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
Claims 10, 11 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 09/25/2025. Applicant alleges that the claims are patentable because they have not been examined therefore examiner cannot determine the contribution of the inventions, as a whole, over prior art. Please note that good practice of compact prosecution recommends restriction requirements be made at the beginning of the prosecution. Only because the claims have not been rejected does not mean there is no prior art reading on the claim language. In fact, the WIPO opinion has already provided art that has been applied for the purpose of restriction requirement.
Applicant also alleges that examiner did not provide indication of the claims being interpreted in light of the specification. However, Applicant fails to provide any particular examples of what has been misinterpreted.
The restriction requirement is maintained.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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, 2, 5-9 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimoto et al. (US 20200400255 A1).
Considering claims 1, 2 and 5, Kimoto discloses a threaded tubular component comprising at least one thread extending over its outer or inner peripheral surface, wherein the thread is coated with a layer comprising an electrodeposited zinc-chromium (Zn-Cr) alloy in which zinc (Zn) is the predominant element by weight, relative to the total weight of the alloy, and wherein the tubular component is suitable for drilling and/or operating a hydrocarbon well, transporting oil and gas, transporting or storing hydrogen, carbon capture or geothermal energy (abstract, and [0002)).
Considering claim 6, Kimoto discloses the thickness of the Zn—Ni with Cr alloy plating layer is 8.3 µm ([0158], Table 1, Test No. 2)
Considering claim 7, Kimoto discloses the tubular component further comprises at least one non-threaded portion (42) coated with the first layer (Fig. 7).
Considering claim 8, Kimoto discloses the tubular component further comprises sealing seat (42) (Fig. 7).
Considering claim 9, Kimoto discloses the threaded end is made of steel [0072].
Considering claim 12-15, Kimoto discloses a tubular threaded joint comprising a threaded end of a male-type tubular component (pin 4) having a thread extending over its outer peripheral surface and a threaded end of a female-type tubular component (box 5) having at least one thread extending over its inner peripheral surface, which are screwed into one another (Fig. 5, [0072]).
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.
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.
Claim(s) 1-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto (US 20190010767 A1) in view of Nakamura et al. (US 5510196 A).
Considering claims 1-3 and 5, Goto discloses a threaded tubular component comprising at least one thread extending over its outer or inner peripheral surface, wherein the thread is coated with a layer comprising a zinc-chromium (Zn-Ni) alloy in which zinc (Zn) is the predominant element by weight, relative to the total weight of the alloy, and wherein the tubular component is suitable for drilling and/or operating a hydrocarbon well, transporting oil and gas, transporting or storing hydrogen, carbon capture or geothermal energy (abstract).
Goto does not disclose Zn-Cr alloy.
However, Nakamura discloses an electrodeposited Zn-Cr alloy plated on steel, with improved corrosion resistance compared to Zn-Ni alloy (col. 10, lines 11-19). For example, inventive samples 2 and 3 in table 1 show Cr at 5 wt% and 10 wt% respectively in a binary Zn-Cr alloy (Col. 10, Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Zn-Ni alloy with Zn-Cr alloy in the tubular component of Goto, because the purpose of Goto the coating the tubular component made of steel with Zn-Ni alloy is for corrosion resistance, and Nakamura discloses Zn-Cr alloy plated on steel has improved corrosion resistance compared to Zn-Ni alloy.
Considering claim 4, in Gato as modified by Nakamura, Nakamura discloses Cr content in the Zn-Cr alloy is desirably 5-30 wt %. This is because below 5 wt %, the Γx phase will not develop whereas above 30 wt %, the adhesion of the plating layer will deteriorate (Col. 12, lines 57-65).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Considering claim 6, Goto discloses the first plating layer has a thickness of 1 to 20 μm [0043], which overlaps the claimed range of from 4 to 20 µm.
Considering claim 7, Goto discloses the tubular component further comprises at least one non-threaded portion coated with the first layer [0019].
Considering claim 8, Goto discloses the tubular component further comprises sealing seat (8) (Fig. 4).
Considering claim 9, Goto discloses the threaded end is made of steel [0010].
Considering claim 12-15, Goto discloses a tubular threaded joint comprising a threaded end of a male-type tubular component (pin 3) having a thread extending over its outer peripheral surface and a threaded end of a female-type tubular component (box 6) having at least one thread extending over its inner peripheral surface, which are screwed into one another (Fig. 3, [0046]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WOJCIECH HASKE/Examiner, Art Unit 1794