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 .
Claim Rejections - 35 U.S.C. § 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.
Claim 4 is 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. It is unclear whether the saturated solution is a new component to the electrolyte solution or whether it further specifies a component of claim 1.
For this reason claim 4 is indefinite.
It seems claim 4 is meant to be dependent upon claim 3 due to claim 3’s delineation of a saturated water-based inorganic salt solution. If this is the case, it is noted that claim 4 would fail to further limit claim 3 since “saturated” already means that the water-based inorganic salt solution is at the saturation point.
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, 16, 18, and 21-23 are rejected under 35 U.S.C. § 103 as being unpatentable over Matt et al., U.S. Patent App. Pub. No. 2019/0177872 A1 [hereinafter Matt] in view of Webster, U.S. Patent No. 2,801,215; Zhu et al., U.S. Patent App. Pub. No. 2004/0050715 A1 [hereinafter Zhu]; alternatively Bao et al., CN 101812720 A; and alternatively Inman et al., U.S. Patent App. Pub. No. 2011/0303553 A1 [hereinafter Inman] as evidenced by Sigma-Aldrich, Sodium chloride (2018). A machine translation was used for Bao.
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. Matt
An electrolyte solution …, the electrolyte solution comprising:
a substantially water free ionic solvent comprising … glycol (glycol; Matt [0078]);
an ionisable material in the form of an inorganic salt (alkali salt such as sodium sulfamate; Matt [0027], [0078]);
…
the viscosity modifier comprises a water-based (glycol may be 20-70 wt% of the electrolyte with water to balance, so water may be up to 80 wt%; Matt [0078]) …, and
the pH of the electrolyte solution is in the range of 5 to 9 (5-6.8; Matt [0031]).
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.
Matt is silent on wherein the electrolyte comprises a viscosity in the range of 5 to 30 mPa.s at 20C.
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.
Matt teaches that the viscosity is a variable that achieves the recognized result of the drift velocity of the ions, hence making it a result-effective variable. See Matt [0014], [0024].
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 Modifier – Webster, Zhu, alternatively Bao, and as evidenced by Sigma-Aldrich
Matt is silent on a viscosity modifier comprises an inorganic salt solution and wherein the concentration of the viscosity modifier in the electrolyte solution is in the range 10-50 wt. %.
However, Matt teaches adding an alkali salt. Matt [0027], [0078]. Matt also teaches that a halogen may be added which improves the properties. Matt [0066]. Matt further teaches that glycerol may be 20-70 wt% of the solution with water to balance, which leaves water to go up to as much as 80 wt% of the solution; Matt [0029], [0078]).
Webster teaches adjusting the viscosity of a bath by adding sodium chloride, an alkali halogen salt. Webster col. 1 ll. 24-49, col. 2 ll. 26-40.
Zhu teaches the chloride salt content – including sodium chloride - of an electropolishing solution may be 1-25 wt%. Zhu [0002], [0005], [0007], [0011], claims 1, 4, & 10.
It is also noted that the electrolyte solution is a product-by-process thus the viscosity modifier need not have been water-based at the start. Alternatively, Bao teaches that NaCl with a mass concentration of 5-30 mass% may be used to add NaCl to a solution, or 19.5-100 mass% of the saturation point. Bao claim 2.
Factual reference Sigma-Aldrich teaches that NaCl has a saturation point of 25.7% {357 mg NaCl / (357 mg NaCl + 1000 mg H2O)}.
A person having ordinary skill in the art would have recognized this to be a suitable method to add NaCl to a solution.
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 by adding Webster’s sodium chloride alternatively with Bao’s 19.5-100 mass% of saturation NaCl solution to achieve Zhu’s 1-25 wt% sodium chloride salt concentration in the solution in order to add Matt’s desired halogen.
Alternatively, 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 by adding Webster’s sodium chloride alternatively with Bao’s 19.5-100 mass% of saturation NaCl solution to achieve Zhu’s 1-25 wt% sodium chloride salt concentration in the solution in order to adjust the viscosity.
Matt’s up to 80 wt% of water together with Zhu’s 1-25 wt% sodium chloride would meet the concentration of the viscosity modifier of 10-50 wt%.
III. Ethylene Glycol - Zhu
Matt is silent that the glycol is ethylene.
But Matt must use some specific kind of glycol. Matt also uses glycerol. Matt [0078].
Zhu teaches that ethylene glycol and glycerol are both suitable solvents for electropolishing. Zhu [0006].
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 glycol to be Zhu’s ethylene glycol to yield the predictable result of having a suitable glycol for electropolishing.
Alternatively, 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 substituted the aforementioned prior art’s glycerol with Zhu’s ethylene glycol to yield the predictable result of having a suitable solvent for electropolishing.
IV. Viscosity - alternatively Inman
This is an alternative teaching for wherein the electrolyte comprises a viscosity in the range of 5 to 30 mPa.s at 20°C.
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.
3-6. (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 the saturation point of the water-based inorganic salt solution, (claim 5) an electrolyte solution according to claim 1, wherein the concentration of the water-based inorganic salt solution is in the range 80-100% of the saturation point of the water-based inorganic salt solution, (claim 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 (rejected for similar reasons stated in the claim 1 rejection).
7. An electrolyte solution according to claim 1, wherein the concentration of the viscosity modifier in the electrolyte solution is in the range 20 to 50 wt. % (rejected for similar reasons stated in the claim 1 rejection).
9. An electrolyte solution according 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. Matt is silent on this.
However, Inman teaches that NaCl, NaBr, or NaF are suitable alkali salts for electrolytic removal.
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 alkali salt to be NaCl, NaBr, or NaF to yield the predictable result of having a suitable salt for electrolytic removal.
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. Matt is silent on this.
However, Matt does teach that glycerol or glycol may be used, making them equivalents. Matt [0078].
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 solvent by adding glycerol and glycol together since they are equivalents to yield the predictable result of having a suitable solvent.
11. An electrolyte solution according to claim 10, wherein the substantially water free solvent is selected from ethylene glycol and/or glycerol (rejected for similar reasons stated in the claim 10 rejection).
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).
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 (10-40 mS). Matt [0032].
21. An electrolyte solution according to claim 1, wherein the concentration of the viscosity modifier in the electrolyte solution is in the range of 30 to 50 wt. % (rejected for similar reasons stated in the claim 1 rejection).
22. An electrolyte solution according to claim 1, wherein the concentration of the viscosity modifier in the electrolyte solution is in the range of 40 to 50 wt. % (rejected for similar reasons stated in the claim 1 rejection).
23. An electrolyte solution according to claim 1, wherein the concentration of the substantially water free ionic solvent is at least 50 wt.% (glycerol may be 20-70 wt% of the solution). Matt [0029], [0078]).
Response to Arguments
Applicant’s arguments have been considered but are moot because the arguments do not apply to the new grounds of 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 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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