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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group III in the reply filed on 12/11/25 is acknowledged.
Claims 45-64 are pending, wherein claims 46-64 were newly added.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The references cited in paragraph [0278] and paragraph [0317] are not cited in the IDS, and have not been considered.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
See paragraphs [00257] and [00278].
The attempt to incorporate subject matter into this application by reference to http://polymerdatabase.com in paragraph [00257] is ineffective because 37 CFR 1.57(e) states that an incorporation by reference by hyperlink or other form of browser executable code is not permitted. See MPEP 608.01(VII).
Examples of a hyperlink or a browser-executable code are a URL placed between these symbols "< >" and http:// followed by a URL address. When a patent application with embedded hyperlinks and/or other forms of browser-executable code issues as a patent (or is published as a patent application publication) and the patent document is placed on the USPTO webpage, when the patent document is retrieved and viewed via a web browser, the URL is interpreted as a valid HTML code and it becomes a live web link. When a user clicks on the link with a mouse, the user will be transferred to another webpage identified by the URL, if it exists, which could be a commercial website. USPTO policy does not permit the USPTO to link to any commercial sites since the USPTO exercises no control over the organization, views or accuracy of the information contained on these outside sites.
If hyperlinks and/or other forms of browser-executable code are embedded in the text of the patent application, examiners should object to the specification and indicate to applicants that the embedded hyperlinks and/or other forms of browser-executable code are impermissible and that references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. This requirement does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08 where the electronic document is identified by reference to a URL.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 45 is objected to because of the following informalities: claim 45 line 4, “define” should be changed to --defined--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 45-64 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 45 recites the limitation "the base surface" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 45 recites the limitation “a lower surface of the mask” in line 10. This limitation is indefinite as it is unclear whether “a lower surface” is referring --the lower surface-- already introduced in line 6 or a separate lower surface. For examination purposes, “a lower surface” in line 10 has been treated as --the lower surface--.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 46 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 46 requires that “the raised structures are provided to have a height at or below a lower surface of the mask for facilitating release of the mask after metal spray deposition.” However, claim 45 lines 9-11 already require that the raised structures are formed “having a height at or below a lower surface of the mask for facilitating release of the mask after the spraying.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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(s) 45-48, 50-57, and 59-61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratori (JP H05-098411 A) in view of Palma (US 5,915,743).
Regarding claim 45, Shiratori teaches a process comprising:
Thermal spraying (paragraph [0001], thermal spray) through a polymeric mask (resist 2, 12, 22) comprising openings (figs 1-3) and overlying a metal base (1, 11, 21) to form raised metal structures extending from the base (fig 1d, 3d); and
removing the mask to expose a recessed region define between the raised metal structures (figs 1e-f, 3e-f);
wherein the polymeric mask has a smoothness inhibiting adhesion during the spraying, and has a composition and thickness to inhibit thermal deformation during spraying (fig 1e, 2e, openings of mask is not roughened thus a smoothness inhibiting adhesion, does not deform during spraying, paragraph [0021]).
Shiratori is quiet to spraying molten metal droplets to form raised metal structures, and is quiet to wherein the polymeric mask is positioned to provide a gap between a lower surface of the mask and the base surface, such that molten metal droplets impact the base and agglomerate to form the raised structures having a height at or below a lower surface of the mask for facilitating release of the mask after the spraying.
Palma teaches a metal arc spray system (abstract) where an under-dimensioned area is roughened, then bordered with a raised template spaced a short distance above the surface, and then metal spray coating is applied (abstract). Palma teaches that if the mask was left in place while the metal spray swept across, the coating would invariably extend over the inner edges of the mark, leading to cracking of the coating (col 7 lines 15-45), and elevates the mask above the surface (col 7 lines 30-45).
It would have been obvious to one of ordinary skill in the art to modify Shiratori so as to spray molten metal, as the material to be sprayed depends on what is intended to be formed, and that Palma shows metals can be sprayed. It would have been obvious to one of ordinary skill in the art to modify Shiratori such that the mask is elevated a short distance from the metal base, as Palma teaches that if the mask was left in place, the coating would extend over the inner edge and likely lead to cracks.
Regarding claim 46, the combination teaches wherein the raised structures are provided to have a height at or below a lower surface of the mask for facilitating release of the mask after the metal spray deposition (Palma, fig 7).
Regarding claims 47 and 56, the combination is quiet to wherein the polymeric mask has a surface roughness below 0.4 µm (claim 47) and further comprising polishing the polymeric mask prior to the spraying to reduce surface roughness.
However, both Shiratori and Palma recognize that it is due to roughness that the coatings adhere to the substrate (Shiratori, paragraph [0022], thermal spray adheres only to roughened area, Palma, col 5 lines 40-50), and that Palma shows that it is undesired for the coating to be on the mask (fig 6).
It would have been obvious to one of ordinary skill in the art to modify the combination so as to optimize a surface roughness of the mask, such as by polishing to reduce the surface roughness, as it is not desired for the spray to adhere to the mask.
Regarding claim 48, the combination teaches wherein the molten metal droplets are sprayed so as to contact the polymeric mask below a glass transition temperature thereof (note combination, where the mask does not deform during the spray (paragraph [0021]), and can be vaporized at temperatures higher than the temperature during thermal spraying (paragraph [0026])).
Regarding claim 50, the combination is quiet to wherein the polymeric mask is spaced apart from the metal base by a gap between 0.5 mm and 1 mm during the spraying.
However, Palma recognized that when no space is provided, the coating would extend over the inner edge and leading to cracks when the mask was removed (col 7 lines 20-45).
It would have been obvious to one of ordinary skill in the art to optimize the distance between the base and mask, so as to avoid the coating from extending over the inner edge portions of the mask which was lead to cracks when the mask is removed.
Regarding claim 51, the combination teaches wherein the gap is provided by providing a step that is part of the polymeric mask (note combination, Palma fig 8, shims 62 construed as a step of the mask).
Regarding claim 52, the combination teaches wherein the gap is provided by providing a metal shim under edges of the mask (note combination, Palma, fig 8, shims 62).
Regarding claim 53, the combination teaches wherein the gap is provided by using a support member to hold the polymeric mask to hover above the base (note combination, Palma, fig 8, shims 82 can be construed as a support member).
Regarding claim 54, the combination teaches further comprising roughening the base prior to spraying the molten metal droplets (Shiratori, fig 1c, 2c, 3c, Palma, col 5 lines 40-55), but is quiet to provide a roughness between 2 µm and 5 µm.
However, as both Shiratori and Palma recognize that the sprayed droplets adhere only to the roughened areas, it would have been obvious to one of ordinary skill in the art to optimize a surface roughness of the base part to be sprayed, to ensure good adhesion.
Regarding claim 55, the combination teaches wherein the roughening is performed by grit blasting (note roughening in Shiratori and Palma, Palma teaches roughening can be done by grit blasting (col 1 line 60-67)).
Regarding claim 57, the combination teaches wherein side walls of the polymeric mask are vertical (Shiratori, fig 1b, 1c, 2b, 2c, 3b, 3c).
Regarding claim 59, the combination teaches wherein, during the spraying, the polymeric mask is offset from the base by an amount greater than a target height of the raised structures (Palma, fig 7).
Regarding claim 60, the combination teaches wherein the polymeric mask is composed of a high temperature SLA resin (Shiratori, resist, volatizes at temperature higher than the spray temperature) and has a thickness of at least 3 mm (obvious to optimize the thickness so that the mask does not deform, Shiratori, paragraph [0021]).
Regarding claim 61, the combination teaches wherein the openings of the polymeric mask are oriented normal to a spray direction of the molten metal droplets (Shiratori, figs 1-3, note openings are horizontal, spray direction is straight down, Palma fig 7).
Claim(s) 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratori as modified by Palma as applied to claim 45 above, and further in view of Baldwin et al (US 2018/0106154).
Regarding claim 49, the combination is quiet to the polymeric mask is pre-fabricated using three-dimensional printing.
Baldwin teaches a thermal spray process (paragraph [0042], figs 7-8), where the mask may be formed by an additive manufacturing process, such as being a 3D printed mask (paragraph [0049]).
It would have been obvious to one of ordinary skill in the art to form the mask of the combination by 3D printing, as Baldwin is not limited to the specific mask and that Baldwin teaches 3D printing is known and can be designed for forming engineered surfaces (paragraph [0049]).
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratori as modified by Palma as applied to claim 45 above, and further in view of Klassen et al (US 6,331,680).
Regarding claim 58, the combination is quiet to wherein side walls of the polymeric mask have an outward taper toward the base.
Klassen et al teaches thermal spraying conductive material through defined apertures in a spray mask (abstract), providing undercuts so as to prevent the mask from attaching to the substrate (col 3 lines 25-45).
It would have been obvious to one of ordinary skill in the art to provide undercuts to the mask of the combination, so as to prevent attachment to the substrate for easier removal.
Claim(s) 62-64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratori as modified by Palma as applied to claim 45 above, and further in view of Hamweendo (US 2017/0250122).
Regarding claim 62, the combination is quiet to wherein the spraying comprises multiple spray passes, and the process comprises cooling the base in between the spray passes, and debris removal between the spray passes, and wherein the spraying is conducted using a robotic arm and a control system.
Hamweendo teaches manufacturing microchannels (abstract) by a number of iterative sequences including deposition of a material (33) through a mask, grinding the protruding tips, then further material deposition under a desired number of rows have been formed (fig 6).
It would have been obvious to one of ordinary skill in the art to include multiple passes and debris removal between passes, as taught in Hamweendo, so as to deposit a workpiece having a desired number of rows, such as for forming microchannels of a micro heat exchanger (abstract). It would have been obvious to one of ordinary skill in the art to cool in between the passes, when performing the hot spraying, so that the first pass can structurally support the next layers. It would have been obvious to include a robotic arm to improve quality and consistency when manufacturing the parts.
Regarding claim 63, the combination teaches wherein the polymeric mask is composed of a high- temperature photopolymer resin (Shiratori, resist, volatizes at temperature higher than spray temperature), and the molten metal droplets are composed of aluminum (Palma, aluminum).
Regarding claim 64, the combination teaches wherein the raised structures are provided to have a height larger than an intended design height, and the process includes machining the raised structures to provide a flat top (Hamweendo, fig 6, grinding the protrusion tips after deposition).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights