Looking at Patent Law Patenting an Invention for Improved Electrochemical Machining by Combining Magnetic Field Waveforms, Ultrasonic Motion, and Pulsed Electric Field Waveforms: A Case Study ...Overcoming an Obviousness-based Prior Art Rejection.

In this installment of the "Looking at Patent Law" series, we present a case study of the prosecution events of U.S. Patent No. 10,357,839; "Method for Electrochemical Machining using Sympathetic Waveform Interactions". The subject invention aligns with the technical interests of several divisions of The Electrochemical Society (ECS), including Corrosion (CORR), Industrial Electrochemistry and Electrochemical Engineering (IE&EE) and Physical and Analytical Electrochemistry (PAE). Additionally, the case introduces ECS members to an emerging technology of interest to industry. The case study begins with a brief synopsis of the background of the invention followed by 1) summary of several drawings and the specification of the invention, 2) inventor assignment and power of attorney designations, 3) submission of the Invention Disclosure Statement (IDS) and associated Duty of Candor, 4) summary of the non-final office action rejecting the patent application for obviousness, and 5) applicant response and allowance of the patent application. The case study illustrates the use of adding limitations from the dependent claims and the specification to the independent claim to overcome an obviousness rejection. In addition, the case illustrates an applicant initiated nonpublication exception to the eighteen month publication rule. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions. [ABSTRACT FROM AUTHOR]