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 .
Claims Status
Claims 1-6, 8, 10-15 and 18-20 are pending. Claims 1, 14 and 18 have been amended. Claims 7, 9, 16, 17 and 21 have been canceled.
Applicant’s arguments, filed 03/16/2026, with respect to the rejection(s) of claim(s) 1-6, 8, 10-15 and 18 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, the amended claims introduce new matter situation and are rejected under 35 USC 112a.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-6, 8, 10-15 and 18 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.
The amendment raises new matter issue, because the amended claim 1 now requires “using an aluminum sheet with a surface area greater than or equal to a surface area of the aluminum product as a cathode and using a stainless-steel counter electrode having a surface area greater than or equal to a surface area of the aluminum product” in the process of anodizing. Applicant argues that this amendment incorporates subject matter of claim 21, however in canceled claim 21 the limitation of the stainless-steel courter electrode was a part of the step of electrochemical dying not anodization as presently claimed. The specification is consistent with the original claim 21, where a stainless-steel electrode is used in the step of electrochemical dying (see Examples 1-9), and there is no indication that stainless-steel electrode was used in the process of anodization.
Allowable Subject Matter
Claims 1-6, 8, 10-15 and 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The amendment incorporating previous claim 21 will be sufficient to overcome the new matter rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 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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/WOJCIECH HASKE/ Examiner, Art Unit 1794
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