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 Claims
The after final amendment has been entered. Claims 12-15 have been amended, claim 16 has been amended and claims 48-51 have been newly added. Thus claims 1-11 and 48-51 are currently pending and are under examination.
Withdrawn Rejections
Claim 16 has been amended to obviate the indefinite language and thus the 112(b) rejection of the claim has been withdrawn.
Applicant’s arguments with respect to US’569 and Wang have been considered and were found persuasive. Accordingly, the 102(a)(1) and 103 rejections of the record have been withdrawn.
Claim Objections
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
Claims 1 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent number CN105755518A (CN’518; original and machine translation are attached).
Claims 1 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent number CN110306228A (CN’228; original and machine translation are attached).
Claims 1 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent number CN109023480A (CN’480; original and machine translation are attached).
Regarding claims 1 and 17,
CN’518 teaches an electrolyte comprising phytic acid and water (also reading on the inorganic solvent of instant claim 17) suitable for formation of an oxide on magnesium anode ([0008], [0009] and [0012]).
CN’228 teaches an electrolyte comprising phytic acid and water (also reading on the inorganic solvent of instant claim 17) suitable for formation of an oxide on aluminum anode ([0009]-[0010]).
CN’480 teaches an electrolyte comprising phytic acid and water (also reading on the inorganic solvent of instant claim 17) suitable for formation of an oxide on magnesium alloy anode ([0015]-[0022]).
Regarding claims 17 and 19,
CN’518 teaches the electrolyte as further comprising sodium hydroxide (specie of buffer), silicate, and isonicotinic acid-N-oxide (specie of the claimed organic carboxylic acid) ([0008]).
CN’228 teaches the electrolyte as further comprising fulvic acid (specie of the claimed organic carboxylic acid) and pH adjuster such as sodium hydroxide (specie of buffer) ([0010] and [0012]).
CN’480 teaches the electrolyte as further comprising sodium hydroxide (specie of buffer) and glucose ([0020]).
The formula of phytic acid is as follows:
PNG
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209
215
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Greyscale
In the above, the corresponding claimed R1-R6 groups are -P=O(OH)2, which falls under the claimed -PO3R7R8, and wherein R7 and R8 are H.
Regarding claims 18 and 20, the scope of the claims is not given patentable weight as the metal salts, salts of inorganic acids, salts of organic acids, inorganic acids, and organometallic compounds are recited as alternatives within the Markush claim 17. As such, water as the inorganic solvent, organic acids and buffer of the references would still read on claims 18 and 20 that encompass limitations with no patentable weight.
Claim Rejections - 35 USC § 103
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 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 2-10, 16 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Patent number CN110306228A (CN’228; original and machine translation are attached) in view of Patent number US5716511A (US’511).
Regarding claims 2-9 and 16, phytic acid of CN’228 reads on the claimed R groups.
Regarding claim 10, the hydrogens in the phosphoric acid group of the phytic acid of CN’228 are cations.
Regarding claims 2-10, 16 and 21, while the reference teaches the electrolyte is suitable for formation of an oxide on aluminum anode, it fails to teach or suggest that the electrolyte if suitable for formation of an oxide on a tantalum anode. CN’228 also fails to teach the electrolyte as further comprising solvent selected from the group consisting of water, alcohol, ethylene glycol, polyethylene glycol, tetraglyme, propylene glycol, glycol ether and alkanolamines. However, the deficiencies are cured by US’511.
US’511 teaches a method to provide an anodic oxide layer having a substantially uniform thickness by a process of anodizing valve metals (col. 1, lines 5-9). The valve metal, which is anodized in accordance with this invention, is a metal of Groups IV or V of the periodic tables including aluminum, niobium, titanium, tantalum and zirconium (col. 4, lines 55-68). The electrolyte used to provide anodic oxide layer in US’511 comprises water, a polyethylene glycol dimethyl ether (specie of glycol ether of instant claim 21) and phosphoric acid or an electrolyte-soluble salt thereof (col. 2, lines 56-69).
US’511 teaches the increased numbers and types of electrical equipment has led to a corresponding increase in the need for the efficient formation of anodic films having good integrity, specifically with the anodization of tantalum due to worldwide consumption level of solid tantalum capacitors (col. 1, lines 11-24). US’511 also teaches that the electrolyte is applicable on metal anode valve made of aluminum (col. 4, lines 55-68), the same anode as taught by CN’228. Accordingly, replacing the valve aluminum anode of CN’228 with the valve tantalum anode of US’511 and applying the valve tantalum anode to the electrolyte solution of CN’228 that comprises phytic acid and water would yield nothing more than the predictable anodic oxide layer on the valve tantalum anode.
In accordance to MPEP § 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) simple substitution of one known element for another to obtain predictable results applies.
In view of the foregoing, the electrolyte of CN’228 comprising phytic acid and water would be suitable for formation of an oxide on the valve tantalum anode as instantly claimed.
It would thus have been prima facie obvious to the skilled artisan before the effective filing date of the instant invention to obtain a formation electrolyte suitable for formation of an oxide an a tantalum anode comprising a derivative of inositol of formula I in aqueous solution and wherein the electrolyte further comprises at least one solvent selected from the group consisting of water, alcohol, ethylene glycol, polyethylene glycol, tetraglyme, propylene glycol, glycol ether and alkanolamines in view of the teachings of CN’228 and US’511.
Allowable Subject Matter
The subject matter of claim 11 is free of prior art and claims 48-51 are allowed.
The closest prior art references have been set forth above but fail to teach or suggest the electrolyte as claimed. Furthermore, none of the above references suggest or provide a guidance to modify the electrolyte species to arrive at the instantly claimed electrolyte of formula 1 wherein:
at least one of R7 or R8 is a cation selected from the group consisting of quaternary amines and saturated or unsaturated carbon chain of up 35 carbon atoms,
at least one of R1-R6 is SiR93, or
at least one of R1-R6 is C(O)R10.
Thus claims 11 and 48-51 are deemed novel and unobvious.
Conclusion
Claims 1-10 and 16-21 are rejected and claims 48-51 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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