DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on November 20, 2025 was received. Claims 1, 4 and 13 were amended. Claims 14, 16 and 23-28 were canceled. No claim was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued October 22, 2025.
Claim Objections
The claim objection on claim 1 is withdrawn, because the claim has been amended.
Claim Rejections - 35 USC § 112
The claim rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claims 1-13 withdrawn, because the claims have been amended.
Claim Rejections - 35 USC § 103
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 1-3, 5-8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kamibayashi (JP2004315873) in view of Bartminn (EP3051029) and Kurobobi (JPH05222511).
Regarding claim 1, Kamibayashi teaches a method of coating an offshore steel pipe pile foundation (paragraphs 0001-0002 and 0008) (monopile coating process). Kamibayashi teaches to thermal spray a metallic coating, such as zinc or zinc aluminum alloy on the outer surface surface of the pipe pile (paragraphs 0011-0012) (applying a thermally sprayed metallic coating to parts of the circumferential external surface of the pipe pile corresponding to one or more positions).
Kamibayashi does not explicitly the steel pipe pile is monopile. However, Bartminn teaches a steel foundation pile with a corrosive protection coating can be monopile (paragraphs 0011 and 0017). Bartminn teaches the steel foundation pile has the similar structure and function as Kamibayashi (paragraphs 0011-0015). Bartminn teaches the monopile has a diameter of 5-10 meters (paragraph 0015), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the corrosive protection on the monopile as suggested by Bartminn in the method of Kamibayashi because Bartminn teaches a foundation pile with similar structure and function is a monopile with a diameter of 5-10m (paragraphs 0011-0015 and 0017).
Kamibayashi in view of Bartminn does not explicitly placing the monopile on the roller supports for the thermal spraying and compressing the thermally sprayed coating by rotating the monopile using the roller support. However, Kurobobi teaches a method of improving the corrosion resistance of the surface of a tubular body by thermal spraying zinc on the outer surface on the pipe (abstract, paragraph 0002). Kurobobi teaches the tubular body 1 is supported by rotary rollers 3 and rotated by the rollers 3 while the thermal spray material 5 is sprayed from a thermal spray nozzle 7 toward the outer surface of the tubular body 1 (paragraph 0009) (placing a monopile on roller supports, wherein the roller supports are provided with rotating means for rotating the monopile when the monopile is placed on the roller supports), wherein the rollers 3 are supporting the tubular body 1 at one or more positions along the axis of the tubular body 1 when the tubular body 1 is placed on the rollers 3 (see figure 1). Kurobobi teaches a pressure roller 10 presses the thermal sprayed layer 6 against the tubular body to crushes the porous thermal spray layer to make it dense while the tubular body 1 is being rotated by the roller supports (paragraphs 0010-0011, figure 1) (generating a pressure at a contact point between the pressure roller and the monopile, compressing, due to the pressure, at least part of the thermal spray metallic coating by rotating the monopile using the roller supports, wherein compression structurally changes the thermally sprayed metallic coating by reducing porosity thereof). Kurobobi does not explicitly teaches pressure is applied by the contact point between the roller supports and the monopile, and such pressure causes compression of the thermal sprayed coating. However, Bartminn teaches the monopile is 5-10 meters in diameter which is similar in size of the claimed monopile and the thermal sprayed coating of Kamibayashi is similar as the claimed coating, it would be reasonably expected that Bartminn’s monopile has a substantial weight to apply enough pressure at the contact point to the roller supports due to gravity, and contribute to the compression of the thermal sprayed coating for densification. Therefore, Kamibayashi in view of Bartminn and Kurobobi intrinsically teaches the compressing comprises generating pressure at the contact point between the roller supports and the monopile based on a weight of the monopile on the roller supports and the compression structurally changes the thermally sprayed metallic coating by reducing porosity thereof. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention use the roller supports system for thermal spraying and compressing the sprayed layer as suggested by Kurobobi in the method of Kamibayashi in view of Bartminn because Kurobobi teaches such system allows thermal spraying over the entire circumference and the entire length of the outer surface of the tubular body and the compression of the thermal sprayed coating eliminate the porosity in the coating which ensure proper protection of the tubular body (paragraphs 0002, 0005-006).
Regarding claim 2, Kurobobi teaches the thermal sprayed coating become thinner upon the compression (paragraph 0014), for example by 50µm from a 350µm thickness (paragraph 0014), which touches the claimed range of 15 to 80%. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. In addition, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Regarding claim 3, Kurobobi teaches the tubular tube 1 is being rotated for the compression (paragraphs 0010-0011, see figure 1), but does not explicitly teach how many times. However, Kurobobi teaches the compression causes the crushing of the pores in the layer to densify the sprayed coating and alloyed the sprayed coating with the tubular body 1 to achieve desired protection to the tubular body 1 (paragraphs 0005-0006 and 0010-0011). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the number of times of the rotation in the process to yield desired densification of the sprayed layer, alloying of the layer and the tubular body and protection of the tubular body. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. In addition, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Regarding claim 5, Kamibayashi teaches to apply an inorganic ceramic paint (protective material) on the thermal sprayed metallic coating after it’s being formed to seal the coating (paragraphs 0016-007). It is reasonably expected the protective coating is formed when the monopile is being rotated for coating over the entire circumference and the entire length of the outer surface of the tubular body, thus, the combination of references teaches after the applying the thermally sprayed metallic coating or during and after the compressing at least part of the coating, applying protective material over the thermally sprayed metallic coating.
Regarding claim 6, Kamibayashi teaches to apply an inorganic ceramic paint (protective material) on the thermal sprayed metallic coating after it’s being formed to seal the coating (paragraphs 0016-007). It is reasonably expected the protective coating is formed when the monopile is being rotated for coating over the entire circumference and the entire length of the outer surface of the tubular body, thus, the combination of references teaches after the applying the thermally sprayed metallic coating and during or after the compressing at least part of the coating, applying protective material over the thermally sprayed metallic coating.
Regarding claim 7, Bartminn teaches the monopile is composed of multiple segments that are about 3 meters long (paragraph 0015), and each of these segments are being coating with the corrosion protection coating (paragraph 0019). Since all of the reference teaches to coat the entire surface of the monopile, thus, the width of the one or more positions would be expected to about 3meters in light of teaching of Bartminn, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would be obvious to adjust the roller supports size based on the length of the monopile for the proper support of the monopile, or vice versa.
Regarding claim 8, Kurobobi teaches the width of the part of circumferential external surface of the monopile corresponding to the one or more positions is larger than the width of the roller supports (see figure 1).
Regarding claim 11, Kamibayashi teaches to blast cleaning the parts of the circumferential external surface of the monopile corresponding to the one or more positions before applying the thermally sprayed metallic coating (paragraph 0014).
Regarding claim 12, Kamibayashi teaches the blast cleaning is performed by blasting the particle of an abrasive particles by compressed air (open jet grit blasting).
Regarding claim 13, Kamibayashi teaches the blasting roughened surface is intended to remove rust, moisture, or oil on the surface and to increase the surface area (roughness) of the surface so that the sprayed metal can easily adhere (paragraph 0014). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the roughness (angular profile depth) in the process to yield the desired level of surface area for the surface for the sprayed metal to be adhere (desired adherence strength). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kamibayashi (JP2004315873) in view of Bartminn (EP3051029) and Kurobobi (JPH05222511) on claims 1-3, 5-8 and 11-13, as applied above, and further in view of Jiang (CN103291329A)
Regarding claim 4, Kamibayashi teaches to apply an inorganic ceramic paint (protective material) on the thermal sprayed metallic coating after it’s being formed to seal the coating (paragraphs 0016-007). Kamibayashi in view of Bartminn and Kurobobi does not explicitly teaches the protective coating is a polymer foam or a rubber sheet. However, Jiang teaches a method of forming a structure with water proof surface (abstract), and discloses a corrosion resistance layer 306 is formed with a rubber layer (rubber sheet) on the outermost surface (paragraph 0060). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a top rubber sheet on the steel monopile as suggested by Jiang in the method of Kamibayashi in view of Bartminn and Kurobobi because Jiang teaches such layer provide waterproof and corrosion resistance function to the steel structure (paragraph 0060). It is reasonably expected the protective coating is formed when the monopile is being rotated for coating over the entire circumference and the entire length of the outer surface of the tubular body, thus, the combination of references teaches after the applying the thermally sprayed metallic coating or during and after the compressing at least part of the coating, applying protective material over the thermally sprayed metallic coating.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kamibayashi (JP2004315873) in view of Bartminn (EP3051029) and Kurobobi (JPH05222511) as applied to claims 1-3, 5-8 and 11-13 above, and further evidenced by Nooren (US 20220389910).
Regarding claim 9, Kamibayashi in view of Bartminn and Kurobobi teaches all the limitations of this claim, except the weight and stress on the coating at the contact point. However, monopile typically weights at least 400 to 3000 tons as evidenced by Nooren (paragraph 0001). Since Kamibayashi in view of Bartminn and Kurobobi teaches the monopile is 5-10 meters in diameter which has similar in size and weight of the claimed monopile, the combination of reference has the similar claimed weight to intricially apply similar pressure and compressive stress at the contact point to the coating due to gravity, and contribute to the compression of the thermal sprayed coating for densification. In addition, it would have been within the skill of the ordinary artisan to adjust and optimize the compressive stress on the coating in the process to yield desired densification of the sprayed layer, alloying of the layer and the tubular body and protection of the tubular body. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. In addition, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kamibayashi (JP2004315873) in view of Bartminn (EP3051029) and Kurobobi (JPH05222511) as applied to claims 1-3, 5-8 and 11-13 above, and further in view of Winkes (NL 2018646) and Toguyeni (US20180221984).
Regarding claim 10, Bartminn teaches the monopile segments are connected via welds (paragraphs 0051 and 0072). Thus, Kamibayashi in view of Bartminn and Kurobobi teaches all the limitations of this claim, except the monopile welds are submerged arc welds and grounded flush before the monopile being placed on the roller supports. However, Winkes teaches a method of making an offshore monopile foundation (abstract) and discloses the common welding technologies in manufacturing steel monopiles includes submerged arc wielding (page 2 lines 30-35). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to for the monopile welds by submerged arc welding as suggested by Winkes in the method of Kamibayashi in view of Bartminn and Kurobobi because Winkes teaches monopile welds is commonly formed by submerged arc wielding (page lines 30-35).
Kamibayashi in view of Bartminn, Kurobobi and Winkes teaches all limitations of this claim, except the welds are being grounded flush before the thermal spraying process. However, Toguyeni teaches a method of welding steel pipeline (abstract) and discloses the welds are being ground flush with the adjoining pipe sections after welding (paragraph 0102, figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ground flush the welds as suggested by Toguyeni in the method of Kamibayashi in view of Bartminn, Kurobobi and Winkes because Toguyeni teaches it is common to ground flush the welds with the adjoining pipe sections after welding is completed (paragraph 0102).
Response to Arguments
Applicant's arguments filed on November 20, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Kurobobi teaches to heat the thermal sprayed layer before the compression, which is different from the claimed invention.
Kurobobi uses a separate pressure roller for the compression.
The combination lacks motivation to eliminate Kurobobi’s pressure rollers and instead rely solely on the weight of the structure on the support rollers to achieve compression.
In response to Applicant’s arguments, please consider the following comments:
The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (MPEP 2111.3 I). Thus, the claims do not exclude additional, unrecited steps, such as the heating step in Kurobobi.
As recited in the rejection above, the combination of teachings, Bartminn teaches the monopile with similar dimension and Kamibayashi teaches similar thermal sprayed coating, the compression from the contact point would have intricially changes the thermally sprayed metallic coting by reducing porosity thereof. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999).
As discussed in argument a above, the claim does not exclude the use of pressure roller. However, since the method and material (monopile, supporting roller and thermal sprayed coating) of the prior art and the claimed invention are similar, the contact point compression between the support rollers and the monopile would have been expected to contribute to structurally changes the thermally sprayed metallic coating by reducing porosity (in addition to the pressure roller).
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.
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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717