an electrochemical machining process” recitation is intended use. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. MPEP § 2114. Because the cited prior art teaches the structural limitations of the claim, the prior art is also structurally capable of performing the claimed intentions and therefore reads on the claimed language. See id.
Zhu is silent on wherein the electrolyte comprises a viscosity in the range of 5 to 30 mPa.s at 20°C.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious. MPEP § 2144.05.
Zhu teaches that the viscosity is a variable that achieves the recognized result of affecting the mass transport, hence making it a result-effective variable. See Zhu [0018].
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 routinely experimented with the variable and determined the optimum or workable range to be inclusive of the claimed range/value(s).
II. Viscosity - alternatively Inman
This is an alternative teaching for wherein the electrolyte comprises a viscosity in the range of 1 to 50 mPa.s at 20C.
Inman teaches that 1-15 cP (i.e. mPa.s) is a suitable viscosity electrochemical removal. Inman [0031]. Inman operated at 20°C. Inman [0026]-[0027].
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 viscosity with Inman’s 1-15 cP to yield the predictable result of having a suitable viscosity.
3-5. (Claim 3) An electrolyte solution according to claim 1, wherein the viscosity modifier is a saturated water-based inorganic salt solution, (claim 4) An electrolyte solution according to claim 1, wherein the concentration of the saturated solution is at or close to the saturation point of the water-based inorganic salt solution, (claim 5) An electrolyte solution according to claim 1, wherein the concentration of the saturated solution is in the range 80-100% of the saturation point of the water-based inorganic salt solution (at Zhu’s 5 wt% water then 1.8 wt% NaCl is needed to reach saturation with a 357 mg/mL solubility, Zhu teaches a total of 2-25 wt% chlorides including both NaCl and KCl, thus Zhu would teach the chloride and water contribution of a saturated NaCl solution to the electrolyte solution). Zhu [0007], [0020]-[0021], [0024]; see Sigma-Aldrich.
6. An electrolyte solution according to claim 1, wherein the inorganic salt water solution is of a molar concentration in the range 0.1 M to 5 M (Zhu teaches the equivalent of a saturated NaCl solution, which would be about 1 M). See claims 3-5 rejection, Sigma-Aldrich.
7. An electrolyte solution according to claim 1, wherein the concentration of the viscosity modifier in the electrolyte solution is in the range 0.1 to 50 wt. % (chloride salts including NaCl have a concentration of 1-25 wt%). Zhu [0005].
9. An electrolyte solution according to to claim 1, wherein the ionisable material comprises compounds of the formula MX, where M is selected from Na+, K+, Ca2+, Mg2+, Cu2+ and Zn2+, or combinations thereof, and X is selected from F-, CI-, Br-,I-, NO3- and SO42-, or combinations thereof (rejected for similar reasons stated in the claim 1 rejection).
10. An electrolyte solution according to claim 1, wherein the substantially water free solvent further comprises: glycerol, methanol, ethanol, 1-propanol, 2-propanol and/or propylene glycol (combinations of alkylene glycols such as with glycerol). Zhu [0006].
11. An electrolyte solution according to claim 10, wherein the substantially water free solvent is ethylene glycol and glycerol (rejected for similar reasons stated in the claims 1 and 10 rejections).
16. An electrolyte solution according to claim 1, wherein the electrolyte comprises a viscosity in the range 10 to 15 mPa.s at 20°C (rejected for similar reasons stated in the claim 1 rejection).
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Zhu and alternatively Inman as applied to claim 1 previously, and further in view of Hackenberg et al., U.S. Patent App. Pub. No. 2012/0012469 A1 [hereinafter Hackenberg].
18. An electrolyte solution according to claim 1, wherein the electrolyte solution comprises an electrical conductivity in the range 10 mS/cm to 40 mS/cm, optionally wherein the electrolyte solution comprises a conductivity in the range 20 mS/cm to 30 mS/cm. Zhu is silent on this.
However, Zhu must have some conductivity.
Hackenberg teaches a conductivity of greater than 10 mS/cm is suitable with a specific example of 20 mS/cm. Hackenberg [0016], [0019].
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 solution with Hackenberg’s greater than 10 mS/cm or 20 mS/cm to yield the predictable result of having a suitable conductivity to electrolytically remove with.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Inman teaches away since the preferred viscosity is outside the claimed range. Remarks p. 10.
The Examiner respectfully submits that prior art is prior art for all that it teaches, including nonpreferred embodiments.
The rest of Applicant’s latest filed arguments are moot in light of the new rejection.
Conclusion
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