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 Claims
Claims 1-19 are examined in this office action of which claims 1-2, 6, 10, and 14-15 were amended in the reply dated 9/3/25.
Examiner’s Note
Applicant has amended claim 2 so that Chemical Formulas 1 and 2 fall within the single sentence that is allowed in a claim. However, the status identifier for claim 2 is listed as “(original)”. Applicant is required to use the status identifier “(currently amended)” when a claim is amended, see MPEP § 714(II)(C). While the instant amendment is entered, applicant is required to use the correct status identifier in the next response to this office action.
Claim Interpretation
Claims 1-2 and 7-8 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to recite the limitation “wherein the flux comprises an aqueous chloride solution, and wherein the chloride in the flux consists of one or more selected from the group consisting of zinc chloride, ammonium chloride, and potassium chloride” in the last three lines. It is not clear how the flux can be open to other unrecited elements while the chloride within the flux is closed to other unrecited elements, see MPEP § 2111.03. Thus, it is unclear whether the flux can comprise chlorides other than those recited or not. This is compounded by claims 10 and 11 where in claim 10 the flux is aqueous solution “containing an acidic chloride” which shows the solution to be open and “acidic chloride” is encompassing of many other chlorides than those recited in claim 1 and in claim 11 “wherein the flux is an aqueous solution containing zinc chloride and ammonium chloride”. As “containing” is an open transitional phrase, it is not clear how the aqueous solution can be open to unrecited elements while the chloride is closed. Claims 2-19 are also rejected as they depend from claim 1 and do not solve the above issue.
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]).
It is not clear whether the flux is open to unrecited elements or not, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as containing a chloride which must consist of one or more of zinc chloride, ammonium chloride and potassium chloride while the overall flux is open to other components. 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).
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 claim objections, applicant’s amendment to place the period after the equations cures the previous issue and therefore the objection is withdrawn. With respect to the duplicate claim warning concerning claims 13 and 15, applicant’s amendment to claim 15 cures the previous issue and the warning is withdrawn.
With respect to the 112(b) rejections, it is agreed that applicant’s amendments cure the previous indefiniteness issues, however see new 112(b) rejections above.
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. 7, 2nd paragraph).
However, as noted in the 112(b) rejection above, the composition of the flux is not clear and therefore Warichet reads upon the instant claim limitations for the reasons stated in the rejection above. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733