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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/6/26 has been entered.
Status of Claims
Claims 1-20 are examined in this office action of which claims 1 and 10 were amended and claim 20 is new in the reply dated 4/6/26.
Claim Interpretation
Claims 1-2, 7-8 and 20 use the term “non-oxidizing” with relation to the atmosphere. In paragraph [0039] of the specification, applicant defines non-oxidizing as meaning means not only a reducing atmosphere in a strict sense, i.e., an atmosphere that has a partial pressure of oxygen lower than the equilibrium partial pressure of oxygen in chemical formula 1 at the graphitization temperature, but also an atmosphere in which an iron oxide is not formed to
the extent that it interrupts with the formation of a plating layer, through the reaction of iron contained in the black heart malleable cast iron member with gas constituting the atmosphere. As applicant has provided a specific definition for the term, this will be used to interpret the claims below.
Also, applicant has amended claim 1 to recite that the flux is “consisting essentially of” instead of “comprises”. Comprises is open language, while consisting essentially of is a partially closed phrasing that “limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.”(emphasis added) See MPEP § 2111.03. The MPEP further notes that “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’” See MPEP § 2111.03. As the basic and novel characteristics of the invention and how they relate to the composition are not readily apparent from the specification or claims and applicant has not directed to where in the specification the a description of the basic and novel characteristics is found, for the purposes of applying prior art the composition will be treated as open as consistent with MPEP § 2111.03.
Thus, as the flux composition is open, it will be interpreted as requiring one or more selected from the group zinc chloride, ammonium chloride, and potassium chloride but still allowing for other chlorides as the flux composition is open to other elements. See MPEP § 2111.03(I) citing Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1379, 2020 USPQ2d 3197 (Fed. Cir. 2020), the court interpreted a claim for a pharmaceutical composition having a "comprising" transition phrase and following limitations, including limitations requiring "at least one" binder and "at least one" disintegrant, each "consisting of" items listed in a Markush group. The court found that the Markush grouping recited particular binders or disintegrants, but while the components of the Markush grouping are closed as to the components therein, the claim transition "comprising" allowed for additional component(s) that were functionally similar to the members of the Markush grouping. Thus, the plain language of the claim requires "at least one" of the Markush members and does not further limit the claim to only binders and disintegrants listed in the Markush grouping.
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.
Claim 20 is 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.
Claim 20 recites “wherein the flux does not contain chlorides other than zinc chloride, ammonium chloride, and potassium chloride” in lines 13-14. Applicant points to paragraph [0078] of the specification which states that “In a preferred embodiment of the present invention, the chloride contained in the flux is one or more of zinc chloride, ammonium chloride, and potassium chloride.” Applicant argues that the use of “is” supports the exclusion of other chlorides (Applicant’s remarks, pg. 7, 1st full paragraph). However, containing is open language (see MPEP § 2111.03(I)) and this phraseology does not exclude the inclusion of other additives, much less other chlorides. This open nature is supported in other portions of the specification which teaches in as paragraph [0077] which notes that the flux is made of “a chloride aqueous solution”. Further, in the absence of literal basis for a negative limitation, silence will generally not suffice to support a negative claim limitation, see MPEP § 2173.05(i). In the instant case, applicant does not have literal support for the recited negative limitation and the recitations concerning chlorides all use open language. Thus, there is no literal support for the negative limitation, no positive recitation of other chlorides which can be negatively limited, nor is there other recitations suggesting to one of ordinary skill that other chlorides are excluded. Therefore, the specification does not describe the claimed subject matter of “the flux does not contain chlorides other than zinc chloride, ammonium chloride, and potassium chloride” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
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.
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, 3-7, 9-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz in view of US 2014/0120367 A1 of Warichet.
As to claim 1, Elorz discloses a heat treatment for malleablizing a white cast iron by means of transformation of cementite into graphite thereby forming blackheart malleable cast iron (Elorz, pg. 97, section 6.3, 1st paragraph). Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs), meeting the limitation of performing graphitization in a non-oxidizing and decarburizing atmosphere as the atmosphere in Elorz forms the blackheart malleable cast iron and by preventing oxidation it is non-oxidizing and as there is no disclosure of the formation of iron oxide, this atmosphere meets the limitation of being non-oxidizing. However, Elorz does not disclose where the blackheart malleable cast iron member has a plating layer formed on a surface.
Warichet relates to the same field of endeavor of ferrous materials such as cast irons (Warichet, paragraph [0002]). Warichet teaches a method of hot-dip galvanizing cast irons comprising a pre-treatment method of blasting of projecting small shots and grits onto a surface (Warichet, paragraph [0006]) and Warichet teaches where the blasting is conducted for 8 minutes (Warichet, paragraph [0077]), meeting the limitation of performing a particle treatment on a surface of the black heart malleable cast iron member. While Warichet does not state that silicon oxide remains on the surface, as Warichet discloses the same material of a cast iron and discloses the same particle treatment of shot blasting the surface, the same method applied to the same material would produce the same result of silicon oxide remains on the surface. “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), see MPEP § 2112.01(I).
Warichet discloses immersing the metal article in a fluxing bath for 0.01 to 30 minutes where the composition of the metal (e.g. steel) to be galvanized, the shape and/or size of the article means that longer times are suitable for larger articles (Warichet, paragraph [0047]), where it would be obvious to select a time of 3.0 minutes or more as Warichet teaches an overlapping time range for flux treatment and teaches larger times for larger objects, see MPEP § 2144.05 I. Finally, Warichet teaches after fluxing and drying, the metal article is dipped into a molten zinc-based galvanizing bath to form a metal coating thereon (Warichet, paragraph [0053]), meeting the limitation of performing hot-dip plating on the black heart malleable cast iron member obtained after immersion in the flux. Warichet teaches that this process makes more uniform, smoother and void-free coatings on iron articles (Warichet, paragraph [0025]) where the coating enhances the corrosion protection of the ferrous metal article (Warichet, paragraph [0016]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a method of blasting a surface with shot, followed by flux treatment and hot-dip plating in molten zinc-based galvanizing as taught by Warichet to the black heart malleable cast iron member disclosed in Elorz, thereby makes more uniform, smoother and void-free coatings on iron articles (Warichet, paragraph [0025]) where the coating enhances the corrosion protection of the ferrous metal article (Warichet, paragraph [0016]).
Warichet discloses where the flux composition comprises more than 40 and less than 70 wt. % zinc chloride, from 10 to 30 wt. % ammonium chloride, more than 6 and less than 30 wt. % of a set of at least two alkali or alkaline earth metal halides, from 0.1 to 2 wt. % lead chloride, and from 2 to 15 wt. % tin chloride (Warichet, claim 1), where zinc and ammonium chloride meet the chloride composition and at least two alkali or alkaline earth metal halides, lead chloride and tin chloride are merely other components of the open flux composition.
As to claims 3 and 4, Warichet teaches a method of hot-dip galvanizing cast irons comprising a pre-treatment method of blasting of projecting small shots and grits onto a surface (Warichet, paragraph [0006]) and Warichet teaches where the blasting is conducted for 8 minutes (Warichet, paragraph [0077]), meeting the limitation of where the particle projection treatment is shot blasting and where it is performed for 3.0 minutes or more and 20 minutes or less.
As to claim 5, Elorz discloses heating to temperature T1 in the range of 850-950°C (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs). As to reach T1, the black heart cast iron member must be heated through the range of 275 to 425°C, thereby meeting the claim limitation as this claimed preheating step has no specific time duration.
As to claim 6, Elorz discloses heating to temperature T1 in the range of 850-950°C and (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs) overlapping the claimed first graphitization at a temperature exceeding 900°C. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the temperature over the prior art disclosure since the prior art teaches that nodular morphologies for the graphite using this temperature range are obtained throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Elorz also discloses a second heating process starting at 760°C and ending at 690°C (Elorz, pg. 98, Fig. 6.5), meeting the claim limitation of a second graphitization with a start temperature of 720*C or higher and 800*C or lower and at a completion temperature of 680*C or higher and 780*C or lower.
As to claim 7, Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs), meeting the limitation of performing at least the first graphitization in a non-oxidizing and decarburizing atmosphere as the atmosphere in Elorz forms the blackheart malleable cast iron and by preventing oxidation it is non-oxidizing and as there is no disclosure of the formation of iron oxide, this atmosphere meets the limitation of being non-oxidizing.
As to claim 9, Warichet teaches that after fluxing bath treatment, the article is dried by transferring the fluxed metal article through a furnace until its surface exhibited a temperature between 170° C. and 200° C (Warichet, paragraph [0051]) meeting the limitation of heating the black heart cast iron member to a temperature of 90° C or higher.
As to claims 10-11, Warichet discloses where the flux composition comprises more than 40 and less than 70 wt. % zinc chloride and from 10 to 30 wt. % ammonium chloride (Warichet, claim 1), meeting the claim 10 limitation of being an acidic chloride as well as the claim limitation of being an aqueous solution containing zinc chloride and ammonium chloride.
As to claim 12, Warichet teaches after fluxing and drying, the metal article is dipped into a molten zinc-based galvanizing bath to form a metal coating thereon (Warichet, paragraph [0053]), meeting the limitation of where hot-dip plating includes hot-dip galvanizing.
As to claims 13 and 15, Elorz discloses forming blackheart malleable cast iron (Elorz, pg. 97, section 6.3, 1st paragraph). However, Elorz does not disclose where said member is a pipe joint.
Nevertheless, Warichet discloses that steel and iron alloys are used to form pipes (Warichet, paragraph [0014]) and Warichet discloses where the galvanized coating enhances the corrosion protection of the ferrous metal article (Warichet, paragraph [0016]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the shape of a pipe and its associated joint as taught by Warichet into the method of forming a blackheart malleable cast iron disclosed in Elorz, thereby forming a finished pipe joint with enhanced corrosion protection (Warichet, paragraph [0016]).
As to claim 14, Warichet teaches after fluxing and drying, the metal article is dipped into a molten zinc-based galvanizing bath to form a metal coating thereon (Warichet, paragraph [0053]), meeting the claim limitation of where the plating layer is a hot-dip galvanized layer. While Warichet does not explicitly disclose the black heart malleable cast iron member has a work-affected layer on a cast iron surface thereof, and the hot-dip galvanized layer contains a silicon oxide, as the combination of Elorz and Warichet discloses the same starting material of a black heart malleable cast iron member and Warichet discloses the same particle projection treatment of shot blasting for the same amount of time of 8 minutes (Warichet, paragraph [0006] and [0077]), and the same galvanizing process the same method applied to the same material would produce the same result of a work-affected layer on a cast iron surface thereof, and the hot-dip galvanized layer contains a silicon oxide, “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), see MPEP § 2112.01(I).
As to claim 18, Warichet does not explicitly disclose wherein an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. However, as the combination of Elorz and Warichet discloses the same starting material of a black heart malleable cast iron member and Warichet discloses the same particle projection treatment of shot blasting for the same amount of time of 8 minutes (Warichet, paragraph [0006] and [0077]), the same method applied to the same material would produce the same result of an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. “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), see MPEP § 2112.01(I).
Claims 2, 8, 16-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz in view of US 2014/0120367 A1 of Warichet as applied to claim 1 above, and further in view of US 1938516 A of Cotterill.
As to claim 2, Elorz in combination with Warichet teaches the method of forming a plated black heart malleable cast iron member of claim 1, see claim 1 rejection above. Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs). However, Elorz does not disclose a partial pressure of oxygen is ten times or less as high as an equilibrium partial pressure of oxygen in Chemical Formula 1 and higher than an equilibrium partial pressure of oxygen in Chemical Formula 2 where [Chemical Formula 1] is 2Fe(S) + 02(g) = 2FeO(s) and [Chemical Formula 2] is 2C(s) + 02(g) = 2CO(g).
Cotterill relates to the same field of endeavor of manufacturing malleable irons (Cotterill, title). Cotterill teaches the use of an inert and substantially non-oxidizing atmosphere for heat treatment with nitrogen, carbon dioxide, and carbon monoxide (Cotterill, pg. 1, lines 75-80 and 85-90). Cotterill teaches adding a small amount of excess oxygen causing the precipitation of carbon as temper carbon and the oxidation of a portion thereof without adding so much as to cause a burning of the material (Cotterill, pg. 2, lines 1-22), meeting the claim limitation as by oxidizing the carbon without burning (i.e. oxidizing) the iron material, Cotterill is disclosing where the partial pressure is greater than the amount to oxidize the carbon without being so high as to overly oxidize the iron. Cotterill teaches that this process increases the surface ductility and resistance to corrosion of the material (Cotterill, pg. 2, lines 28-31).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute an atmosphere inert and substantially non-oxidizing atmosphere for heat treatment comprising nitrogen, carbon dioxide, carbon monoxide and a small amount of excess oxygen as taught by Cotterill into the method of forming a plated black heart malleable cast iron member disclosed by the combination of Elorz and Warichet, thereby increasing the surface ductility and resistance to corrosion of the material (Cotterill, pg. 2, lines 28-31).
As to claim 8, Cotterill teaches that the atmosphere is furnished by burning a carbonaceous or hydrocarbon material such as gas or oil (Cotterill, pg. 1, lines 80-85), meeting the limitation where the non-oxidizing and decarburizing atmosphere contains a converted gas generated by combustion of a mixed gas of combustion gas and air.
As to claim 16, Warichet teaches a method of hot-dip galvanizing cast irons comprising a pre-treatment method of blasting of projecting small shots and grits onto a surface (Warichet, paragraph [0006]) and Warichet teaches where the blasting is conducted for 8 minutes (Warichet, paragraph [0077]), meeting the limitation of where the particle projection treatment is shot blasting and where it is performed for 3.0 minutes or more and 20 minutes or less.
As to claim 17, Elorz discloses heating to temperature T1 in the range of 850-950°C and (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs) overlapping the claimed first graphitization at a temperature exceeding 900°C. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the temperature over the prior art disclosure since the prior art teaches that nodular morphologies for the graphite using this temperature range are obtained throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Elorz also discloses a second heating process starting at 760°C and ending at 690°C (Elorz, pg. 98, Fig. 6.5), meeting the claim limitation of a second graphitization with a start temperature of 720*C or higher and 800*C or lower and at a completion temperature of 680*C or higher and 780*C or lower.
As to claim 19, Warichet does not explicitly disclose wherein an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. However, as the combination of Elorz and Warichet discloses the same starting material of a black heart malleable cast iron member and Warichet discloses the same particle projection treatment of shot blasting for the same amount of time of 8 minutes (Warichet, paragraph [0006] and [0077]), the same method applied to the same material would produce the same result of an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. “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), see MPEP § 2112.01(I).
Claims 1, 3, 5-7, 10-15, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz in view of JP 2008-031519 A and its Engish translation of Atsuo.
As to claims 1 and 20, Elorz discloses a heat treatment for malleablizing a white cast iron by means of transformation of cementite into graphite thereby forming blackheart malleable cast iron (Elorz, pg. 97, section 6.3, 1st paragraph). Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs), meeting the limitation of performing graphitization in a non-oxidizing and decarburizing atmosphere as the atmosphere in Elorz forms the blackheart malleable cast iron and by preventing oxidation it is non-oxidizing and as there is no disclosure of the formation of iron oxide, this atmosphere meets the limitation of being non-oxidizing. However, Elorz does not disclose where the blackheart malleable cast iron member has a plating layer formed on a surface.
Atsuo relates to the same field of endeavor of iron alloys including blackheart malleable cast iron (Atsuo, paragraph [0013]). Atsuo teaches where parts made of these alloys are plated by hot-dip galvanizing (Atsuo, paragraph [0009]), meeting the limitation of performing hot-dip plating on the black heart malleable cast iron member. Atsuo teaches where before plating, mechanical pretreatment such as shot blasting is used (Atsuo, paragraph [0019]), meeting the limitation of performing a particle treatment on a surface of the black heart malleable cast iron member. While Atsuo does not state that silicon oxide remains on the surface, as Atsuo discloses the same material of a cast iron and discloses the same particle treatment of shot blasting the surface, the same method applied to the same material would produce the same result of silicon oxide remains on the surface. “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), see MPEP § 2112.01(I).
Atsuo teaches where flux treatment is performed before plating using an aqueous solution of zinc chloride and ammonium chloride (Atsuo, paragraph [0038]), meeting the claim limitations of where the flux comprises an aqueous chloride and where the chloride in the flux consists of one or more selected from the group consisting of zinc chloride, ammonium chloride and potassium chloride as well as where the flux does not contain chlorides other than zinc chloride, ammonium chloride and potassium chloride as required in claim 20. Atsuo teaches where the flux is applied from 1 second to 10 minutes (Atsuo, paragraph [0043]), overlapping the claimed range of treatment of 3.0 minutes or more. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I). Atsuo teaches that this process forms a thin and uniform zinc-plated film on an iron-based plated body (Atsuo, paragraph [0005]) and providing corrosion resistance to steel products (Atsuo, paragraph [0002]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a method of shot blasting a surface, followed by flux treatment for 10 minutes and hot-dip galvanizing as taught by Atsuo to the black heart malleable cast iron member disclosed in Elorz, thereby forming a thin and uniform zinc-plated film on an iron-based plated body (Atsuo, paragraph [0005]) and providing corrosion resistance to steel products (Atsuo, paragraph [0002]).
As to claim 3, Atsuo teaches where before plating, mechanical pretreatment such as shot blasting is used (Atsuo, paragraph [0019]), meeting the limitation of where the particle projection treatment is shot blasting.
As to claim 5, Elorz discloses heating to temperature T1 in the range of 850-950°C (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs). As to reach T1, the black heart cast iron member must be heated through the range of 275 to 425°C, thereby meeting the claim limitation as this claimed preheating step has no specific time duration.
As to claim 6, Elorz discloses heating to temperature T1 in the range of 850-950°C and (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs) overlapping the claimed first graphitization at a temperature exceeding 900°C. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the temperature over the prior art disclosure since the prior art teaches that nodular morphologies for the graphite using this temperature range are obtained throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Elorz also discloses a second heating process starting at 760°C and ending at 690°C (Elorz, pg. 98, Fig. 6.5), meeting the claim limitation of a second graphitization with a start temperature of 720*C or higher and 800*C or lower and at a completion temperature of 680*C or higher and 780*C or lower.
As to claim 7, Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs), meeting the limitation of performing at least the first graphitization in a non-oxidizing and decarburizing atmosphere as the atmosphere in Elorz forms the blackheart malleable cast iron and by preventing oxidation it is non-oxidizing and as there is no disclosure of the formation of iron oxide, this atmosphere meets the limitation of being non-oxidizing.
As to claims 10-11, Atsuo teaches where flux treatment is performed before plating using an aqueous solution of zinc chloride and ammonium chloride (Atsuo, paragraph [0038]), meeting the claim 10 limitation of being an acidic chloride as well as the claim limitation of being an aqueous solution containing zinc chloride and ammonium chloride.
As to claim 12, Atsuo teaches where parts made of these alloys are plated by hot-dip galvanizing (Atsuo, paragraph [0009]), meeting the limitation of performing hot-dip galvanizing.
As to claims 13 and 15, Elorz discloses forming blackheart malleable cast iron (Elorz, pg. 97, section 6.3, 1st paragraph). However, Elorz does not disclose where said member is a pipe joint.
Nevertheless, Atsuo discloses where iron-based plated bodies include pipe joints (Atsuo, paragraph [0014]) and Atsuo teaches that this process forms a thin and uniform zinc-plated film on an iron-based plated body (Atsuo, paragraph [0005]) and provides corrosion resistance to steel products (Atsuo, paragraph [0002]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the shape of a pipe joint as taught by Atsuo into the method of forming a blackheart malleable cast iron disclosed in Elorz, thereby forming a finished pipe joint with enhanced corrosion resistance from a thin and uniform zinc-plated film (Atsuo, paragraphs [0002] and [0005]).
As to claim 14, Atsuo discloses where hot-dip zinc plating is performed by immersing the object to be plated in a hot-dip zinc plating bath (Atsuo, paragraph [0044]), meeting the claim limitation of where the plating layer is a hot-dip galvanized layer. While Atsuo does not explicitly disclose the black heart malleable cast iron member has a work-affected layer on a cast iron surface thereof, and the hot-dip galvanized layer contains a silicon oxide, as the combination of Elorz and Atsuo discloses the same starting material of a black heart malleable cast iron member and Atsuo discloses the same particle projection treatment of shot blasting (Atsuo, paragraph [0019]), and the same galvanizing process, the same method applied to the same material would produce the same result of a work-affected layer on a cast iron surface thereof, and the hot-dip galvanized layer contains a silicon oxide, “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), see MPEP § 2112.01(I).
As to claim 18, Atsuo does not explicitly disclose wherein an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. However, as the combination of Elorz and Atsuo discloses the same starting material of a black heart malleable cast iron member and Atsuo discloses the same particle projection treatment of shot blasting (Atsuo, paragraph [0019]), and the same galvanizing process, the same method applied to the same material would produce the same result of an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. “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), see MPEP § 2112.01(I).
Claims 2, 8, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz in view of JP 2008-031519 A and its Engish translation of Atsuo as applied to claim 1 above, and further in view of US 1938516 A of Cotterill.
As to claim 2, Elorz in combination with Atsuo teaches the method of forming a plated black heart malleable cast iron member of claim 1, see claim 1 rejection above. Elorz discloses that this graphitization process is performed in a controlled neutral atmosphere to prevent the carbon obtained from the cementite decomposition from being oxidized (Elorz, pg. 87, section 6.3, 2nd and 4th paragraphs). However, Elorz does not disclose a partial pressure of oxygen is ten times or less as high as an equilibrium partial pressure of oxygen in Chemical Formula 1 and higher than an equilibrium partial pressure of oxygen in Chemical Formula 2 where [Chemical Formula 1] is 2Fe(S) + 02(g) = 2FeO(s) and [Chemical Formula 2] is 2C(s) + 02(g) = 2CO(g).
Cotterill relates to the same field of endeavor of manufacturing malleable irons (Cotterill, title). Cotterill teaches the use of an inert and substantially non-oxidizing atmosphere for heat treatment with nitrogen, carbon dioxide, and carbon monoxide (Cotterill, pg. 1, lines 75-80 and 85-90). Cotterill teaches adding a small amount of excess oxygen causing the precipitation of carbon as temper carbon and the oxidation of a portion thereof without adding so much as to cause a burning of the material (Cotterill, pg. 2, lines 1-22), meeting the claim limitation as by oxidizing the carbon without burning (i.e. oxidizing) the iron material, Cotterill is disclosing where the partial pressure is greater than the amount to oxidize the carbon without being so high as to overly oxidize the iron. Cotterill teaches that this process increases the surface ductility and resistance to corrosion of the material (Cotterill, pg. 2, lines 28-31).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute an atmosphere inert and substantially non-oxidizing atmosphere for heat treatment comprising nitrogen, carbon dioxide, carbon monoxide and a small amount of excess oxygen as taught by Cotterill into the method of forming a plated black heart malleable cast iron member disclosed by the combination of Elorz and Atsuo, thereby increasing the surface ductility and resistance to corrosion of the material (Cotterill, pg. 2, lines 28-31).
As to claim 8, Cotterill teaches that the atmosphere is furnished by burning a carbonaceous or hydrocarbon material such as gas or oil (Cotterill, pg. 1, lines 80-85), meeting the limitation where the non-oxidizing and decarburizing atmosphere contains a converted gas generated by combustion of a mixed gas of combustion gas and air.
As to claim 17, Elorz discloses heating to temperature T1 in the range of 850-950°C and (Elorz, pg. 97, section 6.3, 3rd and 4th paragraphs) overlapping the claimed first graphitization at a temperature exceeding 900°C. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the temperature over the prior art disclosure since the prior art teaches that nodular morphologies for the graphite using this temperature range are obtained throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Elorz also discloses a second heating process starting at 760°C and ending at 690°C (Elorz, pg. 98, Fig. 6.5), meeting the claim limitation of a second graphitization with a start temperature of 720*C or higher and 800*C or lower and at a completion temperature of 680*C or higher and 780*C or lower.
As to claim 19, Atsuo does not explicitly disclose wherein an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. However, as the combination of Elorz and Atsuo discloses the same starting material of a black heart malleable cast iron member and Atsuo discloses the same particle projection treatment of shot blasting (Atsuo, paragraph [0019]), and the same galvanizing process, the same method applied to the same material would produce the same result of an area ratio of silicon oxide occupying the surface of the black heart malleable cast iron member after the particle projection treatment is 50% or more relative to an amount of silicon oxide present on the surface of the black heart malleable cast iron member before particle projection treatment. “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), see MPEP § 2112.01(I).
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz in view of JP 2008-031519 A and its Engish translation of Atsuo as applied to claim 1 above, and further in view of US 2014/0120367 A1 of Warichet.
As to claim 4, Atsuo discloses shot blasting performed by impacting the object to be plated with a projectile (Atsuo, paragraph [0020]). However, Atsuo does not explicitly disclose an amount of time for performing shot blasting.
Warichet relates to the same field of endeavor of treating a metal surface prior to batch hot galvanizing in molten zinc-based alloys (Warichet, abstract). Warichet teaches a method of hot-dip galvanizing cast irons comprising a pre-treatment method of blasting of projecting small shots and grits onto a surface (Warichet, paragraph [0006]) and Warichet teaches where the blasting is conducted for 8 minutes (Warichet, paragraph [0077]), meeting the limitation of where the particle projection treatment is shot blasting and where it is performed for 3.0 minutes or more and 20 minutes or less. Warichet teaches that this process removes rust and dirt from the iron surface (Warichet, paragraph [0006]).
As Atsuo discloses shot blasting but does not disclose a blasting time, one of ordinary skill would naturally look to the art to determine an appropriate time to carry out the method of blasting in Atsuo. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute shot blasting for 8 minutes as taught by Warichet into the method of shot blasting disclosed in Atsuo, thereby removing rust and dirt from the iron surface (Warichet, paragraph [0006]).
As to claim 9, Atsuo teaches where flux treatment is performed before plating using an aqueous solution of zinc chloride and ammonium chloride (Atsuo, paragraph [0038]). However, Atsuo does not disclose heating the black heart cast iron member to a temperature of 90° C or higher after the flux treatment.
Warichet teaches that after fluxing bath treatment, the article is dried by transferring the fluxed metal article through a furnace until its surface exhibited a temperature between 170° C. and 200° C (Warichet, paragraph [0051]) meeting the limitation of heating the black heart cast iron member to a temperature of 90° C or higher. Warichet teaches that this produces a continuous, more uniform, smoother and void-free coatings on metal articles (Warichet, paragraph [0025]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a step of drying until its surface exhibited a temperature between 170° C. and 200° C as taught by Warichet into the method of plating disclosed by Atsuo, thereby producing a continuous, more uniform, smoother and void-free coatings on metal articles (Warichet, paragraph [0025]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over “Malleable Irons”. Physical Metallurgy of Cast Irons of Elorz, JP 2008-031519 A and its Engish translation of Atsuo, and US 1938516 A of Cotterill as applied to claim 2 above, and further in view of US 2014/0120367 A1 of Warichet.
As to claim 16, Atsuo discloses shot blasting performed by impacting the object to be plated with a projectile (Atsuo, paragraph [0020]). However, Atsuo does not explicitly disclose an amount of time for performing shot blasting.
Warichet relates to the same field of endeavor of treating a metal surface prior to batch hot galvanizing in molten zinc-based alloys (Warichet, abstract). Warichet teaches a method of hot-dip galvanizing cast irons comprising a pre-treatment method of blasting of projecting small shots and grits onto a surface (Warichet, paragraph [0006]) and Warichet teaches where the blasting is conducted for 8 minutes (Warichet, paragraph [0077]), meeting the limitation of where the particle projection treatment is shot blasting and where it is performed for 3.0 minutes or more and 20 minutes or less. Warichet teaches that this process removes rust and dirt from the iron surface (Warichet, paragraph [0006]).
As Atsuo discloses shot blasting but does not disclose a blasting time, one of ordinary skill would naturally look to the art to determine an appropriate time to carry out the method of blasting in Atsuo. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute shot blasting for 8 minutes as taught by Warichet into the method of shot blasting disclosed in Atsuo, thereby removing rust and dirt from the iron surface (Warichet, paragraph [0006]).
Response to Arguments
With respect to the claim interpretation, as the amendments to claim 1 do not relate to the composition of the atmosphere, the stated claim interpretation is still relevant to the claims.
With respect to the 112(b) rejections, it is agreed that the claims are not indefinite, however see the claim interpretation section above concerning the interpretation of “consisting essentially of” as well as the use of a closed Markush group in conjunction with open claim language.
With respect to the 103 rejection over Elorz in view of Warichet, applicant argues that as Warichet discloses the use of lead and tin chloride, it does not read upon the instant claim limitations (Applicant’s remarks, pg. 6, last paragraph).
However, as noted in the claim interpretation section above, the composition of the overall flux is still open to other elements and therefore Warichet reads upon the instant claim limitations for the reasons stated in the rejection above. While it is agreed that the negative limitation in claim 20 overcomes the flux composition disclosed in Warichet (Applicant’s remarks, pg. 7, 1st full paragraph), see new rejection incorporating Atsuo above. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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