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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-9, and 13-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for galvanic deposition of nickel and copper nanolaminate layers, does not reasonably provide enablement for generic deposition of a nanolaminate layer. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claims are drawn towards a method of applying a nanolaminate to a metal workpiece with a coating comprising at least two layers that differ from its adjacent layer, where the nanolaminate is applied to in the region of a weld seam.
(B) The nature of the invention:
The invention is drawn towards protection of weld seams.
(C) The state of the prior art:
The prior art cited below is identified in the rejection below is deemed to be the most relevant prior art of record and not repeated here for brevity.
(D) The level of one of ordinary skill:
One of ordinary skill in the art would be apprised of the condition of weld seams as well as electrodepostion techniques in forming nanolaminate coatings.
(E) The level of predictability in the art:
The predictability of particular combinations of dissimilar nanolaminate layers does not appear to have any predictability in achieving the intended purpose of the invention to extend the life of weld seams.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
The instant disclosure only recited galvanic deposition as a suitable method of applying nanolaminate coating in the region of a weld seam. No other methods of deposition are disclosed that provide the suitable structure of the layers in forming nanolaminate coatings that satisfy the use of the nanolaminate. Furthermore, Applicant has not cited any other particular metal combinations other that a Ni/Cu nanolaminate to achieve the intended purpose. Thus, the scope of instant claim 1 is so broad in covering any plating method with any combination of metallic layers so as to be un-enabling.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
Due to the enumerable possibilities of combinations of divergent methods of deposition and metals of the nanolaminate layer, a quantity of experimentation cannot be adequately evaluated or estimated.
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 1-16 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.
As to claim 1, the claim lacks a proper transitional phrase in accordance with MPEP 2111.03 as there is no equivalent phrase from the preamble of “a method of applying a nanolaminate to a metal workpiece” to the stated “wherein” clauses that follows. “Wherein” clause interpretation is guided under MPEP 2111.04. In the instant case, the “wherein” clauses as recited limit “the nanolaminate” referred to in the “for” statement of the preamble. The “for” statement of the preamble is interpreted under MPEP 2111.02 II as a statement of intended use. Thus, the “wherein” clauses cannot be adequately determined to limit the scope of “a method” as currently applied. The Examiner suggests using a traditional transitional phrase and a positive recitation of instant claim 5, i.e. “a method for…comprising…galvanically depositing the nanolaminate using a single bath or multi-bath technique…” or the like.
For examination on the merits to ensure compact prosecution, the limitations will be interpreted as being positively recited method steps.
Claim 1 recites the limitation "the adjacent layer" in line5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the region" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the adjacent heat affected zone" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the adjacent heat affected zone" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
It is noted the term “nanolaminate” is used through-out the specification and claims without afforded any particular definition without particular properties of the layers used in the laminate outside of comprising at least two layers. For examination on the merits, cited Lomasney provides a generic accepted definition of nanolaminate coatings formed via electrodeposition at [0037] defined by a layer thickness of 0.5-10000 nanometers, i.e. an upper limit of 10 micrometers ([0061]), to provide an overall thickness of the combined plated layers up to 30 mm ([0063]).
Claim Rejections - 35 USC § 102/103
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.
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 1-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Takahata (US 5,059,493) or, in the alternative, under 35 U.S.C. 103 as obvious over Takahata in view of Lomasney (US 2012/0088118 A1).
NOTE: This rejection is being provided in an effort for compact prosecution as a dual rejection under 35 U.S.C. 102(a)(1) based on the broadest reasonable interpretation of the phrase “nanolaminate” in light of Lomasney’s description of nanolaminate layer and lack of description of the term within the as filed specification and 35 U.S.C. 103(a) based on the narrower explicit use of the term “nanolaminate” found in Lomasney.
Rejection under 35 U.S.C. 102(a)(1):
As to claim 1, Takahata discloses a method for applying a laminate to a metal workpiece (Abstract),
wherein a coating made of a nanolaminate, which consists of a series of at least two metallic layers, is applied in a spatially limited region, wherein each metallic layer consists of a metal or a metal alloy that differs from the metal or the metal alloy in the adjacent layer (Abstract “a first or undercoat layer formed from cobalt, nickel or a cobalt or nickel alloy on the surface to be protected, and a second or overcoat layer formed on the first layer from zinc or a zinc alloy”), characterized in that the nanolaminate is applied to the workpiece in the region of a weld seam. (col. 1 lines 63-65 “The pipes to which it is effectively applicable include a lap welded steel pipe having a weld layer of copper on its exposed surface or between its overlapping surfaces.” Emphasis added, and each Example col. 3-col. 7 of a lap welded steel pipe or a seam welded steel pipe).
As to the recitation of “nanolaminate”, Takahata discloses the examples provide an undercoat layer cobalt with a thickness of 3 microns with an overcoat layer of a zinc-nickel alloy of 5 microns (Example 1 col. 3 lines 20-34) as well as an embodiment which provides an undercoat layer of nickel with a thickness of 100 nm, 200 nm, etc. (Table 1 col. 8 Example 7) with the same overcoat layer of zinc-nickel alloy of 5 micron thick (col. 8 lines 17-20) that results in a multi-layer plating which arrives at thickness which read on providing a “nanolaminate” provided the broadest reasonable interpretation in light of the common definition identified in Lomasney.
As to claim 3, Takahata discloses the nanolaminate is applied to the weld seam and in the adjacent heat-affected zone or zones in a spatially limited manner because the region of the weld is necessarily plated onto the weld of the substrate.
As to claim 5, Takahata discloses wherein the platings are applied galvanically using a multi-bath technique for each layer (see col. 3 lines 20-34 baths for the cobalt and Zn-Ni layer).
As to claim 6, Takahata further discloses wherein the metals are nickel, zinc, and cobalt (Example 1 col. 3 and citation above).
As to claim 11, Takahata discloses wherein the platings are applied galvanically using a multi-bath technique for each layer (see col. 3 lines 20-34 baths for the cobalt and Zn-Ni layer).
As to claim 14, Takahata further discloses wherein the metals are nickel, zinc, and cobalt (Example 1 col. 3 and citation above).
As to claim 16, Takahata further discloses wherein the metals are nickel, zinc, and cobalt (Example 1 col. 3 and citation above).
Rejection provided the interpretation and explicit use of the term “nanolaminate” under 35 U.S.C. 103(a)
Alternatively, as to claim 1, Lomasney discloses using a nanolaminate deposit comprising multiple nanoscale layer that vary periodically in electrodeposited species (Abstract) wherein variations in said layers of said electrodeposited species or electrodeposited species microstructure result in galvanic interactions between the layers, said nanoscale layers having interfaces there between. ([0010]) which increases the corrosion resistance when compared to a homogenously deposited layer to confine corrosion to less noble layer ([0043]-[0044], [0075]). Lomasney discloses such nanolaminate layers can be formed of any number of nanoscale layer ([0031]) on a nanoscale thickness scale of each layer ([0061]) which may be overall deposited to form a deposit on a nanometer, micrometer, and millimeter scale ([0063]). Lomasney further discloses using a plethora of different metals, such as nickel, zinc, copper, cobalt, etc. ([0058]), and specifically a NiZn alloy and NiCo alloy ([0058]).
Lomasney discloses the following dependent claim limitations which are necessary structures of the nanolaminate disclosed:
Instant claim 2: that the nanolaminate consists of an alternating series of at least two metallic layers. ([0031] “The series of non-identical layers can include a simple alternating pattern of two or more non-identical layers (e.g., layer 1, layer 2, layer 1, layer 2, etc.) or in another embodiment may include three or more non-identical layers (e.g., layer 1, layer 2, layer 3, layer 1, layer 2, layer 3, etc.)”
Instant claims 4, 8, 9: that the nanolaminate on the workpiece has four or more metallic layers in the region of the weld seam. ([0031]).
Instant claims 5, 10, 11, 12,: that the nanolaminate is galvanically applied with a single-bath technique or a multi-bath technique. ([0003],[0045]-[0048] in a single bath via variation of the deposition parameters, and [0003] “by moving a mandrel or substrate from one bath to another, each of which represents a different combination of parameters that are held constant, multi-laminate materials or coatings can be realized” multi-bath technique).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the Zn-Ni or Ni-Co alloys layers of Takahata’s Examples 1 and 2 as nanolaminate alloys layers that differ in the electrodeposited species in each layer as taught by Lomasney because nanolaminate deposits exhibit greater corrosion resistance than homogenous layer due to the galvanic interactions between less noble layers (See citations above).
As to claims 3, 7, Takahata discloses the nanolaminate is applied to the weld seam and in the adjacent heat-affected zone or zones in a spatially limited manner because the region of the weld is necessarily plated onto the weld of the substrate.
As to claims 6, 13, 14, 15, and 16, Takahata further discloses wherein the metals are nickel, zinc, and cobalt (Example 1 col. 3 and citation above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795