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 Status
Claims 21-28 and 30 are pending. Claims 21, 23, 24, 28 and 30 have been amended. Claims 29, 31 and 32 have been canceled.
Applicant’s arguments, filed 07/13/2026, with respect to claim objection have been fully considered and are persuasive. The objection of claims 29 and 31 has been withdrawn.
Applicant's arguments filed 07/13/2026, with respect to the rejection(s) of claim(s) 21-28 and 30 under 35 USC 102 have been fully considered but they are not persuasive. The art rejections are modified as necessitated by the amendment. See response to arguments below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-28 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly added limitation “non-porous cathodic material” does not have support in the specification; thus it constitutes new matter. The instant invention explicitly requires a porous cathodic material (see specification, at least summary in paragraphs [0005]-[0015]).
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.
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.
Claim(s) 21-28 and 30 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over O'Connor et al. (US 20180318843 A1).
Considering claims 21, 22, 26 and 28, O'Connor discloses a method for electrochemically depositing a metal, the method comprising: applying a first voltage charge to a cathodic material and anode at least partially disposed within a cavity [0011]; contacting a solution comprising a metal with the cathodic material having the applied first voltage charge ([0017] and [0116]), also, the solution flows through multiple cells, therefore the solution from one cell enters the next cell with applied potential; applying a second voltage charge to select the metal, wherein the first voltage charge is different than the second voltage charge ([0017] and [0099]); changing an oxidation state of the metal ([0120] and [0146]); and selectively depositing at least a portion of the metal onto the cathodic material [0069].
O'Connor discloses the cathodic material is a carbon nanotube filter.
O'Connor teaches the prior art uses cathode is generally made out of large stainless steel or aluminum sheets and the anode is an inert metal, such as titanium or lead, which suffers high space requirements due to the large surface area of smooth cathodic material needed [0006].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a non-porous cathodic material in the method of O'Connor in form of metal sheets, because O'Connor teaches such cathodic material as known in the art, with drawbacks of large space requirements due to surface area limitations. Even-though does the substitution makes the method of O'Connor inferior to the unmodified one, such substitution results in predictable result, and such non-porous cathodic material is known and has been practiced in the art.
Considering claim 23, O'Connor discloses contacting the cathodic material with an acid [0012].
Considering claim 24, O'Connor discloses contacting the cathodic material with a buffer [0095].
Considering claim 25, O'Connor discloses generating a gas [0092].
Considering claim 27, O'Connor discloses changing the oxidation state of the metal comprises increasing the oxidation state of the metal [0120].
Considering claim 30, O'Connor discloses removing the selectively deposited metal from the cathodic material [0176].
Response to Arguments
Applicant's arguments filed 07/13/2026, with respect to the rejection(s) of claim(s) 21-28 and 30 under 35 USC 102 have been fully considered but they are not persuasive.
Applicant argues that nowhere does O'Connor teach a non-porous cathode, but only carbon nanotube filter as a cathode. This argument is not persuasive, because O'Connor teaches the prior art uses cathode is generally made out of large stainless steel or aluminum sheets and the anode is an inert metal, such as titanium or lead, which suffers high space requirements due to the large surface area of smooth cathodic material needed, thus making such substitution obvious. See modified rejection above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 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, James Lin can be reached at 571-272-8902. 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.
/WOJCIECH HASKE/Examiner, Art Unit 1794
