Ex Parte Daiker et al

Patent Trial and Appeal Board

Oct 25, 2017

13444220 (P.T.A.B. Oct. 25, 2017)

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.
13/444,220 04/11/2012 Klaus DAIKER 080437.64267US 7470
23911 7590
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
10/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS DAIKER, MARKUS WITTMANN, and
MARTIN KUNST
Appeal 2015-008291
Application 13/444,2201
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Klaus Daiker et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-14, 18-24, 28, and
29. Final Office Action 1 (October 28, 2014) (hereinafter “Final Act.”).
Claims 15-17 and 25-27 are withdrawn from consideration. Id. at 2. We
have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify Bayerische Motoren Werke Aktiengesellschaft as the
real party in interest. Appeal Brief 1 (March 27, 2015) (hereinafter “Appeal
Br.”).
Appeal 2015-008291
Application 13/444,220
We AFFIRM-IN-PART.2
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter “relates to an internal-combustion
engine having a crankcase with at least one cylinder to accommodate a
piston, as well as to a method of producing such a crankcase.” Spec. ^ 2.
Claims 1 and 18 are independent. Claim 1 is illustrative of the subject
matter on appeal and is reproduced below.
1. A method of producing a crankcase for an internal-
combustion engine having at least one cylinder, the method
comprising the acts of:
casting the crankcase of a light-metal material;
precision-turning an inner face of the cylinder of the
crankcase;
roughening the precision-turned inner face;
applying a coating to the roughened inner face with a
plurality of pores, an average pore size and a pore surface
proportion being predeterminedly defined so as to vary over a
length of the cylinder, said coating forming a running surface for
a piston.
Appeal Br., Claims Appendix A-l.
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Schweikher
Jenkinson
Palazzolo et al.
(“Palazzolo”)
Barbezat
US 3,749,072
US 4,068,645
US 5,691,004
July 31, 1973
Jan. 17, 1978
Nov. 25, 1997
US 2003/0164150 Al Sept. 4, 2003
2 Appellants’ representative presented arguments at an oral hearing on
October 19, 2017.
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Application 13/444,220
Ishikawa et al. US 2003/0192501 A1 Oct. 16, 2003
(“Ishikawa”)
Michioka US 2007/0143996 Al June 28,2007
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1, 3-6, 9-12, 18-22, 28, and 29 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Michioka and Barbezat.
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Michioka, Barbezat, and Jenkinson.
3. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Michioka, Barbezat, and Palazzolo.
4. Claims 13 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Michioka, Barbezat, and Ishikawa.
5. Claims 14 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Michioka, Barbezat, and Schweikher.
ANALYSIS
First Ground of Rejection: Obviousness over Michioka and Barbezat
Independent Claims 1 and 18
Appellants contend that the first ground of rejection should not be
sustained because the Examiner erred in finding that Barbezat discloses
“average pore size and a pore surface proportion[3] [are] predeterminedlv
defined,” so as to vary over a length of the cylinder as recited in independent
3 Appellants’ Specification defines that “[t]he ‘pore surface proportion’ is
determined in the metallographic cross-section. The term ‘pore surface
proportion’ relates to the ratio of the sum, which is determined in the cross-
section, of all pore surfaces contained in an evaluated surface to the total
evaluated surface.” Spec. ^ 19; see also id. ^ 42.
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Application 13/444,220
claims 1 and 18. Appeal Br. 6; see also Final Act. 4 (Examiner citing
Barbezat, Abstract, 18-20). Appellants argue that “Barbezat expressly
discloses that the area on which pores 2, 3, and 4 are distributed and the size
of the pores 2, 3, and 4 is randomly distributed (i.e., stochastically).” Appeal
Br. 6. The Examiner responds that “the stochastically distributed nature of
the pore size and pore surface proportion is known in advance, hence it is
predetermined.” Examiner’s Answer 8 (July 17, 2015) (hereinafter “Ans.”).
Appellants contend that the Examiner fails to point to any portion of
Appellants’ Specification consistent with such interpretation, and further
argue that “Appellants’ [Specification makes it clear that ‘predeterminedly
defined’ should be interpreted as ‘non-randomly defined,’ because
Appellants disclose that the average pore size and surface proportion varies
in accordance with very specific patterns (i.e., non-randomly).” Reply Br. 2
(citing Spec. 9-12).4
The Specification does not use the phrase “predeterminedly defined.”
The Specification describes that the object of the invention, i.e., to have a
running surface with a high tribological resistance, is achieved using a
coating with a plurality of pores, “the average size of the pores and/or the
pore surface proportion varying over the length of the cylinder.” Spec. 7-
8. The Specification then provides several examples of specific
arrangements of average pore size and pore surface proportion along the
length of the cylinder. Spec. 9-12. Appellants point to these examples as
4 The Examiner states that even if we adopt Appellants’ narrower definition
of “predeterminedly defined,” the claims are unpatentable over Michioka,
Barbezat, and Schweikher. Ans. 8 (referencing the rejection of dependent
claims 14 and 24, and noting that the same rejection should be applied to
claims 1 and 18 if the narrower interpretation is adopted).
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Application 13/444,220
support for interpreting “predeterminedly defined” to require that the
average pore size and pore surface proportion vary in a non-random manner
over the length of the cylinder. Appeal Br. 7. We note paragraphs 11 and
12 describe examples in which the average pore size is essentially constant
over the length of the cylinder, i.e., it does not vary. Spec. 11, 12. As
such, these examples are not encompassed by the claims, which recite that
“an average pore size and a pore surface proportion being predeterminedly
defined so as to vary over a length of the cylinder.”
Paragraph 9 describes an example in which the average pore size and
the pore surface proportion decrease from the lower cylinder end in a
direction toward the upper cylinder end. Spec. ^ 9. Dependent claims 14
and 24 are directed to this specific arrangement. Paragraph 10 describes an
example in which the size of the pores and the pore surface proportion are
largest in the center area of the cylinder and decrease in the directions
toward both ends. Id. ^ 10. While claim 1 is broad enough to encompass
these two example distributions of pores, it is not limited to these examples.
As noted, the Specification does not use or define the phrase
“predeterminedly defined,” and thus provides no clear guidance on the scope
of this term. Further, the Specification elsewhere describes that the objects
of the invention are achieved generally by a coating that “has a plurality of
pores, the average size of the pores and/or the pore surface proportion
varying over the length of the cylinder.” Spec. ^ 8; id. ^ 13. We understand
the examples that follow this general statement in the Specification are not
the only way to achieve the objects of the invention.
For example, the Specification further describes that the ratio of the
oblong pores to the round pores “very decisively determines the tribological
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behavior.” Id. 20. The Specification also describes that “the average pore
size very decisively determines the carrying capacity of the oil lubrication
film between the piston rings and the cylinder running surface.” Id. ^ 21.
As such, reading this claim language in light of the Specification, we
conclude that a person having ordinary skill in the art would not understand
the language of claim 1 to be limited to non-random patterns of pores over
the length of the cylinder. Rather, the claim language encompasses coatings
applied such that an average pore size and a pore surface proportion are
known in advance so as to achieve a coating in which the average pore size
and pore surface proportion vary over the length of the cylinder.
We agree with the Examiner that Barbezat teaches forming a coating
on a cylinder surface in which the average pore size and pore surface
proportion are predetermined. With regard to average pore size and pore
surface proportion, Barbezat teaches that these parameters are determined
prior to forming the coating, and, thus, are “predeterminedly defined”:
The coating is applied by plasma spraying; the surface of the
coating comprises a plurality of open pores; the degree of
porosity of the surface of the coating amounst [sic] to between
0.5 and 10%; the statistic mean pore size amounts to between 1
and 50 /mi, whereby at least nearly exclusively pores with a size
of less than 100 pim are present.
Barbezat, Abstract. Barbezat contains similar disclosures of predetermined
pore sizes and degrees of porosity throughout the patent. Id. ^ 17 (“pores
have a size of between 2 and 30 //m” and “[t]he degree of porosity of the
coating, i.e. [,] the portion of the pores compared to the entire volume of the
layer, amounts to between 1 and 5%” and “the portion of the pores 2, 3, 4
compared to the entire area of the layer 1 amounts to between 1 and 5%”)
(emphasis omitted), ^ 23 (teaching that the degrees of porosity and the size
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of the pores “can be specifically controlled by changing the coating
parameters as well as the particle size of the coating powder”).
We further agree with the Examiner that the average pore size and
pore surface proportion in Barbezat vary over the length of the cylinder.
Ans. 8 (citing Barbezat, Fig. 2). Barbezat discloses that “[t]he pores 2, 3, 4
are stochastically distributed in the surface coating 1 of the working surface
of a cylinder, both with regard to the area and to the size.” Barbezat 22
(emphasis omitted). As shown in Figure 2 of Barbezat, the pores vary in
size and pore surface proportion over the length of the area depicted. As
such, the size of the pores and the pore surface proportion are
predeterminedly defined in that they are known in advance, and the pores,
being randomly distributed, vary along the length of the cylinder.
For these reasons, we sustain the rejection of claims 1 and 18 as
unpatentable over Michioka and Barbezat. Appellants do not present any
separate arguments for patentability of dependent claims 3, 5, 9-12, and 19-
22. Appeal Br. 17. These dependent claims fall with independent claims 1
and 18. 37 C.F.R. § 41.37(c)(l)(iv). We address the separate arguments
presented for dependent claims 4, 6, 28, and 29 infra.
Dependent claim 4
Claim 4 depends from claim 1 and recites that “the act of roughening
is carried out by at least one of a mechanical process and a chemical
process.” Appeal Br., Claims Appendix A-l. The Examiner found that
Michioka discloses the claimed subject matter. Final Act. 3 (citing
Michioka 40 42). Appellants argue that Michioka discloses roughening
using a high pressure fluid jet, and that a fluid jet is not one of a mechanical
process and a chemical process. Appeal Br. 13-14. The Examiner finds that
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high-pressure blasting via a fluid is “both a mechanical and a chemical
process.” Ans. 10 (citing Appellants’ claim 5). Claim 5 does not depend
from or further limit claim 4. Rather, claim 5 depends from claim 1 and
recites that “the act of roughening takes place by one of: machining;
sandblasting or corundum-blasting; and high-pressure blasting via a fluid.”
Appeal Br., Claims Appendix A-l. Nonetheless, Appellants’ Specification
supports the Examiner’s finding, describing examples of mechanical and/or
chemical roughening as including roughening by high-pressure blasting with
a fluid:
The roughening of the precision-turned inner face of the
cylinder can take place mechanically and/or chemically. A
machining of the precision-turned inner face of the cylinder, for
example, can be considered. As an alternative or in addition, the
precision-turned inner face of the cylinder may also be
sandblasted or corundum-blasted. Furthermore, a roughening by
high-pressure blasting with a fluid, particularly with an emulsion
and/or with a suspension, can be considered.
Spec. ^ 24. We see no discemable difference between high-pressure
blasting with a fluid, and Michioka’s disclosure of roughening using a high
pressure fluid jet. For these reasons, we sustain the rejection of claim 4
under 35 U.S.C. § 103(a) as unpatentable over Michioka and Barbezat.
Dependent claim 6
Claim 6 depends from claim 1 and recites that “the roughened inner
face of the cylinder has a surface roughness approximately in a range of
Rz = 30 pm to 200 pm.” Appeal Br., Claims Appendix A-2. The Examiner
determines that the claimed range would have been obvious because
“discovering an optimum value as a result effective variable involves only
routine skill in the art.” Final Act. 4. Appellants argue that “[t]he rejection
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is improper because no evidence has been presented that the surface
roughness of the inner face of the cylinder has been recognized as [a] result-
effective variable.” Appeal Br. 14. The Examiner responds that “[t]he
surface roughness of the inner face of the cylinder is important to the ability
of the coating to adhere to the cylinder, as well as to form a surface capable
of providing minimal friction losses during engine operation.” Ans. 10. We
have no objective evidence presented in the Record by the Examiner to
support this finding. As such, we cannot determine by a preponderance of
the evidence that the prior art recognized the claimed surface roughness as a
result-effective variable. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977)
(finding an exception to the rule of obviousness based on optimization of a
variable in the case in which it was not shown that the parameter optimized
was recognized in the art to be a result-effective variable). Accordingly, we
do not sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Michioka and Barbezat.
Dependent claims 28 and 29
Claim 28 depends from method claim 1 and claim 29 depends from
apparatus claim 18. Each claim recites:
some of the plurality of pores are oblong pores and some are
round pores, the oblong pores being pores that have a length to
width ratio of more than 4:1, the round pores being pores that
have a length to width ratio of at most 4:1, and a ratio of the
oblong pores to the round pores ranges between 0.1 and 2.5.
Appeal Br., Claims Appendix A-5-A-6. The Examiner finds:
[Sjince pores are formed by bubbles in the process of spray
coating the cylinder, it is inherent that they would be formed as
round and rounded oblong shapes. The range of the ratio of
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Application 13/444,220
oblong pored [sic] to round pores being between 0.1 and 2.5 is a
very broad range and would encompass most common situations.
Final Act. 5; see also Ans. 9 (Examiner finding that the claimed ratio
“encompasses almost any sort of scenario that could reasonably exist”).
Appellants argue the rejection is based on “a speculation that ‘most common
situations’ would encompass the claimed ratio, and that forming oblong and
round pores would be inherent.” Appeal Br. 8-9. We agree with Appellants
that the Examiner’s reliance solely on the breadth of the claimed ratio in this
instance as the basis for a determination of obviousness is insufficient. For
this reason, we do not sustain the rejection of claims 28 and 29 under
35 U.S.C. § 103(a) as unpatentable over Michioka and Barbezat.
Second, Third, and Fifth Grounds of Rejection
Appellants do not present any arguments specifically directed to the
second, third, and fifth grounds of rejection. Appeal Br. 17 (Appellants
arguing that claims 2, 7, 8, 14, and 24 “are also patentable over the art of
record, based at least one their dependencies” from claim 1 or claim 18).
For the same reasons set forth above in our analysis of independent claims 1
and 18, we likewise sustain the rejections under 35 U.S.C. § 103(a) of: claim
2 as unpatentable over Michioka, Barbezat, and Jenkinson; claims 7 and 8 as
unpatentable over Michioka, Barbezat, and Palazzolo; and claims 14 and 24
as unpatentable over Michioka, Barbezat, and Schweikher.
Additionally, we note that in the rejection of claims 14 and 24, the
Examiner proposes to further modify the coating of Michioka, as modified
by Barbezat, based on the teachings of Schweikher to provide a size of the
pores and/or the pore surface proportion decreasing from the lower end in a
direction toward the upper end of the cylinder. Final Act. 7. This proposed
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modification would result in a non-random, predeterminedly defined pattern
of pore sizes and pore surface proportion that varies over the length of the
cylinder. Appellants do not contest the Examiner’s findings as to the
teachings of Schweikher or the Examiner’s proposed further modification of
Michioka with these teachings.
Fourth Ground of Rejection
Claim 13 depends indirectly from method claim 1 and claim 23
depends indirectly from apparatus claim 18, each recites:
the finished honed running surface has a roughness value of at
least one of:
(a) Rpk is in a range of between 0.05 pm - 2 pm;
(b) Rvk is in a range = 0.5 pm - 15 pm;
(c) V0 is in a range of between 0.1 pm - 16 pm; and
(d) Rk is in a range of between 0.05 pm - 5 pm.
Appeal Br., Claims Appendix A-2-A-3, A-4-A-5.
Appellants argue that Ishikawa merely teaches providing “the finished
honed running surface having a roughness value of Rpk in a range of not
more than 0.64 micrometers” and claims 13 and 23 recite a range of Rpk that
is up to 2 pm, which is “far more than 0.64 micrometers.” Appeal Br. 15.
Appellants further argue that Ishikawa teaches an Rk value range of 0.15 to
3.3 pm, instead of the claimed range of 0.05 pm - 5 pm. Id.
Appellants do not contest the Examiner’s finding that the ranges for
Rpk and Rk disclosed in Ishikawa overlap the claimed ranges in claims 13
and 23. In particular, Ishikawa’s disclosed range for Rpk overlaps the lower
end of the claimed range, and Ishikawa’s disclosed range for Rk falls
entirely within the claimed range. As noted by the Federal Circuit:
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The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted).
The only evidence pointed to by Appellants is paragraphs 34 through 38
(claimed ranges are asserted to be “critical”) and paragraphs 42 through 45
(asserted “unexpected superior results that arise from these claimed ranges”)
of Appellants’ Specification. Appeal Br. 16. We do not find adequate
disclosure in the Specification to support Appellants’ assertion of criticality
and unexpected results of the claimed subject matter.
As to the criticality of the claimed ranges, paragraph 34 states that
“[ojnly a favorable combination of these characteristic roughness values
guaranties [sic] optimal tribological characteristics of the honed cylinder
surface.” Spec. ^ 34 (emphasis added) (referring to the roughness values
described in paragraphs 30 through 33). Claims 13 and 23, however, do not
require a combination of any of the recited roughness values. Rather, the
claims recite “at least one of’ the roughness values. It is not clear from the
Specification that the improved performance of the coating described in the
ensuing paragraphs 35 through 38 is attributable to a coating having only
one of the claimed roughness values, as called for in claims 13 and 23, or a
combination of these characteristic roughness values, as described in the
Specification.
As to the assertion that paragraphs 42 through 45 show unexpected
superior results, the Specification does not include any paragraphs numbered
44 and 45, and paragraphs 42 and 43 do not mention or discuss the claimed
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roughness value ranges or results of using a coating having such roughness
characteristics.
For these reasons, we agree with Examiner’s determination of
obviousness based on overlapping ranges and find that Appellants have not
presented adequate evidence or argument to rebut this determination.
Accordingly, we sustain the rejection of claims 13 and 23 as unpatentable
over Michioka, Barbezat, and Ishikawa.
DECISION
The decision of the Examiner rejecting claims 1-5, 7-14, and 18-24
is affirmed.
The decision of the Examiner rejecting claims 6, 28, and 29 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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