ACHATES POWER, INC.

Patent Trials and Appeals Board

Aug 12, 2020

15687368 - (D) (P.T.A.B. Aug. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/687,368 08/25/2017 RYAN G. MACKENZIE ACHP2054USC1 3074
116845 7590 08/12/2020
Terrance A. Meador
Achates Power, Inc.
4060 Sorrento Valley Boulevard
San Diego, CA 92121
EXAMINER
BRAUCH, CHARLES JOSEPH
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
08/12/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RYAN G. MACKENZIE
____________

Appeal 2020-001573
Application 15/687,368
Technology Center 3700
____________

Before EDWARD A. BROWN, CARL M. DeFRANCO, and
LISA M. GUIJT, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Achates Power, Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2020-001573
Application 15/687,368
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CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent claims. Claim 1, reproduced below,
illustrates the claimed subject.
1. A piston for an opposed-piston engine, comprising:
a crown with an end surface shaped to define a
combustion chamber with an end surface of an opposing piston
in an opposed-piston engine;
a separate skirt part joined to the crown and including a
piston sidewall extending from the crown to an open end of the
skirt part;
an annular cooling gallery defined between the crown
and the skirt part;
a first set of ring grooves formed in an outer peripheral
surface of the crown;
a second set of ring grooves formed in a portion of the
sidewall near the open end of the skirt;
the sidewall comprising two opposing sidewall portions
separated from one another by two intervening sidewall
indentations; and,
a wristpin bore extending between the sidewall
indentations,
wherein the crown and the skirt part are formed
separately of compatible materials and are joined by welding or
brazing.
Appeal Br. 11 (Claims App.).
REJECTIONS ON APPEAL
Claims 1–6 and 8–132 are rejected under 35 U.S.C. § 103 as
unpatentable over Haug (US 3,703,126, issued Nov. 21, 1972), Dion (US
2012/0073526 A1, published Mar. 29, 2012), and Gabriel (US
2013/0025561 A1, published Jan. 31, 2013).

2 The heading of the rejection in the Final Office Action lists claims 1–6 and
7–13 as being rejected under this ground. Final Act. 2. This is corrected in
the Examiner’s Answer. Ans. 3.
Appeal 2020-001573
Application 15/687,368
3
Claims 7 and 14 are rejected under 35 U.S.C. § 103 as unpatentable
over Haug, Dion, Gabriel, and Beagle (US 6,120,189, issued Sept. 19,
2000).
ANALYSIS
Claims 1–6 and 8–13 over Haug, Dion, and Gabriel
As to claim 1, the Examiner finds that Haug discloses a piston 1
comprising, in part, a crown (head 4) and a skirt part (skirt 10) including a
piston sidewall comprising two opposing sidewall portions separated from
one another by two intervening sidewall indentations (openings 11). Final
Act. 2–3 (citing, e.g., Haug, Fig. 1).
Appellant contends that Haug does not disclose “two opposing
sidewall portions separated from one another by two intervening sidewall
indentations.” Appeal Br. 5–6 (emphasis added). Appellant contends that
Haug’s openings 11 do not correspond to the claimed “sidewall
indentations”; rather, Figure 1 shows that openings 11 “are holes in the
piston skirt; the skirt material is removed, which creates opposing lacunae in
the skirt’s sidewall.” Id. at 6.
Appellant contends that, in contrast, “the sidewall indentations of
[claim] 1 . . . effectively modify the contour of the sidewall so that is does
not conform to the cylindrical shape otherwise presented by the piston skirt.”
Appeal Br. 6. Appellant also contends that the sidewall indentations 70
shown in Figure 1 “are deformations, or deviations from a predominant
shape, in the skirt sidewall; no material is removed from the sidewall to form
them.” Id. at 7. Appellant further contends:
The sidewall indentations are not openings into the piston
interior; the piston wristpin bore 24, that is an opening in the
piston skirt, is a separate structure from the sidewall
indentations 70, in that the wristpin bore extends between the
Appeal 2020-001573
Application 15/687,368
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sidewall indentations. Thus, from the specification and
drawings of the instant application, the claimed sidewall
indentations can be understood to be recesses or depressions in
the skirt sidewall, not absences of material or holes through the
skirt sidewall.
Id. (emphasis added). Appellant asserts, “[a] person of skill in the art would
understand ‘indentation’ to mean a recess in a surface or the condition of
being indented as it is used in the claim, particularly in light of the
specification and drawings of the instant application.” Id.
The Examiner responds that Figure 1 of Haug shows,
the openings (11) indent clearly into the sidewalls of the piston
(1) towards the bosses (8). The bosses (8) are shown in (FIG.
1) to be recessed inward from the sidewall of the piston,
accordingly, the openings (11) indent inwards from the left and
right sides of the piston to arrive at the bosses.
Ans. 11–12, 13 (annotated Haug Fig. 1). The Examiner contends that “the
opening (11) itself is an indentation by penetrating into the material of the
sidewall. Therefore, it is clear that the openings (11) are covered by the
claim feature ‘sidewall indentations.’” Id. at 12 (emphasis added). The
Examiner asserts, “[a]n opening is a recess in a surface” and “[t]raveling
across a surface and coming to an opening requires that that opening be
recessed to some degree from that surface.” Id. (emphasis added).
Appellant’s contentions are persuasive. During examination, claims
are given their broadest reasonable interpretation consistent with the
specification. In re American Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). “The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is . . . an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
Appeal 2020-001573
Application 15/687,368
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2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation
and internal quotation marks omitted)). Claim 1 requires “sidewall
indentations” that separate two opposing sidewall portions of the sidewall.
Figure 1 shows a sidewall indentation 70, which is defined by a recessed
surface that extends inwardly from the outer circumference of piston 10 as
partially defined by a sidewall portion 68. The sidewall is “indented” at the
sidewall indentation 70. We agree with Appellant that, in view of the
Specification and drawings, “the claimed sidewall indentations can be
understood to be recesses or depressions in the skirt sidewall, not absences
of material or holes through the skirt sidewall.” Appeal Br. 7. Consistent
with the disclosure, we construe the claimed “sidewall indentations” as
requiring the sidewall to have a surface that defines an inward recess or
“dent” between “two opposing sidewall portions” at each respective sidewall
indentation. Thus, the claimed sidewall indentations are not simply holes,
which lack any structure and are formed through a sidewall, in view of the
Specification.
In contrast to the claimed sidewall indentations, the openings 11 in
Haug are shown as through holes in the sidewall of the piston in Figure 1.
Openings 11 themselves are “absences of material” or empty spaces, rather
than regions where sidewall material is recessed or dented. The Examiner
does not establish with evidence that openings 11 themselves are formed in
respective surfaces of the sidewall that are recessed or dented. We
determine that the Examiner’s interpretation of the claimed sidewall
indentations as an opening (i.e., hole) is unreasonably broad in view of how
the claim term is described and depicted in the Specification and drawings.
Accordingly, we do not sustain the rejection of claim 1, and claims 2–
6 depending therefrom, as unpatentable over Haug, Dion, and Gabriel.
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Application 15/687,368
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Independent claim 8 recites a piston comprising, in part, “[a] skirt part
including a piston sidewall with opposing sidewall portions separated from
one another by intervening sidewall indentations running along the
longitudinal axis between the first and second ring grooves.” Appeal Br. 12
(Claims App.) (emphasis added). The Examiner makes the same findings
for Haug as to the “sidewall indentations” as those discussed above for claim
1. Final Act. 7. Accordingly, for the same reasons as for claim 1, we do not
sustain the rejection of claim 8, and claims 9–13 depending therefrom, as
unpatentable over Haug, Dion, and Gabriel.
Claims 7 and 14 over Haug, Dion, Gabriel, and Beagle
The Examiner’s reliance on Beagle in rejecting dependent claims 7
and 14 fails to cure the deficiencies in the rejection of parent claims 1 and 8,
respectfully. Final Act. 10–11. Accordingly, we do not sustain the rejection
of claims 7 and 14 as unpatentable over Haug, Dion, Gabriel, and Beagle.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–13 103 Haug, Dion,
Gabriel
1–6, 8–13
7, 14 103 Haug, Dion,
Gabriel, Beagle
7, 14
Overall
Outcome
1–14

REVERSED