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 .
Response to Amendment
The amendment filed on 3/31/2026 has been entered into the prosecution for the application. Currently claims 1-6 are pending with claim 5 withdrawn from consideration. Claims 1-4 and 6 are pending examination.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Claim Rejections - 35 USC § 102
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 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,032,238 of Ishimura et al.
As to claim 1, Ishimura teaches of a system for electropolishing and grinding (Ishimura, col 1 lines 5-12), comprising:
an electrolyte supply passage configured to supply an electrolyte at least between a cathode and a workpiece (Ishimura, col 5 lines 2-30, col 5 line 65 thru col 6 line 2 and Fig. 2);
a direct current power source configured to apply a pulsed direct current (a version of direct current), via the electrolyte, to an anode, the cathode, and the workpiece (Ishimura, col 4 lines 26-30 and col 5 lines 8-34); and
a grindstone configured to grind the surface of the workpiece (Ishimura, col 3 lines 47-67 and Fig. 2).
As seen in Fig. 2, the workpiece (108), which can be metallic or aluminum, is in direct contact with the anodes (86/96) through the grindstones (98/100). Within the system there are additionally cathode plates (102) such that electrolyte is supplied between the workpiece, cathode and anode. There is additionally a power supply connected to the anodes and a cathodes to apply a pulsed direct current (which is a version of direct current that can be applied).
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As to claim 3, Ishimura teaches that the anodes are configured to directly apply a positive potential to the workpiece (Ishimura, Fig. 2).
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2002/0070126 of Sato et al.
As to claims 1 and 6, Sato teaches of an apparatus comprising:
an electrolyte supply passage configured to pour an electrolyte between a cathode and a workpiece (Sato, [0331] – [0332] and Fig. 17);
a direct current power source configured to apply a direct current, via the electrolyte, to an anode, the cathode, and the workpiece (Sato, [0333] and Fig. 17); and
a grindstone wherein the cathode and the grindstone are disposed so as to face a surface to be ground of the workpiece (Sato, [0334] and Fig. 17).
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As seen in Fig. 17, there is a cathode (E) which includes a nozzle (30) to provide the electrolyte (EL) between the workpiece surface (105), anode (101) and scrubber/grindstone (31). The orientation of the cathode and scrubber are to face the surface of the workpiece being ground. The power supply (25) is a direct current power supply.
Claim Rejections - 35 USC § 103
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.
Claims 2, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ishimura as applied to claim 1 above, and further in view of US 2002/0070126 of Sato et al.
As to claim 2, Ishimura teaches to the system of claim 1.
Ishimura teaches the electrolyte is supplied between the cathode and the workpiece (Ishimura, col 5 lines 2-7), but not a specific location of the supply passage.
Sato teaches of electropolishing with a grinding action (Sato, [0329]).
Sato additionally teaches the electrolyte solution is supplied from the cathode side to provide flow of the electrolyte between the anode, cathode and scrubber (Sato, [0331] – [0332], [0347] – [0348] and Figs. 17 and 18A).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Ishimura as per Sato so as to utilize the nozzle in the desired location in order to provide sufficient flow of the electrolyte within the system.
As to claim 4, Ishimura teaches to the system of claim 1.
Ishimura teaches that the anode is configured to oscillate in relation to the workpiece (Ishimura, col 4 line 60 thru col 5 line 7).
Ishimura does not teach the cathode is configured to oscillate in relation to the workpiece.
Sato teaches of electropolishing with a grinding action (Sato, [0329]).
Sato additionally teaches that the cathode is configured to move in relation to the workpiece, thus allowing for a more uniform polishing process (Sato, [0357]).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Ishimura as per Sato so as to allow the cathode to be capable of movement in relation to the workpiece to facilitate a more uniform polishing process.
As to claim 6, Ishimura teaches to the system of claim 1.
Ishimura does not specifically teach the cathode and the grindstone are disposed to face a surface of the workpiece that is ground (presumably by the grindstone).
Sato teaches of electropolishing with a grinding action (Sato, [0329]).
Sato teaches that one embodiment for facilitating the grinding operation is to have both the cathode and grindstone face the surface of the workpiece being ground (Sato, Fig. 17) such that this orientation would produce a predictable result for the apparatus.
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Ishimura as per Sato so as to utilize the desired configuration in producing a predictable result in facilitating grinding of the workpiece.
Response to Arguments
Applicant's arguments filed 3/31/2026 have been fully considered but they are not persuasive.
Applicant argues that the system does not form the anodic oxide film. Applicant notes that the substrate being worked upon is glass.
This argument does not take into consideration the entirety of what was cited or contained within the prior art reference of Ishimura. It is firstly noted that Applicant is arguing the use of the apparatus, not the structure or even a controller that applies specific variable. Therefore Applicant’s arguments are not persuasive in relation to the structure of the system (see MPEP 2114 I and II).
Additionally, while Ishimura does teach that the substrate can be glass, it also says it can be metallic, including aluminum (see col 5 line 65 thru col 6 line 2). As the substrate is in direct contract with conductive material as per the grindstone, the substate would also be anodic in nature. Therefore the use of the apparatus is the same in that the structural components would be the same as that disclosed by Applicant’s claim.
As to Applicant’s arguments of where the electrolyte is provided, if there is no electrolyte between the cathode and the anode, the electrolytic process will not work. Thus any electrolyte provided to the system would necessarily be provided between the workpiece and the cathode.
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 BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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