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 .
Status of Amendment
The amendment filed on 22 June 2026 fails to place the application in condition for allowance.
Claims 1-31 are currently pending and under examination.
Status of Rejections
The rejections of claims 1, 2, 4,6, 7, 15, 16, and 19 under 35 U.S.C. 102(a)(1) are herein withdrawn due to Applicant’s amendment filed 22 June 2026 due to the incorporation of previous claim 5 into claim 1 and subsequently cancelled.
All other rejections under 35 U.S.C. 103 are herein maintained.
Response to Arguments
Applicant's arguments filed 22 June 2026 have been fully considered but they are not persuasive.
In response to Applicant’s arguments towards claim 1 via incorporation of previously limitations found within instant claim 5, Applicant argues the use to a triple-target assembly results in an unexpected result of improved plating performance based on Example 5 as found within the instant specification. This argument is not persuasive because the showing of unexpected results is not in compliance with MPEP 716.02(d). Example 5 requires a specific amount of nickel in the plating bath, specific constituents of the plating bath, performance of the electroplating at specific current and for an exact amount of time. Thus, the claim is deficient in reciting the particulars method which shows the alleged improved plating performance.
Applicant argues that this example established an unexpected functional relationship between target multiplicity, morphology, adhesion behavior, and depletion efficiency. However, these relationships are silent as to the morphology of the as deposited layer. With respect to adhesion, the Example presents contradictor remarks regarding the removal of the deposits under a tape adhesion test. [0120] states “a significant amount of Ni was removed from the surface” with respect to a single target deposition and [0124] “while darker deposits obtained under single-target conditions occasionally showed minor flaking”. These statements seems indicate that an adequate adhesion for a single target is achievable since they only occasionally show the lack of adhesion. It is not elucidated what parameters result in adequate adhesion for a result of the single target testing. Thus, the evidence presented is not sufficient as required by MPEP 716.02(a) in showing that the mere duplication necessarily results in the generic improvement of results.
In response to Applicant’s argument towards the current provided and that PRÓCHNIAK does not identify the current as a result effective variable and that PRÓCHNIAK teaches away from using higher current densities, this argument is not persuasive in light of the explicit teaching of PRÓCHNIAK. PRÓCHNIAK explicitly identifies the current as a result effective variable “The current density must be chosen so that the quality of the coatings is satisfactory and the deposition time is as short as possible. Too low current density practically inhibits the deposition process, and in turn, an excessive increase in the current density results in an intensification of the competitive hydrogen evolution process, which reduces the current efficiency of the process and leads to a significant deterioration in the quality of the coatings obtained…” (pg. 2 lines 23-28). PRÓCHNIAK explicitly ties the current to coating time and quality, with expected results if the relative current is too low or too high. The recitation “poor coating quality” as cited by Applicant appears with respect to Fig. 8 is with respect to a specific example, of specific size, and is noted by Examiner. Applicant’s alleged unexpected results are not in compliance with MEPP 716.02(e) as noted above as being drawn to a specific process, with specific target sizes, mass loading, etc.
In response to Applicant’s arguments with respect to claim 3 on pgs. 10-11 of the response in which Applicant argues the claimed property of the absence of visible Ni removal during tape testing is not an inherent property of the plated surfaces, this argument is not persuasive in light of MPEP 716.02(d) and Applicant’s own acquiescence. Applicant explicitly states “Rather, it arises from the specific plating configuration and process conditions disclosed and claimed herein.” (pg. 11 lines 5-6 emphasis added) The distinction arises in that the claims do not claim the specific plating configuration and process conditions. MPEP 2112.01 I explicitly states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "” (emphasis added). The claims and disclosure also do not recite any particulars of the tape being used to establish the adhesion test. In other words, differences in the adhesion strength of tapes being used would result in differences of the adhesion test, i.e. a difference between common scotch tape and industrial foil tape used to wrap air ducts. Thus, the use of a tape test cannot be a test of patentability without the explicit adhesion strengths of tapes being used to establish such a result.
In response to Applicant’s arguments drawn towards claim 28 and the claimed mass ranges, as established above, the alleged unexpected results and relationships are more specific than the instant claim language of claim 28. Piper is relied upon for the general teachings of providing targets for cyclotron bombardment and target sizes/mass associated as such. It is noted that PRÓCHNIAK explicitly allows for the modification of the disclosed parameters with different amounts of nickel deposited or based on accelerator specifications: “When using a accelerator with a different geometry and a different proton beam energy, the amount of metallic nickel can be different and requires appropriate conversion and rescaling, which is not beyond the routine activity of adapting the present invention to specific apparatus requirements.” (pg. 8 lines 16-20).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation provided in the Office Action is the basis of changing the size or amount proportionality as prima facie obvious in making different sized targets or the like. As far as the performance improvements argued by Applicant, it is noted the improvements are not commensurate in scope with the instant claim language as discussed above.
Applicant’s arguments drawn towards new claim 29 is noted. The new claim has been addressed below and the reasons for rejections are provided therein.
Applicant’s arguments towards new claim 30 are noted and mirror those previously presented towards the adhesion test addressed above with respect to Example 5 and the alleged unexpected results. The Examiner maintains the rejection for the reasons outlined below and addressed above and not repeated herein for brevity.
Applicant’s arguments towards new claim 31 are noted and mirror those previously presented towards the mass deposited addressed above with respect to Examples 7 and 8 and the alleged unexpected results. The Examiner maintains the rejection for the reasons outlined below and addressed above and not repeated herein for brevity.
No further arguments are presented.
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.
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, 2, and 6-27 are rejected under 35 U.S.C. 103 as being unpatentable over PRÓCHNIAK et al (WO 2023/038536 A1).
As to claims 1 and 7, PRÓCHNIAK disclose A method of electrodepositing nickel-64 (Ni-64) onto one or more targets (pg. 16 Example 10 which uses a bath enriched in the nickel-64 isotope, prepared according to Example 1 and deposition carried out according to example 2, therefore citation to those two examples following are in reference to performing example 10 accordingly) the method comprising:
preparing a Ni-64 plating bath with an initial Ni-64 concentration selected based on a targeted plated mass of Ni-64 (pg. 16 lines 6-7 “A nickel electrolyte bath was prepared as in Example 1 , with the difference that nickel powder enriched isotopically in [nickel-64].”);
introducing the Ni-64 plating bath to an electroplating cell comprising the one or more target and an anode (pg. 12 line 29 – pg. 13 line 5 “Into a 4.5 mL glass vessel was introduced 2.1 mL of the electrolyte bath…A gold target with an area of 0.5 cm.sup.2 was placed in the vessel to act as the working electrode (Fig. 2A), as well as an auxiliary electrode in the form of a platinum grid. The electrodes were connected to a Rohde&Schwarz HMP2020 potentiostat/galvanostat, the vessel was tightly sealed and placed in a spectrophotometer to spectroscopically monitor the progress of the process by UV- Vis, measuring the decrease in absorbance at a wavelength of about 394 nm.”;
electrodepositing Ni-64 onto the one or more targets to form one or more plated targets (pg. 16 line 8-9 “The deposition carried out according to Example 2…” pg. 13 lines 9-11) and
until at least 99% of the initial Ni-64 concentration of the plating bath is depleted (Fig. 8C/9B pg. 13 lines 11-15 which show a 99.5% nickel deposition pg. 6 line 13,20 which also reads on instant claim 7);
removing the one or more plated targets from the electroplating cell (pg. 13 lines 11-17).
As to the recitation of “triple target assembly”, the use of a triple-target assembly would have been prima facie obvious duplication of parts in order to provide an expected result of plating more than one target at a time. See MPEP 2144.04 VI B.
As to claim 2, PRÓCHNIAK discloses wherein the triple target assembly are subsequently bombarded to produce 64Cu and 61Co radionuclides for use in positron-emission tomography (PET). (pg. 13 lines 15-17).
As to claim 6, the instant limitation “wherein…” is interpreted under MPEP 2111.04 I as being claim language that suggests or makes optional but does not require steps to be performed because it is a comparison of two options presented in instant claim 4 without reciting the plating of both options.
As to claim 8-10, PRÓCHNIAK fails to explicitly disclose wherein the electrodeposition is performed until at least 99.9%, 99.95%, and 99.99% of the initial Ni-64 concentration of the plating bath is depleted.
This difference is deemed to be a result effective variable based on Faraday’s Law of Electrolysis in which the amount of a substance plated is directly proportional to the time being plated. PRÓCHNIAK discloses “Due to the high cost and limited availability of nickel enriched in the 64Ni isotope, baths for deposition of targets usually contain an amount of nickel practically equal to that to be contained in the target. This means that practically all of the nickel contained in the electrolyte bath (usually a portion of about 50-100 mg) must be deposited to avoid the loss of the expensive isotope and to achieve the required thickness of the nickel layer (a deposition efficiency of at least 95% is accepted), which means that during the deposition process the concentration of nickel ions in the bath drops to a very low value (almost to "zero")” (pg. 2 lines 9-16).
Thus, it would have been obvious to one of ordinary skill in the art to continue to plate out the Ni-64 isotope in order for complete use the nickel in the plating solution so as to not waste the limited availability via continuing to plate the nickel-64 according to Faraday’s law.
As to claim 11, PRÓCHNIAK discloses performing the deposition for about 60 to 420 minutes (pg. 6) but fails to explicitly disclose wherein the electrodeposition is performed using a current of 200-500, 200-250, 250-300, 300-350, 350-400, 400-450, or 450-500 mA.
However, PRÓCHNIAK does disclose several current densities used between 20-240 mA/cm2 (See pg. 6). This difference is deemed to be a result effective variable based on Faraday’s Law of Electrolysis in which the amount of a substance plated is directly proportional to the time being plated and current applied. In addition, the amount of time plated is indirectly proportional to the current applied, i.e. a higher current results in a shorted plating time for the same mass.
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have optimized the current density applied based on the size of the plating target, the desired time to perform plating, and the desired amount of metal to be plated.
As to claim 12-14, 17, 18, and 20, PRÓCHNIAK fails to explicitly disclose wherein the electrodeposition is performed for a duration of 60-120, 120-150, 120-180, 300-360, 360-420, 380-400 minutes.
This difference is deemed to be a result effective variable based on Faraday’s Law of Electrolysis in which the amount of a substance plated is directly proportional to the time being plated. In addition, the amount of time plated is indirectly proportional to the current applied, i.e. a higher current results in a shorted plating time for the same mass.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have optimized both the time and current density applied to result in completed depositions of at least 99% metal plated out of solution in order to either plate in short or longer times based on higher or lower currents applied.
As to claims 15, 16, and 19, PRÓCHNIAK discloses performing the deposition for 4 hours (pg. 6 lines 12 and 20).
As to claims 21-27, PRÓCHNIAK fails to explicitly disclose wherein the electrodeposition is performed using a current of 200-500, 200-250, 250-300, 300-350, 350-400, 400-450, or 450-500 mA.
However, PRÓCHNIAK does disclose several current densities used between 20-240 mA/cm2 (See pg. 6). This difference is deemed to be a result effective variable based on Faraday’s Law of Electrolysis in which the amount of a substance plated is directly proportional to the time being plated and current applied. In addition, the amount of time plated is indirectly proportional to the current applied, i.e. a higher current results in a shorted plating time for the same mass.
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have optimized the current density applied based on the size of the plating target, the desired time to perform plating, and the desired amount of metal to be plated.
Claims 3 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over PRÓCHNIAK as applied to claim 1 above, and further in view of Zhang et al (US 2012/0067733 A1).
As to claims 3 and 30, PRÓCHNIAK fails to explicitly disclose performing an adhesion test on a plated surface of the triple target assembly by applying and removing a tape from the plated surface, wherein the plated surface exhibits no visible removal of deposited Ni-64 during the adhesion test.
Zhang discloses performing an adhesion test on a plated surface of the one or more plated targets by applying and removing a tape from the plated surface. ([0035]).
It would have been obvious to one of ordinary skill in the art at the time invention was filed to have performed an adhesion test as taught by Zhang in the method of PRÓCHNIAK in order to test the adhesion of the layers. As to the limitation “wherein the plated surface exhibits no visible removal of deposited Ni-64 during the adhesion test”, since the prior art is made in substantially the same way as the instantly claimed method, the property is deemed an inherent property of the formed layers. See MPEP 2112.
Claim 28, 29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over PRÓCHNIAK as applied to claim 1 above, and further in view of Pipes et al (WO2018/140433 A1).
As to claims 28 and 29, PRÓCHNIAK fails to explicitly disclose wherein the targeted plated mass of Ni-64 is between about 400 mg to about 800 mg per target plate.
Pipes discloses appropriate weights ranges for target material used in a cyclotron which includes making Cu-64 ([0044]) of about 0.5-4 grams of target material ([0037]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used different target material amounts with a larger target as disclosed in Pipes for the target in PRÓCHNIAK because such a modification amount to an obvious change in proportion or amount to provide targets of different sizes based on the desired amount of product produced. See MPEP 2144.04 IV A.
As to the limitation “wherein electrodepositing Ni-64 is performed using a current selected based on the initial Ni- 64 concentration in combination with the targeted plated mass of Ni-64” found in instant claim 29, the limitation is necessarily met because the prior art inherently has a mass and current and therefore relationship and selected as such. The instant claim does not provide any particular relationship required to make the determination of current based on mass.
As to claim 31, PRÓCHNIAK disclose A method of electrodepositing nickel-64 (Ni-64) onto one or more targets (pg. 16 Example 10 which uses a bath enriched in the nickel-64 isotope, prepared according to Example 1 and deposition carried out according to example 2, therefore citation to those two examples following are in reference to performing example 10 accordingly) the method comprising:
preparing a Ni-64 plating bath with an initial Ni-64 concentration selected based on a targeted plated mass of Ni-64 (pg. 16 lines 6-7 “A nickel electrolyte bath was prepared as in Example 1 , with the difference that nickel powder enriched isotopically in [nickel-64].”);
introducing the Ni-64 plating bath to an electroplating cell comprising the one or more target and an anode (pg. 12 line 29 – pg. 13 line 5 “Into a 4.5 mL glass vessel was introduced 2.1 mL of the electrolyte bath…A gold target with an area of 0.5 cm.sup.2 was placed in the vessel to act as the working electrode (Fig. 2A), as well as an auxiliary electrode in the form of a platinum grid. The electrodes were connected to a Rohde&Schwarz HMP2020 potentiostat/galvanostat, the vessel was tightly sealed and placed in a spectrophotometer to spectroscopically monitor the progress of the process by UV- Vis, measuring the decrease in absorbance at a wavelength of about 394 nm.”;
electrodepositing Ni-64 onto the one or more targets to form one or more plated targets (pg. 16 line 8-9 “The deposition carried out according to Example 2…” pg. 13 lines 9-11) and
until at least 99% of the initial Ni-64 concentration of the plating bath is depleted (Fig. 8C/9B pg. 13 lines 11-15 which show a 99.5% nickel deposition pg. 6 line 13,20 which also reads on instant claim 7);
removing the one or more plated targets from the electroplating cell (pg. 13 lines 11-17).
As to the recitation of “triple target assembly”, the use of a triple-target assembly would have been prima facie obvious duplication of parts in order to provide an expected result of plating more than one target at a time. See MPEP 2144.04 VI B.
PRÓCHNIAK fails to explicitly disclose wherein the targeted plated mass of Ni-64 is between about 400 mg to about 800 mg per target plate.
Pipes discloses appropriate weights ranges for target material used in a cyclotron which includes making Cu-64 ([0044]) of about 0.5-4 grams of target material ([0037]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used different target material amounts with a larger target as disclosed in Pipes for the target in PRÓCHNIAK because such a modification amount to an obvious change in proportion or amount to provide targets of different sizes based on the desired amount of product produced. See MPEP 2144.04 IV A.
As to the limitation “wherein electrodepositing Ni-64 is performed using a current selected based on the initial Ni- 64 concentration in combination with the targeted plated mass of Ni-64” found in instant claim 29, the limitation is necessarily met because the prior art inherently has a mass and current and therefore relationship and selected as such. The instant claim does not provide any particular relationship required to make the determination of current based on mass.
As to the limitation “wherein the plated surface exhibits no visible removal of deposited Ni-64 during the adhesion test”, since the prior art is made in substantially the same way as the instantly claimed method, the property is deemed an inherent property of the formed layers. See MPEP 2112.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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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.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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