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 with traverse of Group I, encompassing claims 1-15, in the reply filed on March 26, 2026 is acknowledged. The traversal is on the ground(s) that the substantial overlap of common elements between the claims, applicant submits that a search and examination of all the claims may be made without serious burden on the examiner. This is not found persuasive because the inventions require separate field of search, particularly in view of different principles behind the patentability of apparatus and method claims.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 12 is objected to because of the following informalities: the dependency of claim 12 should be corrected. Line 1 recites, in part, “the type of sealant”. It is noted that “a type of sealant” was first recited in claim 11, not claim 10. Appropriate correction is required.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US Patent Application Publication no. 2004/0016637).
Regarding claim 1, Yang discloses a system for automated single tank surface treatment (paragraphs 14, 56, 113, 114 – a single plating cell may be used to avoid cross contamination issues with different chemistries), the system comprising:
a process tank/plating cell (paragraphs 115, 117);
a manifold (1832) fluidly coupled to the process tank (paragraph 115; figure 18);
a controller coupled to the manifold (1832) and configured to control operation of the manifold (paragraph 117 – the additives are coupled to a controller for flowing electrochemical plating solutions to a plating cell via the manifold); and
a plurality of holding tanks/additive sources (1802) in fluid communication with the process tank via the manifold (1832; paragraphs 115, 117).
Regarding claim 2, Yang teaches wherein the process tank comprises: a conductive support configured to hold a workpiece to be anodized and electrically coupled to a power supply source (paragraphs 61, 68); and
one or more cathodes electrically coupled to the power supply source (paragraphs 61, 156);
wherein the power supply source is configured to apply a voltage between the one or more cathodes and the workpiece via the conductive support (paragraphs 61, 156-157, 159).
Regarding claim 3, the system of Yang further comprises a heating element (600; figure 6; paragraph 68); a cooling plate (paragraph 66), and a vacuum outlet (paragraphs 62, 69).
Regarding claim 4, Yang discloses wherein the cell may comprise a dome shape that operates to enclose a processing space between the dome (paragraph 77). MPEP 2144.04.IV.B – the shape is a matter of choice absent persuasive evidence that the particular configuration is significant.
Regarding claim 5, the manifold (1832) of Yang comprises: a plurality of connectors (figure 18, paragraph 120); a plurality of valves (valve bank 1834) respectively fluidly coupled to the plurality of connectors and to a plurality of input lines (paragraph 120); a plurality of valve actuators respectively coupled to the plurality of valves (1834; paragraphs 120, 122, 124); and an output valve fluidly coupled to the plurality of connectors and to an output line (paragraphs 120, 122).
Regarding claim 6, Yang discloses wherein each of the plurality of input lines is fluidly coupled to one of the holding tanks (1802; as shown in figure 18; paragraphs 120, 122, 124).
Regarding claim 7, the outlet valve (of the valve bank 1834) of Yang is fluidly coupled to the process tank (figure 18; paragraphs 120, 122, 124).
Regarding claim 8, the surface treatment of Yang is an electroplating treatment (abstract; paragraphs 18-22). While Yang fails to teach an anodization treatment, it has been held by the courts that apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the device is capable of performing a claimed function. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, the surface treatment of Yang is an electroplating treatment (abstract; paragraphs 18-22).
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 non-obviousness.
Claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US Patent Application Publication no. 2004/0016637) in view of Spurlin et al. (US Patent Application Publication no. 2022/0102209).
Regarding claim 10, Yang discloses a system for automated single tank surface treatment (paragraphs 14, 56, 113, 114 – a single plating cell may be used to avoid cross contamination issues with different chemistries), the system comprising:
a process/plating tank coupled to a power supply (paragraphs 115, 117, 149, 156-157);
a plurality of holding tanks/additive sources (1802, and electrolyte source 1804), each holding a fluid that is part of the surface treatment (paragraphs 115, 117).
a manifold (1832) fluidly coupled to the process tank and to the plurality of holding tanks (1802, 1804; paragraph 115; figure 18); and
a controller coupled to the manifold (1832) and configured to control operation of the manifold and plating cell (paragraph 117 – the additives are coupled to a controller for flowing electrochemical plating solutions to a plating cell via the manifold).
Yang fails to teach a processor operatively coupled to the manifold, the process tank, the power supply, the plurality of holding tanks, and an input device; and
a memory coupled to the processor, the memory storing instructions that, when executed by the processor, perform a set of operations comprising:
receiving, at the input device, information related to the surface treatment of the workpiece;
determining, via the processor, one or more operations to achieve the surface treatment of the workpiece based on the received information; and
performing, via the processor, the one or more operations to treat the surface of the workpiece.
Spurlin discloses an electrochemical system comprising a controller including one or more processors operatively coupled to a plating tank, a power supply, electrolyte tanks (electroplating conditions, such as pH, electrolyte components, current density are controlled to facilitate electrodeposition; paragraphs 31, 73, 108, 118), and an input device (user interface - paragraphs 100, 110-114); and
a memory coupled to the processor, the memory storing instructions that, when executed by the processor, perform a set of operations (paragraphs 110-112, 117, 129) comprising:
receiving, at the input device, information related to the surface treatment of the workpiece (paragraphs 112, 119, 120);
determining, via the processor, one or more operations to achieve the surface treatment of the workpiece based on the received information (paragraphs 117-120, 129); and
performing, via the processor, one or more operations to treat the surface of the workpiece (paragraphs 117-120, 129).
It would have been obvious to one having ordinary skill in the art at the time of filing to incorporate a processor coupled to memory storing instructions in the control system of Yang, because as taught by Spurlin, this provides an effective and faster control of all the activities of the electrochemical operation while enabling remote access to the system (paragraphs 110, 130).
Regarding claim 11, the surface treatment of Spurlin comprises an electroplating treatment; and the information comprises at least thickness of an electroplated layer (paragraphs 32, 76, 89). While Yang fails to teach an anodization treatment, it has been held by the courts that apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the device is capable of performing a claimed function. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 12, claim 11 requires the information to comprise at least one of thickness, color or a type of sealant. Accordingly, claim 12 is withdrawn from consideration as it does not further limit the thickness of claim 11.
Regarding claim 13, Spurlin further teaches wherein the process tank comprises at least one cathode facing the workpiece, and the one or more operations comprise at least controlling the temperature thresholds, electroplating conditions, i.e. pH, voltage and plating cell pressure (paragraphs 31, 64, 74, 76, 108, 118).
Regarding claim 14, the control mechanism of Yang comprises flowing the one or more fluids from the holding tanks to the process tank and flowing the one or more fluids from the process tank to the holding tanks, as desired using valves, regulators and other flow control devices (paragraph 117, 122, 124 – the fluid delivery system may be controlled to mix and provide a particular anolyte, catholyte or additive to any of the tanks).
One having ordinary skill in the art at the time of filing would have found it obvious to incorporate a processor with memory storing instructors in the system of Yang, to treat the surface of the workpiece based on the received information by the processor, as taught by Spurlin, in order to effectively control all the activities of the electroplating apparatus (paragraphs 110-111, 113, 117).
Regarding claim 15, the surface treatment of Spurlin comprises an electroplating treatment; and the information comprises at least thickness of an electroplated layer (paragraphs 32, 76, 89).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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