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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-5, drawn to an anodic oxidation film structure.
Group II, claims 6-8, drawn to a method manufacturing an anodic oxidation film structure.
The inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common feature --an anodic oxidation film structure, comprising: a body made of an anodic oxidation film; a perforated hole formed through the body; and a metal layer on an inner wall of the perforated hole-- cannot qualify as a special technical feature as it does not provide a contribution over the prior art because it is disclosed by Ahn et al. (US 2021/0251077 A1) (see the international search report).
In particular, an anodic oxide film sheet (ref. #10) having through-holes (ref. "H"), and a first thin film layer (ref. #11) provided to a predetermined thickness on the inner surface (ref. "H'") of each through-hole, and the first thin film can be formed from aluminum oxide, aluminum nitride, or a metal ([0064], [0171], and [0195] of Ahn). Therefore, the reference(s) specifically suggest(s) using the common elements as claimed.
During a telephone conversation with Belinda Lee on 3 March 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species 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 restriction 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 invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation 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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in this application on 23 May 2024.
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)(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, 2, and 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ahn et al. (US 2021/0251077 A1).
Regarding Claim 1: Ahn teaches performing anodic oxidation on a base metal to form an anodic oxidation film, the base metal being removed from the formed anodic oxidation film to form an anodic oxidation sheet (ref. #10), wherein the anodic oxidation sheet comprises a plurality of pores (ref. "P") having diameters ranging from ones of nanometers to hundreds of nanometers (i.e., 1 nm to 999 nm) (figures 1A to 1D, [0035]-[0042] of Ahn). Ahn also teaches through-holes (ref. "H") extending through the anodic oxidation sheet, wherein the through-holes are each either filled or have a thin film layer (ref. #11) of a metal formed on an inner surface of the through-hole (figures 2A to 2D, [0155]-[0188] of Ahn). Ahn further teaches that the first thin film can have a predetermined thickness (e.g., 20 nm to 3 µm) ([0016] and [0062] of Ahn). (In the instant case, since the first thin film can be such that it does not entirely fill the through-hole, covers the entire surface of the through-hole, and can have a thickness of 20 nm to 3 µm, a person having ordinary skill in the art at the time the invention was made would have determined the width of the through-holes can be greater than 6 µm [=(3 µm)+(3 µm)], and is greater than the width (diameter) of the pores (i.e., 1 nm to 999 nm); which anticipates the claimed limitation that the perforated hole has --a larger inner width than [inner width of] pores--.)
Regarding Claim 2: Ahn teaches that the metal layer comprises a first metal layer (ref. #11) provided on the inner wall of the perforated hole, and a second metal layer (ref. #12) provided on an inner wall of the first metal layer (figure 2D, [0183], and [0186] of Ahn).
Regarding Claim 3: Ahn teaches the claimed anodic oxidation film structure, but does not explicitly recite --the inner wall of the perforated hole is provided with a plurality of fine trenches in which a plurality of peaks and a plurality of valleys are repeated in a circumferential direction of the perforated hole, wherein the first metal layer entirely covers the fine trenches--. However, Ahn uses the same materials as applicants (i.e., a body made of an anodic oxidation film (e.g., Al2O3) formed by anodic oxidation of a base metal and then removing the base metal, a perforated hole formed through the body and having a larger inner width than [inner width of] pores formed during the anodic oxidation; see ([0020], [0021], [0035]-[0042], [0061], [0062], [0087], [0102]-[0110], [0128], [0144], [0145], [0151], [0152], [0156]) of Ahn and ([0011] and [0053]) of the filed specification). Therefore, it is the decision of the examiner that the perforated hole of Ahn inherently possesses a plurality of fine trenches in which a plurality of peaks and a plurality of valleys are repeated in a circumferential direction of the perforated hole. (In the instant case, because the body of Ahn is Al2O3 with a plurality of pores witch diameters of ones of nm to hundreds of nm, and that the through-holes formed into the body would have at least some of its circumferential portion being defined by cross-sections of the pores. It would stand to reason that the outer circumference of the through-holes would possess said "plurality of fine trenches in which a plurality of peaks and a plurality of valleys are repeated in a circumferential direction".) Furthermore, Ahn also teaches that the first metal layer entirely covers the fine trenches (figures 2C to 2D, [0087], [0102]-[0110], [0151], [0152], [0156], [0158], and [0159] of Ahn).
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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al. (US 2021/0251077 A1) as applied to claims 1 and 2 above, and further in view of Yamashita (US 2014/0085829 A1).
Ahn is relied upon as stated above.
Regarding Claims 4 and 5: Ahn discloses the claimed anodic oxidation film structure, and that the first metal layer and the second metal layer can be of different materials having different properties (i.e., heat resistance, corrosion resistance, voltage resistance, plasma resistance, etc.) ([0129] and [0134]-[0136] of Ahn).
Ahn fails to disclose --the first metal layer is made of a single layer or a plurality of layers of titanium (Ti), copper (Cu), gold (Au), or nickel (Ni)-- {instant claim 4} or --the second metal layer is made of at least one metal selected from: the group consisting of rhodium (Rd), platinum (Pt), iridium (Ir), palladium (Pd), nickel (Ni), manganese (Mn), tungsten (W), phosphorus (Ph), cobalt (Co), and an alloy of these metals; the group consisting of a palladium-cobalt (PdCo) alloy and a palladium-nickel (PdNi) alloy; the group consisting of a nickel-phosphorus (NiPh) alloy, a nickel-manganese (NiMn) alloy, a nickel-cobalt (NiCo) alloy, and a nickel-tungsten (NiW) alloy; or the group consisting of copper (Cu), silver (Ag), gold (Au), and an alloy of these metals-- {instant claim 5}.
Yamashita discloses an insulating based (ref. #12) of an anodized film of aluminum substrate comprising conduction passages (ref. #13) therethrough, the conduction passages formed from metals of copper (Cu), gold (Au), silver (Ag), and Nickel (Ni) (figure 1C, [0036]-[0041], and [0046] of Yamashita).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the metals of Yamashita as the material for the first metal layer and the second metal layer disclosed by Ahn in order to have --the first metal layer is made of a single layer or a plurality of layers of copper (Cu), gold (Au), or nickel (Ni)-- {instant claim 4} and --the second metal layer is made of at least one metal selected from: the group consisting of nickel (Ni), and an alloy of these metals; or the group consisting of copper (Cu), silver (Ag), gold (Au), and an alloy of these metals-- {instant claim 5}. One of ordinary skill in the art would have been motivated to incorporated the metals of Yamashita as the material for the first metal layer and the second metal layer disclosed by Ahn, from the stand-point of having a material with an electrical resistivity of less than or equal to 103 Ω∙cm ([0040] of Yamashita). (In the instant case, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to have used gold, silver, copper or nickel as the material for the first metal layer or the second material layer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. See MPEP §2144.07.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ahn et al. (US 2024/0218547 A1) discloses a structure made from an anodic film with pores and holes and a metal coating on the inner surface of the holes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781