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 25 February 2026 fails to place the application in condition for allowance.
Claims 1, 2, 4, 5, 12, 13, 15, 17, 18, 20, 23, 24, 33-35, 37, 44, and 45 are currently pending and under examination.
Status of Rejections
All previous rejections are herein withdrawn due to Applicant’s Amendment filed 25 February 2026.
New rejections are provided herein.
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, 4, 5, 12, 13, 18, 20, 24, 33, 37, 44, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Sundaram (US 2017/0044680 A1) in view of Zhang et al (GB 2567992 A).
As to claim 1, Sundaram disclose a method for forming a multidimensional structure, the method comprising the following steps:
providing an electrode (Fig. 1 # 14) and a substrate (Fig. 1 #24) having an exposed area or tip to be contacted with a fluid (Fig. 1 #18 exposed disc like end and Fig. 2 area exposed of 14 not covered with 16 [0014]) and a substrate (#24)
contact the fluid with the exposed area or tip of the electrode and the substrate (See Fig. 2 #22 in contact with both) wherein a surface area of the electrode in contact with the fluid is between 50 and 250 micrometers which falls within the instantly claimed range ([0016]) wherein the fluid comprises an electrolyte (Fig. 1 #22), and a precursor agent dispersed therein ([0015] nickel chloride and nickel sulfate);
applying an electric potential difference between the substrate and the electrode to reduce or oxidise the precursor agent, thereby depositing a solid material ([0019] “The power supply 30 applies the electric field between the tool electrode 14 and the substrate 24. The localized electric field causes the metal ions present in the electroplating solution 22 (e.g., nickel in a Watts bath) to be deposited on the substrate 24.”);
measuring current between the substrate and the electrode ([0018] “The current sensor 48 measures the current between the tool electrode 14 and the substrate 24…); and
moving the electrode within the fluid to form a multidimensional structure of the solid material ([0017] note the stage moves relative the electrode thus the electrode is moved within the fluid).
Sundaram fails to explicitly disclose wherein the electrode is moved along an x, y, and z axis.
Zhang discloses a three dimensional electrodeposition apparatus (Fig. 1 Abstract) comprising moving a tip electrode (#14) through an electroplating liquid (#4) comprising a x, y, and z axis positioning platform (#15).
The prior art Sundaram discloses a device that differs from the instant claims by the particular structure associated with movement between the electrode and substrate.
Zhang discloses the particular structure of movement between a substrate and electrode from three dimensional electrodepostion printing is known in the prior art which provides an expected result of moving the electrode relative the surface to enable plating onto the substrate upon application of a current and/or voltage.
It would have been obvious to one of ordinary skill in the art the time the invention as filed to have used a x, y, and z positioning system to move the electrode as taught by Zhang in the apparatus of Sundaram because it is a recognized structure to provide movement between an electrode and substrate in order to provide the predictable result of the electroplating onto the substrate and form the desired printed structure. See MPEP 2143 B and 2144.07.
As to claims 2 and 4, Sundaram further discloses wherein the current between the substrate and the electrode is measured at a plurality of time points and thus a function of time as required by instant claim 4. ([0018] via monitoring through the deposition process).
As to claim 5, Sundaram further discloses varying the position of the electrode when the current is above, below, or at a predetermined value.([0018] “When the current reaches a pre-set threshold value, the controller 40 causes the stage 38 and, consequently, the substrate 24 to move away from the tool electrode 14, thus increasing the inter-electrode gap. The controller 40 may be configured to move the stage 38 until the detected current reaches a pre-determined value, which corresponds to a pre-determined inter-electrode gap. This ensures that there is a constant gap between the anode and the cathode during electrodeposition.”).
As to claims 12, 18, and 20, Sundaram discloses using metal salts to deposit a metal (Table 2).
As to claim 13, Sundaram further discloses the concentration within the instantly claimed range (See Table 2 700-5000 mol/L which anticipates the instantly claimed range).
As to claim 24, the recitation of “first” and “Second” do not impart structural differentiation and can be regarded as the same ion, nickel as disclosed in Sundaram, deposited at different times of each layer. Thus, the prior art explicitly requires a first and second potential, even if they are the same potential applied at two different times for two different layers.
As to claims 33 and 37, Sundaram further discloses a device for producing a multidimensional structure, said device (Fig. 1 which is deemed to be at 3d printer because it forms of 3-D parts – see Abstract) comprising:
an electrode (Fig. 1 #14) having an exposed area or tip to be contacted with a fluid (Fig. 1 #18 exposed disc like end and Fig. 2 area exposed of 14 not covered with 16 [0014])
a substrate (#24)
a container (Fig. 1 #20) for holding a fluid (Fig. 1 #22);
one or more motors for moving the electrode within the container (Fig. 1 #38);
a substrate within the container (Fig. 1 #24); and
a potentiostat for applying an electric potential difference between the substrate and the electrode (Fig. 1 #34) and for measuring current between the substrate and the electrode (Fig. 1 current sensor).
Sundaram fails to explicitly disclose wherein the electrode is moved along an x, y, and z axis.
Zhang discloses a three dimensional electrodeposition apparatus (Fig. 1 Abstract) comprising moving a tip electrode (#14) through an electroplating liquid (#4) comprising a x, y, and z axis positioning platform (#15).
The prior art Sundaram discloses a device that differs from the instant claims by the particular structure associated with movement between the electrode and substrate.
Zhang discloses the particular structure of movement between a substrate and electrode from three dimensional electrodepostion printing is known in the prior art which provides an expected result of moving the electrode relative the surface to enable plating onto the substrate upon application of a current and/or voltage.
It would have been obvious to one of ordinary skill in the art the time the invention as filed to have used a x, y, and z positioning system to move the electrode as taught by Zhang in the apparatus of Sundaram because it is a recognized structure to provide movement between an electrode and substrate in order to provide the predictable result of the electroplating onto the substrate and form the desired printed structure. See MPEP 2143 B and 2144.07.
As to claim 44, Sundaram further discloses controlling printing parameters based on the current measured between the substrate and the electrode. ([0018]).
As to claim 45, Sundaram further discloses a controller that controls printing parameters based on the current measured between the substrate and the electrode. (#40 controller).
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sundaram, as modified by Zhang, as applied to claim 1, in further view of McManis III et al (US 4,624,753 A1).
As to claim 15 and 17, Sundaram, as modified by Zhang, fails to disclose wherein the fluid comprises an organic solvent or does not comprise water.
McManis discloses appropriate electrolytes for performing plating of different metals including nickel (col. 1 line 13, claim 9) which may comprise an organic solvent or no water (“solvent” claim 5, “non-aqueous ionic liquid” claim 1 and throughout).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used an ionic plating liquid with an organic solvent and no water as taught by McManis in the method of Sundaram, as modified by Zhang, because such a plating bath is recognized for it’s intended use of electroplating a nickel layer, where the substitution of one bath for another provided the expected result of supplying nickel ions for deposition. See MPEP 2143 B and 2144.07.
Claims 23 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sundaram, as modified by Zhang, as applied to claim 1, in further view of Huang et al (US 2019/0055661 A1).
As to claim 23, Sundaram, as modified by Zhang, fails to disclose replacing the first fluid with a second fluid, wherein the second fluid comprises: an electrolyte, and a precursor agent dispersed therein, wherein the precursor agent of the second fluid is different to the precursor agent of the first fluid; and applying an electrical potential difference between the electrode and the substrate to reduce or oxidise the precursor agent of the second fluid, thereby depositing a second solid material.
Huang discloses three dimensional electrodepostion systems (title) using a first fluid (claim 1) and further replacing the first fluid with a second fluid, wherein the second fluid comprises: an electrolyte, and a precursor agent dispersed therein, wherein the precursor agent of the second fluid is different to the precursor agent of the first fluid; and applying an electrical potential difference between the electrode and the substrate to reduce or oxidise the precursor agent of the second fluid, thereby depositing a second solid material (Claim 12 [0045]-[0046]).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have replaced a first fluid for a second fluid to carry out a second deposition via application of an electric potential as taught by Huang in the method of Sundaram, as modified by Zhang, because allows for formation of a second three dimensional structure via a layer by layer basis (Huang [0067]) and a structure which has different compositions (Huang [0045]).
As to claim 34, Sundaram, as modified by Zhang, fails to disclose a reference electrode in electrical connection to the potentiostat.
Huang discloses a reference electrode in electrical connection to the potentiostat. (#112).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a reference electrode as taught by Huang in the apparatus of Sundaram, as modified by Zhang, because it allows for the applied potential to be measured against it as such to monitor the applied potential (Huang [0060]).
Claims 35 are rejected under 35 U.S.C. 103 as being unpatentable over Sundaram, as modified by Zhang, as applied to claim 22, in further view of Nulwala et al (US 2018/0347058 A1).
As to claim 35, Sundaram, as modified by Zhang, fails to explicitly disclose the use of a QCM for measuring the mass of the multidimensional structure.
Nulwala discloses using a QCM for measuring the mass during deposition ([0032]).
Thus, it would have been obvious to one of ordinary skill in the art to have used a QCM as taught by Nulwala with the device of Sundaram, as modified by Zhang, in order to measure the mass of the as formed deposit during electrodeposition (Nulwala [0032]).
Response to Arguments
Applicant's arguments filed 25 February 2026 have been fully considered but they are not persuasive.
Applicant provides a summary of the amended claimed subject matter on pgs. 6-8 of the response. Applicant argues the difference between Sundaram and the instant claims is the immersion of the electrode and substrate as opposed to the droplet embodiment of the claimed invention. It is noted the instant claims are not confined to droplet style as asserted by Applicant. It is further noted the phrase “droplet” does not appear in the instant specification. Thus, the claims do not preclude the immersion structure ad described. For these reasons, argument drawn towards changing the immersion of Sundaram are not persuasive in light of the broadest reasonable interpretation of the instant claims.
With respect to the instant claims drawn towards the surface area, it is noted that the area discloses in Sundaram is the exposed area of the electrode tip, with the rest protected via an insulating layer. This exposed tip is equivalent to the claimed surface area of the electrode in contact with the fluid because other portions of the electrode are protected via the insulation layer.
No further arguments are presented.
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
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