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 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.
Claim 1 is 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 limitation “when a region containing C in an amount that, in mass%, is 1.5 times or more greater than a C content of the pipe main body is defined as a C- concentrated layer”. This limitation of the claim defines what a “C-concentrated layer” is, and paragraph [0073] of the instant specification states that the thickness of the “C-concentrated layer” may be 0 which would make it an optional limitation. However the term “when” makes it is unclear whether or not a “C-concentrated layer” is required for the claim. One of ordinary skill in the art would not be apprised of the scope of the 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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US20180274703 of Goto.
Claim 1 claims An oil-well steel pipe, comprising: a pipe main body including a first end portion and a second end portion; a chemical composition of the pipe main body containing, in mass%: C: 0.01 to 0.60%, Cr: 0 to 8.0%, and Fe: 80.0% or more; wherein the pipe main body includes: a pin formed at the first end portion, and a box formed at the second end portion; the pin includes: a pin contact surface including an external thread part; and the box includes: a box contact surface including an internal thread part; the oil-well steel pipe further comprising: a Zn-Ni alloy plating layer formed on at least one of the pin contact surface and the box contact surface, wherein when a region containing C in an amount that, in mass%, is 1.5 times or more greater than a C content of the pipe main body is defined as a C- concentrated layer, in the Zn-Ni alloy plating layer, a thickness of the C-concentrated layer in a wall thickness direction of the pipe main body is within a range of 0 to 1.50 pm.
Goto teaches a Composition, Threaded Joint for Pipes Including Solid Lubricant Coating Formed from the Composition, and Method for Producing the Threaded Joint for Pipes in the same field of endeavor as the claimed invention. Goto discloses that typical threaded joint for pipes include a pin and a box. The pin includes a male threaded portion and an unthreaded metal contact portion formed in the outer peripheral surface at the end of the pipe. The box includes a female threaded portion and an unthreaded metal contact portion formed in the inner peripheral surface at the end of the pipe, Para[0003]. Goto teaches that the steel grades of the threaded joint for pipes were carbon steels, Para[0120]. It is well known in the art that carbon steels are iron alloys with carbon in the range of 0.05-2.1%. Goto also discloses steels with a value for chromium in the range of 0.17-13.0%, Para[0120]. The values disclosed for carbon, iron, and chromium overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Goto also discloses Zi-Ni alloy plating on the pin and box surfaces, Para[0128]. While Goto does not teach a “C-concentrated layer”, this is an optional limitation as described at paragraph [0073] of the instant specification. Thus, Goto covers all limitations of claim 1. Claims 2-4 are rejected as they depend on claim 1.
Claim 2 further limits claim 1 by claiming a thickness of the Zn-Ni alloy plating layer is within a range of 5 to 25 µm.
Goto discloses that the thickness of the plating layer is preferably in the range of 5 to 15 µm. This 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 exists, see MPEP 2144.05. Therefore, Goto covers all limitations of claim 2.
Claim 3 further limits claim 1 by claiming a lubricant coating on or above the Zn-Ni alloy plating layer.
Goto teaches a lubricant coating over the Zn-Ni plating, Para[0128],[0129]. Therefore, Goto covers all limitations of claim 3.
Claim 4 further limits claim 2 by claiming a lubricant coating on or above the Zn-Ni alloy plating layer.
Goto teaches a lubricant coating over the Zn-Ni plating, Para[0128],[0129]. Therefore, Goto covers all limitations of claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733