UMBILICAL

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 . Claim Objections Claim 1 is objected to because of the following informalities: claim 1, line 7, “member”, all occurrences, should be changed to --members--; and claim 1, line 8, “member” should be changed to --members--. Appropriate correction is required. 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, 2, 4-10, 13-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Dupont et al. (6472614) in view of Bornes (GB 2553846). Dupont et al. discloses a subsea umbilical (Fig. 2) comprising a plurality of longitudinal strength steel members (9, 10), and a central core (1) for transporting fluid or transmitting electrical power, the plurality of longitudinal strength steel members comprising a first group of first strength members (10) having solid cross sections angularly spaced and arranged around the central core, and a second group of second strength members (9) having solid cross sections and angularly arranged and spaced around the central core, wherein the first strength members have diameters larger than diameters of the second strength members, wherein each of the first longitudinal strength steel members (10) and each of the second longitudinal strength steel members (9) has a coating (Fig. 2 and col. 4 lines 2-3, coating 11 is provided on the rods), and wherein the subsea umbilical is not armored for mechanical strength (col. 3, lines 31-33) (re-claim 1). Dupont et al. also discloses that the longitudinal strength steel members are steel rods or wires (re-claim 2); the longitudinal strength steel members are formed from carbon steel (col. 4, line 1) (re-claim 4). Dupont et al. does not disclose the coating being a semi-conductive coating (re-claim 1). Bornes discloses an umbilical comprising a steel strength member (4) having a semi-conductive coating (10) thereon. It would have been obvious to one skilled in the art to modify the coating of Dupont et al. to be a semi-conductive coating to form a protection against sea water corrosion as taught by Bornes, page 7, last two lines. Re-claims 5-10, Dupont et al., as modified, discloses that the semi-conductive coating is formed from an organic semi-conductive material (see Bornes) (re-claim 5), wherein the organic semi-conductive material comprises polyethylene or polypropylene doped with a suitable conducting material (Bornes, page 4) (re-claim 6), and wherein the organic material is doped with a carbon material (Bornes, page 5) (re-claim 7); the coating material has a resistivity in the range of 0.01 - 100 Ωm or 0.1 - 2.0 Ωm (Bornes, page 5) (re-claims 8-9); and the umbilical further comprises a grounding conductor to provide the semi-conductive coating with a grounding path (Bornes, page 5) (re-claim 10). Re-claims 13-15, the modified umbilical of Dupont et al. is a power riser or a dynamic power cable since it comprises structure and material as claimed. Re-claims 17-19, the semi-conductive coating in the modified umbilical of Dupont et al. can be groundable axially to seawater via the at least one of the strength members, which is tie-able to earth at one of both ends of the umbilical, since it comprises structure and material as claimed. Response to Arguments Applicant’s arguments with respect to claim 1 have been considered but are moot in view of new ground of rejection. Applicant argues that Bornes does not state or suggest that a semi-conductive coating by its nature provides protection against sea water corrosion. Examiner would disagree. The Office Action (OA) does not state that any semi-conductive, by its nature, provides against sea water corrosion. The OA suggest to modify the coating of Dupont to be a semi-conductive coating as taught by Bornes which provides protection against sea water corrosion. Applicant argues that Bornes proposes applying a semi-conductive coating to a fluid-line tube to solve a specific technical problem, such as cracks if the coating being an insulating coating. Bornes does not suggest the use of a semi-conductive coating for any other purpose. Examiner would disagree. First, Bornes does teach providing a semi-conductive coating on a steel surface. Second, Bornes does teach that having the semi-conductive coating provides protection against sea water corrosion (page 7, last two lines), beside solving the crack forming issue. Applicant argues that there is no indication that the coating 11 of Dupont is susceptible to cracking, a skilled person would have no motivation to apply a semi-conductive coating to the coating 11. Examiner would disagree. The OA does not suggest to apply a semi-conductive coating to the coating 11 of Dupont. Instead, the OA suggests to modify the coating 11 of Dupont to be a semi-conductive coating to provide protection against sea water corrosion as taught by Bornes. It has been held that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to do so is found in the references themselves, see Bornes page 7, last two lines. 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. Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. 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Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CHAU N NGUYEN/Primary Examiner, Art Unit 2841