DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on May 11, 2026. Claims 1-39 are pending in the application.
Status of Objections and Rejections
All rejections under 35 U.S.C. §112 from the previous office action are withdrawn in view of Applicant’s amendment. New grounds of rejection under 35 U.S.C. §112 are necessitated by the amendments.
All rejections under 35 U.S.C. §103 are maintained.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-17 is/are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "applying one or more waveforms to the mandrel and anode which control electrodeposition distribution of copper" in lines 7-8. It is unclear what “which” refers to. It is suggested to change back to “to.”
Dependent claim(s) 2-17 is/are rejected based on rejected claim 1.
Claim 14 recites the limitation "applying one or more waveforms to the mandrel and anode which control electrodeposition distribution of copper" in lines 1-2. It is unclear what “which” refers to. It is suggested to change back to “to.”
Claim 15 recites the limitation "applying one or more waveforms to the mandrel and anode which control electrodeposition distribution of copper" in lines 1-2. It is unclear what “which” refers to. It is suggested to change back to “to.”
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.
Claim(s) 1-3, 5-6, 9-10, 12, 14-16, 18-20, 22-23, 26-27, 30, 32-34, and 36-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar (K. Suthar, INVESTIGATION OF VARIOUS FABRICATION METHODS TO PRODUCE A 180GHz CORRUGATED WAVEGUIDE STRUCTURE IN 2MM DIAMETER 0.5 LONG COPPER TUBE FOR THE COMPACT WAKEFIELD ACCELERATOR FOR FEL FACILITY, North American Particle Acc. Conf. (NAPAC) 2019, Lansing, MI, USA, pp. 1-4) in view of Taylor (US 6878259).
Regarding claim 1, Suthar teaches a method of manufacturing a corrugated copper microwave waveguide (p. 1, col. 2, para. 2: to produce corrugated copper waveguide), the method comprising:
placing a mandrel with external corrugations (Fig. 2(c): electroforming; (2) corrugated Al mandrel) in an electrolyte bath (Fig. 2(c): (3) electroplating showing the Al Mandrel in an electrolyte bath);
locating a copper anode in the bath proximate the mandrel (Fig. 2(c): (3) electroplating showing a Cu electrode in the bath proximate the mandrel);
applying one or more electric field to the mandrel and anode (Fig. 2(c): (3) electroplating showing an electric field applied between the Al Mandrel and a Cu electrode as an anode)
removing the mandrel and the resulting electroformed copper waveguide from the electrolyte bath (p. 2, col. 2, para. 3: after the electroplating, the mandrel was placed in a boiling bath of NaOH to dissolve the Aluminum chemically); and
excising the mandrel resulting in a microwave waveguide with internal corrugations (Fig. 2(c): (4); p. 2, col. 2, para. 3: the complete etching of Aluminum leaves behind the plated structure as the final electroformed product).
Suthar does not disclose the electrolyte bath is substantially devoid of brighteners, accelerators or levelers and including copper ions, sulfuric acid, chloride, and polyethylene glycol or the applied electric field has one or more waveforms to control electrodeposition distribution of copper to the mandrel rather than controlling the electrolyte bath chemistry.
However, Taylor teaches electrodeposition of metals into microscopic recesses on the surface of a substrate and formation of uniform layers of electrodeposited metal on a substrate (col. 1, ll. 21-24). Traditionally, the plating bath has small amounts of brighteners and levelers for obtaining a bright, shiny, and smooth surface of the deposited metal (col. 5, para. 3-4). But Taylor teaches deposit a metal by electrodeposition into small trenches and vias using a modulated reversing electric field, using a plating bath that is substantially devoid of levelers and/or brighteners (col. 6, ll. 30-34). For depositing copper in trenches and vias, it is useful to use a carrier (or compressor) compound (col. 6, ll. 18-19), which is preferably poly(ethylene glycol) (col. 6, ll. 21-22) and typically used in combination with chloride ion (col. 6, ll. 27-28). A preferred bath for electroplating copper onto a microrough surface is an aqueous acidic copper sulfate bath (col. 16, ll. 9-11). Thus, Taylor teaches the electrolyte bath of the electroplating is substantially devoid of brighteners, accelerators or levelers (col. 6, ll. 30-34) and including copper ions, sulfuric acid (col. 16, ll. 10-11: aqueous acidic copper sulfate), chloride, and polyethylene glycol (col. 6, ll. 21-22, 27-28). Further, the applied electric field has one or more waveforms (Fig. 1; col. 7, ll. 66-67: rectangular modulated reverse electric field waveform) to control electrodeposition distribution of copper to the mandrel rather than controlling the electrolyte bath chemistry (col. 6, ll. 30-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by controlling the deposit of metal by using a modulated electric field with rectangular waveforms in a bath devoid of levelers and/or brighteners as taught by Taylor because it would still achieve uniform filling of trenches and vias in the substrates (col. 6, ll. 16-18). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A). And the substitution of the modulated electric filed plus the carrier (suppressor) for traditional brighteners and/or levelers would yield nothing more than predictable results. MPEP 2141(III)(B).
Further, the designation “which control electrodeposition distribution of copper to the mandrel rather than controlling the electrolyte bath chemistry” does not further limit the method as claimed because it is the intended result of the step “applying one or more waveforms to the mandrel and anode.” Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. Here, this designation is not given patentable weight when it simply expresses the intended result of a process step positively recited. MPEP 2111.04.
Regarding claim 2, Suthar teaches the waveguide internal corrugations have a sub-millimeter width (Fig. 1: the corrugation width is the gap G 180 µm).
Regarding claim 3, Suthar teaches the waveguide internal corrugations have a sub-millimeter distance between adjacent corrugations (Fig. 1: the distance between adjacent corrugations is (P-G) = 160 µm).
Regarding claim 5, Suthar teaches the mandrel is made of aluminum (p. 2, col. 2, para. 3: Al mandrel).
Regarding claims 6 and 9-10, Suthar and Taylor discloses all limitations of claim 1. Suthar does not teach the waveforms include a cathodic current followed by an anodic current repeated for a predetermined time (claim 6) or a waveguide thickening method that includes applying a cathodic current waveform followed by an anodic current waveform for a predetermined time (claims 9-10).
However, Taylor teaches a rectangular modulated reverse electric field waveform is used (Fig. 1; col. 7, ll. 66-67). The waveform comprises a cathodic pulse followed by an anodic pulse (col. 8, ll. 1-3) repeated for a predetermined time (Fig. 1: current signals repeated to achieve the desired metal plating on the substrate). Here, the step including applying a cathodic current waveform followed by an anodic current waveform for a predetermined time is deemed to the waveguide thickening method, until the desired thickness is achieved after a predetermined time.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by using repeated waveforms including cathodic current followed by anodic current for a predetermined time as taught by Taylor because use of the pulsed electric field would produce a corresponding pulsed current through the electroplating cell to cause a more uniform deposition of metal over the entire surface of a microrough substrate (col. 6, ll. 37-39).
Regarding claim 12, Suthar and Taylor discloses all limitations of claim 1, but fail to teach the waveguide has an inner diameter of approximately 7mm and a corrugation period of 1.38mm.
However, Suthar teaches a copper waveguide tube (Fig. 1) having a 2 mm internal diameter and the inside corrugations have a period of 340 µm (Fig. 1; p. 1, col. 2, para. 3). Although the dimension varies, the ratio of the corrugation period and the inner diameter is close to each other, i.e., 340 µm/2mm = 0.17 as taught by Suthar and 1.38mm/7mm = 0.20 as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting the dimension of the corrugation period and the inner diameter of the waveguide as claimed because when the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A).
Regarding claims 14-15, Suthar in view of Taylor teaches applying the one or more waveforms to the mandrel and anode which control electrodeposition of copper to the mandrel (Suthar, Fig. 2(c); Taylor, col. 7, ll. 66-67). Further, the designations “conformally deposits the copper to the mandrel without dog bone features” in claim 14 and “results in keyholes through the waveguide internal corrugations” in claim 15 do not further limit the method as claimed because it is the intended result of the step “applying the one or more waveforms to the mandrel and anode which control electrodeposition of copper to the mandrel.” Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. Here, these designations are not given patentable weight when it simply expresses the intended result of a process step positively recited. MPEP 2111.04.
Regarding claim 16, Suthar teaches excising the mandrel includes dissolving the mandrel using a hot concentrated caustic solution (p. 2, col. 2, para. 3: after the electroplating, the mandrel was placed in a boiling bath of NaOH to dissolve the Aluminum chemically).
Regarding claim 18, Suthar teaches a method of manufacturing a corrugated copper microwave waveguide (p. 1, col. 2, para. 2: corrugated copper waveguide), the method comprising:
placing a mandrel with external corrugations (Fig. 2(c): electroforming; (2) corrugated Al mandrel) in an electrolyte bath (Fig. 2(c): (3) electroplating showing the Al Mandrel in an electrolyte bath);
locating a copper anode in the bath proximate the mandrel (Fig. 2(c): (3) electroplating showing a Cu electrode in the bath proximate the mandrel);
applying an electric field to the mandrel and anode (Fig. 2(c): (3) electroplating showing an electric field applied between the Al Mandrel and a Cu electrode as an anode);
removing the mandrel and the resulting conformal electroform from the electrolyte bath (p. 2, col. 2, para. 3: after the electroplating, the mandrel was placed in a boiling bath of NaOH to dissolve the Aluminum chemically); and
dissolving the mandrel resulting in a microwave waveguide with internal corrugations (Fig. 2(c): (4); p. 2, col. 2, para. 3: the complete etching of Aluminum leaves behind the plated structure as the final electroformed product).
Suthar does not disclose the electrolyte bath is substantially devoid of chemical agents including accelerators, brighteners, and/or levers which decrease copper electrode deposit purity and/or resistivity and/or which result in outgassing.
However, Taylor teaches electrodeposition of metals into microscopic recesses on the surface of a substrate and formation of uniform layers of electrodeposited metal on a substrate (col. 1, ll. 21-24). Traditionally, the plating bath has small amounts of brighteners and levelers for obtaining a bright, shiny, and smooth surface of the deposited metal (col. 5, para. 3-4). But Taylor teaches deposit a metal by electrodeposition into small trenches and vias using a modulated reversing electric field, using a plating bath that is substantially devoid of levelers and/or brighteners (col. 6, ll. 30-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by substituting the electrolyte bath with the one devoid of levers and/or brighteners as taught by Taylor because it would still achieve uniform filling of trenches and vias in the substrates (col. 6, ll. 16-18), and the substitution would yield nothing more than predictable results. MPEP 2141(III)(B). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Suthar does not disclose the applied electric field has repeated cathodic current and anodic current waveforms.
However, Taylor teaches electrodeposition of metals into microscopic recesses on the surface of a substrate and formation of uniform layers of electrodeposited metal on a substrate (col. 1, ll. 21-24) using a modulated reversing electric field (col. 6, ll. 32-33). The applied electric field has repeated cathodic current and anodic current waveforms (Fig. 1: repeated current signals; col. 8, ll. 1-3: The waveform comprises a cathodic pulse followed by an anodic pulse).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by using a modulated electric field with repeated cathodic current and anodic current waveforms as taught by Taylor because it would achieve uniform filling of trenches and vias in the substrates (col. 6, ll. 16-18). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
The designation “to electrodeposit a conformal copper electroform to the mandrel” does not further limit the method as claimed because it is the intended result of the step “applying repeated cathodic current one or more waveforms to the mandrel and anode.” Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. Here, this designation is not given patentable weight when it simply expresses the intended result of a process step positively recited. MPEP 2111.04.
Regarding claim 19, Suthar teaches the waveguide internal corrugations have a sub-millimeter width (Fig. 1: the corrugation width is the gap G 180 µm).
Regarding claim 20, Suthar teaches the waveguide internal corrugations have a sub-millimeter distance between adjacent corrugations (Fig. 1: the distance between adjacent corrugations is (P-G) = 160 µm).
Regarding claim 22, Suthar teaches the mandrel is made of aluminum (p. 2, col. 2, para. 3: Al mandrel).
Regarding claims 23 and 26-27, Suthar and Taylor discloses all limitations of claim 18. Suthar does not teach the waveforms include a cathodic current followed by an anodic current repeated for a predetermined time (claim 23) or the waveguide thickening method that includes applying a cathodic current followed by an anodic current for a predetermined time resulting in a smooth surface (claims 26-27).
However, Taylor teaches a rectangular modulated reverse electric field waveform is used (Fig. 1; col. 7, ll. 66-67). The waveform comprises a cathodic pulse followed by an anodic pulse (col. 8, ll. 1-3) repeated for a predetermined time (Fig. 1: current signals repeated to achieve the desired metal plating on the substrate). Here, the step including applying a cathodic current waveform followed by an anodic current waveform for a predetermined time is deemed to the waveguide thickening method to achieve the desired thickness after a predetermined time.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by using repeated waveforms including cathodic current followed by the anodic current for a predetermined time as taught by Taylor because use of the pulsed electric field would produce a corresponding pulsed current through the electroplating cell to cause a more uniform deposition of metal over the entire surface of a microrough substrate (col. 6, ll. 37-39).
Regarding claim 30, Suthar and Taylor discloses all limitations of claim 18, but fail to teach the waveguide has an inner diameter of approximately 7mm and a corrugation period of 1.38mm.
However, Suthar teaches a copper waveguide tube (Fig. 1) having a 2 mm internal diameter and the inside corrugations have a period of 340 µm (Fig. 1; p. 1, col. 2, para. 3). Although the dimension varies, the ratio of the corrugation period and the inner diameter is close to each other, i.e., 340 µm/2mm = 0.17 as taught by Suthar and 1.38mm/7mm = 0.20 as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting the dimension of the corrugation period and the inner diameter of the waveguide as claimed because when the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A).
Regarding claims 32-33, Suthar in view of Taylor teaches applying the repeated waveforms to the mandrel and anode to control electrodeposition of copper to the mandrel (Suthar, Fig. 2(c); Taylor, col. 7, ll. 66-67). Further, the designations “conformally deposits the copper to the mandrel without dog bone features” in claim 32 and “results in keyholes through the waveguide internal corrugations” in claim 33 do not further limit the method as claimed because it is the intended result of the step “applying the repeated waveforms to the mandrel and anode to control electrodeposition of copper to the mandrel.” Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. Here, these designations are not given patentable weight when it simply expresses the intended result of a process step positively recited. MPEP 2111.04.
Regarding claim 34, Suthar teaches excising the mandrel includes dissolving the mandrel using a hot concentrated caustic solution (p. 2, col. 2, para. 3: after the electroplating, the mandrel was placed in a boiling bath of NaOH to dissolve the Aluminum chemically).
Regarding claim 36, Suthar and Taylor discloses all limitations of claim 1. Suthar does not disclose the bath is devoid of brighteners, accelerators, and levelers.
However, Taylor teaches electrodeposition of metals into microscopic recesses on the surface of a substrate and formation of uniform layers of electrodeposited metal on a substrate (col. 1, ll. 21-24). Traditionally, the plating bath has small amounts of brighteners and levelers for obtaining a bright, shiny, and smooth surface of the deposited metal (col. 5, para. 3-4). But Taylor teaches deposit a metal by electrodeposition into small trenches and vias using a modulated reversing electric field, using a plating bath that is substantially devoid of levelers and/or brighteners (col. 6, ll. 30-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by controlling the deposit of metal by using a modulated electric field in a bath devoid of levelers and/or brighteners as taught by Taylor because it would still achieve uniform filling of trenches and vias in the substrates (col. 6, ll. 16-18). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 37, Suthar and Taylor discloses all limitations of claim 1, including the bath includes copper ions (Taylor, col. 16, ll. 10-11: aqueous acidic copper sulfate).
Regarding claim 38, Suthar and Taylor discloses all limitations of claim 1, including the bath includes an ionic conductivity medium (Taylor, col. 16, ll. 10-11: aqueous acidic copper sulfate) and one or more recrystallization mediums (col. 6, ll. 21-22: a suppressor compound is poly(ethylene glycol); col. 6, ll. 27-28: the suppressor is typically used in combination with chloride ion; col. 16, ll. 10-11: an aqueous acidic copper sulfate bath). Here, the aqueous acidic copper sulfate bath would necessarily result in sulfuric acid, and the aqueous acidic bath with chloride ion would necessarily result in hydrochloric acid; since the sulfuric acid in the prior art is the same material as disclosed in the specification, it must have the same property, i.e., acting as a supporting electrolyte with good ionic conductivity for the electroforming reaction (see PGpub ¶74); also, since the polyethylene glycol and hydrochloric acid additions in the prior art are the same materials as disclosed in the specification, they must have the same property, i.e., aiding in the recrystallization of the electroformed copper (PGpub ¶74)).
Regarding claim 39, Suthar and Taylor discloses all limitations of claim 1, including the bath includes sulfuric acid (Taylor, col. 16, ll. 10-11: aqueous acidic copper sulfate), chloride (col. 6, ll. 27-28: typically used in combination with chloride ion), and polyethylene glycol (col. 6, ll. 21-22, 27-28).
Claim(s) 4, 7, 17, 21, 24, 28, and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar in view of Taylor, and further in view of Wang (US 2021/0198799), supported by Rosenblum as an evidence (see the instant application publication ¶71).
Regarding claims 4 and 17, Suthar and Taylor discloses all limitations of claim 1, but fails to teach the copper anode is substantially oxygen free (claim 4) or the copper anode has an RRR value of approximately 100 (claim 17).
However, Wang teaches an electrodeposition device including an electrolytic tank 10, a cathode 20, an anode 30, and a power supply source 40 (Fig. 1; ¶35). The anode 30 is a copper plate which has a purity of 99.99% (¶35). As evidenced by Rosenblum (S.S. Rosenblum, A simple method for producing high conductivity copper for low temperature applications, Cryogenics, 1977, 17(11), pp. 645-47), copper with a purity of 99.96% has a RRR value approximately 100 and is oxygen-free copper (see PGpub ¶71). Thus, the copper anode of Wang having a purity of 99.99% must also have a RRR value approximately 100 and oxygen-free.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by utilizing a copper anode which is oxygen free and has an RRR value of approximately 100 because such anode has a very high purity for copper electrodeposition (Wang, ¶35). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
The designation “the copper waveguide has an RRR value of between 490 and 860” does not further limit the method as claimed because it is the intended result of the recited method. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. MPEP 2111.04. Here, the combined method of Suthar, Taylor and Wang is the same as the recited method, and the material of the copper anode is substantially the same with very high purity and a RRR value of approximately 100, and thus the obtained copper waveguide must have the same feature, i.e., a RRR value of between 490 and 860.
Regarding claim 7, Suthar and Taylor discloses all limitations of claim 6. Suthar does not disclose the cathodic current on-times ranges from 0.1 to 100 ms and the anodic current on-times range from 0.1 to 10ms.
However, Taylor further discloses the on-time of the cathodic pulse ranges from about 0.83 microseconds to about 50 milliseconds (col. 13, ll. 27-29), which overlap the claimed range of cathodic current on-times, and the anodic pulse may range from about 42 µs to about 99 milliseconds (col. 13, ll. 32-34), which overlaps the claimed range of anodic current on-times.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by adjusting the cathodic current on-times and the anodic current on-times within the claimed ranges because they are suitable on-times for the cathodic current followed by the anodic current for copper electrodeposition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Suthar and Taylor do not disclose the cathodic current ranges from 10 to 50 mA/cm2 and the anodic current ranges from 5 to 200 mA/cm2.
However, Wang teaches the current density for the electrodeposition is of 20~100 mA/cm2 (¶37) with an applied direct current voltage (Fig. 1), which overlaps the recited ranges for both cathodic current and anodic current.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting the current density of both cathodic current and anodic current within the claimed ranges because they are the suitable current density for copper electrodeposition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claims 21 and 35, Suthar and Taylor discloses all limitations of claim 18, but fails to teach the copper anode is substantially oxygen free (claim 21) or the copper anode has an RRR value of approximately 100 (claim 35).
However, Wang teaches an electrodeposition device including an electrolytic tank 10, a cathode 20, an anode 30, and a power supply source 40 (Fig. 1; ¶35). The anode 30 is a copper plate which has a purity of 99.99% (¶35). As evidenced by Rosenblum (S.S. Rosenblum, A simple method for producing high conductivity copper for low temperature applications, Cryogenics, 1977, 17(11), pp. 645-47), copper with a purity of 99.96% has a RRR value approximately 100 and is oxygen-free copper (see PGpub ¶71). Thus, the copper anode of Wang having a purity of 99.99% must also have a RRR value approximately 100 and oxygen-free.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by utilizing a copper anode which is oxygen free and has an RRR value of approximately 100 because such anode has a very high purity for copper electrodeposition (Wang, ¶35). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
The designation “the copper waveguide has an RRR value of between 490 and 860” does not further limit the method as claimed because it is the intended result of the recited method. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. MPEP 2111.04. Here, the combined method of Suthar, Taylor and Wang is the same as the recited method, and the material of the copper anode is substantially the same with very high purity and a RRR value of approximately 100, and thus the obtained copper waveguide must have the same feature, i.e., a RRR value of between 490 and 860.
Regarding claims 24 and 28, Suthar and Taylor discloses all limitations of claim 23. Suthar does not disclose the cathodic current on-times ranges from 0.1 to 100 ms and the anodic current on-times range from 0.1 to 10ms (claim 24) or the cathodic on-time of 10 to 50 ms and the anodic current on-times range from 1 to 5 ms (claim 28).
However, Taylor further discloses the on-time of the cathodic pulse ranges from about 0.83 microseconds to about 50 milliseconds (col. 13, ll. 27-29), which overlap the claimed ranges of cathodic current on-times, and the anodic pulse may range from about 42 µs to about 99 milliseconds (col. 13, ll. 32-34), which overlaps the claimed ranges of anodic current on-times.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar by adjusting the cathodic current on-times and the anodic current on-times within the claimed ranges because they are suitable on-times for the cathodic current followed by the anodic current for copper electrodeposition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Suthar and Taylor do not disclose the cathodic current ranges from 10 to 50 mA/cm2 and the anodic current ranges from 5 to 200 mA/cm2 (claim 24) or cathodic current ranges from 30 to 100 mA/cm2 and the anodic current ranges from 50 to 100 mA/cm2 (claim 28).
However, Wang teaches the current density for the electrodeposition is of 20~100 mA/cm2 (¶37) with an applied direct current voltage (Fig. 1), which overlaps the recited ranges for both cathodic current and anodic current.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting the current density of both cathodic current and anodic current within the claimed ranges because they are the suitable current density for copper electrodeposition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Claim(s) 8, 11, 25, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar in view of Taylor, and further in view of Tomaszewski (US 4462874).
Regarding claims 8 and 11, Suthar and Taylor discloses all limitations of claims 6 and 10 respectively, but fails to teach the predetermined time is between 24 and 48 hours.
However, Tomaszewski teaches electrodepositing a fine-grained ductile, adherent copper strike on conductive substrates (col. 2, ll. 47-48). The electrolyte is electrolyzed by passage of current between the cathode and anode for a period of time of about 1 minute to as long as several hours and even days in order to deposit the desired thickness of copper on the cathodic substrate (col. 2, ll. 56-61), which overlaps the recited time between 24 and 48 hours.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting electrodepositing time within the claimed range because the time is predetermined to deposit the desired thickness of copper on the cathodic substrate (col. 2, ll. 59-61). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claims 25 and 29, Suthar and Taylor discloses all limitations of claims 23 and 27 respectively, but fails to teach the predetermined time is between 24 and 48 hours.
However, Tomaszewski teaches electrodepositing a fine-grained ductile, adherent copper strike on conductive substrates (col. 2, ll. 47-48). The electrolyte is electrolyzed by passage of current between the cathode and anode for a period of time of about 1 minute to as long as several hours and even days in order to deposit the desired thickness of copper on the cathodic substrate (col. 2, ll. 56-61), which overlaps the recited time between 24 and 48 hours.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting electrodepositing time within the claimed range because the time is predetermined to deposit the desired thickness of copper on the cathodic substrate (col. 2, ll. 59-61). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Claim(s) 13 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar in view of Taylor, and further in view of Ma (CN114204242, machine translation used for citation).
Regarding claims 13 and 31, Suthar and Taylor disclose all limitations of claims 1 and 18 respectively, but fail to teach the corrugations are rectangular in cross section.
However, Ma teaches a waveguide for transmission of electromagnetic waves in a millimeter-wave band (p. 1, para. 1). The preparation method of the waveguide is forming the inner and outer walls on the surface of the core mold by electroplating (p. 2, para. 6: Step 2) followed by dissolving and removing the core mold to form the corrugated tube (p. 2, para. 7: Step 3). The outer wall of the corrugated tube is a conductive layer made of copper, and the cross-sectional shape of the bellows is a rounded rectangle, a circle or an ellipse (Fig. 1: bellow 2; p. 2, last two para.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suthar and Taylor by adjusting the cross section of the corrugation as a rectangular shape because it is a suitable cross-sectional shape for the waveguide (p. 2, last para.), and the substitution of cross-sectional shape of corrugations with the one with rectangular shape is a matter of choice and a person of ordinary skill in the art would have found obvious absent persuasive evidence that the claimed particular shape is significant. MPEP 2144.04(IV)(B).
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues Suthar does not disclose using the electrolyte bath substantially devoid of brighteners, accelerators, or levers or applying the one or more waveforms to the mandrel and anode in the bath and controlling electrode deposition distribution of capper to the mandrel (Response, p. 10, last para.). This argument is unpersuasive. Examiner notes that Appellant’s arguments principally attack the references individually and, therefore, do not address adequately the rejection the Examiner presents in the record. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”), 425 (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Applicant argues the prior art, Taylor, which is dated before Suthar, involves different beginning and end structures serving entirely different purposes in different fields of endeavor (p. 11, para. 3). Applicant seems to argue the prior art, Suthar and Taylor, are nonanalogous art. This argument is unpersuasive. Suthar teaches multiple fabrication methods, and one of these methods is electroforming for electroplating to produce corrugated waveguide structure. Although Suthar is dated after Taylor, it teaches the main steps of the electroforming method. Further, Taylor explicitly discloses electrodeposition of metals into microscopic recesses on the surface of substrate to form uniform layers (Taylor, ¶2). Thus, they are analogous art in the art of electroplating. Suthar provides the basic operation of electrodeposition, and Taylor provides the detailed experimental conditions for electrodeposition, such as the composition of the electrolyte bath, and the applied electric signal.
Applicant argues the difference between the small-scale (e.g., sub-micron filled trench) and the large-scale corrugations many microns in size (p. 12, para. 2), and asserts that what works for very small-scale electrodeposition does not work for larger scale electrodeposition (p. 12, para. 4). This argument is unpersuasive. These two different scales are in micro-scale, and not different enough compared to that between quantum mechanics versus classical mechanics (see p. 14, para. 2). Also, there is no teaching away in the prior art that the method work at the smaller scale would not work at the larger scale, and Applicant does not provide any unpredictable or surprisingly result, e.g., newly developed method different from that in the prior art, disclosed in the instant application.
The Declaration filed on May 11, 2026 has been considered. The Declarant asserts that there is no reason a POSITA would have believed the combination would work because there is a very large set of unpredictable options a POSITA could have pursued (p. 2, Item 7). The Declarant emphasizes the publication date of Suthar (2019) is later than Taylor’s publication date (2005) and provide another reference, Mariani (2022), to show that a commercial electroplating bath contains additives, including brightening, levelling and complexing agent (p. 3, Item 8). Examiner notes the publication dates of these references are irrelevant as being prior art, and all of these cited references are in public domain before the effective filing date of the instant application, and would be relied upon as a basis for rejection of the claimed invention. The Declaration attacks Suthar that it does has enablement of electroforming (p. 3, Item 8) and it uses a standard DC electrodeposition process in the electrolyte bath containing proprietary additives (p. 3, Item 9). However, Applicant cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. The Declarant argues the scale difference between Suthar (microns) and Taylor (sub-microns) by pointing out the different functions of transmitting electromagnetic energy and conducting electricity (pp. 3-4, Item 9-10), but fails to provide the reason why the method of Taylor cannot be used to modify the method of Suthar. The Declarant’s allegation of years of experimentation and one possible failure (p. 4, Item 11) is not sufficient to support nonobviousness of the claimed subject matter. The Declarant’s reliance on IBM’s report without specific waveform parameters cannot support its conclusion that what worked at 100 µm feature size did not work at sub-micro feature size (pp. 4-5, Item 12).
The Declarant cites its previous work on multiple waveform parameters, e.g., DC v. PC v. PRC, macroprofile v. microprofile waveform, frequency, period of time, etc. (pp. 5-7, Item 13), and asserts the instant field with numerous possibilities and options is far from predictable (p. 7, Item 14). This argument is unpersuasive because the prior art, Taylor, explicitly teaches the composition of the electrolyte bath not using additives (e.g., for claim 1), and the waveform includes a cathodic current followed by an anodic current within a certain range (e.g., for claim 7) repeated for a predetermined time (e.g., for claims 6, 8), which gives the POSITA sufficient guidance to arrive the claimed subject matter.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached on 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C. SUN/Primary Examiner, Art Unit 1795
Prosecution Insights