Ex Parte Burton et al

Patent Trial and Appeal Board

Sep 26, 2018

13843686 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/843,686
116845 7590
Terrance A. Meador
Achates Power, Inc.
FILING DATE
03/15/2013
09/26/2018
4060 Sorrento Valley Boulevard
San Diego, CA 92121
FIRST NAMED INVENTOR
Tristan M. Burton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ACHP1902US 2976
EXAMINER
ZALESKAS, JOHN M
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
09/26/2018 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 TRISTAN M. BURTON and FABIEN G. REDON
Appeal2017-011512
Application 13/843,686 1
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 12-15, 17, and 18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify Achates Power, Inc. as the real party in interest.
Appeal Br. 3.
Appeal 2017-011512
Application 13/843,686
ILLUSTRATIVE CLAIM
12. A piston having a crown for defining a combustion
chamber with the crown of an opposing piston, in which the
crown has a periphery centered on the longitudinal axis of the
piston, the piston comprising:
a flat circumferential area extending from the periphery
toward the longitudinal axis;
a bowl within the periphery, the bowl defining a concave
surface with a first portion curving inwardly toward the interior
of the piston from a first plane that is orthogonal to the
longitudinal axis of the piston and that contacts the periphery,
and a second portion curving outwardly from the interior of the
piston through the first plane; and,
a convex surface within the periphery curving outwardly
from the first plane and meeting the second portion of the
concave surface to form a ridge; wherein,
the flat circumferential area lies in the first plane; and
the ridge has a height H that decreases from a maximum
at a midpoint of a major axis of the combustion chamber in a
direction along the major axis toward the periphery.
REJECTION
Claims 12-15, 17, and 18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ferguson (GB 320,439 A, pub. Oct. 17, 1929).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellants contend, in part, that the Examiner erred in rejecting
independent claim 12, because the Ferguson reference does not teach the
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Appeal 2017-011512
Application 13/843,686
recited "flat circumferential area" that "lies in the first plane." See Appeal
Br. 6, 8-9.
The rejection identifies the surfaces of the piston head (labeled din
Ferguson's Figure 3) as disclosing the claimed "flat circumferential area"
that "lies in the first plane." See Final Action 9; see also Answer 13-16.
Ferguson (at page 2, lines 37--40) states that the identified "surfaces of
the piston heads ... are arranged at different levels as shown at d Fig. 3."
The Examiner's Answer takes the position that Ferguson satisfies the
limitations at issue, because the Appellants' "disclosure fails to sufficiently
disclose a piston having a circumferential area that is (a) entirely flat and (b)
lies entirely within a 'first plane."' Answer 16 ( citing Spec. Fig. 4A).
The Examiner's statement concerns the Specification's description of
"circumferential area 85," shown, for example, in Figures 4A and 4B, and
described as having "a generally annular shape except where notches 94 are
formed." Spec. ,r 32. See also Spec. ,r 38. According to the Examiner, these
"notches" interrupt the otherwise flat and planar surface. See Answer 13-
14, 16.
Yet, the presence of such "notches" does not conflict with - and does
not negate - claim 12 's requirements of a "flat circumferential area" that
"lies in the first plane." "During examination, 'claims ... are to be given
their broadest reasonable interpretation consistent with the specification, and
... claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Here, the Specification conveys to one of
ordinary skill in the art that a "flat circumferential area" that "lies in [a]
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Application 13/843,686
plane" may include notches, such as are shown in Figures 4A and 4B. See
e.g., Spec. ,r,r 32, 38. Indeed, the dependent claims reinforce the
understanding that the scope of independent claim 12 permits the presence
of notches. Dependent claims recite "opposing notches ... provided in the
periphery" ( claim 13) and "the flat circumferential area has a generally
annular shape except where the notches are positioned" ( claim 17). Because
independent claim 12 should have a broader scope than its dependent claims,
claim 12 requires a "flat circumferential area" that "lies in the first plane" -
although it nevertheless encompasses embodiments having notches ( such as
claims 13 and 17 recite).
In view of the foregoing, we determine that one of ordinary skill in the
art upon reading claim 12 in light of and consistent with the Specification
would understand that a "flat circumferential area" that "lies in the first
plane" may include notches, such as the Specification discloses.
By contrast with claim 12 's "flat circumferential area" that "lies in the
first plane" (albeit, permitting notches), Ferguson's piston surfaces "are
arranged at different levels" (Ferguson, p. 2, 1. 39) and, per the Examiner,
"includ[ e] a section having a decreasing height" ( Answer 11 ). In view of its
multi-level arrangement and region of decreasing height, Ferguson's piston
surfaces do not "lie in [a] plane," per claim 12. Nor can the substantial
irregularities in Ferguson's piston surfaces be categorized as "notches" that
would not run afoul of the claimed requirement for a "circumferential area"
that "lies in [a] plane." Therefore, Ferguson does not teach the identified
limitation of claim 12.
Accordingly, we do not sustain the rejection of independent claim 12
and dependent claims 13-15, 17, and 18, under 35 U.S.C. § 102(b).
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Application 13/843,686
DECISION
We REVERSE the Examiner's decision rejecting claims 12-15, 17,
and 18 under 35 U.S.C. § 102(b).
REVERSED
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