Ex Parte Klink et al

Patent Trial and Appeal Board

Oct 29, 2012

10191203 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/191,203 07/09/2002 Ulrich Klink A91481 6994
30008 7590 10/31/2012
GUDRUN E. HUCKETT DRAUDT
SCHUBERTSTR. 15A
WUPPERTAL, 42289
GERMANY
EXAMINER
COLEMAN, KEITH A
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
10/31/2012 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 ULRICH KLINK, GERHARD FLORES, TOBIAS ABELN and
OLIVER KULL
____________

Appeal 2010-010245
Application 10/191,203
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010245
Application 10/191,203

2
STATEMENT OF THE CASE
Ulrich Klink et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 102(e) claims 18, 22 and 24
as anticipated by Wang (US 6,328,026 B1, issued Dec. 11, 2001) and under
35 U.S.C. § 103(a): (1) claims 19-21 as unpatentable over Wang; and (2)
claim 23 as unpatentable over Wang and Blaylock (US 4,075,794, issued
Feb. 28, 1978). Claims 1-17 have been cancelled. We have jurisdiction
over this appeal under 35 U.S.C. § 6. We REVERSE.

THE INVENTION
Appellants’ invention relates to a method for producing a piston slide
face 11 of a cylinder 5. Spec. 1, ll. 9-10 and fig. 2.
Claim 18, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
18. A method for producing a piston slide face (11, 18) in a
cylinder, the method comprising the steps of:
pre-treating a surface of the cylinder where the piston
slide face is to be produced;
structuring by laser treatment the surface by generating
pockets in a tribologically loaded top dead center area where
the piston is located when at top dead center;
fine-machining in two stages, wherein
in a first stage, fused projections produced on the
structure edges of the pockets by laser treatment
are removed by deburring with deburring stones
having a length corresponding to a length of the
top dead center area; and
Appeal 2010-010245
Application 10/191,203
3
in a second stage, a functional roughness is
produced by finish-machining selected from
honing, polishing or grinding on supporting areas
located between the pockets.

OPINION
The anticipation rejection based upon Wang
Independent claim 18 requires the method step of “structuring by laser
treatment the surface by generating pockets.” App. Br., Claims Appendix.
The Examiner takes that position that tracks 52 of Wang “are deemed as the
pockets . . . and clearly reads of the claimed subject matter.” Ans. 9. See
also, Wang col. 4, ll. 25-35 and fig. 5. Appellants argue (1) “Fig. 5 [of
Wang] in and of itself does not disclose pockets or anything like it; only
shown are cross-hatched parallel fields - there is not [(sic.)] indication that
these fields are raised or depressed;” and (2) based upon the description of
Figure 5 in Wang, “the crosshatched tracks 52 only illustrate the alloyed area
created for each pass of the laser beam and that these tracks are alternatingly
long and short so as to create a zigzag pattern between the alloyed and
nonalloyed surface of the cylinder wall.” App. Br. 13-14. See also, Wang
col. 4, ll. 23-48 and fig. 5.
At the outset, regarding the Examiner’s position, “laser created
pockets [i.e., tracks 52] are clearly shown in Figure[] 5 [of Wang]” (see
Non-Final Rej. 8), since Wang does not indicate that Figure 5 is drawn to
scale, it cannot be relied upon to establish the precise geometry of the tracks
52. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000).
Further, although we appreciate the Examiner’s position that tracks 52
of Wang “improve [the] structural integrity of the cylinder” and “refin[e] the
Appeal 2010-010245
Application 10/191,203
4
surface of the cylinder” (see Ans. 9), we give claims their broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case,
Appellants’ Specification does not explicitly define the term “pocket;”1
however, it does specifically disclose, “the pockets are formed as
peripherally or circumferentially closed micropressure chambers.” Spec. 3,
ll. 18-19. See also, App. Br. 7. A person of ordinary skill in the art would
not have reasonably found that tracks 52 of Wang are peripherally or
circumferentially closed micropressure chambers (containers). In contrast,
tracks 52 of Wang are merely pathways formed during irradiation by laser
44 of a portion of the interior surface of the cylinder bore 42. See Wang,
col. 3, ll. 3-5 and col. 4, ll. 46-48 and fig. 5.
As such, we find that a reasonable interpretation of the term “pocket,”
in light of the Specification, excludes an interpretation in which a “track”
constitutes a “pocket,” as the Examiner suggests. Consequently, since tracks
52 of Wang are merely pathways and not peripherally or circumferentially
closed micropressure chambers (containers), they do not constitute
“pockets,” as required by claim 18. As such, Wang does not teach all the
elements of independent claim 18. Accordingly, the rejection of claims 18,
22 and 24 under 35 U.S.C. § 102(e) as anticipated by Wang cannot be
sustained.

1 An ordinary and customary meaning of the term “pocket” is “3 :
RECEPTACLE, CONTAINER.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11th ed. 2005).
Appeal 2010-010245
Application 10/191,203
5
The obviousness rejections over Wang and Wang and Blaylock
Regarding claims 19-21 and 23, the Examiner’s proposed
modifications of Wang and the Examiner’s application of Blaylock as a
separate additional reference in conjunction with Wang do not remedy the
deficiencies of Wang as described above. As such, the rejections under 35
U.S.C. § 103(a): (1) of claims 19-21 as unpatentable over Wang; and (2) of
claim 23 as unpatentable over Wang and Blaylock likewise cannot be
sustained.

DECISION
The decision of the Examiner is reversed as to claims 18-24.

REVERSED

hh