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 with traverse of Group II, claims 11-18 in the reply filed on 28 August 2025 is acknowledged. The traversal is on the ground(s) that the Groups are part of a single inventive concept (p.9, last paragraph), it is necessary and not burdensome to examine all claims (p.10, 1st paragraph), and the spraying of Nakamura is a different process than that which is claimed (p.10, last paragraph) by formation of an intermetallic layer (p.11, 1st paragraph and last paragraph). This is not found persuasive because applicant’s arguments are not commensurate with that which is claimed as no intermetallic compounds are recited. See MPEP 2145 (VI). Further, the instant application is a national stage entry filed under 35 USC 371 and the requirement for restriction is unity of invention and not search burden. See MPEP 1893.03 (d). The examiner has shown that Nakamura teaches a steel pipe with a thermodiffused Zn coating demonstrating that applicant’s technical feature does not make a contribution over the prior art. It is noted that applicant argues advantages of the claimed method (remarks pp.12-13). However, this does not constitute objective evidence as no data or references have been provided and is therefore considered argument alone and applicant is reminded that argument cannot take the place of evidence. See MPEP 2145 (I).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 28 August 2025.
In the event of allowable subject matter the restriction requirement will be reconsidered provided the withdrawn method claims are commensurate with any allowable subject matter per MPEP 821.04(b).
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13 recites “µm/micrometers” and applicant should pick a single unit representation to avoid confusion (e.g. µm only). Appropriate correction is required.
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.
Claims 12-13 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 12 recites a preferred thickness range and this is considered to render the claim indefinite as this appears to reference an unclaimed range for comparison and therefore the metes and bounds of the claim are unclear. This may be overcome by removing the word “preferably”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation of a thickness between 20 and 140 µm/micrometers, and the claim also recites preferably between 40 and 70 µm/micrometers which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. See MPEP 2173.05(c)(I).
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 11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kishida et al. (WO2019/087649 – machine translation).
Considering claim 14, Kishida teaches a steel pipe having a zinc layer thereon (abstract) having an inner cavity and an outer surface (Fig. 2). The zinc layer is formed by hot-dipping (Paragraph 24) and may be formed on the outer and inner surfaces (Paragraph 24 and 97) and is heated to cause diffusion of the Zn and steel forming an alloy layer (Paragraph 72) of iron and zinc (Paragraph 33). The limitation of “is formed by…” is considered to be a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent an objective showing as to how the claimed process affects the structure of the final steel pipe. See MPEP 2113.
While not expressly teaching the claimed steel pipe with thermodiffusion zinc-based coating this would have been obvious to one of ordinary skill in the art before the effective filing date in view of teachings of Kishida as this is considered a combination of a conventionally known steel pipe with a thermodiffused zinc-based alloy coating known to afford corrosion resistance and one would have had a reasonable expectation of success.
Considering claim 11, Kishida teaches where the zinc layer may be on the inner surface with a resin layer thereon (Paragraph 97) and where the resin may be epoxy (Paragraph 66) which is cured by heat (Paragraph 68).
Considering claim 13, Kishida teaches where the pipe has a length and is not limited (Paragraph 17), where inner and outer portions may have the zinc coating (Paragraphs 24 and 97), and having a thickness of 33 µm or greater (Paragraph 51). The pipe taught by Kishida is considered “configured as a pump compressor pipe” as no particular structure is recited and therefore the pipe of Kishida is considered “configured” as claimed. See MPEP 2111.01. Kishida does not teach the claimed microhardness. However, Kishida teaches a substantially identical steel pipe with thermodiffused Zn-alloy coating thereon and therefore one would expect the microhardness of the coating of Kishida to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Further, the thickness taught by Kishida overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 15-16, Kishida does not teach the claimed flux material or atmosphere. However, these are considered product-by-process limitations and are not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the steel pipe and therefore Kishida is considered to meet these limitations. See MPEP 2113.
Considering claims 17-18, Kishida teaches where the zinc layer may be on the inner surface with a resin layer thereon (e.g. a polymer layer) (Paragraph 97) and where the resin may be epoxy (Paragraph 66) which is cured by heat (Paragraph 68).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kishida et al. (WO2019/087649 – machine translation) as applied to claim 14 above further in view of Cassidy (US 2018/0323590).
Considering claim 12, the teachings of Kishida as applied to claim 14 are outlined above. Kishida teaches exterior/interior Zn-thermodiffused coated steel conduit for electrical lines, etc. (Paragraphs 16 and 24) and teaches an embodiment where the thickness is 12 µm or more (Paragraph 45). See MPEP 2144.05. However, Kishida does not teach the claimed threaded portions.
In a related field of endeavor, Cassidy teaches bendable electrical conduit (abstract) for electrical systems (Paragraph 2). The conduit comprises a body with an exterior surface and channel defined by an interior surface (Paragraph 7). The conduit may have a coating on the interior and/or exterior surfaces optionally of zinc, etc. (Paragraph 39). The conduit may be threaded or unthreaded and threads on the end of the conduit are disclosed (Paragraph 41; Fig. 2A).
As both Kishida and Cassidy teach conduit materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Kishida with the end-threaded portions taught by Cassidy as this is considered a combination of conventionally known conduit features and one would have had a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nishiyama et al. (US 4,838,063) teaches a thermodiffused Zn-coating on a steel pipe similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/ Primary Examiner, Art Unit 1784