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 the Claims
Claims 1 – 21 and 28 have been cancelled. Claims 22, 31, and 38 have been amended. Claims 23 – 27, 29 – 30, 32 – 37, and 39 – 44 are as previously presented. Claims 31 – 44 were previously withdrawn. Therefore, claims 22 – 27 and 29 – 44 are currently pending and have been considered below.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/23/2025 and 9/26/2025 have been considered by the examiner.
Response to Amendment
The amendment filed on 9/8/2025 has been entered. Applicant’s filing and approval of a terminal disclaimer overcomes the previously set-forth double patenting rejection. Applicant’s amendment overcomes the previously set-forth 112(b) rejection of claims 22 – 30.
Response to Arguments
Applicant’s remarks, see pages 7 – 10, filed 9/8/2025, have been fully considered and are persuasive. The previously set-forth rejections of claims 22 – 27 and 29 – 30 under 35 U.S.C. § 103 are withdrawn.
Election/Restrictions
Claim 22 is allowable. Claims 31 – 44, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement among inventions of Groups I – IV, as set forth in the Office action mailed on 1/27/2025, is hereby withdrawn and claims 31 – 44 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
Claim 44 is 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 44 recites, “[a] method for manufacture of piping elements and parts of structures comprising employing the assembly as recited in claim 41.” As set forth in MPEP 2173.05(q), "[a]ttempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph." Claim 44 is rejected as being indefinite because claim 44 does not recite any steps, and therefore it is unclear what steps are involved in the claimed method. That is, while claim 44 recites “employing the assembly as recited in claim 41,” the claim does not recite any active, positive steps delimiting how the “employing” is actually practiced.
Allowable Subject Matter
Claims 22 – 27, 29 – 43 are allowed. The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach, disclose, or suggest a pre-coated steel substrate comprising: a steel substrate; and a flux coating the steel substrate and including at least one titanate, wherein a diameter of the at least one titanate is between 1 and 40 µm., and at least one nanoparticle selected from the group consisting of: TiO2, SiO2, Yttria-stabilized zirconia (YSZ), A1203, MoO3, Cr03, CeO2 and mixtures thereof, a thickness of the flux being between 30 and 95µm. Cited prior art Johnson et al. (US 6,664,508) discloses a pre-coated steel substrate and described in the rejection of claim 22 in the non-final rejection mailed 4/8/2025. However, neither Johnson nor the prior art of record discloses a nanoparticle selected from the group consisting of: TiO2, SiO2, Yttria-stabilized zirconia (YSZ), A1203, MoO3, Cr03, CeO2 and mixtures thereof. Applicant defines nanoparticles as “particles between 1 and 100 nanometers (nm) in size” (Applicant’s filed specification at paragraph [0017]), and provides the following regarding nanoparticles: “the titanate mixed with the specific nanoparticles allows for a keyhole mode due to the combined effects of the reverse Marangoni flow and of the constriction of the arc by electrical insulation, resulting in higher current density and an increase in weld penetration" [0019]. "Without willing to be bound by any theory, it is believed that the nanoparticles dissolve at lower temperature than microparticles and therefore more oxygen is dissolved in the melt pool, which activates activate the reverse Marangoni flow" [0020]. “[I]t has been observed that the nanoparticles improve the homogeneity of the applied flux by filling the gaps between the microparticles. It helps stabilizing the welding arc, thus improving the weld penetration and quality" [0021].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761