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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-15) in the reply filed on 08 May 2026 is acknowledged. Currently, Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, and 15 are pending and under examination. Claims 16, 17, 18, 19, and 20 are withdrawn due to the election of Group I.
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.
4. Claims 1, 2, 3, 8, 9, 10, and 14 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 1 recites the limitation "the second portion" on pg. 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is indefinite since the claim is missing a conjunction (e.g.: and or or) before the clause “the cations flow and reduce…” making the order of some steps or the necessity of some steps unclear.
Claim 2 is indefinite since recites the limitation “applying the second voltage between the electrolytic-deposit-receiving electrode and at least some electrodes in the first electrode set covered with the electrophoretically-deposited mask,” which contradicts the limitation in the Claim 1 which specifies that “the electric current flows through the second electrode set, but not through the first electrode set corresponding to the masked portion.” The second voltage/current cannot simultaneously flow and not flow through the first set of electrodes unless there is a specified subset within the first set of electrodes.
Claim 3 is indefinite since the claim requires that the (electro)deposition is occurring at a time when the electrode array is removed from the ECAM system. The electrodeposition process would necessarily require the electrode array to be present in the ECAM system for the electrodeposition to occur. Correction is required.
Claims 8, 9, and 10 recite the limitation “defects” which lacks clarity since it is a subjective term. The term “defect” can be clarified by inclusion of specific types of defects described in ¶36-38 of the specification referenced from US Pub. No. 2024/0218546 A1.
The term “lower” in Claim 14 is a relative term which renders the claim indefinite. The term “lower” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Viscosity is typically reported in units such as poise (P), centipoise (cP) or millipascals-seconds. Additionally, the temperature, the means of measuring the viscosity and/or the type of viscometer must to be specified since these significantly impact qualitative and quantitative nature of the measurement to remove the indefiniteness.
Claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, and 15 are rejected under 35 USC § 112(b) as Claim 1 (from which they all depend) stands rejected under said statute.
Double Patenting
5. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12486589B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are directed toward the sequential deposition of an electrophoretic suspension and the electroplating of a metal ion to onto a surface with the application of each material occurring at a different voltage (i.e.: first voltage and second voltage). The transposition of the order of the electrophoretic deposition step and the electroplating step are obvious variants that one of ordinary skill in the art would be aware. The order of deposition would be informed by the intended end product since one process results in a metallic article and the other process results in a composite article comprised of metal and organic/inorganic elements.
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent (37 CFR 1.321(b) and (c)). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
6. The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/PatentForms. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/TerminalDisclaimer.
Allowable Subject Matter
7. The subject matter of Claim 1 is allowable as it is neither anticipated nor obvious in view of the available prior art. However, Claim 1 is currently rejected under 35 USC 112(b) and is subjected to a double patenting rejection. If the aforementioned issues are resolved, Claim 1 would be allowable as would all claims that depend from Claim 1.
8. The applicant has numerous prior art references (e.g.: Wirth et al. - US Pub. No. 2017/0145578 A1) that are directed toward the electrochemical additive manufacturing system described in Claim 1 of the instant application. The individually controlled anode array (element 10), the cathode 26, and reaction chamber 14 which holds the electrolyte are described in Wirth et al. In general, Wirth et al. describes the electroplating to form various metallic articles with the electrolyte compositions described in detail in ¶87-¶216 with plated metals including: Cu, Ni, Ag, Zn, Fe, ferrous alloys, and Al. The electrolytes for each plated metal comprise soluble ions of the metal to be electroplated in the form of nitrates, sulfates, chlorides, etc. Additionally, other additives for the electrolyte are described in the electrolyte compositions detailed in ¶87-¶216 with most the materials being soluble or an uncharged-insoluble material. While Wirth et al. discloses the use of charged particles, these are dissolved in the electrolyte which distinguishes them from the solid charged particles in suspension (which are therefore insoluble) as required by Claim 1 of the instant application,
9. Another example of a ECAM previously disclosed by the applicant is US Pub. No. 2021/0090901 A1 by Pain et al. Pain et al. teaches where masking can be applied to an anode (¶102 and FIG. 22A), but the anode are not independent, i.e., not individually addressable as claimed, and the mask is not formed in the claimed manner. Additionally, Pain et al. teaches in FIG. 14 a film 1402 can be formed on the anode array in the ECAM process. Pain et al. further teaches the film 1402 bridges between multiple deposition electrodes which creates an abnormally high current (¶87). Therefore, the film 1402 of Pain et al. does not read on the claimed mask that prevents cation and electric current flows required by Claim 1.
10. Electrophoretic deposition of a suspension or colloid of charged particles is a standard process in industrial and automotive corrosion protection applications. The coating composition is generally comprised of a charged organic binder with a requisite counter ion (depending on the mode of deposition, i.e., cationic or anionic) as well as inorganic particles which may carry a surface charge, and other additives to modulate stability and deposition properties (as supported by general references such as Boyd et al. US Pub. No. 6017432 A). This method uses voltage to drive the charged particles to the surface of the deposition electrode and the organic materials or the charged particles are neutralized at the deposition substrate interface causing the materials to fall out of suspension and adhere to the substrate surface. These types of coating are generally for corrosion protection or for improving the appearance of a coated article. Additionally, these electrophoretically deposited coating for automotive and industrial typically use a high temperature curing process.
Electrophoretic deposition is also commonly used in the formation of PCB as a mask that is cross-linked using photochemistry as explained in the blog post entitled “Electrodeposition Photoresist: A New Technology of HDI PCB Manufacturing.” The blog post explains that ED membrane allows the dispersed photosensitive polar materials to migrate to PCB surface under the applied voltage. The electrochemical reaction will take place on the surface of the electrode allowing deposition and under the application of light will form a film with excellent adhesion and uniform film thickness. This process is often combined with electroplating in the fabrication of multilayer PCBs.
The two aforementioned electrophoretic deposition processes differ from the electrophoretic deposition process in Claim 1 because these do not employ individually addressable electrodes nor are they directed toward the formation of three dimensional articles (i.e.: ECAM processes) as is the instant application. Therefore, one of ordinary skill in the art would not easily be motivated to use either type of electrodeposition coating discussed above in the ECAM system of Wirth et al.
11. Given the references discussed above considered alone or in any combination, one of ordinary skill in the art would not be motivated to use an electrochemical additive manufacturing method to use an array of individually addressable electrodes to sequentially electrophoretically deposit a suspension of charged solid structures followed by the electroplating of metal ions using two different voltages as required by Claim 1 of the instant application.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fiaccabrino et al. (“Array of individually addressable microelectrodes,” Sensors Actuators B 1994, 18-19, 675-677) is directed toward an electrode array for electrochemical measurements (pg. 675: title and abstract). Narayanan et al. (US Pub. No. 2018/0319097 A1) is directed toward methods and systems for hybrid deposition rate near net shape additive manufacturing (title). Mendosa et al. (US Pub. No. 2022/0235481 A1) is directed toward selective screen printing using electroplating (abstract). Sylvester et al. (WO2021102413A1) discloses sequential electroplating/electrolytic deposition followed by electrophoretic deposition (abstract).
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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