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 .
Election/Restrictions
Applicant’s election without traverse of Group I directed to claims 1-9 and 14-15 in the reply filed on 7/15/2026 is acknowledged.
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 and 14-15 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: “the anti-corrosion tape comprise as carrier plies an at least single-layered carrier, wherein at least one layer of the carrier is designed as a carrier layer, wherein at least one further ply of the anti-corrosion tape is designed as a connecting ply and comprises at least one connecting layer, wherein the connecting layer comprises a material selected from a group comprising at least one butyl rubber and/or at least one polyisobutylene, wherein the at least one connecting ply is arranged between the two carrier plies, and wherein at least one further ply of the anti-corrosion tape is configured as an anti-corrosion ply and is arranged on at least one exposed surface of at least one carrier ply.”
Firstly, it is unclear if how multiple carrier plies comprise an at least single-layered carrier. It appears that this limitation should read, carries plies each comprise a single-layered carrier.
Secondly, it is unclear how the carrier can be designed as a single layered carrier while also implying that the carrier may have more than one layer (at least one layer of the carrier is designed as a carrier layer implies that the carrier can have multiple layers).
Thirdly, this claim mentions “at least one connecting layer” as well as “the connecting layer” which lacks antecedent basis and wherein it is unclear if these two phrases refer to the same connecting layer.
Finally, “the two carrier plies” lacks antecedent basis and it is unclear which two plies correspond to the two carrier plies since there can be more than two carrier plies.
Claim 7 recites: “at least one electrically conductive material and at least one core material can be arranged in the at least one connecting ply or in the at least one anti-corrosion ply or in at least one of the at least two carrier plies.” It is unclear what exactly constitutes the at least one core material in any of these plies. For instance, is the at least one butyl rubber and/or at least one polyisobutylene in the connecting layer considered the core material of the connecting layer or is it something different. Clarification is requested.
Claim 15 discloses “at least one conductive material” wherein it is unclear if this is the same as the at least one electrically conductive material disclosed in parent claim 7 or if it is a different conductive material (for instance thermally conductive). For the purposes of examination, they will be considered to be the same.
Claim 15 recites the limitation: “a use of the anti-corrosion tape is for localizing at least one defect in a pipe or pipeline in the region of a weld seam.” It is unclear how the tape can localize at least one defect in the pipe which implies that the tape is being used to generate or locate a defect. It appears that the tape is being used to mitigate a localized defect rather than cause a defect which is the interpretation used herein for examination purposes. Clarification is requested.
Claims 2-8 are also rejected as they depend on a rejected claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaiser et al. (herein Kaiser) (US 2019/0249039).Regarding Claim 1:In the specification Kaiser discloses an anti-corrosion tape (see paragraph [0056]) comprising at least four plies (as mentioned in paragraph [0056], the anti-corrosion tape may comprise 5 layers/plies), wherein at least two plies of the anti-corrosion tape comprise as carrier plies (carrier layer and inner layer of the two outer layers comprising the anti-corrosion composition, see paragraph [0056]) an at least single-layered carrier (carrier film, see paragraph [0056], henceforth referred to as CL), wherein at least one layer of the carrier is designed as a carrier layer (CL), wherein at least one further ply of the anti-corrosion tape is designed as a connecting ply (adhesion promoting layer on one or both sides of the carrier film, see paragraph [0056]) and comprises at least one connecting layer (adhesion promoting layer henceforth referred to as AL), wherein the connecting layer (AL) comprises a material selected from a group comprising at least one butyl rubber and/or at least one polyisobutylene (the adhesion promoting layer AL is formed from an adhesion promoting composition, paragraph [0057]. This adhesion promoting composition comprises at least one butyl rubber, see abstract and paragraph [0068] for instance) wherein the at least one connecting ply (AL) is arranged between the two carrier plies (see paragraph [0056]), and wherein at least one further ply of the anti-corrosion tape is configured as an anti-corrosion ply and is arranged on at least one exposed surface of at least one carrier ply (as mentioned in paragraph [0056]: “If the anti-corrosion product according to the disclosure is formed in a way that it comprises two outer anti-corrosion layers made of an anti-corrosion composition, and a carrier film or anti-jackknife brake arranged more or less in the middle between these layers, having an adhesion promoting layer made of the adhesion promoting composition according to the disclosure arranged on one or both sides of it, the anti-corrosion tape according to the disclosure is formed symmetrically.” In this instance the outermost of the two outer anti-corrosion layers can be arranged directly on an exposed surface of the carrier film forming the carrier ply).Regarding Claim 2:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), wherein the carrier layer of at least one of the carrier plies is formed from at least one carrier material selected from a group comprising polyethylene, polypropylene, polyvinyl chloride, thermoplastic elastomers, and/or metals (as mentioned in paragraph [0063]: “a carrier made of a carrier material selected from a group comprising polyethylene and/or polypropylene.”).Regarding Claim 3:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), wherein the carrier layer of at least one of the carrier plies is formed as a film (carrier film, see paragraph [0056]). Regarding Claim 4:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), wherein an adhesion-promoting layer is arranged on at least one surface of the carrier layer of at least one of the carrier plies (as mentioned in paragraph [0056]: “If the anti-corrosion product according to the disclosure is formed in a way that it comprises two outer anti-corrosion layers made of an anti-corrosion composition, and a carrier film or anti-jackknife brake arranged more or less in the middle between these layers, having an adhesion promoting layer made of the adhesion promoting composition according to the disclosure arranged on one or both sides of it.”).Regarding Claim 5:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), wherein the adhesion-promoting ply comprises an adhesion promoting composition comprising about 20 wt.-% to about 70 wt.-% of at least one polymer selected from a group comprising polyethylenes, polypropylenes, polyvinyl chlorides and/or thermoplastic elastomers; and about 20 wt.-% to about 65 wt.-% of at least one butyl rubber; the figures in percent by weight being based in each case on the total amount of the adhesion-promoting layer (see Kaiser’s claim 1 that teaches the composition above).Regarding Claim 6:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), wherein the carrier layer and the at least one adhesion-promoting layer are coextruded (see paragraph [0058]).
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.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (herein Kaiser) (US 2019/0249039).Regarding Claims 8-9:In the specification, Kaiser discloses a method for applying an anti-corrosion tape according to claim 1 as corrosion protection to pipes, pipelines, tubular objects, pipelines and pipeline components, and to other installations and fixtures by applying (or wrapping, per claim 9) the anti-corrosion tape thereto (as mentioned in paragraph [0062]: “Each possible product which is susceptible to corrosion, can be protected by the anti-corrosion product according to the disclosure. Especially preferred, the anti-corrosion product according to the disclosure is used for pipes and systems comprising pipes. In particular, the anti-corrosion product is used for wrapping pipelines or gas pipes of each kind. It can also be used for other technical plants and/or areas, where corrosion can occur, and not only in the form of a wrapping, but also in the form of a pad or cover.” This covers wrapping the anti-corrosion tape on pipes, pipelines, tubular objects, pipelines and pipeline components, and to other installations and fixtures).While Kaiser does not explicitly mention tanks and the components of tanks it is extremely well known in the art that tanks and the components of tanks can be susceptible to corrosion. Hence, based on common knowledge in the art, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have wrapped tanks and components of tanks that were susceptible to corrosion with Kaiser’s anti-corrosion tape, since doing so would be obvious to try and would yield predictable results such as protecting the tanks and tanks components from corrosion and other forms of damage.
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (herein Kaiser) (US 2019/0249039) as evidenced by Seitz et al. (herein Seitz) (US 2013/0344276). Regarding Claim 7:In the specification Kaiser discloses the anti-corrosion tape (see paragraph [0056]), at least one core material can be arranged in the at least one connecting ply or in the at least one anti-corrosion ply or in at least one of the at least two carrier plies (Kaiser discloses various materials for each of these plies that can be considered their respective core materials).
Kaiser is silent regarding at least one electrically conductive material in any one of the plies. However, it is well known in the art that anti-corrosion tapes can include filler materials that are electrically conductive. For instance, in paragraph [0100], Seitz discloses that the adhesive tape (anti-corrosion tape, see paragraph [0107]): “may include electrically conductive fillers, such as, for example, conductive carbon black, carbon fibers and/or silver-coated beads.” It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have included an electrically conductive filler material (for instance of the type disclosed by Seitz) in any respective core material of one or more of the plies, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.Regarding Claim 14:See the rejection of claim 8 which would also apply to the anti-corrosion tape of claim 7.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (herein Kaiser) (US 2019/0249039) as evidenced by Seitz et al. (herein Seitz) (US 2013/0344276 and as further evidenced by Gryshchuk (WO 2020048568). As stated in the rejection of claim 7, any of the plies including the connecting ply can be modified to incorporate at least one electrically conductive material in the existing core material. Kaiser does not explicitly disclose that the anti-corrosion tape is used in the region of a weld seam to mitigate corrosion related damage. However, it is extremely well known in the art that weld seams in pipelines are susceptible to corrosion and localized corrosion at these weld seams can be mitigated by addition of anti-corrosion materials at these seams. For instance, Gryschuk discloses (page 6, 4th paragraph of the translation): “An example is described below of how a weld seam on a joint between two plastic-coated steel pipes is subsequently provided with corrosion protection.”Hence, based on common knowledge in the art and the evidence provided by Gryschuk, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized Kaiser’s modified anti-corrosion tape in the region of a weld seam of a pipe or pipeline, since doing so would be obvious to try and would yield predictable results such as protecting the weld seam that is susceptible to corrosion from being corroded and to further strengthen this weld seam.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20180334595 – Anti-corrosion composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINICK L PLAKKOOTTAM whose telephone number is (571)270-7571. The examiner can normally be reached Monday - Friday 12 pm -8 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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.
/DOMINICK L PLAKKOOTTAM/Primary Examiner, Art Unit 3746
Prosecution Insights