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 1-8 are pending.
Claim Rejections - 35 USC § 103
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 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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Klint et al. (U.S. 2003/0009137) in view of Fujita et al. (U.S. 2017/0022626), and further in view of Ishii (JP 63297600 A, citations based on translation).
Regarding claim 1, Klint teaches a method of manufacturing a conical hollow needle including a conical part whose outer circumferential surface is tapered (see e.g. Paragraph 0026 and Paragraph 0076, lines 1-4, method of manufacturing needle cannula, i.e. hollow needle, with conical tapered reduced diameter end portion), comprising
immersing a hollow needle having a straight shape in an electrolytic solution and performing electropolishing to make an outer circumferential surface of the hollow needle into a conical shape (see e.g. Figs. 3 and 7, initially straight hollow needle cannula 1 dipped into bath in container 18 and reduced in diameter to form the outer conically tapered part 6 by material removal in electrolytic process, i.e. electropolishing; Paragraphs 0064 and 0076), wherein
from a start to an end of the electropolishing, the hollow needle serves as an anode (see e.g. Paragraph 0076, lines 9-10).
Klint does not explicitly teach, from a start to an end of the electropolishing, a pair of cathodes being arranged such that the cathodes sandwich the hollow needle at a prescribed distance in a radial direction. Klint does however teach a cathode being present in the electrolytic solution bath with the anodic hollow needle (see e.g. Paragraph 0076, lines 8-10).
Fujita teaches a process for electropolishing the surface of a stainless steel containing member (see e.g. Abstract) in which the member to be electropolished serves as an anode and may be immersed in an electroplating solution between two plate-like cathode electrodes at a radial distance to secure as uniform a distance between the anode and cathodes as possible and thereby an electropolished surface as uniform as possible (see e.g. Fig. 2, member 1 as anode between plate-type electrodes 2 as cathodes; Paragraph 0046, lines 1-10, Paragraph 0050, and Paragraph 0076, lines 8-12)
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 method of the Klint to have two cathodes radially sandwiching the anodic hollow needle at a distance during the electropolishing as taught by Fujita as a suitable cathode arrangement for an electropolishing process that facilitates provision of as uniform a distance between the anode and cathodes as possible and thereby an electropolished surface as uniform as possible. 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.
Modified Klint does not explicitly teach, from a start to an end of the electropolishing, the hollow needle being rotated around a needle axis to change which faces of the hollow needle are opposite to the cathodes.
Ishii teaches a method of electrolytically polishing a needle-shaped body (see e.g. Page 1, lines 1-5) in which the needle-shaped body is rotated around its axis during the polishing, enabling easy formation of a highly accurate needle-shaped body with reduced axial displacement and a stabilized shape (see e.g. Page 1, lines 17-19, and Page 2, lines 5-7 and 15-19).
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 method of modified Klint to comprise rotating the hollow needle around its axis during the electropolishing, thereby changing the faces opposite the radially surrounding cathodes, as taught by Ishii to enable easy formation of a highly accurate electropolished hollow needle body with reduced axial displacement and a stabilized shape.
Regarding claim 6, Klint as modified by Fujita teaches the conical part formed by electropolishing having a roundness of about 0 mm (see e.g. Klint Paragraphs 0057 and 0076, initially uniform inside and outside diameter, with outside diameter then reduced by electrolytic process; see e.g. Fujita Paragraph 0050, lines 1-5, electropolishing as uniform as possible across surface of member, i.e. forming a uniform reduced diameter with a roundness of about 0, as similarly described in paragraph 0039 of the instant specification), thus falling within or being very close to the claimed range. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists…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.”.
Claims 2-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Klint in view of Fujita.
Regarding claim 2, Klint teaches a method of manufacturing a conical hollow needle including a conical part whose outer circumferential surface is tapered (see e.g. Paragraph 0026 and Paragraph 0076, lines 1-4, method of manufacturing needle cannula, i.e. hollow needle, with conical tapered reduced diameter end portion), comprising
immersing a hollow needle having a straight shape in an electrolytic solution and performing electropolishing to make an outer circumferential surface of the hollow needle into a conical shape (see e.g. Figs. 3 and 7, initially straight hollow needle cannula 1 dipped into bath in container 18 and reduced in diameter to form the outer conically tapered part 6 by material removal in electrolytic process, i.e. electropolishing; Paragraphs 0064 and 0076), wherein
from a start to an end of the electropolishing, the hollow needle serves as an anode (see e.g. Paragraph 0076, lines 9-10).
Klint does not explicitly teach, from a start to an end of the electropolishing, at least one cathode being arranged radially opposite to the outer circumferential surface of the hollow needle, the at least one cathode being arranged at not less than three different positions in a circumferential direction of the hollow needle. Klint does however teach a cathode being present in the electrolytic solution bath with the anodic hollow needle (see e.g. Paragraph 0076, lines 8-10).
Fujita teaches a process for electropolishing the surface of a stainless steel containing member (see e.g. Abstract) in which the member to be electropolished serves as an anode and may be immersed in an electroplating solution between two or more plate-like cathode electrodes at a radial distance which may be adjusted horizontally in position (see e.g. Fig. 2, member 1 as anode between plate-type electrodes 2 as cathodes; Paragraph 0046, lines 1-10, Paragraphs 0050 and 0052) or with a curved cathode electrode to conform to a cylindrical shape of the member to secure as uniform a distance between the anode and cathodes as possible and thereby an electropolished surface as uniform as possible (see e.g. Paragraph 0051).
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 method of the Klint to have the cathode formed by two or more plate type electrodes that may move horizontally during the electropolishing, thereby being arranged at three or more different circumferential positions, or by a curved electrode that is also thereby arranged at more than three circumferential positions along the curve as taught by Fujita as suitable cathode arrangements for an electropolishing process that facilitate provision of as uniform a distance between the anode and cathodes as possible and thereby an electropolished surface as uniform as possible. 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.
Regarding claim 3, Klint as modified by Fujita teaches the at least one cathode comprising a plurality of cathodes arranged independently of each other in the circumferential direction of the hollow needle (see e.g. Fujita Fig. 2, electropolished member 1 arranged between two or more plate type cathode electrodes 2 in the circumferential direction; Paragraph 0050), and
from the start to the end of the electropolishing, an arrangement of the plurality of cathodes relative to the hollow needle being changed so that the plurality of cathodes are arranged at different positions in the circumferential direction of the hollow needle (see e.g. Fujita Paragraph 0052, the cathode electrodes being adjustable in the horizontal direction, i.e. circumferential with respect to the surrounded electropolished member).
Regarding claim 4, Klint as modified by Fujita teaches the at least one cathode being arranged to surround the hollow needle, and from the start to the end of the electropolishing, the at least one cathode being simultaneously opposite to the hollow needle at not less than three different positions in the circumferential direction (see e.g. Fujita Paragraph 0051, curved cathode electrode conforming to, i.e. surrounding, cylindrical circumferential surface of electropolished member, thereby being opposite at least three different positions along the curve).
Regarding claim 5, Klint as modified by Fujita teaches the at least one cathode extending in a curved manner in the circumferential direction of the hollow needle (see e.g. Fujita Paragraph 0051, curved cathode electrode).
Regarding claim 8, Klint as modified by Fujita teaches the conical part formed by electropolishing having a roundness of about 0 mm (see e.g. Klint Paragraphs 0057 and 0076, initially uniform inside and outside diameter, with outside diameter then reduced by electrolytic process; see e.g. Fujita Paragraph 0050, lines 1-5, electropolishing as uniform as possible across surface of member, i.e. forming a uniform reduced diameter with a roundness of about 0, as similarly described in paragraph 0039 of the instant specification), thus falling within or being very close to the claimed range. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists…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.”.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Klint in view of Zdeblick et al. (U.S. 2006/0070887).
Regarding claim 7, Klint teaches a method of manufacturing a conical hollow needle including a conical part whose outer circumferential surface is tapered (see e.g. Paragraph 0026 and Paragraph 0076, lines 1-4, method of manufacturing needle cannula, i.e. hollow needle, with conical tapered reduced diameter end portion), comprising
immersing a hollow needle having a straight shape in an electrolytic solution and performing electropolishing to make an outer circumferential surface of the hollow needle into a conical shape (see e.g. Figs. 3 and 7, initially straight hollow needle cannula 1 dipped into bath in container 18 and reduced in diameter to form the outer conically tapered part 6 by material removal in electrolytic process, i.e. electropolishing; Paragraphs 0064 and 0076), wherein
from a start to an end of the electropolishing, the hollow needle serves as an anode (see e.g. Paragraph 0076, lines 9-10).
Klint does not explicitly teach a plurality of cathodes being arranged apart from and opposite to the outer circumferential surface of the hollow needle, and the electropolishing on the hollow needle by each cathode being adjusted by controlling an energization state between the hollow needle and the plurality of cathodes. Klint does however teach a cathode being present in the electrolytic solution bath with the anodic hollow needle (see e.g. Paragraph 0076, lines 8-10).
Zdeblick teaches an apparatus and method of electrochemical machining (see e.g. Abstract) in which a plurality of cathodes may be arranged radially, i.e. circumferentially, surrounding an anodic part to be machined (see e.g. Figs. 5 and 7-8, anodically polarized part 20/220/420 surrounded by cathodes 24/224/424; Paragraph 0030, lines 1-7 and 16-19, and Paragraph 0031, lines 7-16), each cathode being selectively and individually energized during the electrolytic removal process according to a switching program/algorithm (see e.g. Fig. 8, cathodes 24 selectively energized via switches 38; Paragraph 0037), thus enabling controlled variable anodic dissolution with a static apparatus that can easily create an infinite variety of machined surfaces with computer numeric control methods (see e.g. Paragraph 0041, lines 1-8).
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 method of Klint to comprise providing a plurality of cathodes circumferentially surrounding the anodic hollow needle with each cathode being selectively and individually energizes during the electropolishing according to a switching program/algorithm as taught by Zdeblick to enable controlled variable anodic dissolution with a static apparatus that can easily create an infinite variety of electropolished surfaces with computer numeric control methods.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bialas et al. (U.S. 2011/0247943) discloses a method for electropolishing a tubular metal article in which the shape of one or more cathodes is selected to correct for current concentrations that would unevenly affect the amount of electropolishing over the article.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOFOLUWASO S JEBUTU/Examiner, Art Unit 1795
