DETAILED ACTION
Status of Claims
Claims 1-20 are pending.
Claims 14-20 are withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 9 September 2025 is acknowledged. Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Acknowledgement is made of the election to Species A: electroplating.
Claim Rejections - 35 USC § 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.
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.
Claim 3 is 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.
Claim 3 recites the limitation "the first metal" and “the second metal” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masuda et al. (JPH05311494).
Regarding claim 1, Masuda discloses a method of manufacturing a heat transfer tube [0001] (= a method of forming a surface), the method comprising:
Forming a plurality of through-holes (2) on a surface of a steel plate (1) ([0015], Figure 1) (= forming a plurality of unidirectional or multidirection channels on a surface of a metallic, polymeric, or ceramic substrate formed from a first material);
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Figure 1 of JPH05311494
Electrodepositing copper layer within the through holes (Figure 2, [0015]) (= filling the plurality of channels in the surface of the substrate with a second material that is different from the first material to form a surface on the substrate);
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Figure 2 of JPH05311494
The formed tube is a heat transfer tube such as a condensation tube of a heat exchanger for an air conditioner [0001] and is subjected to refrigerant flow testing [0019]. Therefore the method of Masuda places the substrate into a heat exchange system. The surface of the tube is proximate to a liquid used in the heat exchange system since the tube is provided to flow for example a refrigerant through the tube. The claimed proximate is not dimensionally limiting. Moreover, the claimed “such that the metasurface is proximate to a liquid used in the heat exchange system” is directed towards the method of using the metasurface and not the method of forming a metasurface. Regarding the claimed metasurface, the surface of Masuda reads on the claimed metasurface since it is a surface having structures (e.g. through-holes) arranged in a 2D plane for example. There are no additional claimed dimensional requirements or structural requirements for the metasurface. The instant specification indicates that a metasurface is formed by forming a plurality of channels on a surface and filling [0004].
Regarding claim 3, Masuda discloses the first material or metal comprising steel and the second material or metal comprising copper [0015].
Regarding claim 4, Masuda discloses filling the plurality of through-holes comprising electroplating the second material onto the surface of the substrate [0015].
Regarding claim 5, Masuda discloses the same method and materials as claimed. Masuda does not specifically disclose wherein the metasurface is designed to passively resist foulant aggregation as compared to a single material surface, however, this is considered to be an intrinsic property resulting from following the method steps taught by the reference(s), which meet the instantly claimed method steps, absent any clear and convincing evidence and/or arguments to the contrary. As a reasonable anticipation rejection has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise.
Claim(s) 1, 3-6 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell et al. (US 2010/0143741).
Regarding claim 1, Bell discloses forming a coated metallic article on a surface of tailored wettability (title) (= a method of forming a surface), the method comprising:
Forming a plurality of channels in a surface by stamping or removal for example [0077], alternatively using masking is well known in the art for producing a pattern [0045] on a metallic surface (abstract) (= forming a plurality of unidirectional or multidirection channels on a surface of a metallic, polymeric, or ceramic substrate formed from a first material);
Coating the metallic surface with a second metal (abstract) (= filling the plurality of channels in the surface of the substrate with a second material that is different from the first material to form a metasurface on the substrate). Regarding the filling, Bell does not explicitly disclose filling the formed channels, however, given the first metal surface comprises channels by stamping or patterning for example coating channels with a second metal would necessarily fill the channels in the surface.
Regarding the claimed placing the substrate into a heat exchanger system such that the metasurface is proximate to a liquid used in the heat exchange system, Bell discloses the metallic article for use as a heat transfer sheet of a water-based heat exchanger [0018] and therefore the metallic article would necessarily be proximate to a liquid used in a heat exchange system.
Regarding the claimed metasurface, the surface of Bell reads on the claimed metasurface since it is a surface having structures (e.g. channels) arranged in a 2D plane for example. There are no additional claimed dimensional requirements or structural requirements for the metasurface.
Regarding claims 3 and 4, Bell discloses the first metal being steel (abstract) and the coated metal being copper plated metal [0026], Example 5.
Regarding claim 5, Bell discloses the same method and materials as claimed. Bell does not specifically disclose wherein the metasurface is designed to passively resist foulant aggregation as compared to a single material surface, however, this is considered to be an intrinsic property resulting from following the method steps taught by the reference(s), which are the same as those instantly claimed, absent any clear and convincing evidence and/or arguments to the contrary. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise.
Regarding claim 6, Bell discloses that the metallic article can have two or more different patterns, surfaces and/or coatings thereon with the same or different wettability [0041], [0077]. Bell discloses that the part-coating may be used to create a pattern for the coated metallic article, such as for creating an array of tailored surfaces upon a single metallic article [0045]. Bell discloses forming a desired shape, pattern or design which will have a tailored surface [0075]. Bell discloses that variation of the surface may include variation in volume, depth and uniformity [0067]. Given the disclosure of Bell as described, Bell necessarily discloses wherein each region has a different thickness or pattern for the purpose of tailoring the surface [0041], [0077].
Regarding claims 8-11, given the disclosure of Bell as described above including tailoring the surface by varying the volume, depth and uniformity of the areas of the surface, it would have been obvious to one of ordinary skill in the art to change a depth, width, pitch and/or cross-sectional profile of the different areas in order to adjust the wettability of the surface. All of the features (depth, width, pitch, cross-section) are related to the patterning of each area and adjustment of these dimensions would have been obvious in view of the disclosure of Bell.
Regarding claims 12-13, Bell discloses the method including determining the nature of the coated metallic articles based by tailoring the surface for the purpose of anti-fouling, self-cleaning, etc. [0042]. Bell discloses that the wettability is based on the structured surface (abstract). Therefore, the claimed determining based on a desired amount of fouled surface coverage over a period of time would have necessarily been performed by one of ordinary skill in the art under routine experimentation to arrive at the desired wettability and therefore anti-fouling capabilities.
Claim(s) 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell et al. (US 2010/0143741) in view of Poltorak (US 2019/0021186).
Regarding claim 2, Bell does not explicitly disclose a cross-grid pattern on the surface however Bell discloses providing any number of patterns [0041] including arrays [0045] of the channels [0077] therefore the selection of a cross-grid pattern would have been an obvious engineering design choice.
To further teach the concept of cross grid in heatsink systems (title), Poltorak is herein cited for disclosing that a heat sink may have any number of patterns including cross grid [0135] or any number of grid patterns [0196]-[0197]. Poltorak discloses that the grid structure may be regular and symmetric or irregular and that the optimal pattern characteristic will vary as a function of distance from the heat source [0198].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising forming a plurality of channels comprising forming a cross-grid pattern because Bell discloses that any number of patterns can be formed to adjust the wettability of the surface and as Poltorak discloses that any number of patterns including cross-grid patterns may be used to produce a heat sink or heat exchange device.
Regarding claim 7, given the combined teachings of Bell and Poltorak it would be obvious to one of ordinary skill in the art to produce a method comprising forming a first region with parallel lines and forming a second region with a cross-grid pattern because Bell discloses forming any number of different patterns on the same surface across the plate which includes channels and as Poltorak discloses using various patterns including cross grid to produce the desired turbulent effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795