Transition from Surface Finishing of Stainless Steel Semiconductor Valves to Nickel-Titanium Medical Materials By Analysis of Analogous Patent Art

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Faraday Technology Inc. is a research, development and engineering firm developing electrochemical innovations based on pulse/pulse reverse electrolytic principles [1]. A recent focus is surface finishing of passive materials such as stainless steel valves for semiconductor equipment [2]. With funding from via the National Science Foundation (NSF) Small Business Innovative Research (SBIR) program, we demonstrated the feasibility of electropolishing stainless steel coupons in low viscosity aqueous salt solutions. The FARADAYIC(R) Surface Finishing technology was patented [3,4] and with further funding from Swagelok Corporation, the technology was developed for semiconductor valves and exclusively licensed by “field-of-use” to Swagelok. Per United States laws, patent are to have the attributes of property. Consequently, patents are often referred to as intellectual property and their claims may be simply considered as the “metes and bounds” or boundary of said property. As such, during the examination (i.e. prosecution) of a patent application, neighboring patents as well as prior art patents upon which the pending patent application would “trespass” are identified in office actions from the U.S. Patent & Trademark Office. If prior art is identified which impacts the patentability of a patent application, then the inventor may limit the claims of her/his patent application in order to overcome said prior art. Consequently, inventors necessarily become aware of a rich landscape of prior art during examination of their patent applications. At Faraday, once our patents issue, we continue to monitor U.S. Patent & Trademark office actions to identify “forward” citations where Faraday patents are cited as neighboring and/or prior art. In the case of the patents licensed to Swagelok, one was cited as prior art impacting the patentability of a patent application by a developer of nickel-titanium medical stents. This office action identified a new application for the FARADAYIC(R) Surface Finishing technology of which we were not previously aware. Subsequently, with finding from the National Institutes of Health (NIH) SBIR program, we demonstrated the feasibility of electropolishing nickel-titanium materials in simple aqueous electrolytes [5]. Currently, we are working with a supplier of nickel-titanium wire for stent applications to demonstrate the FARADAYIC(R) Surface Finishing technology at reel-to-reel manufacturing process scales [6]. The presentation will first summarize the development of the surface finishing technology for stainless steel materials. Next the presentation will expand on the patent – property analogy and demonstrate an easy manner to track forward citations of existing patents. The paper will conclude with a brief summary of the nickel-titanium surface finishing technology. Acknowledgements: The authors acknowledge the support of;NSF Grant No. DMI 9901819, NIH Grant No. 1 R43 HL095216-01A1, Swagelok Corporation, and Faraday Technology Inc.