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 .
Response to Amendment
This office action is responsive to the amendment filed on 23 June 2026. As directed by the amendment: claims 1-9, 13-15, 17 & 18 have been amended, claims 10-12 & 16 have been cancelled, and no claims have been added. Claims 21-23 were cancelled by previous amendment. Thus, claims 1-9, 13-15 & 17-20 are presently pending in this application.
Drawings
The drawings are objected to because of the following issues:
In FIG. 4, the hatching for the shaping tool 40 and the horizontal seam of the shaping tool / mold tool appear to be within the center of the pipeline rather than “behind” the pipeline in cross section. As best understood, FIG. 4 should appear analogous to FIG. 3 except with the shaping tools 40 and mould tool 30 disposed thereon.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-3, 15 & 17 are objected to because of the following informalities:
Claim 1, lines 4-5: “the ends” of the two metallic pipeline sections lacks proper antecedent basis in the claim.
Claim 1 refers to the junction coating variously as a “pipeline field joint junction coating” (line 4), “pipeline junction field joint coating” (line 5), and “field joint coating” (line 7). Claims 2 & 3 use the term “junction coating”, and claim 15 uses the term “pipeline junction coating”. To avoid confusion, the claims should be amended to utilize consistent terminology throughout.
Claim 1, lines 6-7: “the circumferential edge” lacks proper antecedent basis.
Claim 1, line 8: “the outer polymeric coating” should read “the first outer polymeric thermal insulation coating” for consistency.
Claim 1, line 9: “said interface” should read “said bonding interface” for consistency.
Claim 17 recites “a first outer polymeric thermal insulation coating” (lines 2-3) but later recites “the outer polymeric thermal insulation coating”. For consistency, the term “first” should be used in both instances or neither.
Appropriate correction is required.
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 1-9 & 13-15 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 recites “two metallic coated pipe sections” (lines 1-2), which appears to suggest that the pipe sections (of unspecified material) are coated with a metallic coating. However, this was likely intended to read “coated metallic pipe sections” (i.e., metallic pipe sections coated with an unspecified material).
Claim 1 further recites “a pipeline field joint junction coating applied between the ends of the two metallic pipe sections” (lines 4-5), which raises several issues.
First, the junction coating is understood to be applied over the joined ends of the pipe sections, not “between the ends” as currently presented. While the junction coating may be described as extending “between” the ends of the first outer polymeric thermal insulation coating of each pipe section, the limitation appears to incorrectly imply that it is also disposed between the ends of the metallic portions of the pipe sections.
Next, it is unclear if the term “the two metallic pipe sections” was intended to refer to the “two metallic coated pipe sections” or intended to refer specifically to as-yet unrecited metallic portions of the combined “metallic coated pipe sections” (i.e., an inner metallic pipe section; excluding the outer polymeric thermal insulation coating).
Claim 1 recites “…the joined ends of the coated pipe sections” (line 6). It is unclear if “the coated pipe sections” was intended to refer to the “metallic coated pipe sections”, or perhaps intended to refer specifically to the pre-coated (or metallic) portions of the combined “metallic coated pipe sections”.
Claim 7 recites “wherein both ends of the coating comprise regular castellations”, however, claim 1 recites two coatings: the junction coating and the first outer polymeric thermal insulation coating. As best understood, “the coating” of claim 7 was intended to refer to the junction coating, but this is not made clear in the claim.
Claim 14 recites “wherein the pipe junction is a field junction”, however, claim 1 recites that the junction coating (which covers the pipe junction) is a “pipeline field joint junction coating” / “field joint coating”, which would reasonably imply that the pipe junction itself is a field junction.
If claim 1 already implicitly requires the pipe junction to be a field junction, then claim 14 is improper for failing to further limited the subject matter of the claim upon which it depends.
If claim 1 is not intended require the pipe junction to be a field junction, then the use of “pipeline field joint junction coating” / “field joint coating”, causes the claims to take on an unreasonable degree of uncertainty.
Claim 15 recites that the junction coating “is chemically bonded to the first outer polymeric thermal insulation coating on each of the metallic pipe sections at a bonding interface”, which raises several issues.
First, as with claim 1, it is unclear if “the metallic pipe sections” was intended to refer to the “two metallic coated pipe sections” or if it was intended to refer specifically to some metallic portion of the combined “metallic coated pipe sections” (i.e., an inner metallic pipe section; excluding the outer polymeric thermal insulation coating).
It is also unclear if “a bonding interface” is intended to be the same as or different from the “bonding interface” already recited in claim 1.
Claims recited in the section heading above but not specifically discussed are rejected due to dependency upon at least one rejected claim.
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.
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.
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.
Claims 1-9, 13-15, 17, 19 & 20 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al. (US 2016/0279847 A1; hereafter Hoffmann) in view of Morel (US 2001/0026855 A1).
Regarding claim 1, Hoffmann discloses a pipeline assembly (figs. 1-7) comprising two metallic coated pipe sections (34, which may be steel [see para. 2 & 3], having coatings 38 thereon) joined at a pipe junction (as shown, including weld 36), each pipe section pre-coated up to the pipe junction with a first outer polymeric thermal insulating coating (38; see para. 58: “Each pipe joint 34 is coated with a parent coating, for example a 5LPP [5 layer polypropylene] coating 38”; see related paragraphs 3 & 4), and a pipeline field joint junction coating (i.e., 58) applied between the ends of the two metallic pipe sections (see fig. 7), wherein the pipeline junction field joint coating comprises an elongate body extended over the joined ends of the coated pipe sections (as shown in fig. 7), wherein the circumferential edge of one or both ends (i.e. formed by extension 48 of the mold cavity) of the field joint coating (58) forms part of a bonding interface with the outer polymeric coating (38).
Regarding the limitation wherein the circumferential edge of one or both ends of the field joint coating forms part of a bonding interface with the outer polymeric coating, Hoffmann further discloses that the junction coating comprises extended end portions (formed by extensions 48 of the mould cavity 40) which partially overlap the original coatings 38 of the pipeline sections, whereby the “overlaps beneficially lengthen and hence increase the area of the interfaces between the pipe coatings 38 and the field joint coating” (para. 83).
Hoffmann does not explicitly disclose that the circumferential edge of one or both ends of the field joint coating has a variable end profile, the variable end profile forming part of the bonding interface with the outer polymeric coating and being configured to disrupt stress concentration at said interface during bending of the pipeline.
Morel teaches (i.e., figs. 1A & 1B) a lap joint (overlap) interface between two polymer materials (i.e., rubbers A & B) having a variable profile at an end.
Morel explains that junctions between different materials, “when subjected to stresses (whether tension, compression or shear), represent a particularly vulnerable area of the article considered, the life of the article being greatly limited by the destruction of the joint, whether this destruction being due to adhesion failure or to stress concentration at the location of the joint, or even to external aggression in the case of some junctions” (para. 3).
To overcome this, Morel teaches that “at least of the edges” of one of the materials being joined “has an end whose trace-line resembles an oscillating movement, namely an oscillating trace-line” (para. 5); “[a]ny trace-line may be suitable”, with given examples being sinusoidal (para. 7; FIG. 1B), semi-circular (para. 7; fig. 3B), “crenellated” or “serrated” (para. 8), and “periodic trapezoidal” (para. 18; FIG. 3C)
Morel explains that the use of a variable end profile improves the life of the article by reducing the effects of the above known causes of failure (para. 4); and that comparison tests between straight edged joints and the variable profiled joints demonstrate “the very clear superiority” of the variable profiles (para. 17).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the pipeline assembly of Hoffmann such that the circumferential edge of one or both ends of the field joint coating has a variable end profile, the variable end profile forming part of the bonding interface with the outer polymeric coating and being configured to disrupt stress concentration at said interface during bending of the pipeline, in view of the teachings of Morel (e.g., by forming the circumferential edges at the bonding interface as an “oscillating trace-line”), to improve the service life of the article (i.e., the pipeline) by reducing vulnerability of the overlapping joint to adhesion failure, stress concentration and/or external “aggression” (i.e., physical wear), as suggested by Morel.
The above modification would have otherwise been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as the application of a known technique (i.e., forming an overlap joint between two polymeric materials to have a variable / oscillating end profile, as in Morel) to a known device ready for improvement (i.e., the pipeline junction coating of Hoffmann’s pipeline assembly, having two such overlap joints between two polymeric materials, one at either end) to obtain predictable results (i.e., improved service life via reducing vulnerability to adhesion failure, stress concentration, external aggression, etc., as suggested by Morel).
Examination Note: to promote compact prosecution, it is noted that forming joints, including tubular / pipe joints, with variable profiled ends, in general, is well-known across a variety of arts, for various reasons: e.g., to reduce fatigue / improve mechanical properties (US 2016/0318595 A1), to increase the surface area of a bond and/or to spread torsional shear stress over multiple bond planes (US 6,855,061), to increase the length of a weld joint (US 1,700,319; US 4,212,563; US 4,648,752), to provide a mechanical interlock (US 7,731,817), to facilitate concentric alignment and reduce shear stress in a bonded joint between dissimilar materials (US 4,279,275), etc.
Regarding claims 2-4, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitations wherein the junction coating comprises a mouldable material (claim 2), wherein the junction coating is wholly or substantially formed from a polymer material (claim 3), and wherein the polymer material is polypropylene or polyurethane (claim 4).
In particular, Hoffmann discloses the junction coating to be substantially or wholly formed from polypropylene (“PP 58”) which is molded via injection molding (see paras. 3, 10-12, 16, 69, 82, 93, etc.), but also explains that molded polyurethane (PU) coatings are known in the art (see para. 8, 9, 31, 32).
Regarding claim 5, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitation wherein the variable end profile has a regular variation in geometry.
In particular, as noted in the rejection of claim 1 above, Morel teaches that the variable profile used at the end of the overlapping joint may be “any-trace line” having “stationary [i.e., regular] and non-stationary [i.e., irregular] oscillations”, with a preferred embodiment being a “sinusoidal trace-line of a harmonic oscillation” [i.e. a regular sinusoidal variation, as understood](para. 7). Morel further explains that “an oscillatory trace-line can be characterized by an amplitude and a wavelength”, and suggests that the amplitude may or may not be variable (para. 9)[i.e., the variation amplitude may be regular or irregular, as understood].
Finally, it is noted that the example profiles shown in figures 1B, 2B, 3B, and 3C each appear to exhibit a “regular” variation in geometry.
Thus, when the pipeline assembly of Hoffmann is modified in view of Morel (as otherwise set forth in the grounds of rejection for claim 1 above) such that the circumferential ends of the joint coating have variable end profiles with “stationary” oscillations, or otherwise ones which do not have a variable amplitude (i.e., as in the embodiments shown in the figures of Morel), each suggested by Morel to be among the suitable arrangements for a variable end profile, the resulting combination would read on the limitation wherein the variable end profile has a regular variation in geometry.
Regarding claims 6 & 7, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitations wherein the variable end profile comprises a castellation profile (claim 6), and wherein both ends of the coating comprise regular castellation (claim 7).
As a preliminary note, applicant’s own specification describes figure 5 as depicting “a regular castellation profile, i.e., of alternating protrusions and recesses, generally having smoothed edging or edges” (pg. 15, lines 33-35).
The term “castellation” otherwise has a common and accepted definition of “a castellated structure”; whereby “castellated”, in this context, has common and accepted definitions including: “having grooves or recesses on an upper face”; “Castle-like: built or shaped like a castle; usually, specifically, having castellations (crenellations)”.
The terms “castellation” and “crenellation” would be understood in this context as substantially synonymous.
As noted in the rejection of claim 1 above, Morel teaches that the variable profile used at the end of the overlapping joint may be “any-trace line” having “stationary [i.e., regular] and non-stationary [i.e., irregular] oscillations”, and suggests that one suitable profile may be a “crenellated” edge (para. 8). In FIG. 3C, and corresponding para. 16, Morel teaches a “periodic trapezoidal” profile with a regular variation. As understood, this “periodic trapezoidal” profile, which may reasonably be inferred as corresponding to the “crenellated” example previously stated, comprises a series of alternating protrusions and recesses, generally having smooth edges, and is therefore reasonably seen as reading on a “castellation profile” (as defined by applicant’s specification) and, in particular, a “regular castellation”.
Thus, when the pipeline assembly of Hoffmann is modified in view of Morel (as otherwise set forth in the grounds of rejection for claim 1 above) such that the circumferential ends of the joint coating have variable end profiles with a “crenellated” profile (as suggested in para. 8 of Morel), which has a stationary/non-variable amplitude, or otherwise a regular “periodic trapezoidal” profile (such as that in fig. 3C), each suggested by Morel to be among the suitable arrangements for a variable end profile, the resulting combination would read on the limitations wherein the variable end profile comprises a castellation profile (claim 6), and wherein both ends of the coating comprise regular castellation (claim 7).
Regarding claim 8, the pipeline assembly of Hoffmann, as modified in view of Morel above, reads on or otherwise renders obvious the additional limitation wherein the variable end profile is sinusoidal.
In particular, as noted in the rejection of claim 1 above, Morel teaches that the variable profile used at the end of the overlapping joint may be “any-trace line” having “stationary [i.e., regular] and non-stationary [i.e., irregular] oscillations”, with a preferred embodiment being a “sinusoidal trace-line of a harmonic oscillation” [i.e. a regular sinusoidal variation, as understood](para. 7). The variable profile shown in FIG. 1B is also described as “a sinusoidal trace-line” (para. 14, lines 13-16).
Thus, when the pipeline assembly of Hoffmann is modified in view of Morel (as otherwise set forth in the grounds of rejection for claim 1 above) such that the circumferential ends of the joint coating have variable end profiles with sinusoidal profile (as described in para. 7 & 14, and shown in fig. 1B), suggested by Morel to be among the preferred profiles, the resulting combination would read on the limitation wherein the variable end profile is sinusoidal.
Regarding claim 9, the pipeline assembly of Hoffmann, as modified in view of Morel above, reads on or otherwise renders obvious the additional limitation wherein the variable end profile has an irregular variation in geometry.
In particular, as noted in the rejection of claim 1 above, Morel teaches that the variable profile used at the end of the overlapping joint may be “any-trace line” having “stationary [i.e., regular] and non-stationary [i.e., irregular] oscillations”. Morel further explains that “an oscillatory trace-line can be characterized by an amplitude and a wavelength”, and suggests that the amplitude is measured crest-to-crest, “whether variable or not” (para. 9)[i.e., the variation amplitude may be regular or irregular, as understood].
Thus, when the pipeline assembly of Hoffmann is modified in view of Morel (as otherwise set forth in the grounds of rejection for claim 1 above) such that the circumferential ends of the joint coating have variable end profiles with “non-stationary” oscillations, or otherwise ones which have a variable amplitude (as suggested to be possible by Morel), the resulting combination would read on the limitation wherein the variable end profile has an irregular variation in geometry.
Examination Note: to promote compact prosecution, it is noted that forming a variable end profile at a joint to have an irregular variation in geometry is otherwise known. For example, see US 5,714,290 to Yu et al., col. 17, lines 51-56: “If desired, the bent seam of this invention may have a wave, ripple or sawtooth pattern or the like that is irregular with variations in amplitude for different waves, ripples or sawtooths along the length the seam or can even comprise a mixture of smooth rounded curves and angular bends or curves.”.
Regarding claim 13, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitation wherein the pipeline is a rigid pipeline.
In particular, the pipeline shown by Hoffmann is “formed of lengths of steel pipe – ‘pipe joints’ – that are welded together end-to end before the pipeline is laid” (para. 2, lines 1-3).
Applicant’s own specification similarly recites “Rigid subsea pipelines are commonly formed of lengths of steel pipe – ‘pipe joints’ – that are welded together end-to end…” (pg. 1, lines 15-16).
A person having ordinary skill in the art would also recognize that the pipeline shown by Hoffmann (i.e., a subsea steel pipe coated in a polymer) is substantially the same basic type of pipeline construction disclosed in applicant’s own specification; and that each of these pipelines would be understood in the art as a “rigid pipeline” (e.g., as defined by the American Petroleum Institute [e.g., API 5L, etc.] or equivalent), in contrast to a “flexible pipe system” (e.g., API 17J).
Regarding claim 14, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitation wherein the pipe junction is a field junction (i.e., a field joint; see abstract & paras. 1, 5, 6, etc.; see also published claim 1: “A method of coating a field joint of a pipeline…”).
Regarding claim 15, the pipeline assembly of Hoffmann, as modified above, reads on the additional limitation wherein the pipeline junction coating (58) is chemically bonded to the first outer polymeric thermal insulation coating (38) on each of the metallic pipe sections at a bonding interface.
In particular, Hoffmann discloses that the first outer polymeric thermal insulation coating (38) may be, for example, a five-layer polypropylene coating (see para. 58; see also paras. 3 & 4); and that the pipeline junction coating may also be polypropylene (see, e.g., para. 69: “PP 58”). Hoffmann explains (e.g., para. 11) that when the PP pipe coating and PP field joint coating are compatible, the materials of these coatings “fuse together at their mutual interface, resisting cracking and hence giving longer service life” (para. 11).
Finally, Hoffman explicitly states that “the ends of the field joint coating overlap the pipe coatings 38 slightly…. to increase the area of the interfaces between the pipe coatings 38 and the field joint coating” (para. 83).
As a result, the pipeline junction coating is reasonably seen as being chemically bonded (i.e., by mutual fusion resulting from chemical compatibility during formation of the junction coating) to the first outer polymeric thermal insulation coating (38) on each of the metallic pipe sections at a bonding interface (i.e., the overlapping portions described above).
Regarding claim 17, Hoffmann discloses (figs. 1-7) a method of coating a pipeline junction (as shown, including weld 36) between two coated metallic pipe sections (34, which may be steel [see para. 2 & 3]; having coatings 38 thereon), each pipe section being pre-coated up to the pipeline junction with a first outer polymeric thermal insulating coating (38; see para. 58: “Each pipe joint 34 is coated with a parent coating, for example a 5LPP [5 layer polypropylene] coating 38”; see related paragraphs 3 & 4), the method comprising at least the steps of:
(a) positioning a mould tool (32; “mould tool 32”) around the pipeline junction to define a mould cavity (40; “mould cavity 40”; see fig 3), the mould tool having one or more shaping tools (i.e., end portions 44 defining the “extensions 48” of the mould cavity, and having seals 54 for sealing the ends of the mould cavity) with a profile at one or both ends of the mould tool (i.e., the end portions 44 define tapering profiles at both ends of the mould tool); and
(b) injecting a moulding material (e.g., polypropylene, “PP 58”) into the mould cavity (see figs. 3 & 4; paras. 69 & 70) to form a pipeline junction coating (i.e., 58 in fig. 7) that extends over the pipeline junction, and the pipeline junction coating having an end profile at the circumferential edge of one or both ends of the pipeline junction coating (i.e., the tapering end profile as shown in fig. 7, corresponding to the tapering profile of the shaping tools defining the ends of the mould cavity), the end profile forming part of a bonding interface with the outer polymeric thermal insulating coating.
Hoffmann does not explicitly disclose the profiles of the one or both ends of the shaping tools to be variable profiles, or the end profiles of the pipeline junction coating to be variable end profiles, the variable end profiles forming part of the bonding interface with the outer polymeric thermal insulating coating and being configured to disrupt stress concentration at said bonding interface during bending of the pipeline.
However, Hoffmann discloses that the extensions 48 of the mould cavity (defined by shaping tools 44 at either end) cause the pipeline junction coating to be formed with corresponding extended end portions which partially overlap the parent coatings 38 of the pipeline sections, whereby the “overlaps beneficially lengthen and hence increase the area of the interfaces between the pipe coatings 38 and the field joint coating” (para. 83).
Thus, Hoffmann generally discloses that the end portions of the mould cavity (i.e. the portions defined by the end shaping tools) define the shape of the extended end portions of the pipeline junction coating formed in the mould tool, and suggests that the form of these end portions (i.e., the length) has an effect on the interface (i.e., the area of the interface) between the parent coating and the junction coating.
It is also noted that the purpose of a mold cavity, in general, is to substantially define the shape of the component formed by the molding material provided to the cavity. If it were desired to change the shape of a component produced by a mold tool, a person having ordinary skill in the art would at once envisage changing the corresponding shape of the mold cavity used to form the component as one reasonable course of action for achieving the desired result.
Morel teaches (i.e., figs. 1A & 1B) a lap joint (overlap) interface between two polymer materials (i.e., rubbers A & B) having a variable profile at an end.
Morel explains that junctions between different materials, “when subjected to stresses (whether tension, compression or shear), represent a particularly vulnerable area of the article considered, the life of the article being greatly limited by the destruction of the joint, whether this destruction being due to adhesion failure or to stress concentration at the location of the joint, or even to external aggression in the case of some junctions” (para. 3).
To overcome this, Morel teaches that “at least of the edges” of one of the materials being joined “has an end whose trace-line resembles an oscillating movement, namely an oscillating trace-line” (para. 5); “[a]ny trace-line may be suitable”, with given examples being sinusoidal (para. 7; FIG. 1B), semi-circular (para. 7; fig. 3B), “crenellated” or “serrated” (para. 8), and “periodic trapezoidal” (para. 18; FIG. 3C)
Morel explains that the use of a variable end profile improves the life of the article by reducing the effects of the above known causes of failure (para. 4); and that comparison tests between straight edged joints and the variable profiled joints demonstrate “the very clear superiority” of the variable profiles (para. 17).
As set forth in MPEP § 2141.03(I), "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
As previously explained, the purpose of a mold cavity, in general, is to substantially define the shape of the component formed by the molding material provided to the cavity and if it were desired to change the shape of a component produced by a mold tool, a person having ordinary skill in the art would at once envisage changing the corresponding shape of the mold cavity used to form the component as one reasonable course of action for achieving the desired result.
In the case of the apparatus and methods disclosed by Hoffmann, said person having ordinary skill in the art would have understood that the shape of the end portions of the mould cavity (i.e. the portions defined by the profile of the end shaping tools) defines the end profiles of the extended end portions of the pipeline junction coating formed in the mould tool. Thus, if it were desired to change the profile of the extended end portions of the pipeline junction coating produced by the mould tool of Hoffmann, said person having ordinary skill in the art would have at once envisaged changing the corresponding profile of the end shaping tools defining the end portions of the mould cavity as one reasonable course of action for achieving the desired result.
In view of the above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of coating a pipeline junction of Hoffmann such that the profiles of the shaping tools at one or both ends of the mould tool (i.e. the profile defining the extensions of the mould cavity for forming the extended end portions of the junction coating overlapping the parent coating) are provided as variable profiles (e.g., sinusoidal, crenellated, periodic trapezoidal, etc.), whereby the pipeline junction coating formed by the subsequent step of injecting a moulding material into the mould cavity is formed with a variable end profile at one or both ends, the variable end profiles forming part of the bonding interface with the outer polymeric thermal insulating coating and being configured to disrupt stress concentration at said bonding interface during bending of the pipeline, in view of the teachings of Morel, to improve the service life of the article (i.e., the pipeline) by reducing vulnerability of the overlapping joint to adhesion failure, stress concentration and/or external “aggression” (i.e., physical wear), as suggested by Morel.
The above modification would have otherwise been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as a combination of known prior art elements (i.e., forming a pipeline junction coating using a mould cavity with shaping tools defining extended end portions to create a lap joint with a parent coating, as in Hoffmann; forming a lap joint between two polymeric materials to have a variable end profile, as in Morel) according to known methods (i.e., Hoffmann already discloses that the profiles defining the mould cavity extensions form the extended end portion of the junction coating overlapping the parent coating; modifying the profile of a mould cavity to modify the profile of the component formed within the cavity would have been fundamentally known to the person skilled in the art) to obtain predictable results (i.e., providing for a pipeline junction coating with variable end profiles which, as suggested by Morel, improves the service life by reducing vulnerability of the overlapping joint to adhesion failure, stress concentration and/or external “aggression” [i.e., physical wear], etc.).
Regarding claim 19, Hoffmann further discloses the additional limitations wherein the mould tool (32) comprises two half shells (42; see fig. 2; para. 59: “the mould tool 32 comprises a tube 42 of generally circular cross-section, divided longitudinally on a diameter of the cross-section into two halves…”), and each half shell comprises a half-shell shaping tool (i.e., end portions 44 defining the “extensions 48” of the mould cavity, and having seals 54 for sealing the ends of the mould cavity; the end portions 44 are end portions of the tube 42 and so would be understood to be correspondingly half-shells once divided as shown) at each end (see figs. 2-6).
Regarding claim 20, Hoffmann discloses the additional limitation wherein the moulding material is polypropylene or polyurethane.
In particular, Hoffmann discloses the moulding material to be polypropylene (“PP 58”) (see paras. 3, 10-12, 16, 69, 82, 93, etc.), but explains that molded polyurethane (PU) coatings are otherwise known in the art (see para. 8, 9, 31, 32).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann in view of Morel as applied to claim 17 above, and further in view of Wiesemann et al. (US 2020/0282677 A1; hereafter Wiesemann).
Regarding claim 18, in the apparatus of Hoffmann (i.e., as used in the corresponding method), the end portions of the mould cavity define the shape of the extended end portions (i.e. the portions defined by the end shaping tools) of the pipeline junction coating formed in the mould tool and, as set forth in the grounds of rejection for claim 17 above, it would have been obvious to a person having ordinary skill in the art in view of Morel to modify the profile of the shaping tools to have a variable profile so as to impart a corresponding variable end profile to the pipeline junction coating.
However, Hoffmann does not explicitly disclose the coating method to further comprise a step of fixing the one or more shaping tools with a variable profile to one or both ends of the mould tool prior to step (a).
Wiesemann teaches (figs. 7A-B, 8-10 & 12) a method of coating a pipeline junction between two coated metallic pipeline sections (steel pipes 20; having coatings 28 & 30) comprising the steps of: positioning a mould tool (44; see figs. 7A & B) around a field joint (as otherwise known, see related FIG. 3 showing a prior art mould tool around a field joint) to define a mould cavity (i.e., the cavity defined between the inner surface of the mould tool and the outer surface of the field joint), the mould tool having one or more shaping tools (“inserts” 50, 52, 54, 56 for creating exterior grooves 58, 60, 62, 64 in the resulting junction coating; see paras. 55-62), and injecting a moulding material (i.e., PP, to form an IMPP [injection-molded polypropylene] field joint) into the mould cavity to form a pipeline junction coating (46) having a corresponding profile (i.e., grooves 58, 60, 62, 64 in figs. 8-10 & 12).
Wiesemann further teaches that the shaping tools (50, 52, 54, 56) are fixed to the mould tool (e.g., para. 56: “The mold comprises…inserts 50, 52, 54, 56 welded along the inner circumference of the mold, to impart circumferential grooves in the coating”), which is clearly understood to be a step which takes place prior to positioning the mould tool around the field joint.
In general, Wiesemann teaches that “the three-dimensional geometry of the injection molded/cast coating can have an influence on the stress placed on the line coating during cooling”, “[m]olding or casting a coating having circumferential grooves, or other groove geometry, proximal to the interface with the line coating, will reduce line coating failure proximal to the field joint, in particular line coating failure related to the initial spooling/reeling of the pipe.” (para. 41).
Wiesemann explains that the inserts provide such “geometry” to the pipeline coating, e.g., circumferential grooves (see para. 55), whereby the design of the mould (which corresponds to the design of the junction coating) is desirably designed to limit the coating volume, reducing residual stress in the parent coating imparted by shrinkage of the junction coating, while maintaining overall integrity of the joint (para. 57). Wiesemann suggests that routine experimentation may be used to optimize the groove configuration for each pipe and coating geometry (para. 61).
Finally, Wiesemann teaches an alternative embodiment (fig. 7C) with inserts (68) that form a variable profile (i.e., a profile which varies over the circumference). Wiesemann explains: “It is believed that further alternative geometries may also provide line coating crack resistance by releasing strain on the line coating proximal to the IMPP coating. A mold capable of providing further alternative geometries can be seen in FIG. 7C, which, for example,… has perpendicular inserts 68 interspersed within the mold, and not running the entire circumference.” (para. 67).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hoffmann to further comprise a step of fixing the one or more shaping tools with the variable profile to one or both ends of the mould tool prior to step (a), in view of the teachings of Wiesemann, as the use of a known technique (i.e., attaching separately formed shaping tools to a field joint coating mold, e.g., by welding, before positioning the mould tool around a field joint and injecting molding material into the mould cavity; as in Wiesemann) to improve a similar method (i.e., the field joint coating method of Hoffmann, as otherwise modified in view of Morel such that the mould tool include shaping tools with a variable profile) in the same way (e.g., enabling customization of the mould cavity geometry for a particular application, whereby a base moulding tool can be used to form various coating geometries by appropriate selection of the shaping tools to be attached; and/or by simplifying manufacture / reducing costs since, where the moulding tool shell is formed by a split tubular structure, using a thinner tubular material and attaching separately formed shaping tool inserts inside to reduce the mould cavity thickness where needed may reasonably be more cost effective than machining larger cavity volumes on the inside of a thicker stock material).
The above modification would have been otherwise obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as the simple substitution of one known shaping tool arrangement (i.e., arrangement of Hoffmann, having shaping tools with profiles integrally formed at the ends of the mould tool) for another (i.e., the arrangement of Wiesemann, wherein the profiled shaping tools are separately formed and attached to the mould tool, as by welding) to obtain predictable results (i.e., as above, enabling customization of mould cavity geometry by selection of appropriate inserts to be attached; and/or simplifying manufacture / reducing material costs by enabling the use of a thinner tube to form the mould tool rather than machining cavity volumes inside a thicker tube, etc.).
Response to Arguments
Applicant's arguments filed 23 June 2026 have been fully considered but they are not persuasive.
Applicant argues that, while using a variable profile is generally known, “in the present invention a variable profile is used in a very specific way, which is not suggested by the cited art. Specifically, in the claimed invention variable profile helps top reduce stress at the interface between injection-molded pipeline coatings during pipeline bending. This is different from the cited examples in which the shape is used for bonding, interlocking or welding”.
This argument is not found to be persuasive. Morel explicitly discloses that junctions between polymers “when subjected to stresses (whether tension, compression or shear), represent a particularly vulnerable area of the article considered, the life of the article being greatly limited by the destruction of the joint, whether this is due to adhesion failure or to stress concentration at the location of the joint, or even to external aggression in the case of some junctions” (para. 3), and teaches that forming the end profile of the overlapping portion of the joint with a variable profile reduces the influence of the above issues.
The pipeline assembly of Hoffmann includes a similar overlapping joint between polymer materials at each end of the junction coating and a person having ordinary skill in the art would have recognized that such a pipeline, during bending, would be subjected to such stresses (e.g., tension at the outer side of the bend, compression at the inner side of the bend, etc.) and, by extension, the overlapping joint would potentially be vulnerable to such failure modes.
Thus, the applicability of the teachings of Morel, which seek to reduce vulnerability of an overlapping joint to failure modes such as adhesion failure and stress concentration when subjected to stresses (e.g., tension, compression, shear), to the pipeline assembly of Hoffmann, which includes a similar overlapping joint between polymer materials at each end of the junction coating, would have been readily apparent to a person having ordinary skill in the art.
While applicant attempts to distinguish between the known uses in the prior art which incorporate variable profiles for “bonding, interlocking or welding” with the current use for “reducing stress at the interface during bending”, this is not persuasive: each of these uses, as in applicant’s instant application, are using the variable profile to distribute / reduce stress concentrations at a bonding / joint interface.
In response to applicant's arguments against the references individually (i.e., that Hoffmann does not suggest changing the interface shape), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As mentioned above, Morel teaches the interface shape. Moreover, Hoffmann states that “overlaps beneficially lengthen and hence increase the area of the interfaces between the pipe coatings 38 and the field joint coating” (para. 83), and thus reasonably discloses that the form of these end portions (e.g., the length) has an effect on the interface (i.e., the area of the interface) between the parent coating and the junction coating.
In response to applicant's argument that Morel is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. [MPEP § 2141.01(a)(I)].
In this case, as previously explained, the teachings of Morel, which relate to reducing vulnerability of an overlapping polymer joint to stress-induced failure modes such as adhesive debonding and stress concentrations, is reasonably pertinent to at least one problem with which the instant inventor was concerned (e.g., reducing stress-induced failure / stress concentrations at an overlapping joint / bonding interface).
As further set forth in MPEP § 2141.01(a)(I), a reference need not be from the same field of endeavor as the claimed invention in order to be analogous art. Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. This is consistent with the Supreme Court's instruction in KSR that "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR, 550 U.S. at 417, 82 USPQ2d at 1396. The Federal Circuit reads KSR as "direct[ing] us to construe the scope of analogous art broadly" because "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Wyers v. Master Lock Co., 616 F.3d 1231, 1238, 95 USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402, 127 S. Ct. at 1727).
See also MPEP §2141.01(a)(II & IV).
While Morel uses the example of a tire to illustrate the inventions disclosed therein, the disclosure of Morel is not limited to such applications, and more generally discloses “rubber articles”.
Applicant alleges that the solutions of Hoffmann are “tailored to the behavior of thermoplastics” while the solution of Morel is “designed for the properties and failure modes of bonded rubber components”, but this is not found to be persuasive.
It is first noted that the terms “thermoplastic” and “rubber” are not mutually exclusive; the delineation between thermoplastics and rubbers is not binary: some rubbers are themselves thermoplastic (e.g., SBS copolymers), or else may be provided together with a thermoplastic to form a thermoplastic elastomer (a compound mixture of thermoplastic and thermoset rubber). There is also significant technological crossover in the art even between thermoplastics and vulcanized (cross-linked) rubber, and differences in bonding and/or stress-induced behavior between vulcanized rubber and thermoplastics would be reasonably predictable in this context.
As set forth in MPEP § 2141.03(I), "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
As previously noted, "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR, 550 U.S. at 417, 82 USPQ2d at 1396. In the instant case, the same design incentives of Morel, of reducing vulnerability of an overlapping joint to stress-induced failures, would also have applied to the overlapping joint between the polymer coatings in Hoffmann.
Finally, as set forth in MPEP § 2123(I), "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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.
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/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
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