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 .
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.
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 1-5 and 7-10 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.
Claim 1:
Applicant’s disclosure as originally filed provides support for the micropores each has an aperture of 8-50 um (Applicant’s disclosure as originally filed, para [0031]).
However, Applicant’s disclosure as originally filed provides no support for irregular concave and convex structures are distributed on an entire surface of the microporous surface structure of the metal, the convex structures and corresponding adjacent concave structures form micropits, and the micropits together with micropores inside the micropits form the microporous surface structure, and the micropores each has an aperture of 8-50 um as required of Applicant’s amended claims.
Compact Prosecution
The Office requires examiners to practice compact prosecution and should the examiner determine that claims are objected to under 35 U.S.C. 112(a), the examiner should make a claim rejection based on the claims as presented under 35 U.S.C. 112(a) as well as a rejections in view of prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable on the examiner’s interpretation of the claim.
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 1-2, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Bo (CN 104191156 B) as provided by (CN 104191156 B) Machine Translation as an English language equivalent in view of Li (CN 108225948 A) as provided by (CN 108225948 A) Machine Translation as an English language equivalent; Myrick (US 10,941,500 B1) and Fatyukhin et al. Metals “A Comparison of the Effects of Ultrasonic Cavitation on the Surfaces of 45 and 40 Kh Steels” 11 January 2022.
Claim 1:
Bo discloses a method for using ultrasonic cavitation to machine panel surface micro-pits (title, [0010]), further comprising
performing ultrasonic cavitation on a metal workpiece to obtain the metal with the microporous surface structure ([0011]);
wherein micropores of the metal with the microporous surface structure have an aperture of 8-50 um ([0013], [0044] and [0053]);
wherein conditions for the ultrasonic cavitation are as follows: the ultrasonic cavitation is performed for 1-240 min (action time 20 seconds to 600 seconds), an amplitude of ultrasonic equipment is 1-100 µm (5 µm to 50 µm), and an ultrasonic frequency is 15000-55000 Hz (15 kHz to 30 kHz) ([0011]).
Bo fails to disclose sequentially cleaning, sanding and polishing the metal and providing an output power of the ultrasonic equipment is 5 to 200 W. Instead, Bo is silent on preparing the workpiece surface for ultrasonic cavitation and the power of the ultrasonic horn.
Li discloses a preparation method for a metal with a surface structure ([0001]), comprising the following steps:
sequentially sanding and polishing the metal ([0003] and [0055]);
performing ultrasonic cavitation on the metal polished in the step 1) to obtain the metal with the microporous surface structure ([0015]);
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the method of using ultrasonic cavitation to machine panel surface micro-pits of Bo by sequentially sanding and polishing the metal workpiece as taught by Li in order to clean and prepare the workpiece surface for ultrasonic cavitation. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both prior art references are drawn to ultrasonic cavitation of metal workpieces.
Bo in view of Li fails to disclose the power of the ultrasonic horn. Instead, Bo in view of Li discloses the metal surface is cavitation treated under a certain hydrostatic pressure (ultrasonic cavitation) and driving power (Li, [0015]).
Fatyukhin discloses an ultrasonic liquid treatment of a polished metal (page 4, lines 36-40 and page 5, lines 1-17), comprising
polishing the metal (page 5, lines 12-14);
performing ultrasonic cavitation on the metal polished in the step 1) to obtain the metal with a porous surface structure (fig. 1, page 5 line 16 bridging line 6);
conditions for the ultrasonic cavitation are as follows: the ultrasonic cavitation is performed for 1-240 min (10 minutes) (page 4, lines 36-40) an amplitude of ultrasonic equipment is 1-100 µm (15 µm) (page 6, line 14), an output power of the ultrasonic equipment is 5-200 W (up to 2KW) (page 6, lines 7-9), and an ultrasonic frequency is 15000-55000 Hz (21.5 kHz. and 25 kHz) (page 4, lines 36-40 and page 6, lines 15-16)
wherein irregular concave and convex structures are distributed on an entire surface of the microporous surface structure of the metal, the convex structures and corresponding adjacent concave structures form micropits, and the micropits together with micropores inside the micropits form the microporous surface structure (Fatyukhin, fig. 2, pages 7-8, section 3. Results and Discussion 3.1 Microstructure Changes).
Bo in view of Li discloses performing ultrasonic cavitation on a metal workpiece to obtain the metal with the microporous surface structure having micropores including an aperture of 8-50 µm (Bo, [0011], [0013], [0044] and [0053]).
A person of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the claim limitation “…conditions for the ultrasonic cavitation are as follows: the ultrasonic cavitation is performed for 1-240 min, an amplitude of ultrasonic equipment is 1-100 µm, an output power of the ultrasonic equipment is 5-200 W, and an ultrasonic frequency is 15000-55000 Hz” recite variables which achieve the recognized result of changing the structure, roughness, sub-roughness and microhardness values of a metal workpiece (Fatyukhin, abstract and fig. 1, page 6, lines 7-27).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to optimize result-effective variables. Therefore, it would have been obvious to modify the process of Bo in view of Li to limit the conditions for the ultrasonic cavitation are as follows: the ultrasonic cavitation is performed for 1-240 min; an amplitude of ultrasonic equipment is 1-100 µm; an output power of the ultrasonic equipment is 5-200 W; and an ultrasonic frequency is 15000-55000 Hz; as taught by Fatyukhin since it has been held that the presence of a known result-effective variable would be motivation for a person of ordinary skill in the art to experiment to reach another workable process. See MPEP §§ 2144.05 II B which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges of a result-effective variable with a reasonable expectation of success.
Furthermore, it would have been obvious to a person of ordinary skill, before the effective filing date of the claimed invention, to try the claimed conditions for the ultrasonic cavitation are as follows: the ultrasonic cavitation is performed for 1-240 min; an amplitude of ultrasonic equipment is 1-100 µm; an output power of the ultrasonic equipment is 5-200 W; and an ultrasonic frequency is 15000-55000 Hz; because it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). See MPEP §§2144.05 II A which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges.
Bo in view of Li and Fatyukhin fails to disclose sequential cleaning of the metal using acetone and ethanol. Instead, Bo in view of Li and Fatyukhin discloses the metal is cleaned by ultrasonic cleaning after polishing and after ultrasonic cavitation (Fatyukhin, fig. 1, page 5, section 2. Materials and Methods 2.1 Materials).
Myrick discloses a method and system for electrodeposition (abstract), further comprising sequentially cleaning a workpiece using acetone, ethanol and ultrasonic cleaning (col. 19, lines 21-22).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the preparation method of Bo in view of Li and Fatyukhin by sequentially cleaning the polished workpiece as taught by Myrick in order to prepare the workpiece for further processing. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Claim 2:
Bo in view of Li, Fatyukhin and Myrick discloses the preparation method for a metal with a microporous surface structure according to claim 1, wherein the metal comprises titanium, a titanium alloy, or stainless steel (Li, [0017] and Fatyukhin, page 4, lines ).
Claim 5:
Bo in view of Li, Fatyukhin and Myrick renders obvious the preparation method for a metal with a microporous surface structure according to claim 1, wherein the metal is located right below an ultrasonic cavitation tool head at a distance of 0.5-50 mm (4 mm) during the ultrasonic cavitation (Fatyukhin, fig. 1, page 6, lines 13-14).
Claim 7:
Bo in view of Li, Fatyukhin and Myrick renders obvious the preparation method for a metal with a microporous surface structure according to claim 1 as a method for repairing the surfaces metal titanium implants (page 4, lines 36-38).
Claim 8:
Bo in view of Li, Fatyukhin and Myrick renders obvious the preparation method for a metal with a microporous surface structure according to claim 2, wherein the metal is located right below an ultrasonic cavitation tool head at a distance of 0.5-50 mm (4 mm) during the ultrasonic cavitation (Fatyukhin, fig. 1, page 6, lines 13-14).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Bo in view of Li, Fatyukhin and Myrick as applied to claim 2 above, and further in view of Feng (CN-110883397-A) as provided by (CN-110883397-A) Machine Translation as an English language equivalent and evidenced by Chen (CN110455840-A) as provided by (CN110455840-A) Machine Translation as an English language equivalent.
Claim 3:
Bo in view of Li, Fatyukhin and Myrick renders obvious the preparation method for a metal with a microporous surface structure according to claim 2; and Bo in view of Li, Fatyukhin and Myrick fails to disclose or fairly suggest sequentially sanding with SiC waterproof abrasive paper ranging from 1000# to 3000# including 2000# for a sanding duration in the range of 8 minutes to 15 minutes. Instead, Bo in view of Li, Fatyukhin and Myrick discloses sanding with 3,000 # sandpaper (Li, [0055]).
Feng discloses a welding method for relieving joint residual stress of ceramic and metal including performing surface treatment of a metal material (abstract), comprising sequentially using 1000# to 7000# SiC waterproof abrasive paper to polish the surface of the metal material ([0098]-[0099] and [00117]-[00118]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the preparation method of Bo in view of Li, Fatyukhin and Myrick by sequentially sanding the metal surface with 1000# to 7000# SiC waterproof sandpaper, which overlaps the claimed range of 1000#, 2000# and 3000# waterproof sandpaper, in order to modify the surface of the metal workpiece (Feng, [0099]). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Bo in view of Li, Fatyukhin, Myrick and Feng fails to disclose or fairly suggest sanding for 8 to 15 minutes. Instead, Bo in view of Li, Fatyukhin, Myrick and Feng is silent on the duration of sanding. However, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the claim limitation which requires sanding “…for 8-15 minutes…” is a variable which achieves the recognized result of directly affecting the degree of removal of micro scratches as evidenced by Chen (Chen, [0018).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to optimize result-effective variables. Therefore, it would have been obvious to modify the process of Bo in view of Li, Fatyukhin, Myrick, Feng and Chen to limit the duration of the sanding to the range of 8 to 15 minutes since it has been held that the presence of a known result-effective variable would be motivation for a person of ordinary skill in the art to experiment to reach another workable process. See MPEP §§ 2144.05 II B which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges of a result-effective variable with a reasonable expectation of success.
Furthermore, it would have been obvious to a person of ordinary skill, before the effective filing date of the claimed invention, to try the claimed range of a sanding duration in the range of 8 to 15 minutes because it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). See MPEP §§ 2144.05 II A which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges.
Claim 4:
Bo in view of Li, Fatyukhin, Myrick, Feng and Chen renders obvious the preparation method for a metal with a microporous surface structure according to claim 3; and Bo in view of Li, Fatyukhin, Myrick, Feng and Chen fails to disclose or fairly suggest the polishing is performed for 20-60 min. However, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the claim limitation “…polishing is performed for 20-60 minutes…” is a variable which achieves the recognized result of directly affecting the final finish of the workpiece (Chen, [0019]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to optimize result-effective variables. Therefore, it would have been obvious to modify the process of Bo in view of Li, Fatyukhin, Myrick, Feng and Chen to limit the duration of the polishing to the range of 20 to 60 minutes since it has been held that the presence of a known result-effective variable would be motivation for a person of ordinary skill in the art to experiment to reach another workable process. See MPEP §§ 2144.05 II B which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges of a result-effective variable with a reasonable expectation of success.
Furthermore, it would have been obvious to a person of ordinary skill, before the effective filing date of the claimed invention, to try the claimed range of performing the polishing for 20 to 60 minutes because it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). See MPEP §§ 2144.05 II A which describes the prima facie obviousness of a person of ordinary skill in the art to use routine experimentation to determine the optimum or workable ranges.
Claim 9:
Bo in view of Li, Fatyukhin, Myrick, Feng and Chen the preparation method for a metal with a microporous surface structure according to claim 3, wherein the metal is located right below an ultrasonic cavitation tool head at a distance of 0.5-50 mm (4 mm) during the ultrasonic cavitation (Fatyukhin, fig. 1, page 6, lines 13-14).
Claim 10:
Bo in view of Li, Fatyukhin, Myrick, Feng and Chen the preparation method for a metal with a microporous surface structure according to claim 4, wherein the metal is located right below an ultrasonic cavitation tool head at a distance of 0.5-50 mm (4 mm) during the ultrasonic cavitation (Fatyukhin, fig. 1, page 6, lines 13-14).
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 05 June 2025, with respect to the rejection(s) of claim(s) 1-5 and 7 under 35 U.S.C. 103(a) have been fully considered and are persuasive. Applicant’ has amended the claimed invention to require in the step 1), after polishing, the metal is cleaned by sequentially using acetone, ethanol, and ultrasonic cleaning; and in the step 2), after the ultrasonic cavitation, the metal is cleaned by sequentially using acetone, ethanol, and ultrasonic cleaning: wherein irregular concave and convex structures are distributed on an entire surface of the microporous surface structure of the metal, the convex structures and corresponding adjacent concave structures form micropits, and the micropits together with micropores inside the micropits form the microporous surface structure, and the micropores each has an aperture of 8-50 um. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Myrick (US 10,941,500 B1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang (CN-109772285-A) discloses a method of processing a metal surface comprising sanding the surface with SiC waterproof abrasive paper and polishing the surface to a mirror finish.
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 Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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/Lee A Holly/Primary Examiner, Art Unit 3726