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 .
Information Disclosure Statement
The information disclosure statement filed 3/31/2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the full patent documents were not provided for the Russian documents RU2238830 and RU2636210. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to because Figures 1 and 2 need to show cross hatching in the cut away parts of the pipe. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 49-54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 45-49 of copending Application No. 18837332. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 49 and 50 are obvious per claim 45 and claims 51-54 are duplicates of 46-49.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 48 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 48 depends upon claim 1 which has been cancelled. Claim 48 will be treated as if it depends on claim 28.
Claim Rejections - 35 USC § 102
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 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) 28, 29, 31-34, 37, 46, 48 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SMS group GmbH (DE 102018108930) hereinafter SMS.
SMS discloses a pipe section for conveying oil and/or gas (intended use), the pipe section comprising: a support layer consisting of a metal base material, the support layer having: a length, an inner diameter, an inner surface, an outer surface, and at least two pipe section ends each having an end region and an intermediate region (this is inherent with all pipes)(para. 26 and 27); a first coating on each end region of the inner surface of the support layer, the first coating consisting of a first metal coating material, the first coating being welded to the support layer (product by process), and the first coasting having a first thickness, a penetration depth, and a longitudinal extension; and a second coating on the intermediate region of the inner surface of the support layer, the second coating consisting of a second metal coating material, and the second coating is sprayed onto the support layer using a thermal spraying process (para 99),wherein the second coating has a second thickness of less than or equal to 2500 µm (para. 121).
Regarding claim 29, wherein the second thickness is greater than or equal to 100 µm (para. 121).
Regarding claim 31, wherein the first coating is applied to the support layer using a laser deposition welding process (product by process).
Regarding claim 32, wherein the first coating has a penetration depth of less than or equal to 500 µm (since there is no disclosure of penetration depth then the less than would apply above).
Regarding claims 33, wherein the first coating has a first thickness of less than or qual to 2500 µm para. 121).
Regarding claim 34, wherein the first coating has a first thickness of greater than or equal to 500 µm (para 121).
Regarding claim 37, wherein the second coating is sprayed onto the support layer using an arc spraying process (product by process).
Regarding claim 46, wherein the first coating and/or the second coating is a sealing (para. 120).
Regarding claim 48, the disclosure is directed to multiple elements connected together (para 26), wherein a first pipe section and a second pipe section are connected to one another at two corresponding pipe section ends in a materially bonded manner.
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) s 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over SMS in view of Oil Field Construction Design (CN1066410)(provided by applicant).
Regarding claims 38-40, SMS fails to disclose the coating contents of Nickel, Molybdenum, and Chromium as claimed. Oil Field discloses a nickel based alloy powder that has 18-25% Chromium, 2-5% Molybdenum, and 67-78% Nickel per claim 1. This reference was provided by applicant.
It would be obvious to one of ordinary skill in the art at the time of filing to utilize the alloy composition as disclosed by Oil Field for the coating of SMS inner pipe, since the coating of Oil Field is being utilized to protect the inner pipe and therefore it would be an obvious material that could be used with the SMS pipes to protect them from corrosion.
Claim(s) 41-45, 47, 48, 49, 53, and 54 is/are rejected under 35 U.S.C. 103 as being unpatentable over SMS (DE 102018108930).
Regarding claim 41, SMS fails to disclose wherein the first coating and/or the second coating has a content of niobium in combination with tantalum of greater than or equal to 2 wt%.
It would have been obvious to one of ordinary skill in the art at the filing of the invention, to utilize the claim niobium and tantalum content, in order to provide a strengthening element to the alloy per niobium and a corrosion resistant component to the alloy per tantalum which would be useful in some applications.
Regarding claims 42-45, SMS fails to disclose the various structural details of the coating which includes the claimed Vickers hardness (claim 42), the elongation at break (claim 43),the yield strength (claim 44), and the tensile strength (claim 45).
It would be an obvious to one of ordinary skill in the art at the time of filing to utilize the various known properties of different metal combinations to meet the claimed hardness, elongation, yield strength, and tensile strength of the coating in order to utilize these coating to withstand various applications that the pipe would be utilized in.
Regarding claim 47, SMS fails to disclose that the sealing is a polymer based.
It would be obvious to one of ordinary skill in the art to utilize a material that is appropriate for the application from a finite number of sealing materials and a polymer base sealing would be one of the options that would function equally as well as the sealing materials that are disclosed.
Regarding claim 48, in the event that applicant does not feel that it is inherent that the pipes are connected together . It would be obvious to one or ordinary skill in the art at the time of filing that two pipe sections that have been coating as disclosed by SMS, would inherently have two pipe section that are attached to one another be materially bonded in order to make a larger end product.
Regarding claim 49, SMS in the rejection for claim 28 above provides all the structure of the pipe and the coating. SMS fails to disclose the application process of the first coating of laser deposition welding and the second coating of arc spraying process. It would have been an obvious to one of ordinary skill in the art at the time of filing to utilizing laser deposition welding for the first layer and arc spraying for the second layer since there are only a finite number of application methods it would be obvious to try those two for the various coatings.
Regarding claim 53, the disclosure is directed to multiple elements connected together (para 26), wherein a first pipe section and a second pipe section are connected to one another at two corresponding pipe section ends in a materially bonded manner.
In the event that applicant does not feel that it is inherent that the pipes are connected together as indicated as being inherent above in the rejection of claim 48 under the 102 statute. It would be obvious to one or ordinary skill in the art at the time of filing that two pipe sections that have been coating as disclosed by SMS, would inherently have two pipe section that are attached to one another be materially bonded in order to make a larger end product.
Regarding claim 54, SMS fails to disclose that the pipe assembly per the method of claim 53 is utilized for conveying an oil-containing and /or gas-containing fluid and/or a fluid comprising a liquid fossil energy carrier. It would be obvious to one of ordinary skill in the art at the filing of the application that the coated pipe of SMS could be utilized in other applications and therefore it would be obvious to utilize it with an oil or gas application to provide further application for the coated pipe of SMS
Allowable Subject Matter
Claims 30, 35, and 36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG M SCHNEIDER whose telephone number is (571)272-3607. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Alford Kindred can be reached at 571-272-4037. 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.
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
Prosecution Insights