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
Applicant’s election without traverse of Group II, claims 10-13, 15-17, 20-22 and 33-36 are in the reply filed on June 29, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 23-25, 27 (product) and 29-30 (apparatus) are withdrawn from consideration as being directed to a non-elected invention.
Drawings
The drawings were received on January 29, 2025. These drawings are acceptable.
Claim Objections
I. The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 37 and 38 been renumbered 35 and 36.
II. Claims 11-13, 15-17, 21 and 33-34 are objected to because of the following informalities:
Claim 11
Line 7, please insert the word -- and – after the word “anode;”.
Claim 12
Line 3, please insert the word -- and – after the “180o;”.
Claim 13
Line 6, please insert the word -- and – after the word “shape;”.
Claim 15
Line 4, please insert the word -- and – after the word “substrate;”.
Claim 16
Line 3, please insert the word -- and – after “Ω type”.
Claim 17
Line 8, please amend the words “electroplated part” to the word – substrate --.
Line 9, please amend the words “electroplated part” to the word – substrate --.
Line 10, please amend the words “electroplated part” to the word – substrate --.
Claim 21
Line 2, please amend the words “a plated layer” to the words -- the electroplated layer --.
This is an instance where the article should be changed to ensure the consistency and proper antecedent basis for the claim terminology.
Claim 33
Line 6, please amend “(1:30]” to -- (1:30) --.
Line 7, please amend “(1:20]” to -- (1:20) --.
Line 9, please amend “(1:15]” to -- (1:15) --.
Line 10, please amend “(1:12]” to -- (1:12) --.
Claim 34
Line 3, please amend “(1, 7.5]” to -- (1, 7.5) --.
Line 4, please amend “[0.25, 1)” to -- (0.25, 1) --.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 10-13, 15-17, 20-22 and 33-36 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.
• Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
• Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware of.
Claim 10
Lines 5-6, “the length of a motion trajectory” lacks antecedent basis.
See also claim 11, lines 2, 3-4, 5-6 and 7-8.
Lines 7, “the width of the anode” lacks antecedent basis.
See also claim 11, lines 3, 5, 7 and 9; and claim 12, line 2.
Claim 12
Lines 2, “the amplitude of swing” lacks antecedent basis.
Claim 13
Line 2, “the amplitude of swing” lacks antecedent basis.
Line 4, “the area” (both occurrences) lacks antecedent basis.
Line 4, “the auxiliary cathode” (singular) lacks antecedent basis.
See also claim 13, lines 5 (both occurrences) and 6 (both occurrences).
Lines 4-5, “the area of a cathode” lacks antecedent basis.
Lines 5-6, “the auxiliary cathode has a length of 0.5 mm-20 mm; the auxiliary cathode has a length of 0.5 mm-10 mm” is indefinite. Which one is it?
Lines 6-8, “the auxiliary cathode is of any shape; the auxiliary cathode comprises at least one of a linear type, an annular type, a ring type, a prismatic type, a pyramidal type, a spiral
type, a wheel type, a cylindrical type, and a corrugated type” is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation shape, and the claim also recites a linear type, an annular type, a ring type, a prismatic type, a pyramidal type, a spiral type, a wheel type, a cylindrical type, and a corrugated type which is the narrower statement of the range/limitation.
Lines 7-8, recite “a linear type, an annular type, a ring type, a prismatic type, a pyramidal
type, a spiral type, a wheel type, a cylindrical type, and a corrugated type”.
The word “type” is indefinite. See MPEP 2173.05(b)(III)(E).
Claim 15
Line 2, “the cross-sectional area” lacks antecedent basis.
Line 2, “the auxiliary cathode” (singular) lacks antecedent basis.
See also claim 15, lines 4-5.
Lines 2-3, “an anode surface” is indefinite.
Is this in relationship to the anode recited in claim 10, line 5?
Line 4, “the cross-sectional area of the short axis” lacks antecedent basis.
Claim 16
Lines 2-3, recite “a linear type, an S type, a ω type, or a Ω type” is indefinite.
The word “type” is indefinite. See MPEP 2173.05(b)(III)(E).
Line 4, “the auxiliary cathode” (singular) lacks antecedent basis.
Claim 17
Lines 1-10, “wherein the substrate is subjected to a force of the fixture during the electroplating process; the magnitude of the force applied to the substrate by the fixture during the electroplating process is 1 x 10-3 N-0.5 N; wherein the contact area between the substrate and the fixture is not more than 0.1 mm2; or wherein the temperature of the electroplating solution during the electroplating process of the electroplated part is 10°C-50oC; the current density during the electroplating process of the electroplated part is 1 A-dm2-20 A-dm2; the electroplating time during the electroplating process of the electroplated part is 10-300 s” is indefinite.
It is unclear from the claim language whether all of the “wherein” clauses are in the alternative or not.
Line 5, “the contact area” lacks antecedent basis.
Line 7, “the temperature” lacks antecedent basis.
Lines 9-10, “the electroplating time” lacks antecedent basis.
Claim 20
Lines 1-2, “each component” lacks antecedent basis.
Claim 33
Lines 1-2, “the content of organic residues” lack antecedent basis.
See also claim 33, lines 2-3 and 3.
Lines 4-5, “the ratio of the thickness” lacks antecedent basis.
See also claim 33, lines 6, 7-8 and 9.
Line 5, “the thickest place” lacks antecedent basis.
See also claim 33, lines 5, 6-7, 8 and 10.
Line 5, “the thickness at the thinnest place” lacks antecedent basis.
See also claim 33, lines 5, 7, 8-9 and 10.
Claim 34
Lines 1-2, “the average thickness” lacks antecedent basis.
See also claim 34, lines 3 and 5.
Line 2, “the thickness” lacks antecedent basis.
See also claim 34, lines 3-4, 6, 7, 8, 9, 11, 12, 13 and 14.
Line 3, “the thickest place” lacks antecedent basis.
See also claim 34, lines 11, 12, 13-14 and 14-15.
Line 4, “the thinnest place” lacks antecedent basis.
See also claim 34, lines 6, 8-9 and 9-10.
Claim 35
Line 3, “an alloy layer” is indefinite.
Applicant’s specification does not appear to include ceramic alloy layers.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
Line 3, “the content of zinc” lacks antecedent basis.
See also claim 35, line 4.
Line 5, “the mass-to-volume ratio” lacks antecedent basis.
See also claim 35, lines 6 and 6-7.
Lines 7-9, is the limitation of “an iron alloy comprises at least one of a low alloy steel or an iron-based alloy having a carbon content of no more than 2.5 wt.%” further limiting “an alloy layer” recited in claim 35, line 3?
Claim 36
Lines 1-6, recite “wherein the electroplated part is an electroplated part for a medical device; the medical device comprises a vascular stent, a non-vascular endoluminal stent, an occluder, an orthopedic implant, a heart valve, a spacer, an artificial vessel, a dental implant device, a vascular clamp, a dental implant, a respiratory implant, a gynecological implant, an andrological implant, a suture, and a bolt”.
Is the electroplated part all of them? And if so, how?
Lines 6-8, “the substrate is made of a degradable metal or a degradable non-metal material; the substrate comprises at least one of pure iron, an iron alloy, pure zinc, a zinc alloy, pure magnesium, and a magnesium alloy” is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See
MPEP § 2173.05(c). In the present instance, claim 36 recites the broad recitation a degradable
metal or a degradable non-metal material, and the claim also recites pure iron, an iron alloy, pure zinc, a zinc alloy, pure magnesium, and a magnesium alloy which is the narrower statement of the range/limitation.
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.
I. Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubin et al.
(US Patent Application Publication No. 2012/0199491 A1) in view of WO 99/54527 (‘527).
Regarding claim 10, Dubin teaches a preparation method for an electroplated part (= methods of electroplating copper onto at least one surface of a substrate) [page 2, [0018]], the
electroplated part comprising a substrate and an electroplated layer (= a copper film 120 is
electroplated onto the surface 112 of the substrate 110) [page 3, [0024]], the electroplated
layer covering the substrate (=
PNG
media_image1.png
322
678
media_image1.png
Greyscale
) [Fig. 1],
• wherein the substrate is placed in an electroplating solution (= immersing the substrate holder 108 carrying the substrate 110 in the electroplating solution 104) [pages 2-3, [0023]] and moves relative to an anode at a certain amplitude and frequency (= during electroplating of the copper film 120, the substrate 110 may be linearly oscillated at a rate of about 10 millimeters per second (“mm/s”) to about 1000 mm/s back and forth in the directions H1 and H2) [page 3, [0025]] with a fixture (= a movable arm 116 is connected to the substrate holder 108 and may orient the surface 112 of the substrate 110 downwardly, and further is operably connected to an actuator system 118) [page 2, [0021]].
Dubin does not explicitly teach wherein the length of a motion trajectory of the substrate relative to the anode during an electroplating process is 2-980 times the width of the
anode; and/or auxiliary cathodes are connected to the substrate.
Dubin teaches that:
A substrate holder 108 is configured to hold a substrate 110, having at least one surface
112, to be electroplated in the electroplating solution 104. The substrate holder 108 may be configured according to any conventional or subsequently developed substrate holder. Although only a single substrate is illustrated in FIG. 1 for simplicity, many commercially available substrate
holders are configured to hold multiple substrates. Additionally, as used herein, the term “substrate” refers to any workpiece capable of being electroplated. For example, suitable substrates include, but are not limited to, semiconductor substrates (e.g., single-crystal silicon wafers, single-crystal gallium arsenide wafer, etc.) with or without active and/or passive devices (e.g., transistors, diodes, capacitors, resistors, etc.) formed therein and with or without at least one surface coated with a seed layer, printed circuit boards, flexible polymeric substrates, and many other types of substrates (page 2, [0019]).
Like Dubin, WO ‘527 teaches metal electroplating or electrochemical deposition onto semiconductor substrates (abstract).
One current method for providing power to the plating surface uses contacts (e. g., pins, ‘fingers’, or springs) which contact the substrate seed layer. The contacts touch the seed layer as close as practically possible to the edge of the substrate, to minimize the wasted area on the wafer due to the presence of the contacts (page 5, lines 1-4).
The vibrational agitation member 82 usually comprises a motor or a vibrational transducer that moves the substrate holder 44 back and forth on one or more axes at a frequency from about 10 Hz to about 20,000 Hz. The amplitude of the vibration is preferably between about 0.5 micron and about 100,000 micron. The vibrational agitation member 82 may also provide additional vibration in a second direction that is parallel to the substrate plating surface 54, such as vibrating the substrate in the x-y directions, or in a direction orthogonal to the substrate plating surface 54, such as in the x-z directions. Alternatively, the vibrational agitation member 82 may vibrate the substrate in multiple directions, such as the x-y-z directions (page 14, lines 4-14).
The auxiliary electrode 84 may comprise a ring, a series of concentric rings, aseries of segmented rings, or an array of spaced electrodes to match a correspondingarray of cathode contact pins 56. The auxiliary electrode 84 may be positioned on thesame plane as the substrate plating surface 54 (page 16, lines 26-30).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Dubin with wherein auxiliary cathodes are connected to the substrate. The person with ordinary skill in the art would have been motivated to make this modification because Dubin teaches that the
substrate holder may be configured according to any conventional or subsequently developed
substrate holder in [0019] where using contacts (e. g., pins, ‘fingers’, or springs) which contact the substrate in an array of spaced electrodes to match a corresponding array of cathode contact pins would have provided power to the plating surface as taught by WO ‘527 on page 5, lines 1-4; and page 16, lines 26-30.
II. Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubin et al. (US Patent Application Publication No. 2012/0199491 A1) in view of WO 99/54527 (‘527) as applied to claim 10 above, and further in view of Zhang et al. (US Patent Application Publication No. 2022/0064813 A1).
Regarding claim 17, Dubin teaches the method of at least claim 10 as applied above. Dubin also teaches wherein the temperature of the electroplating solution during the electroplating process of the electroplated part is 10°C-50oC (= the electroplating solution 104 at a temperature of about 20o C. to about 60o C) [page 2, [0019]]; and wherein the electroplating time during the electroplating process of the electroplated part is 10-300 s (= a high deposition rate (e.g., about 6 µm per minute or more)) [page 2, [0018]].
Dubin does not explicitly teach wherein the substrate is subjected to a force of the fixture during the electroplating process; the magnitude of the force applied to the substrate by the fixture during the electroplating process is 1 x 103 N-0.5 N; wherein the contact area between the substrate and the fixture is not more than 0.1 mm2; or wherein the current density during the electroplating process of the electroplated part is 1 A-dm2-20 A-dm2.
Like Dubin, Zhang teaches a method of electroplating of copper (page 1, [0001]).
In another embodiment, the electroplating is conducted at a current density of 2-20 A/dm2; at a current density of 3-15 A/dm2; or at a current density of 5-10 A/dm2 (page 2, [0015]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electroplating process taught by Dubin with wherein the current density during the electroplating process of the electroplated part is 1 A-dm2-20 A-dm2. The person with ordinary skill in the art would have been motivated to make this modification because conducting copper electroplating at a current density of 2-20 A/dm2 would have deposited a copper film as taught by Zhang in [0013] and [0015].
III. Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/082093 (‘093).
Regarding claim 10, WO ‘093 teaches a preparation method for an electroplated part (= a method for metallization on substrate) [ρ [0001]], the electroplated part comprising a substrate (= substrate) [ρ [0001]] and an electroplated layer (= highly uniform metallic film deposition) [ρ [0001]], the electroplated layer covering the substrate (= uniform metallization
on substrate) [ρ [0011]],
• wherein the substrate is placed in an electroplating solution (= immersing the substrate into the immersion bath) [ρ [0011]] and moves relative to an anode at a certain amplitude and frequency with a fixture (= oscillating the substrate holder in the acoustic wave field) [ρ [0011]], wherein the length of a motion trajectory of the substrate relative to the anode during an electroplating process (= the horizontal actuator 6013 is a linear or swing type)
[ρ [0036]].
WO ‘093 does not explicitly teach wherein the length of a motion trajectory of the substrate relative to the anode during an electroplating process is 2-980 times the width of the anode; and/or auxiliary cathodes are connected to the substrate.
WO ‘093 teaches that the horizontal actuator 6013 is a linear type or a swing type (ρ [0036]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by WO ‘093 with wherein the length of a motion trajectory of the substrate relative to the anode during an electroplating process is 2-980 times the width of the anode. The person with ordinary skill in the art would have been motivated to make this modification because WO ‘093 teaches that the horizontal actuator is a swing type in [0036]. Although WO ‘093 does not explicitly teach the length of a motion trajectory (= swing) of the substrate relative to the anode, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the length of a motion trajectory of the substrate relative to the anode through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which
properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955)
[MPEP § 2144.05].
Regarding claim 11, WO ‘093 does not explicitly teach wherein the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-540 times the width of the anode; the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-400 times the width of the anode; the length of the substrate motion trajectory of the substrate relative to the anode during the electroplating process is 2-240 times the width of the anode; the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-150 times the width of the anode.
WO ‘093 teaches that the horizontal actuator 6013 is a linear type or a swing type (ρ [0036]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by WO ‘093 with wherein the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-540 times the width of the anode; the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-400 times the width of the anode; the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-240 times the width of the anode; the length of the motion trajectory of the substrate relative to the anode during the electroplating process is 2-
150 times the width of the anode. The person with ordinary skill in the art would have been
motivated to make this modification because WO ‘093 teaches that the horizontal actuator is a
swing type in [0036]. Although WO ‘093 does not explicitly teach that the length of a motion trajectory (= swing) of the substrate relative to the anode, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the length of a motion trajectory of the substrate relative to the anode through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
IV. Claim(s) 17, 20-22 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/082093 (‘093) as applied to claims 10 and 11 above, and further in view of Liu (US Patent No. 4,663,000) and WO 2017/165634 (‘634).
Rgearding claim 17, WO ‘093 teaches the method of at least claims 10 and 11 as applied above. WO ‘093 does not explicitly teach wherein the substrate is subjected to a force of the fixture during the electroplating process; the magnitude of the force applied to the substrate by the fixture during the electroplating process is 1 x 103 N-0.5 N; wherein the contact area
between the substrate and the fixture is not more than 0.1 mm2; or wherein the temperature
of the electroplating solution during the electroplating process of the electroplated part is 10oC-50oC; the current density during the electroplating process of the electroplated part is 1 A-dm2-
20 A-dm2; the electroplating time during the electroplating process of the electroplated part is 10-300 s.
WO ‘093 teaches supplying at least one metal salt electrolyte into an immersion bath wherein the metal is selected from a group of metals including Cu, Au, Ag, Pt, Ni, Sn, Co, Pd, Zn (ρ [0049]).
Like WO ‘093, Liu teaches electrodepositing a layer of zinc (col. 1, lines 8-11).
The temperature of the electroplating solution during the electroplating process of the electroplated part is 10oC-50oC (= wherein the electroplating solution may be operated at room temperature, e.g., 15o C. to 35o C) [col. 3, lines 28-29]; the current density during the electroplating process of the electroplated part is 1 A-dm2-20 A-dm2 (= at a current density of about 0.5 A/dm2 to about 60 A/dm2) [col. 3, lines 58-59]; the electroplating time during the electroplating process of the electroplated part is 10-300 s (= at least about 1 second) [col. 3, lines 59-60].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electroplating solution taught by modified WO ‘093 with wherein the temperature of the electroplating solution during the electroplating process of the electroplated part is 10oC-50oC; the current density during the electroplating process of the electroplated part is 1 A-dm2-20 A-dm2; the electroplating time during the electroplating process of the electroplated part is 10-300 s. The person with ordinary skill in the art would have been motivated to make this modification because WO ‘093 teaches Zn metallization on a substrate in [0047] and [0049] where operating an electroplating solution
at room temperature, e.g., 15o C. to 35o C, and at a current density of about 0.5 A/dm2 to about 60 A/dm2 for at least about 1 second would have electroplated a ductile zinc coating as taught by Liu in col. 3, lines 28-29 and 58-60.
Regarding claim 20, Liu teaches wherein each component in the electroplating solution is an inorganic substance (e.g., zinc oxide (col. 4, lines 51-54); and potassium hydroxide (col. 4, lines 63-67)).
Regarding claim 21, Liu teaches wherein when1 zinc is contained in a plated layer, the electroplating solution comprises 3.4-4.5 wt.% of a zinc-containing component and 2.1-3.1 wt.% of a pH adjusting agent ; or the electroplating solution comprises 1.5-3.0 wt.% of the zinc-containing component (= about 5 g to about 90 g per liter of zinc ions) [col. 3, line 50] and the zinc-containing component is at least one of zinc chloride, zinc sulfate, and zinc oxide (= the zinc salts may be selected from the group comprising zinc acetate, zinc carbonate, zinc oxide, zinc chloride, zinc sulfate, zinc sulfamate and zinc phosphate) [col. 4, lines 51-54]; the pH adjusting agent is at least one of boric acid, sodium borate, potassium borate, calcium borate, sodium hydroxide, and potassium hydroxide (= the pH may be adjusted by using concentrated acids such as hydrochloric acid, phosphoric acid, or sulfuric acid and strong bases such as sodium, potassium, lithium hydroxide or ammonium hydroxide) [col. 4, lines 63-67].
Liu does not explicitly teach 6.5-8.8 wt.% of the pH adjusting agent.
Liu teaches an effective amount of buffering agent to maintain a pH in the range of about 1.0 to about 3.5 (col. 3, lines 51-53).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electroplating solution taught by modified WO ‘093 with 6.5-8.8 wt.% of the pH adjusting agent. The person with ordinary skill in the art would have been motivated to make this modification because Liu teaches using an effective amount of buffering agent to maintain a pH in the range of about 1.0 to about 3.5 in col. 3, lines 51-53. Considering that Liu is silent as to the specific amount of buffering agent, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the amount of buffering agent through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 22, Liu teaches wherein the chloride salt is at least one of sodium
chloride, potassium chloride, and ammonium chloride (= sodium chloride) [col. 6, line 44].
Liu does not explicitly teach wherein the electroplating solution further comprises 15.5-19.5 wt.% of a chloride salt.
Liu teaches 0 to about 4 moles per liter of a conductive salt (col. 3, line 54).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electroplating solution taught by modified WO ‘093 with wherein the electroplating solution further comprises 15.5-19.5 wt.% of a chloride salt. The person with ordinary skill in the art would have been motivated to make this modification because Liu teaches 0 to about 4 moles per liter of a conductive salt in col. 3, line 54, however, it has been held that changes in temperature, concentration or both, is not a patentable modification; however, such changes may impart patentability to a process if the ranges claimed produce new and unexpected results which are different in kind and not merely in degree from results of the prior art, such ranges are termed “critical” ranges and Applicant has the burden of proving such criticality; even though Applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within capabilities of one skilled in the art; more particularly, where general conditions of the claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP § 2144.05].
Regarding claim 36, WO ‘093 and Liu teach the method of at least claims 17 and 20-22 as applied above. WO ‘093 also teaches a substrate (ρ [0047]). Liu also teaches wherein the
substrate is made of a degradable metal or a degradable non-metal material; the substrate comprises at least one of pure iron, an iron alloy, pure zinc, a zinc alloy, pure magnesium, and a magnesium alloy (= the process is applicable to all conductive metal surfaces, but it is
particularly important for difficult to coat metals such as ferrous metals, steels, stainless steels, copper, aluminum, nickel, chromium, titanium, and the like and alloys of these metals) [col. 1, lines 19-24]; the electroplated layer is a pure metal layer or an alloy layer (= a ductile and adhesive zinc coating ) [col. 3, lines 45-46].
The references do not explicitly teach wherein the electroplated part is an electroplated part for a medical device; the medical device comprises a vascular stent, a non-vascular endoluminal stent, an occluder, an orthopedic implant, a heart valve, a spacer, an artificial vessel, a dental implant device, a vascular clamp, a dental implant, a respiratory implant, a gynecological implant, an and andrological implant, a suture, and a bolt.
Liu teaches that:
The present invention relates to an aqueous composition and process for electrodepositing a layer of ductile, adhesive, adsorptive and absorptive zinc coating on a metal article. The zinc coated metal article can be subjected to further treatment, such as, a functional or decorative coating or painting, and forming. The ductile zinc coating is resistant to cracking during forming, and the metal articles treated in accordance with the process of the present invention, including the formed areas, are, surprisingly, highly resistant to corrosion, stress corrosion cracking, wear and galling (col. 1, lines 8-18).
The process of the present invention is applicable to all conductive metal surfaces, but it is particularly important for difficult to coat metals such as ferrous metals, steels, stainless steels, copper, aluminum, nickel, chromium, titanium, and the like and alloys of these metals (col. 1, lines 19-24).
WO ‘634 teaches that:
As a non-limiting example, a textured zinc coating can be electroplated onto a steel substrate from a solution that comprises zinc chloride, boric acid, and potassium chloride by applying a varying voltage from open circuit potential to a high voltage beyond the initiation of the gas formation. As another example, a textured copper coating can be electroplated onto a steel substrate from a solution that comprises copper sulfate and sulfuric acid by applying a varying voltage from open circuit potential to a high voltage beyond the initiation of the gas formation (ρ [034]).
In some instances, the combined textured and surface coatings disclosed in the embodiments described herein may be present on an article selected from the group consisting of faucets, door knobs, flush toilets, bathroom fittings, pens, bed-rails, trays, hand-dryers, any appliances, tables, desks, molds, pipes, medical devices and implants, automotive vehicles, airplanes, ambulances, high touch surfaces in hospitals, surfaces in cleanroom, biomedical and food packaging, surfaces in public transit areas, surfaces in swimming pools, surfaces in public bathrooms, electronics glass screens, ovens, grills, ranges, heat-exchangers, condensers, ships, ship hulls, cellphone cases, utensil handles and the like (ρ [069]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate taught by modified WO ‘093 with wherein the electroplated part is an electroplated part for a medical device; the medical device comprises a vascular stent, a non-vascular endoluminal stent, an occluder, an orthopedic implant, a heart valve, a spacer, an artificial vessel, a dental implant device, a vascular clamp, a dental implant, a respiratory implant, a gynecological implant, an and andrological implant, a suture, and a bolt. The person with ordinary skill in the art would have been motivated to make this modification because coating zinc on steel substrates of medical devices and implants would have provided high resistance to corrosion, stress corrosion cracking, wear and galling.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 12 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the preparation method according to claim 10, wherein the width of the anode is > 0.1 cm; the amplitude of swing of the substrate relative to the anode is
0o-180o; the auxiliary cathodes are connected to two ends of the substrate in a longitudinal axis direction or in a direction parallel to an anode surface.
Claim 13 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the preparation method according to claim 10, wherein the amplitude of swing of the substrate relative to the anode is 0o-160o; the frequency of motion of the substrate relative to the anode is 0.1 s-20 s/cycle; wherein the area of the auxiliary cathode is 30%-70% of the area of a cathode; the auxiliary cathode has a length of 0.5 mm-20 mm; the auxiliary cathode has a length of 0.5 mm-10 mm; the auxiliary cathode is of any shape; the auxiliary cathode comprises at least one of a linear type, an annular type, a ring type, a
prismatic type, a pyramidal type, a spiral type, a wheel type, a cylindrical type, and a corrugated
type.
Claims 15 and 16 define over the prior art of record because the prior art does not contain any language that teaches or suggests wherein the cross-sectional area of the auxiliary cathode in a direction perpendicular to an anode surface or a longitudinal axis direction of the substrate is larger than the cross-sectional area of the short axis of the substrate; the auxiliary cathode is connected to the substrate through a linkage or a point.
Claim 33 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the preparation method according to claim 10, wherein the content of organic residues in the electroplated layer is less than 0.2%; the content of organic residues in the electroplated layer is less than 0.05%; the content of organic residues in the electroplated layer is less than 0.019%; wherein the ratio of the thickness of the electroplated
layer at the thickest place to the thickness at the thinnest place on the substrate is (1-30]: 1; the ratio of the thickness of the electroplated layer at the thickest place to the thickness at the thinnest place on the substrate is (1-20]: 1; the ratio of the thickness of the electroplated layer at the thickest place to the thickness at the thinnest place on the substrate is (1-15]: 1; the ratio of the thickness of the electroplated layer at the thickest place to the thickness at the thinnest place on the substrate is (1-12]: 1.
Claim 34 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the preparation method according to claim 10, wherein the average thickness of the electroplated layer is 0.5-5 µm; the thickness of the electroplated layer at the thickest place on the substrate is (1, 7.5] times the average thickness; the thickness of the electroplated layer at the thinnest place on the substrate is [0.25, 1) times the average thickness; wherein the thickness of the electroplated layer at the thinnest place on the substrate is 0.25-4.25 µm; the thickness of the electroplated layer at the thinnest place on the
substrate is 0.375-3.2 µm; the thickness of the electroplated layer at the thinnest 21 place on the substrate is 0.6-3.2 µm; the thickness of the electroplated layer at the thinnest place on the substrate is 0.6-2.5 µm; or wherein the thickness of the electroplated layer at the thickest place
on the substrate is 1.1-15 µm; the thickness of the electroplated layer at the thickest place on the substrate is 1.1-9.75 µm; the thickness of the electroplated layer at the thickest place on the substrate is 1.1-7.5 µm; the thickness of the electroplated layer at the thickest place on the substrate is 1.2-5 µm.
Claim 35 defines over the prior art of record because the prior art does not contain any
language that teaches or suggests wherein the electroplated layer covers more than 99% of a surface of the substrate; the electroplated layer is a pure metal layer or an alloy layer; the content of zinc in the electroplated layer is not less than 50%; the content of zinc in the electroplated layer is more than 99%; wherein the mass-to-volume ratio of the electroplated part is 0.001-10 g/cm3; the mass-to-volume ratio of the electroplated part is 0.001-5 g/cm3; the mass-to-volume ratio of the electroplated part is 0.001-0.4 g/cm3; and an iron alloy comprises at least one of a low alloy steel or an iron-based alloy having a carbon content of no more than 2.5 wt.%.
Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Claims 12-13, 15-16 and 33-35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The
examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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.
/EDNA WONG/Primary Examiner, Art Unit 1795
1 This is a contingent limitation. See MPEP § 2111.04(II).
