Ex Parte Meier

Patent Trial and Appeal Board

Jun 7, 2018

12997065 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/997,065 04/11/2011 Jorgen Meier
23364 7590 06/11/2018
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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.
MEIE3001/JS-FD 3841
EXAMINER
NEUBAUER,THOMASL
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGEN MEIER
Appeal2017-007421
Application 12/997,065
Technology Center 3600
Before BRETT C. MAR TIN, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jorgen Meier (Appellant) appeals under 35 U.S.C. § 134(a) from the
rejection of claims 45--47, 49-53, 55---68, and 89. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Appeal2017-007421
Application 12/997,065
CLAIMED SUBJECT MATTER
Sole independent claim 45, reproduced below, is illustrative of the
claimed subject matter:
45. A device for stabilizing a piston ring, comprising:
a piston ( 1) of a crosshead piston engine, the piston having
a top, a skirt depending from the top and a piston ring groove ( 5)
formed in the skirt, the piston having a high piston crown
wherein said piston ring groove ( 5) is positioned in an area near
a bottom of the piston skirt;
a piston ring ( 6) received with radial and axial clearance
in the piston ring groove (5) of the piston (1),
wherein the piston ring ( 6) is adapted to be put into
contact, by its radially outer circumferential surface, with the
bearing surface of a cylinder bush (9) receiving the piston (1) and
is subjected on its inner circumferential surface to a gas pressure
present at the top of the piston ring ( 6), and the underside of the
piston ring ( 6) contacts the opposed, lower support face of the
associated piston ring groove ( 5), and from there in a nonloaded
state, a gap opening radially outward in height is formed between
the underside of the piston ring ( 6) and the opposed, lower
support face of the piston ring groove (5), wherein the piston (1)
has a property of warping by a rise in the temperature from the
cold ambient state up to operating temperature, so that a radially
outer region of the lower support face of the piston ring groove
( 5) is shifted upward relative to a radially inner region and
whereby the cross sections of the piston ring ( 6) and of the piston
ring groove ( 5) are configured correspondingly such that even in
a warped state of the piston as long as no gas pressure is present
said gap opens outward in the radial direction; and also the piston
ring ( 6) is acted upon on its radially inner circumferential surface
by the gas pressure at its top.
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Appeal2017-007421
Application 12/997,065
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roberts
Bush
Ogawa
Corbett, Jr.
us 1,862,983
us 4,256,318
US 2002/0117808 Al
US 7,158,034 B2
REJECTIONS
June 14, 1932
Mar. 17, 1981
Aug.29,2002
Jan.2,2007
I. Claims 45--47, 49-53, 55---60, 62---64, and 89 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Roberts.
II. Claim 61 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Roberts.
III. Claims 66 and 68 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Roberts and Corbett.
IV. Claim 65 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Roberts and Ogawa.
V. Claim 67 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Roberts, Corbett, and Bush.
DISCUSSION
Rejection I
The Examiner finds, inter alia, that Roberts discloses "a piston ( 1;
Roberts) ... having a top, a skirt depending from the top and a piston ring
groove formed in the skirt ... wherein said piston ring groove is positioned
in an area near a bottom of the piston skirt." Non-Final Act. 9. Although,
the rejection does not identify which elements in Roberts correspond to the
claimed skirt and piston ring groove, the rejection does identify the piston
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Appeal2017-007421
Application 12/997,065
ring as Robert's element 5. See id. Element 5 is shown, for example, in
Robert's Figure 1 reproduced below:
"Figure 1 is a fragmentary elevation of a piston and ring
construction." Roberts 2:5---6. Based on this Figure, we understand the
rejection to indicate that the Examiner considers Roberts' top ring groove 6
(not labeled) to correspond to the claimed piston ring groove because this is
the groove that Robert's ring 5 occupies. We, further, note that Roberts
identifies its piston skirt as element 2. Roberts 2:34.
Appellant contends that "Roberts fails to disclose or suggest [a] piston
ring groove ... positioned in an area near a bottom of the piston skirt."
Appeal Br. 9. In support of this contention, Appellant explains that "Roberts
clearly illustrates piston ring grooves located in an area near the top of the
piston skirt." Id. As shown in Figure 1 reproduced supra, Appellant is
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Appeal2017-007421
Application 12/997,065
correct. 1' 2 Accordingly, the Examiner's finding that Roberts' discloses a
"piston ring groove [that] is positioned in an area near a bottom of the piston
skirt" is in error. Non-Final Act. 9. Thus, the Examiner fails to set forth a
prima facie case of anticipation.
For this reason, we do not sustain the Examiner's decision rejecting
claim 45, and its dependent claims 46, 47, 49-52, 55---60, 62---64, and 89 as
anticipated by Roberts.
Rejections 11-V
Rejections II-V rely on the same erroneous finding as Rejection I.
See Non-Final Act. 16-19. Accordingly, we do not sustain the Examiner's
decisions rejecting claims 61 and 65---68 for the reason discussed supra.
1 As noted by Appellant, claim terms are not construed solely based on a
broadest reasonable interpretation standard. See Appeal Br. 9-10. Rather,
Appellant is correct that "the standard for claim interpretation is more
correctly [stated as the] 'broadest reasonable interpretation in light of the
specification"' or more precisely, "the broadest reasonable interpretation
must be 'in light of the specification as it would be interpreted by one of
ordinary skill in the art' per In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)." Id. In this instance, the Examiner's
construction of the claim limitation "near a bottom of the piston skirt" to
encompass a location at the top of the piston is unreasonable when that
phrase is considered in light of the Specification.
2 Further, despite his comments to the contrary, the Examiner appears to
consider the claim language "near a bottom of the piston skirt" to be
indefinite. See Ans. 14. Although, we do not agree that this language when
read in light of the Specification is indefinite, the Examiner's position
should have been raised as the basis of a rejection under 35 U.S.C. § 112,
second paragraph, not 35 U.S.C. § 102(b).
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Appeal2017-007421
Application 12/997,065
DECISION
The Examiner's rejections of claims 45--47, 49-53, 55---68, and 89 are
REVERSED.
REVERSED
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