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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 3 has been entered.
Election/Restrictions
Newly amended claim(s) 18-34 and 36-39 is/are directed to a distinct and independent invention from the invention originally claimed for the following reasons:
Invention I, claim(s) 1-16, drawn to a method of manufacturing a corrugated copper microwave waveguide.
Invention II, newly amended claim(s) 18-34 and 36-39, drawn to an electroformed corrugated copper microwave waveguide.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case Invention I can be made by another and materially different process such as die stamping, optical lithography, laser ablation, or electron discharge machining instead of electroforming as required by Invention II. Here, Examiner notes that “formed by …” limitation in claim 18 is product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Status of Objections and Rejections
The rejection of claim(s) 17 and 35 is/are obviated by Applicant’s cancellation.
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by the amendments.
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) 1-16 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 "said waveforms" in lines 8-9. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “said one or more waveforms.”
Dependent claim(s) 2-16 is/are rejected based on rejected claim 1.
Claim 6 recites the limitation "the waveforms" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “said one or more waveforms.”
Dependent claim(s) 7-8 is/are rejected based on rejected claim 6.
Claim 14 recites the limitation "said waveforms" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “said one or more waveforms.”
Claim 15 recites the limitation "said waveforms" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “said one or more waveforms.”
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) 1-7, 9-10, 12, and 14-16 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), and further in view of Wang (US 2021/0198799).
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 is one or more waveforms configured to control electrodeposition distribution of the copper from the anode 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), and said waveforms configured to control electrodeposition distribution of the 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 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 field plus the carrier (suppressor) for traditional brighteners and/or levelers would yield nothing more than predictable results. MPEP 2141(III)(B).
Further, the designation “said waveforms configured to control electrodeposition distribution of the copper from the anode 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.
Suthar and Taylor do not disclose the copper anode is an approximately 99.9% or greater purity.
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).
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 approximately 99.9% or greater purity 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 “resulting in microwave waveguide … exhibiting an RRR value of between 491 and 866” 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 approximately 99.99% (Wang, ¶35), and thus would be able to obtain the microwave waveguide exhibiting an RRR value of between 491 and 866 for the electroplated copper coming from the copper anode.
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 4, the designation “in which the electroformed copper waveguide is substantially oxygen free” 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 approximately 99.99% (Wang, ¶35), and thus would be able to obtain the microwave waveguide exhibiting an RRR value of between 491 and 866 for the electroplated copper coming from the copper anode.
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, Taylor, and Wang disclose all limitations of claim 1. Suthar and Wang do 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 Wang 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 7, Suthar, Taylor, and Wang disclose all limitations of claim 6. Suthar and Wang do 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 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 and Wang 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 claim 12, Suthar, Taylor, and Wang disclose 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, Taylor, and Wang 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, Taylor, and Wang disclose all limitations of claim 1. Suthar in view of Taylor further discloses applying the one or more waveforms to the mandrel and anode, said waveforms configured 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 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).
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar in view of Taylor and Wang, and further in view of Tomaszewski (US 4462874).
Regarding claims 8 and 11, Suthar, Taylor, and Wang disclose all limitations of claims 6 and 10 respectively, but fail 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, Taylor, and Wang 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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suthar in view of Taylor and Wang, and further in view of Ma (CN114204242, machine translation used for citation).
Regarding claim 13, Suthar, Taylor and Wang disclose all limitations of claim 1, 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, Taylor and Wang 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 Wang has nothing to do with manufacturing a corrugated copper waveguide (Response, p. 11, para. 2). This argument is unpersuasive because Wang teaches performing electrodeposition (¶6) to deposit a copper film on the cathode from the copper anode (¶35) utilizing an electrolyte solution. Thus, Wang is analogous art.
Applicant argues Wang requires adding additives to the electrolyte so that one skilled in the art would expect the electrodeposited copper to incorporate said additives and said copper would not be of high purity and would not exhibit RRR of 100 or greater (Response, p. 11, para. 2). This argument is unpersuasive. Examiner notes here that there are two elements: the purity of the copper anode and the purity of the electroformed copper film. Wang explicitly disclose the anode is a copper plate which has a purity of 99.99% (Wang, ¶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 or greater. Further, the designation that the electroformed waveguide exhibiting an RRR value of between 491 and 866, it 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 approximately 99.99% (Wang, ¶35), and thus would be able to obtain the microwave waveguide exhibiting an RRR value of between 491 and 866 for the electroplated copper coming from the copper anode.
Further, Applicant is advised that the arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the references, Suthar and Taylor, disclose the every and single steps of the claimed method for manufacturing a corrugated copper microwave waveguide. Wang is only relied on to teach the material of anode, i.e., a very high purity of copper plate, to be used for depositing the copper onto the cathode. The combined method Suthar, Taylor, and Wang would use the claimed method utilizing an electrolyte bath substantially devoid of additives as taught by Taylor and a high purity copper anode as taught by Wang, which would necessarily result in the electroformed waveguide exhibiting an RRR value of between 491 and 866.
Conclusion
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 on M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795
Prosecution Insights