DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. This office action is responsive to applicant’s amendment filed on 02/10/2026. Claims 1-30 are pending. Claims 1-6, 14-30 are withdrawn. Claims 7, 12, 13 have been amended. Claim 14 is withdrawn-currently amended.
Response to Arguments
3. Regarding to previous ground of rejection under 35 U.S.C 112(b), the applicants stated “The Applicant has amended claim 12 to more clearly recite the concentrations. Therefore, the 35 U.S.C. § 112(b) rejection should be overcome and withdrawn.”
The examiner disagrees. Claim 12 has been amended as shown below:
“Claim 12. (Currently Amended) The system of claim 7, wherein the acid is hydrochloric acid and is present at a concentration of 9.5 to 22.1 vol.% of the total treatment-fluid volume, and the salt is ferric chloride is present at a concentration of 13.5 to 31.5 vol.% of the total treatment fluid volume.”
However as discussed in previous office action, Pure HCI is a gas. The volume of HCl gas will change when it is mixed with water because HCl gas phase is converted into liquid phase in aqueous solution of HCl when mixed with water. Reagent grade hydrochloric acid is a concentrated solution that is typically 37% HCI by weight. It is unclear from the claim whether the volume of HCl is based on initial gas phase or HCl in liquid phase after it is mixed with water.
Further, the disclosed and claimed 13.5-31.5 vol% of ferric chloride is puzzling. Ferric chloride is a solid material. The volume of solid ferric chloride will change after it is mixed with water because solid chloride is converted into liquid phase and soluble in water.
The use of volume percent indicates that:
a) 13.5 - 31.5 percent of the claimed fluid is a ferric chloride solution of unknown
concentration; or,
b) 13.5 - 31.5 percent of the claimed fluid is solid ferric chloride (i.e. 13.5-31.5
cm³ of solid ferric chloride dissolved in 100 mL of solution.
If the claimed fluid is 13.5 -31.5 vol% of a ferric chloride solution the ACTUAL concentration of ferric chloride is not known without knowing the concentration of the ferric chloride solution that constitutes 13.5 -31.5 vol. % of the fluid. Alternatively, with ferric chloride having a density 2.9 g/cm³, the claimed fluid of 13.5 -31.5 vol% of solid ferric chloride in solution corresponds to a fluid that is 28-65 wt. % ferric chloride. Is applicant's solution actually up to 65 wt % FeCl₃? Or, does the claimed fluid contain 13.5 -31.5 vol% of a ferric chloride solution that is of an unknown concentration?
Thus, the examiner still maintained the previous ground of rejection under 35 U.S.C 112(b)
Regarding to previous ground of rejection with respect to claim 7, the applicants stated:
“The Office Action states that "Katsuo teaches a conductivity probe (12) configured to measure conductivity of the fluid. Katsuo teaches a controller configured to adjust the conductivity of the fluid by adding more of the acid to the fluid (see [0013+]") Page 7 of the Office Action.
Katsuo addresses etchant composition control using a sampling vessel and multiple sensors (such as electrodes, pH, specific gravity). The HCl additions in Katuso are corrected using a titration apparatus. Specifically, Katsuo uses a titration inspection device (7) that takes in a predetermined amount of the etching liquid stored in the liquid tank (2) and performs a titration inspection to measure the concentration of HCl acid as a free component. The titration apparatus and method in Katuso is not based only on measurements from a conductivity probe.
Furthermore, Katsuo teaches that concentration of metal ions can be achieved by titration as opposed to using electrodes where the measurement accuracy is poor due to the influence of metal ions such as ferrous iron. Thus, Katsuo does not disclose, teach or suggest a control scheme that uses only conductivity to determine HCl concentration and directly drive acid addition.
Furthermore, the claimed inventive system showed unexpected benefits when used in a process including smoother surfaces, burr removal, and measurable wettability increase (Dyne pen from <38 to >38). These unexpected benefits were achieved within a short contact time using a specific non-limiting specific gravity and temperature. See FIGS. 2-9; [0037]-[0046], [0050] of the patent application.
Therefore, amended independent claim 7 and its dependent claims 8-13 are not anticipated by or rendered obvious over Katuso”
The applicant’s amendment along with the remark were sufficient to overcome the examiner’s previous ground of rejection based on Katsuo’s reference. However, upon further consideration, new ground of rejection under 35 U.S.C 103 are set forth as discussed below using additional new cited prior arts: Kataoka (JP2000313979) and Nishimura (JP 20002241969A).
Regarding to previous ground of rejection under 35 U.S.C 103 as being unpatentable over Goldacker, the applicants stated:
“The Office Action applies Goldacker for teaching a "system [that] may include a conductivity probe and a density/specific gravity probe" while citing paragraph [0032]. Page 10 of the Office Action. Paragraph [0032] in Goldacker is a very generic paragraph that mentions all sorts of probes and is as follows:
Preferably, the measuring means are independently selected from the group consisting of conductivity probe, density probe, temperature probe, filling level probe, IR-absorption probe, UV-VIS-absorption probe, turbidity probe, chloride probe, or combinations thereof. Such probes will provide data based on which an overall process control is very effective. Preferably, the system comprises a number of different probes detecting different physical-chemical parameters of the solutions within the system.
The Office Action continues by stating that "Goldacker does not explicitly teach the circulating fluid comprises a salt. It would have been obvious to one skilled in the art . . .to include a salt because Goldacker teaches the fluid is a galvanic (i.e., ionic) fluid that may be an etching or plating fluid which typically comprise[s] slats such as a metal salt of a metal to be plated."4918-5198-
This disclosure in Goldacker does not disclose, teach or suggest "a controller configured to adjust the conductivity of the fluid by adding additional acid to the fluid based on measurements from the conductivity probe, and configured to adjust the specific gravity of the fluid by adding additional water to the fluid based on measurements from the specific gravity probe." Goldacker generic disclosure on various probes in paragraph [0032] does not teach, disclose or suggest the same. Additionally, there appears to be no disclosure, teaching or suggestion in Goldacker to adjust conductivity specifically by adding acid nor adjust specific gravity specifically by adding water in its processes. See, e.g., FIG. 1, [0032]-[0047].
Furthermore, the claimed inventive system showed unexpected benefits when used in a process including smoother surfaces, burr removal, and measurable wettability increase (Dyne pen from <38 to ≥ 38). These unexpected benefits were achieved within a short contact time using a non-limiting specific gravity and temperature. See FIGS. 2-9; [0037]-[0046], [0050] of the
patent application.
Therefore, amended independent claim 7 and its dependent claims 8-13 are not rendered obvious over Goldacker.”
The applicant’s amendment along with the remark were sufficient to overcome the examiner’s previous ground of rejection based on Goldacker ’s reference. However, upon further consideration, new ground of rejection under 35 U.S.C 103 are set forth as discussed below using additional new cited prior arts: Kataoka (JP2000313979) and Nishimura (JP 20002241969A).
The examiner considered the applicants’ argument regarding “unexpected benefits when used in a process including smoother surfaces, burr removal, and measurable wettability increase (Dyne pen from <38 to >38). These unexpected benefits were achieved within a short contact time using a non-limiting specific gravity and temperature. See FIGS. 2-9; [0037]-[0046], [0050] of the patent application.” However, the applicant’s argument regarding unexpected benefits is not commensurate with the scope of the claim. There is no limitation in claim 7 which recites smoother surfaces, burr removal, and measurable wettability increase (Dyne pen from <38 to >38)
Examiner’s Comment on Disclosed and Claimed Volume Percent.
4. Paragraph [0009] of the specification recites:
" The treatment fluid includes about 9.5 to 22.1 percent by volume (vol.%) hydrochloric acid and about 13.5 to 31.5 vol.% ferric chloride in water."
Claim 12 recites:
The system of claim 7, wherein the acid is hydrochloric acid and is present at a concentration of 9.5 to 22.1 vol.% of the total treatment-fluid volume, and the salt is ferric chloride is present at a concentration of 13.5 to 31.5 vol.% of the total treatment fluid volume.”
The use of volume percentage to express the concentration raises the following issues. Volume percent is typically used to express the concentration of a liquid component in a liquid mixture. Disclosed and claimed is a 9.5 to 22.1 vol.% hydrochloric acid. Pure HCI is a gas. The volume of HCl gas will change when it is mixed with water because HCl gas phase is converted into liquid phase in aqueous solution of HCl when mixed with water. A solution that is 9.5 volume % of gaseous HCl dissolved in 100 mL of solution corresponds to 0.015 wt.% HCl solution. Alternatively, reagent grade hydrochloric acid is a concentrated solution that is typically 37% HCI by weight. A 9.5 volume % solution of 37 wt.% HCl corresponds to a 9.6 wt % HCl solution. For the sake of examination, it is presumed that the disclosed and claimed fluid with 9.5 -22.1 vol.% HCI refers to fluid of which 9.5-22.1 volume % is a hydrochloric acid solution of
unknown concentration.
The disclosed and claimed 13.5-31.5 vol% of ferric chloride is puzzling. Ferric chloride is a solid material. The use of volume percent indicates that:
a) 13.5 - 31.5 percent of the claimed fluid is a ferric chloride solution of unknown
concentration; or,
b) 13.5 - 31.5 percent of the claimed fluid is solid ferric chloride (i.e. 13.5-31.5
cm³ of solid ferric chloride dissolved in 100 mL of solution.
If the claimed fluid is 13.5 -31.5 vol% of a ferric chloride solution the ACTUAL concentration of ferric chloride is not known without knowing the concentration of the ferric chloride solution that constitutes 13.5 -31.5 vol. % of the fluid. Alternatively, with ferric chloride having a density 2.9 g/cm³, the claimed fluid of 13.5 -31.5 vol% of solid ferric chloride in solution corresponds to a fluid that is 28-65 wt. % ferric chloride. Is applicant's solution actually up to 65 wt % FeCl₃? Or, does the claimed fluid contain 13.5 -31.5 vol% of a ferric chloride solution that is of an unknown concentration?
Claim Rejections - 35 USC § 112
5. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites:
“The system of claim 7, wherein the acid is hydrochloric acid at a concentration of 9.5 to 22.1 vol.% and the salt is ferric chloride at a concentration of 13.5 to 31.5 vol.%.”
Claim 12 is direct to the concentration of the hydrochloric acid and ferric chloride in the claimed fluid. It is not understood if the claimed volume % is a volume of HCl gas or if it refers to a 9.5 volume % of hydrochloric acid solution (i.e., a solution of HCl in water). If the volume % is the percentage of the claimed fluid that is hydrochloric acid then the actual concentration of HCl cannot be known with knowing the concentration of the hydrochloric acid used when making the 9.5 vol% solution. Ferric chloride is a solid material. The volume of solid ferric chloride will change after it is mixed with water because solid chloride is soluble in water. Similarly, it is not clear what the concentration of ferric chloride unless the claim is directed to a fluid with 13.5 -31.5 vol% of solid FeCl₃. (See above discussion in Examiner's Comment).
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuo (JPH 11-181583A (herein after refers as Katsuo) in view of Kataoka (JP 2000313979 A), herein after refers as Kataoka.
Note:
As to claim 7, Katsuo discloses a system for chemically treating a surface of a metal part, the system comprising:
a treatment chamber having a recirculating supply of a fluid to chemically treat the surface of the metal part, the fluid including an acid (hydrochloric acid) and a salt (ferric chloride) in water;
a
a specific gravity probe (15) configured to measure specific gravity of the fluid; and
a controller configured to adjust the concentration
As to claim 7, Katsuo fails to disclose a conductivity probe configure to measure conductivity of the fluid. However, Katsuo clearly teaches to measure the concentration of the fluid and adding additional acid based on the measure of the concentration probe using a controller. Kataoka teaches a conductivity probe (6) configure to measure conductivity of the fluid and a controller configured to adjust the conductivity of the fluid by adding additional acid based on only on the measurements of the conductivity probe (abstract, paragraph 0001, 0032-0038, 0046-0052, Fig 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo in view of Kataoka by having teaches a conductivity probe (6) configure to measure conductivity of the fluid and a controller configured to adjust the conductivity of the fluid by adding additional acid based on only on the measurements of the conductivity probe because it helps to continuously control the concentration of the fluid.
As to claim 8, Katsuo fails to disclose a conductivity measurement loop configured to withdraw a portion of the fluid from the treatment chamber, for measurement of the conductivity, and deposit the portion of the fluid back into the treatment chamber, after the measurement of the conductivity, wherein the conductivity probe is within the conductivity measurement loop. Kataoka discloses a conductivity measurement loop configured to withdraw a portion of the fluid from the treatment chamber, for measurement of the conductivity, and deposit the portion of the fluid back into the treatment chamber, after the measurement of the conductivity, wherein the conductivity probe is within the conductivity measurement loop (See Fig 1, paragraph 0001, 0032-0038, 0046-0052). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo in view of Kataoka by having a conductivity measurement loop configured to withdraw a portion of the fluid from the treatment chamber, for measurement of the conductivity, and deposit the portion of the fluid back into the treatment chamber, after the measurement of the conductivity, wherein the conductivity probe is within the conductivity measurement loop because it helps to continuously control the concentration of the fluid.
As to claim 9, Katsuo discloses a specific gravity measurement loop configured to withdraw a portion of the fluid from the treatment chamber, for measurement of the specific gravity, and deposit the portion of the fluid back into the treatment chamber, after the measurement of the specific gravity, wherein the specific gravity probe is within the specific gravity measurement loop (Fig 1, paragraph [0013]+).
9. Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuo (JPH 11-181583A) in view of Kataoka (JP 2000313979 A) as applied to claims 7-9 above, and further in view of Nishimura (JP 2002241969 A), herein after refers as Nishimura.
As to claim 10, Katsuo and Kataoka fail to disclose a heater, a chiller or combination thereof to maintain a temperature of the recirculating supply fluid. Nishimura discloses disclose a heater to maintain a temperature of the recirculating supply fluid (paragraph 0016, 0030). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo and Kataoka in view of Nishimura by having a heater because it helps to heat the fluid to a desired temperature.
As to claim 11, Katsuo and Kataoka fail to disclose the temperature of the fluid is maintained at about 52 °C. Nishimura discloses the temperature of the fluid is maintained at about 50 °C (paragraph 0016, 0030; Note: 50 °C read on applicant’s limitation “about 52 °C”). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo and Kataoka in view of Nishimura by having a temperature of the fluid around 50-52 °C because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claim 12, Katsuo and Kataoka fail to disclose wherein the acid is hydrochloric acid and is present at a concentration of 9.5 to 22.1 vol.% of the total treatment-fluid volume, and the salt is ferric chloride is present at a concentration of 13.5 to 31.5 vol.% of the total treatment-fluid volume. Regarding claim 12, the claimed vol% is being treat as the volume percent of a solution included in the claimed fluid. The actual concentration of HCI and FeCl₃ cannot be determined without knowing the concentration of the solution used when making the claimed fluid. Nishimura teaches the fluid comprises 30% to 50% by of ferric chloride and 0.5% to 10 % by weight of hydrochloric acid (See paragraph 0017). In the absence of unexpected results, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo and Kataoka by performing routine experiments to obtain optimal volume percentage of hydrochloric acid and ferric chloride because it has been held that determination of workable range is not considered inventive.
As to claim 13, Katsuo and Kataoka fail to disclose the specific gravity of the fluid is about 1.395 g/cm3. Nishimura discloses the specific gravity of the fluid is about 1,35 to 1.5 g/cm3 including example of 1.350, 1.360, 1.375, 1.387, 1.402 and 1.428 g/cm3 (See paragraph 0017, 0030-0031, read on applicant’s limitation “about 1.395 g/cm3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Katsuo and Kataoka in view of Nishimura by having the specific gravity of the fluid is about 1.395 g/cm3 because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/ Primary Examiner, Art Unit 1713
Prosecution Insights