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 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.
Claims 12-13, 15, and 19-26 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim 19 recites feature (c) of the inner-surface having a predominantly acicular iron-zinc intermetallic features, feature (d) of the outer surface having predominantly equiaxed iron-zinc intermetallic features, and where the inner and outer surface coating differ in at least one of Fe-Zn intermetallic distribution, grain morphology, or Zn concentration gradient. No support is found for these features in applicant’s originally filed disclosure and as such is considered new matter. The only disclosure regarding shape of particles is that in the originally filed specification at p.7 continuing paragraph, p.9 continuing paragraph, and p.12 first paragraph for needle shaped Zn powder on the inner portion of the pipe and at p.12 second paragraph for spherical Zn powder on the outer portion of the pipe, but these are limited to the Zn powder used to form the coated pipe and do not disclose the shape of ZnFe intermetallics nor relative amount thereof after the pack process (e.g. ‘predominantly’). No disclosure is found regarding the inner and outer surface coating differing in at least one of Fe-Zn intermetallic distribution, grain morphology, or Zn concentration gradient. As such, these features are considered new matter. Claims 12-13, 15, and 20-22 are included in this rejection as they depend upon a rejected claim.
Similarly, instant claim 23 recites an amount of amine present, instant claim 24 recites an amount of active filler present, instant claim 25 recites sizes of equiaxed intermetallics, and instant claim 26 recites sizes of acicular intermetallics. No support is found for these concentrations and/or sizes in applicant’s original disclosure. Originally filed claim 1 as well as p.8 last paragraph – p.9 continuing paragraph and pp.12-13 provide support only for concentrations of these materials and sizes of the Zn powder for the pack process which forms the claimed product and there is no disclosure of these materials existing in the same size and/or amount after the process. As such, these features are considered new matter.
Response to Arguments
Applicant’s arguments, see remarks p.8, filed 27 February 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 12-13 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks pp.9-13 regarding art rejections under Kishida, filed 27 February 2026, with respect to 35 USC 103 rejections have been fully considered and are persuasive. The rejections of claims 11 and 13-18 over Kishida and of claim 12 over Kishida in view of Cassidy have been withdrawn. Applicant has amended the claims to recite acicular and equiaxed intermetallic features not disclosed by the prior art. Kishida teaches different intermetallic phases of zeta- and delta- (Paragraphs 34-36), but does not teach where these phases are necessarily acicular and equiaxed. However, as outlined above, the amended claims contain new matter and therefore stand rejected under 35 USC 112(a).
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.
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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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