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 .
Claims 1-23 are pending.
Election/Restrictions
This application contains claims directed to the following patentably distinct species:
(A) Claims 8-10, drawn to the embodiment of Fig. 4 of a stirring deposition equipment.
(B) Claims 11-18, drawn to the embodiment of Fig. 5 of a circulation deposition system.
The species are independent or distinct because the apparatus of Species A which comprises the electrolysis device in a stirring tank with stirring rod and rotating electrode connected to the cathode and magnetic component is patentable different from the system of Species B which has a separate stirring tank and fixed cathode with the magnetic component outside a plating tank along with means, e.g. pump and pipeline, for circulating working fluid. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1-7 and 19-23 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: Species A would require a unique text search regarding the rotating electrode structure integrated into a stirring tank that would not be required by Species B, and Species B would require a unique text search regarding the components of the circulation system, e.g. pump and pipeline, that would not be required by Species A.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Belinda Lee on 07/29/2026 a provisional election was made without traverse to prosecute the invention of Species B, claims 11-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-7 and 11-23 are under consideration in this Office action.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 and 19-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kempler et al. (U.S. 2023/0392272).
Regarding claim 1, Kempler discloses an electrolysis device, configured to electro-precipitate a magnetic deposition from a working fluid (see e.g. Fig. 2C, electrochemical cell 100C in which magnetic metal M is deposited from catholyte; Paragraphs 0058 and 0069), the electrolysis device comprising:
an anode plate (see e.g. Fig. 2C, anode 120; Paragraph 0061, lines 1-2, and Paragraph 0063);
a cathode plate, disposed corresponding to the anode plate (see e.g. Fig. 2C, cathode 110 opposite anode 120; Paragraph 0061, lines 1-3, and Paragraph 0062); and
a magnetic component, disposed on a side of the cathode plate relatively away from the anode plate (see e.g. Fig. 2C, magnet 180 on side of cathode 110 away from anode 120; Paragraph 0072, lines 1-4),
wherein the working fluid flows between the anode plate and the cathode plate, and an oxidation reduction reaction occurs between the anode plate and the cathode plate (see e.g. Figs. 2C and 8, catholyte flowing between anode 120 and cathode 110 to undergoes net redox reaction; Paragraph 0058 and Paragraph 0061, lines 1-6); and
the magnetic component attaches the magnetic deposition resolved from the working fluid onto a surface of the cathode plate facing the anode plate, wherein the magnetic deposition comprises a product and a half reactant (see e.g. Fig. 2C, magnet 180 facilitates deposition of magnetic metal M, along with metal oxide, from catholyte 140 onto surface 110a of cathode 110 facing anode 120; Paragraph 0072, lines 4-8, Paragraph 0073 and Paragraph 0133, lines 9-16).
It should be noted that the limitations regarding the flow of working fluid, occurrence of reaction and the specifics of the formed deposition are statements of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Regarding claim 2, Kemper discloses the product being a metal and the half reactant being a metal compound (see e.g. Paragraph 0072, lines 4-8, and Paragraph 0133, lines 9-16, deposited metal and metal oxide).
Regarding claim 3, Kempler discloses an orthographic projection range of the magnetic component falling within an orthographic projection range of the cathode plate (see e.g. Figs. 2C and 3B, magnet 180 as rod or bar with vertical length less than cathode 110; Paragraph 0072, lines 1-5).
Regarding claim 4, Kempler discloses, in a flowing direction of the working fluid, a length of the magnetic component being less than a length of the cathode plate (see e.g. Figs. 2C, 3B and 8, magnet 180 as rod or bar with vertical length less than cathode 110 in vertical flow direction; Paragraph 0072, lines 1-5).
Regarding claim 5, Kempler discloses a distance from a first edge of the magnetic component to a first edge of the cathode plate being greater than a thickness of the magnetic component (see e.g. Figs. 2C and 3B, magnet 180 as rod or bar with distance from edge of cathode greater than its thickness, as further indicated by its magnetic field not reaching the ends of the cathode; Paragraph 0072, lines 1-5, and Paragraph 0074, lines 13-15).
Regarding claim 6, Kempler discloses the magnetic component being set to multiple (see e.g. Paragraph 0081, lines 16-18, more than one permanent magnet in each cathode compartment).
Regarding claim 7, Kempler discloses an electrical insulation layer, disposed along an outer circumference of the magnetic component (see e.g. Paragraph 0081, lines 5-7, polyethylene coating, i.e. electrical insulation, on magnet).
Regarding claim 19, Kempler discloses an electrolysis method for electro-precipitating a magnetic deposition (see e.g. Paragraphs 0058 and 0069, process for deposition of magnetic metal in electrochemical cell), comprising:
providing an electrolysis device (see e.g. Fig. 2C, electrochemical cell 100C; Paragraph 0060), wherein the electrolysis device comprises an anode plate (see e.g. Fig. 2C, anode 120; Paragraph 0061, lines 1-2, and Paragraph 0063), a cathode plate disposed corresponding to the anode plate (see e.g. Fig. 2C, cathode 110 opposite anode 120; Paragraph 0061, lines 1-3, and Paragraph 0062), and a magnetic component disposed on a side of the cathode plate relatively away from the anode plate (see e.g. Fig. 2C, magnet 180 on side of cathode 110 away from anode 120; Paragraph 0072, lines 1-4),
wherein an oxidation-reduction reaction occurs when a working fluid flows through the anode plate and the cathode plate (see e.g. Figs. 2C and 8, catholyte flowing between anode 120 and cathode 110 to undergoes net redox reaction; Paragraph 0058 and Paragraph 0061, lines 1-6), and the magnetic component attaches the magnetic deposition resolved from the working fluid onto a surface of the cathode plate facing the anode plate, wherein the magnetic deposition comprises a product and a half-reactant (see e.g. Fig. 2C, magnet 180 facilitates deposition of magnetic metal M, along with metal oxide, from catholyte 140 onto surface 110a of cathode 110 facing anode 120; Paragraph 0072, lines 4-8, Paragraph 0073 and Paragraph 0133, lines 9-16).
Regarding claim 20, Kempler discloses, in a flowing direction of the working fluid, a length of the magnetic component being less than a length of the cathode plate (see e.g. Figs. 2C, 3B and 8, magnet 180 as rod or bar with vertical length less than cathode 110 in vertical flow direction; Paragraph 0072, lines 1-5).
Regarding claim 21, Kempler discloses a distance from a first edge of the magnetic component to a first edge of the cathode plate being made greater than a thickness of the magnetic component (see e.g. Figs. 2C and 3B, magnet 180 as rod or bar with distance from edge of cathode greater than its thickness, as further indicated by its magnetic field not reaching the ends of the cathode; Paragraph 0072, lines 1-5, and Paragraph 0074, lines 13-15).
Regarding claim 22, Kempler discloses the magnetic component being set to multiple (see e.g. Paragraph 0081, lines 16-18, more than one permanent magnet in each cathode compartment).
Regarding claim 23, Kemper discloses the product being a metal and the half reactant being a metal compound (see e.g. Paragraph 0072, lines 4-8, and Paragraph 0133, lines 9-16, deposited metal and metal oxide).
Claims 11 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Castellani et al. (U.S. Patent No. 4,102,756).
Regarding claim 11, Castellani discloses a circulation deposition system, wherein a working fluid circulates in the circulation deposition system (see e.g. Col. 2, lines 33-34, and Col. 4, lines 31-34, plating system for depositing film in which bath is recirculated), and in a flowing direction of the working fluid, the circulation deposition system comprises:
a stirring tank, filled with the working fluid (see e.g. Figs. 1 and 3, reservoir 39for electrolyte provided with stirring means; Col. 2, lines 54-56 and 66-68, and Col. 5, lines 63-68);
a stirring rod, extending into the stirring tank and immersed in the working fluid (see e.g. Fig. 3, stirrer 75 in reservoir 39 as mechanical stirrer, i.e. stirring rod; Col. 5, line 63-Col. 6, line 3);
an electrolysis device (see e.g. Figs. 1-2, container 12 as cell means containing bath for electroplating; Col. 2, lines 33-35, and Col. 3, lines 60-62), comprising: a plating tank (see e.g. Figs. 1-2, plating cell 47; Col. 4, lines 58-59), an anode plate (see e.g. Figs. 1-2, anode 24; Col. 4, lines 24-30), a cathode plate (see e.g. Figs. 1-2, cathode 14; Col. 3, lines 64-65), and a magnetic component (see e.g. Fig. 2, permanent magnets 25; Col. 7, line 51), wherein the cathode plate is disposed at a tank bottom of the plating tank (see e.g. Figs. 1-2, cathode 14 secured at bottom of container 12/plating cell 47; Col. 4, lines 14-17), the anode is disposed corresponding to the cathode plate (see e.g. Figs. 1-2, anode 24 and cathode 14 across from each other; Col. 5, lines 27-31), and the magnetic component is disposed outside the tank bottom of the plating tank (see e.g. Fig. 2, magnets 25 below bottom of plating cell 47; Col. 7, lines 46-53);
a first pump (see e.g. Fig. 1, pump 66; Col. 4, line 53); and
a pipeline, connecting the stirring tank, the plating tank, and the first pump (see e.g. Fig. 1, tubes 67/68/44/55 connecting reservoir 39, plating cell 47 of container 12 and pump 66; Col. 4, lines 50-59),
wherein the working fluid that flows between the anode plate and the cathode plate undergoes an oxidation-reduction reaction between the anode plate and the cathode plate (see e.g. Figs. 1-2, plating bath fluid flows between cathode 14 and anode 24 with ions undergoing electroplating redox reaction due to current; Col. 2, line 68-Col. 3, line 9, and Col. 5, lines 27-31), and the magnetic component attaches a magnetic deposition resolved from the working fluid onto a surface of the cathode plate facing the anode plate, wherein the magnetic deposition comprises a product and a half-reactant (see e.g. Figs. 1-2, magnetic metal film comprising metal and oxides formed at substrates 17 on surface of cathode 14 facing anode 24 under magnetic field formed by magnets 25; Col. 4, lines 1-8, Col. 5, lines 38-43, Col. 7, lines 46-60, and Col. 17, lines 36-45).
It should be noted that the limitations regarding the flow of working fluid, occurrence of reaction and the specifics of the formed deposition are statements of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Regarding claim 17, Castellani discloses the product being a metal and the half-reactant being a metal compound (see e.g. Col. 5, lines 38-43, and Col. 17, lines 36-45, plated film comprising metals and oxides thereof).
Regarding claim 18, Castellani discloses a heater, disposed in the stirring tank (see e.g. Fig. 3, tubing 82 containing fluid in walls of reservoir 39 or directly in tank for controlling temperature; Col. 6, lines 4-13).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Castellani in view of Griego et al. (U.S. 2003/0038034).
Regarding claim 12, Castellani teaches all the elements of the system of claim 11 as stated above. Castellani does not teach a longitudinal direction of the anode plate being perpendicular to a vertical direction of the cathode plate, instead teaching them being horizontally parallel (see e.g. Figs. 1-2, parallel horizontal anode 24 and cathode 14; Col. 7, lines 46-48).
Griego teaches an apparatus for electrodeposition of a magnetic material (see e.g. Abstract) comprising an anode and a cathode provided in a cell, the anode extending vertically while the cathode extends horizontally, thereby being perpendicularly oriented (see e.g. Figs. 2-3 and 8, vertical anode 50 and horizontal cathode 44 in cell bowl assembly 36; Paragraph 0039, lines 11-10).
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 the anode plate of Castellani to extend in a vertical direction perpendicular to the horizontal cathode plate as taught by Griego as an alternate suitable electrode positioning arrangement for electrodeposition of magnetic materials. MPEP § 2143(I)(B) states that “simple substitution of one known element for another to obtain predictable results” may be obvious.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Castellani in view of Kim et al. (KR 101841439 B1, citations based on translation).
Regarding claim 13, Castellani teaches all the elements of the system of claim 11 as stated above. Castellani does not teach a cleaning tank, connected to the plating tank and the first pump.
Kim teaches an electroplating apparatus (see e.g. Paragraph 0001) comprising a plating tank to which plating solution is supplied from a plating solution storage tank via a pump (see e.g. Figs. 8-11, plating solution from storage tank 81 delivered to plating tank 20 via pump 93 and flow paths 61/62; Paragraph 0031, lines 1-5) and further comprising a washing water storage tank for supplying washing water to the plating tank via the pump, thereby allowing cleaning of the inside of the plating tank to be conveniently performed (see e.g. Figs. 10-11, washing water from storage tank 92 delivered to plating tank 20 via pump 93 and flow paths 65/62/61; Paragraphs 0040-0041 and 0045).
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 the system of Castellani to further comprise a cleaning tank connected to the plating tank and the first pump as taught by Kim to allow cleaning of the inside of the plating tank to be conveniently performed.
Regarding claim 15, Castellani as modified by Kim teaches a valve disposed between the cleaning tank and the plating tank (see e.g. Kim Figs. 10-11, fifth shut-off valve 75 for opening and closing flow path 65 from washing water storage tank 91; Paragraph 0040, lines 6-11).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Castellani in view of Kim, as applied to claim 13 above, and further in view of Cho et al. (KR 20140056982 A, citations based on translation).
Regarding claim 14, modified Castellani does not explicitly teach a second pump, disposed between the cleaning tank and the plating tank. Kim does however teach the cleaning tank being in a branch line which connects to a plating solution circulation line including the first pump directed toward the plating tank (see e.g. Kim Figs. 10-11, fifth flow path 65 from washing water storage tank 91 connected to flow paths 61/62/63 of plating solution supply means; Paragraph 0040).
Cho teaches a system in which plating is performed (see e.g. Paragraph 0031, lines 1-2) comprising a plating solution circulation line for supplying plating solution to a plating tank (see e.g. Figs. 1-2, plating solution circulation line 30 supplying plating tank 10; Paragraph 0032), with a pump attached to the plating solution circulation line (see e.g. Fig. 2, pump 32; Paragraph 0033), and further comprising a washing water supply tank in a branch line which is connected by a second pump to the plating solution circulation line, thereby facilitating entry of the washing water into the plating solution circulation line (see e.g. Fig. 2, washing water supply tank 70 connected to plating solution circulation line via pump 96; Paragraphs 0034-0035 and 0046).
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 the system of modified Castellani to comprise a second pump between the cleaning tank and the plating tank as taught by Cho as an additional suitable component for facilitating entry of cleaning liquid from the cleaning tank into the plating solution circulation line including the first pump toward the plating tank. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. 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 would yield nothing more than predictable results.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Castellani in view of Xie et al. (CN 106637362 A, citations based on translation).
Regarding claim 16, Castellani teaches all the elements of the system of claim 11 as stated above. Castellani does not teach the system further comprising a plurality of valves, wherein a first valve is disposed between the stirring tank and the plating tank, and a second valve is disposed between the first pump and the stirring tank.
Xie teaches an electroplating device (see e.g. Paragraph 0002) comprising a main circulation channel for electroplating solution including a stirred electroplating solution storage tank and a pump for delivering the solution to an electroplating table (see e.g. Fig. 1, storage tank 1, pump 2 and electroplating table 4; Paragraphs 0033-0034 and Paragraph 0035, lines 1-4), wherein a plurality of valves are provided, including a first valve between the electroplating table and the storage tank (see e.g. Fig. 2, valve along electroplating solution return channel 6 from electroplating table 4 to storage tank 1; Paragraph 0042, lines 10-14) and a second valve between the pump and the storage tank (see e.g. Fig. 2, valves shown along outlet pipes 16 and 15 between storage tank 1 and pump 2; Paragraph 0034, lines 7-12), contributing to the circulation of the electroplating solution (see e.g. Paragraph 0033).
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 the system of Castellani to further comprise a plurality of valves, including a first valve between the stirring tank and plating tank and a second valve between the first pump and stirring tank as taught by Xie as suitable components for contributing to the circulation of plating solution between a stirred storage tank, pump and electroplating tank of a circulating electroplating system. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. 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 would yield nothing more than predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
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/MOFOLUWASO S JEBUTU/Examiner, Art Unit 1795
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