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 the Rejection
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendments. New grounds of rejection under 35 U.S.C. § 112(b) are applied for new claims 23-24.
All 35 U.S.C. § 103 rejections from the previous office action are maintained and modified only in response to the amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 23 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 23 and 24 recites that the oxidation resistant layer forms one or more edges of the electrode “defined by an intersection between the face of the electrode and the sides of the electrode.” It is not clear what is meant by defining the edges by the intersection between the face of the electrode and the sides of the electrode. It is not clear whether this limitation is intending to claim that the oxidation resistant layer is only on the face of the electrode (e.g., Fig. 2 of the instant application’s drawing) or that it could be on both the face of electrode and on the sides of the electrode (e.g., Fig. 3 of the instant application’s drawing). These claims are interpreted to read on either Fig. 2 or Fig. 3 of the instant application’s drawing.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Forenz et al. (US 20170266743) in view of Inoue (US 4206028) and Toma et al. (US 20060091005).
Regarding claim 1, Forenz et al. teaches a pulsed electrochemical machining (pECM) system, comprising:
a pECM tool (PECM apparatus 100, Fig. 1) comprising a tool body, the tool body comprising an electrode (electrode tool 200, Figs. 2-3) defining a working surface (cutting surface 204, Figs. 2A, 2B) configured to oppose a workpiece (workpiece electrode 102, Fig. 1) during a pECM process;
an electrolyte system (electrolyte management system 110, Fig. 1) configured to supply electrolyte to an interelectrode gap between the working surface of the electrode and a target surface of the workpiece; and
a power supply (power supply 140, Fig. 1) configured to generate a direct current potential (paragraph 51) between the one or more electrodes of the pECM tool and the workpiece during the pECM process,
wherein the electrode comprises:
a base member including a conductive material (i.e., the cathode materials are conductors including stainless steels and copper; paragraph 60); and
a diamond-like carbon coating overlying a second portion of the base member and defining sides of the electrodes adjacent to the face of the electrode (dielectric coating 258 comprising diamond-like carbon formed on the sidewalls of the electrode; paragraphs 58, 67 and 72).
Forenz et al. further teaches pulsed machining and a power supply to provide a DC potential to the electrode (paragraph 51). Given this collective teaching, the power supply would inherently be capable of providing a pulsed direct current. However, to promote compact prosecution, it is assumed that Forenz et al. does not explicitly teach the power supply is configured to generate a pulsed direct current.
Inoue teaches an electrochemical polishing system for polishing, i.e., machining, metallic or other electrically conductive surfaces (column 1, lines 9-14). Inoue teaches the power supply may advantageously take the form of DC-AC-DC inverter circuitry comprising an input energized by a commercial alternating-current source, a rectifier for producing a direct-current output therefrom, a switching unit for on/off controlling the direct-current and a pulser associated therewith to produce a train of pulses of a regulated frequency (column 2, line 37-44; Figs. 1, 7) Inoue further teaches utilizing the pulsed direct-current “an improved finishing is obtainable at an increased current density thereby permitting an increased machining efficiency while assuring a high-quality and uniformly polished surface” (column 7, lines 59-63).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the power supply of Forenz et al. with the power supply of Inoue to generate the pulsed direct-current because it would allow the electrochemical machining apparatus to operate at an increased current density and permit an increased machining efficiency while assuring a high-quality and uniformly polished/machined surface, as taught by Inoue (column 7, lines 59-63).
Forenz et al. does not explicitly an oxidation resistant layer overlying a first portion of the base member and defining the face of the electrode.
Toma et al. teaches an electrolytic processing apparatus for electrochemical machining a conductive material formed on a surface of a substrate (paragraph 1, 6-7). Toma et al. recognizes that “[o]xidation or elution caused by electrolytic reactions may be problematic in the electrodes 86 of the electrode members 82. Therefore, it is desirable to use carbon, a noble metal which is relatively inert, conductive oxide, or conductive ceramics as a material for the electrode 86 rather than the metal and metallic compounds that are widely used for electrodes. An electrode using noble metal may be produced as follows. For example, titanium is used as a base material for an electrode, and platinum or iridium is attached to a surface of the base material by plating or coating” (paragraph 100).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the oxidation resistant layer, i.e., platinum or iridium coating, of Toma et al. in the electrode of Forenz et al. to minimize oxidation or elution caused by electrolytic reactions. The modified electrode having the oxidation resistant layer of Toma et al. formed either on the face of the electrode or the entire surface of the electrode would result in having an oxidation layer overlying a first portion of the base member and defining a face of the electrode. Note that the claim is open to having the oxidation layer either on only the face of the electrode or on the entire surface of the base member since the claim recites “comprising” language.
Regarding claim 2, Forenz et al. teaches wherein the electrode includes a base member including a conductive material (such as stainless steel, paragraph 60), wherein the diamond-like carbon coating (the DLC coating 258 is coated on the inner wall and outer walls of the electrode 200; paragraphs 57, 72) overlays at least a portion of the base member. Since Forenz et al. teaches the same coating, DLC, it would inherently reduce oxidation of conductive material of the base member while the electrode functions as an anode during the pECM process.
Regarding claim 3, Forenz et al. teaches wherein the diamond-like carbon coating is an electrical insulator such that the diamond-like carbon coating exhibits an electrical conductivity less than that of the oxidation resistant layer (this property would be inherent since Forenz et al. teaches the same DLC coating).
Regarding claim 4, Forenz et al. as modified by Inoue teaches wherein the power supply is configured to generate the pulsed direct current between the electrode of the pECM tool and the workpiece during the pECM process with the electrode being an anode during a first portion of the process and being a cathode during a second portion of the pECM process (Inoue teaches that the system allows for the polarity reversal of the pulsed electric current [column 6, lines 58-68], thus allowing electrode to function as either a cathode or anode during the electrochemical machining process).
Regarding claim 5, Toma et al. teaches wherein the oxidation resistant layer comprises platinum (paragraph 100).
Regarding claim 6, Toma et al. teaches wherein the oxidation resistant layer comprises iridium oxide (paragraph 101).
Regarding claim 9, Forenz et al. teaches a machine motion controller 150 to control the electrode tool oscillator 130 (paragraph 51). The electrode tool oscillation along with power and pulse timing is precisely monitored and controlled (paragraph 51).
Claim 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Forenz et al. (US 20170266743) in view of Inoue (US 4206028), Toma et al. (US 20060091005), and further in view of Kobayashi et al. (JP2003211324A).
Regarding claim 21, Forenz et al. in view of Inoue and Toma et al. teaches the electrochemical machining system as applied above in claim 1. The references do not explicitly teach the thickness of the oxidation resistant layer.
Kobayashi et al. teaches an electrochemical machining electrode having a conductive coating 1 (Fig. 1) on a base material 11 of electrode tool 21 to provide corrosion resistance to the electrode and extend the life of the electrode (paragraphs 7, 42). Kobayashi et al. teaches that the conductive coating has a thickness of 0.2 µm or more (paragraph 25), and that the thickness of the coating is not limited when formed by a dry process (paragraph 16).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention modified the electrode of Forenz et al. by incorporating the conductive coating, i.e., oxidation resistance layer, and its thickness of Kobayashi et al. because it would protect the electrode from corrosion and extend the life of the electrode (paragraph 7 and 42 of Kobayashi et al.). A thickness of 0.2 µm or more (paragraph 25 of Kobayashi et al.) encompasses the range of the instant claim. According to MPEP 2144.05, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Regarding claim 23, Forenz et al. as modified by Kobayashi et al. teaches oxidation resistant layer forms one or edges of the electrode defined by an intersection between the face of the electrode and the sides of the electrode. The combination would read on the applicant’s embodiment shown in Fig. 2.
Claims 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Forenz et al. (US 20170266743) in view of Toma et al. (US 20060091005).
Regarding claim 10, Forenz et al. teaches a pulsed electrochemical machining (pECM) system, comprising:
a pECM (PECM apparatus 100, Fig. 1) comprising a tool body defining a tool axis, the tool body comprising an electrode (electrode tool 200, Figs. 2-3) defining a working surface (cutting surface 204, Figs. 2A, 2B) configured to oppose a workpiece (workpiece electrode 102, Fig. 1) during a pECM process;
wherein the electrode comprises:
a base member including a conductive material (i.e., the cathode materials are conductors including stainless steels and copper; paragraph 60); and
a diamond-like carbon coating overlying a second portion of the base member and defining sides of the electrodes adjacent to the face of the electrode (dielectric coating 258 comprising diamond-like carbon formed on the sidewalls of the electrode; paragraphs 58, 67 and 72).
Forenz et al. does not explicitly an oxidation resistant layer overlying a first portion of the base member and defining the face of the electrode.
Toma et al. teaches an electrolytic processing apparatus for electrochemical machining a conductive material formed on a surface of a substrate (paragraph 1, 6-7). Toma et al. recognizes that “[o]xidation or elution caused by electrolytic reactions may be problematic in the electrodes 86 of the electrode members 82. Therefore, it is desirable to use carbon, a noble metal which is relatively inert, conductive oxide, or conductive ceramics as a material for the electrode 86 rather than the metal and metallic compounds that are widely used for electrodes. An electrode using noble metal may be produced as follows. For example, titanium is used as a base material for an electrode, and platinum or iridium is attached to a surface of the base material by plating or coating” (paragraph 100).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the oxidation resistant layer, i.e., platinum or iridium coating, of Toma et al. in the electrode of Forenz et al. to minimize oxidation or elution caused by electrolytic reactions. The modified electrode having the oxidation resistant layer of Toma et al. formed either on the face of the electrode or the entire surface of the electrode would result in having an oxidation layer overlying a first portion of the base member and defining a face of the electrode. Note that the claim is open to having the oxidation layer either on only the face of the electrode or on the entire surface of the base member since the claim recites “comprising” language.
Regarding claim 11, Forenz et al. teaches wherein the electrode includes a base member including a conductive material (such as stainless steel, paragraph 60), wherein the diamond-like carbon coating (the DLC coating 258 is coated on the inner wall and outer walls of the electrode 200; paragraphs 57, 72) overlays at least a portion of the base member. Since Forenz et al. teaches the same coating, DLC, it would inherently reduce oxidation of conductive material of the base member while the electrode functions as an anode during the pECM process.
Regarding claim 12, Forenz et al. teaches wherein the diamond-like carbon coating is an electrical insulator such that the diamond-like carbon coating exhibits an electrical conductivity less than that of the oxidation resistant layer (this property would be inherent since Forenz et al. teaches the same DLC coating).
Regarding claim 13, Toma et al. teaches wherein the oxidation resistant layer comprises platinum (paragraph 100).
Regarding claim 14, Toma et al. teaches wherein the oxidation resistant layer comprises iridium oxide (paragraph 101).
Regarding claims 15-16, while Forenz et al. as modified by Toma et al. does not explicitly teach providing oxidation resistant layer only on the working surface of the electrode, Toma et al. teaches generally providing an oxidation resistant layer on the surface of the base material, i.e., electrode. Since the working surface electrode is exposed to the electrolyte during the machining process in which the electrode is susceptible to oxidation, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the coating only on the working electrode surface, as suggested by Toma et al., in order to minimize the oxidation of the electrode caused by electrolytic reactions. The combination of Forenz et al. as modified by Toma et al. therefore teaches the oxidation resistant layer is formed only on the working surface of the electrode (paragraph 100 of Toma et al.), and the diamond-like carbon coating that defines a second portion (DLC is coated on sidewalls; paragraph 58 of Forenz et al.) of the working surface of the electrode.
Claim 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Forenz et al. (US 20170266743) in view of Toma et al. (US 20060091005), and further in view of Kobayashi et al. (JP2003211324A).
Regarding claim 22, Forenz et al. in view of Toma et al. teache the electrochemical machining system as applied above in claim 1. The references do not explicitly teach the thickness of the oxidation resistant layer.
Kobayashi et al. teaches an electrochemical machining electrode having a conductive coating 1 (Fig. 1) on a base material 11 of electrode tool 21 to provide corrosion resistance to the electrode and extend the life of the electrode (paragraphs 7, 42). Kobayashi et al. teaches that the conductive coating has a thickness of 0.2 µm or more (paragraph 25), and that the thickness of the coating is not limited when formed by a dry process (paragraph 16).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention modified the electrode of Forenz et al. by incorporating the conductive coating, i.e., oxidation resistance layer, and its thickness of Kobayashi et al. because it would protect the electrode from corrosion and extend the life of the electrode (paragraph 7 and 42 of Kobayashi et al.). A thickness of 0.2 µm or more (paragraph 25 of Kobayashi et al.) encompasses the range of the instant claim. According to MPEP 2144.05, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Regarding claim 23, Forenz et al. as modified by Kobayashi et al. teaches oxidation resistant layer forms one or edges of the electrode defined by an intersection between the face of the electrode and the sides of the electrode. The combination would read on the applicant’s embodiment shown in Fig. 2.
Response to Arguments
Applicant's arguments, see Remarks, filed January 6, 2026, with respect to the 35 U.S.C. § 103 rejections have been fully considered and are not persuasive.
Applicant’s Argument #1:
Applicant argues on page 8 that the cited references do not describe the use of two different functional materials -- an oxidation resistant layer and a diamond-like carbon coating -- on specific, distinct zones of an electrode, and that Forenz does not recognize protection of the erosion face of the electrode tool as a solution to corrosion caused by an electrolyte
Examiner’s Response #1:
Applicant’s arguments have been fully considered but are unpersuasive. The examiner agrees that Forenz alone does not teach the oxidation resistant layer. However, the secondary reference Toma et al. teaches that oxidation caused by electrolytic reactions may be problematic in electrodes of an electrochemical machining apparatus. Therefore, it is desirable to attach an oxidation resistant layer such as platinum or iridium to the base material of electrode to protect the electrode from oxidation (paragraph 100). Therefore, one having ordinary skill in the art would look to Toma et al. to modify the electrode of Forenz to incorporate the oxidation resistant layer to protect the electrode from oxidation, as suggested by Toma et al. Note that the claims do not preclude the protective or oxidation layer from being applied to all surfaces of the electrode, including the sides of electrode. The presence of the diamond-like carbon coating of Forenz overlying the sides of the electrode with the oxidation resistant layer would result in an electrode having two different, functional materials that are exposed to the electrolyte.
Furthermore, in response to the argument that Forenz does not recognize the protection of the erosion face of the electrode as a solution, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the same field of endeavor of electrochemical machining, Toma et al. recognizes that the erosion of the electrode is a problem and therefore uses a protective coating as a solution. The combination of Forenz in view of Toma et al. establishes a prima facie obviousness for using the protective coating or oxidation resistant layer.
Applicant’s Argument #2:
Applicant argues on page 9 that a person having ordinary skill in the art would not have had any reason to modify the electrode tool of Forenz based on the electrolytic polishing system of Toma as the processing conditions described by Toma that are addressed by an oxidation-resistant material are not similar to the processing conditions of Forenz. Toma would not have suggested selectively modifying the erosion face of the electrode tool of Forenz to include an oxidation resistant layer. Toma describes using bulk plating methods to coat a base material
Examiner’s Response #2:
This argument is unpersuasive. Forenz and Toma et al. are analogous because they are both directed to an electrochemical machining apparatus. Both references recognize that electrolytes may be corrosive to the electrode (e.g., paragraph 65 of Forenz, and paragraph 100 of Toma et al.). Therefore, both references recognize the need to protect the electrode from the electrolyte, and it would have been obvious to one having ordinary skill in the art to have modified the electrode of Forenz by incorporating the protective coating of Toma et al. to protect the electrode from corrosion.
As stated above, the claim is open to having the oxidation layer either on only the face of the electrode or on the entire surface of the base member since the claim recites “comprising” language. The modified electrode having the oxidation resistant layer of Toma et al. formed either on the face of the electrode or the entire surface of the electrode would result in having an oxidation layer overlying a first portion of the base member and defining a face of the electrode. The presence of the diamond-like carbon coating of Forenz overlying the sides of the electrode would result in an electrode having two different materials that are exposed to the electrolyte. Furthermore, the newly cited reference Kobayashi et al. teaches conductive coating 1 (Fig. 1) on only the end face of the electrode.
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 LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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LUAN V. VAN
Supervisory Patent Examiner
Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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