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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date 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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Lehr (US 2014/0191016 A1), which discloses:
1. A method of joining two tubes (10, 12), comprising the steps of:
- aligning end walls (24, 30) of the two tubes to be welded (para. 0008), each end wall defined by an inner edge and an outer edge (where the end walls meet the inside surface and outside surface of each tube);
- introducing an intermediate tube segment (418) between the end walls of the two tubes, wherein the tube segment has opposed end walls (20, 22) defined by an inner edge and an outer edge (inner edges and outer edges where these end walls 20, 22 meet the inside and outside surface of tube section 18);
- bringing the end walls of the two tubes together against the opposing end walls of said tube segment to put the end walls of the two tubes and the opposing end walls of the tube segment under axial compressive stress at a friction ramp-up pressure (e.g., para. 0008, 0012) and rotating the intermediate tube segment about a tube segment longitudinal axis in at least one direction (via 16, para. 0008 – the compressive force can be applied at the start of the movement of section 18 or it can be applied thereafter);
- increasing the axial compressive friction stress to a forging pressure in order to heat the end walls of the two tubes and the opposing end walls of the tube segment (para. 0008, 0012: note that the application of a compressive force inherently involves increasing the compressive force); and
wherein each of the two tubes and the tube segment has a tube wall made of a material resistant to hydrogen embrittlement (all materials have some resistance to hydrogen embrittlement).
2. The method of claim 1, wherein the tube segment is rotated about the tube segment longitudinal axis in at least one direction by oscillating said tube segment in opposite directions (para. 0011).
3. The method of claim 1, comprising the step of: adding or removing heat to said tube segment, to control the welding temperature (para. 0009, 0010).
4. A tube made by the method according to claim 1 (the sections are disclosed to be joined by the disclosed process).
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a1/a2) as anticipated by Johanson (EP 3 913 268 A1) or, in the alternative, under 35 U.S.C. 103 as obvious over Johanson in view of Lehr.
Regarding claim 10, Johanson discloses an umbilical cable for transportation of electric power and hydrogen, comprising:
- an electric conductor (2), and
- a tube (3, 4) for transporting hydrogen made of material resistant to hydrogen embrittlement (e.g., para. 0011) made by the method according to claim 1 (this product-by-process limitation is given limited patentable weight because it does not result in a product that is substantially different from that disclosed by Johanson, i.e. a “tube” as claimed; see MPEP 2113).
Alternatively regarding claim 10, Lehr teaches that it was known in the art before the effective filing date to form a tube made by the method of claim 1 (see the anticipation analysis of claim 1 above), and it would have been obvious to use the joining method of claim 1 for the purpose of forming longer lengths of Johanson’s tube.
Claim(s) 4-23 are rejected under 35 U.S.C. 103 as obvious over Johanson in view of Lehr.
For all claims rejected under this section, the alternative obviousness analysis of claim 10 above is relied upon. (The alternative obviousness analysis of claim 10, set forth above, is considered to be incorporated by reference into this section of rejections.)
Regarding claim 4, this obvious modification would further result in the tube being made by the method according to claim 1.
Regarding claims 5 and 12, Johanson discloses wherein the tube wall is made of a material found resistant to hydrogen embrittlement according to ISO 11114-4:2017 (para. 0012).
Regarding claim 6 and 13, Johanson discloses wherein the tube wall is made of a copper alloy (para. 0017).
Regarding claim 7, Johanson discloses wherein the tube wall is made of a Cu-Ni-Si or a Cu-Ni-Sn alloy (para. 0019-0027).
Regarding claims 8, 14 and 16-23, the claimed ranges of tube wall thickness are rendered prima facie obvious by Johanson at para. 0034-0035. (See MPEP 2144.05.)
Regarding claims 9 and 15, Johanson discloses wherein the tube wall is a dual-layered wall and where the inner layer of the tube wall is made of a material resistant to hydrogen embrittlement (para. 0016).
Regarding claim 11, Johanson discloses wherein the umbilical cable further comprises one or more of fibre optic cables, electric signal cables, tubes for transferring pneumatic fluids, tubes for transferring air or other gases, and where the umbilical cable further comprises an over-sheath comprising an armouring and an outer polymer sheathing (para. 0039).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3,745,641 discloses another method of joining two segments of tube using an intermediate tube that is spun to create welds as required of claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM M MCCALISTER whose telephone number is (571)270-1869. The examiner can normally be reached M-F from 7am to 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CRAIG SCHNEIDER, can be reached at telephone number 571-272-3607, or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M MCCALISTER/ Primary Examiner, Art Unit 3753
11/17/25