Ex Parte Donahue

Patent Trial and Appeal Board

Sep 20, 2017

14154462 (P.T.A.B. Sep. 20, 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.
14/154,462 01/14/2014 Richard John Donahue 271047-1 (GEDP:0049) 7127
82438 7590 09/20/2017
(TR Power Rr Water
EXAMINER
Fletcher Yoder PC KIM, JAMES JAY
P.O. Box 692289
Houston, TX 77269-2289 ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
09/20/2017 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 RICHARD JOHN DONAHUE
Appeal 2016-006717
Application 14/154,462
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006717
Application 14/154,462
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
3, 7, 8, 11, 13, 15, 18, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to a piston with reduced top land height and
tight top land piston profile. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An assembly for use in an internal combustion
engine comprising:
a cylinder having a bore diameter;
a piston disposed within the cylinder, the
piston having a top land with a top land height,
wherein the top land of the piston is made of
aluminum;
the top land and the cylinder having a tight
top land clearance between an aluminum
surface of the top land interfacing with an inner
surface of the cylinder; and
wherein the ratio of the top land height to
the bore diameter is less than or equal to 0.025.
THE CLAIMED SUBJECT MATTER
REFERENCES
Fletcher-Jones
Kusama
Penrice
Nigro
US 4,989,559
US 5,323,744
US 5,435,872
US 6,112,715
Feb. 5, 1991
June 28, 1994
July 25, 1995
Sept. 5, 2000
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Appeal 2016-006717
Application 14/154,462
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kusama and Nigro. Final Act. 2.
Claims 2, 3, 7, 8, 11, 15, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kusama, Nigro, and Penrice. Id. at 3.
Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kusama, Fletcher-Jones, and Penrice. Id. at 10.
ANALYSIS
Claim 1—Unpatentable over Kusama and Nigro
The Examiner finds that Kusama teaches all of the limitations of
claim 1 except for the top land of the piston being made of aluminum. Final
Act. 2—3. For that limitation, the Examiner relies on Nigro. Id. at 3 (citing
Nigro, 2:38-45). The Examiner contends that a person of ordinary skill in
the art would have made the piston disclosed in Kusama from aluminum, as
Nigro teaches, “in order to reduce the weight of the piston.” Id.
Appellant only challenges the Examiner’s finding that Kusama
teaches the limitation in claim 1 requiring that the ratio of the top land height
to the bore diameter be less than or equal to 0.025. Id. at 2—3; Ans. 3.
Kusama teaches an embodiment in which this dimension “is less than 1/20,”
or less than 0.05. Kusama, 5:3—5, 6:21—26. Appellant disputes that Kusama
teaches the claimed limitation because the “ratio of the top land ... to the
inner diameter of the cylinder . . . may be greater than 0.025 in Kusama.”
App. Br. 7; Reply Br. 4.
This argument is not persuasive. The claimed range of less than or
equal to 0.025 falls within Kusama’s disclosed range of less than 0.05,
giving rise to a presumption of obviousness. See In re Peterson, 315 F.3d
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Appeal 2016-006717
Application 14/154,462
1325, 1329-30 (Fed. Cir. 2003) (holding that when “the claimed ranges are
completely encompassed by the prior art, the conclusion [that a prima facie
case of obviousness was made out] is even more compelling than in cases of
mere overlap”). This presumption may be overcome by showing “that the
[claimed] range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.” Id. at 1330
(modification in original) (quoting In re Geisler, 116 F.3d 1465, 1469-70
(Fed. Cir. 1997)). Appellant has not alleged, however, much less
demonstrated, that the claimed range is critical. Accordingly, we sustain the
Examiner’s rejection of claim 1 as unpatentable over Kusama and Nigro.
Claims 2, 3, 7, 8, 11, 15, 18, and 20—
Unpatentable over Kusama, Nigro, and Penrice
Claims 2 and 7
Claims 2 and 7 depend from claim 1. App Br. 13 (claims appx.).
Appellant relies solely on the patentability of claim 1 to support the
patentability of claims 2 and 7. Id. at 7—8. Because we sustained the
Examiner’s rejection of claim 1, we likewise sustain the rejection of claims 2
and 7.
Claims 8 and 11
Claim 8 is directed to a piston for use with an internal combustion
engine, the piston having “a top land made of metal” and a “tight top land
clearance between a metal surface of the top land interfacing with an inner
surface of the cylinder.” Id. at 13. Claim 8 additionally requires the tight
top land clearance to be “less than 25 microns at rated temperatures when
the internal combustion engine operates at rated temperatures.” Id. at 14.
Claim 11 depends from claim 8. Id. The Examiner relies on Penrice to
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Appeal 2016-006717
Application 14/154,462
teach the claimed tight top land clearance of less than 25 microns. Final
Act. 6 (citing Penrice, 7:37-41). Appellant responds that Penrice only
discloses a clearance between a coating of lubricant applied to the piston—
rather than the metal surface of the piston—and the cylinder inner surface
that is less than 25 microns. App. Br. 9. In response, the Examiner contends
that “the coating applied to the piston becomes a part of the piston to reduce
the overall clearance of the piston.” Ans. 3.
We agree with Appellant. Claim 8 expressly defines the tight top land
clearance to be between a metal surface of the top land and an inner surface
of the cylinder. The Examiner does not dispute that Penrice’s disclosure of a
clearance between 0 and 24 microns refers to a clearance between the coated
surface of the piston and the inner cylinder wall rather than between the
underlying metal surface of the piston and the cylinder wall. Further, as
Appellant notes (App. Br. 9), Penrice suggests that the clearance between
the uncoated metal surface and the cylinder wall of specific embodiments to
be in the range of 30 to 64 microns. Penrice, 7:38—39. Therefore, we are
not persuaded that Penrice teaches the limitation at issue, and we do not
sustain this rejection.
Claims 3, 15, 18 and 20
Independent claim 15 is similar to claim 8, except that it requires the
top land to be made of aluminum and the tight top land clearance to be
between “an aluminum surface of the top land interfacing with an inner
surface of the cylinder.” App. Br. 14. Like claim 8, claim 15 also requires
the tight top land clearance to be less than 25 microns when the internal
combustion engine operates at rated temperatures. Id. Claims 18 and 20
depend from claim 15. Id. at 14—15. Claim 3 depends from claim 1 and
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Appeal 2016-006717
Application 14/154,462
contains the same tight-top-land limitations as claim 15.1 Id. at 13. The
Examiner relies on the same disclosure in Penrice discussed above to teach
this limitation. Final Act. 8. But, as discussed above, the disclosure on
which the Examiner relies refers to the clearance between a coated piston
and a cylinder rather than between the piston’s metal surface and the
cylinder. Ans. 3. Therefore, for the reasons stated above, we do not sustain
this rejection.
Claims 8 and 13—Unpatentable over Kusama, FI etcher-Jones, and Penrice
Claim 13 depends from claim 8, discussed above. App. Br. 14 (claims
appx.). This rejection relies on the erroneous finding that Penrice teaches a
tight top land clearance—defined in claim 8 as between a metal surface of
the top land and an inner surface of the cylinder—of less than 25 microns.
Final Act. 11; Ans. 3—A. The Examiner does not rely on Fletcher-Jones to
cure this deficiency. Accordingly, for the reasons discussed above, we do
not sustain the Examiner’s rejection of claims 8 and 13 as unpatentable over
Kusama, Fletcher-Jones, and Penrice.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, and 7
is sustained, and the rejection of claims 3, 8, 11, 13, 15, 18, and 20 is
reversed.
1 Appellant does not argue claim 3 separately from claims 1, 2 and 7. App.
Br. 7—8. But, because claim 3 recites the same tight-top-land limitations as
claim 15, we, in fairness, include claim 3 in our discussion of claim 15.
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Appeal 2016-006717
Application 14/154,462
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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