12869906 (P.T.A.B. Sep. 28, 2017)

Ex Parte Schneider

Patent Trial and Appeal BoardSep 28, 2017

12869906 (P.T.A.B. Sep. 28, 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. 12/869,906 08/27/2010 Norbert Schneider HD-41578/710240-5269 8764 59582 7590 09/28/2017 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER KIM, JAMES JAY ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 09/28/2017 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 NORBERT SCHNEIDER Appeal 2016-004490 Application 12/869,9061 Technology Center 3700 Before WILLIAM A. CAPP, SCOTT C. MOORE, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Norbert Schneider (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable over Rein (US 6,923,153 B2, iss. Aug. 2, 2005), Abraham (US 5,934,174, iss. Aug. 10, 1999), Azevedo (US 8,042,453 B2, iss. Oct. 25, 2011), and Beardmore (US 4,158,328, iss. June 19, 1979).2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Federal-Mogul Corporation. Appeal Br. 3 (filed May 5, 2015). 2 Claims 3,5, and 6 have been canceled. Appeal Br. 14 (Claims App.). Appeal 2016-004490 Application 12/869,906 INVENTION Appellants’ invention relates to monobloc pistons. Spec. 12. Claim 1 is independent and representative of the invention. 1. A monobloc piston, comprising: a piston body having an upper crown and a thrust side and an anti-thrust side; a pair of pin bosses depending from said upper crown and having pin bores aligned with one another along a pin bore axis; a pair of laterally spaced skirt portions fixedly attached to said pin bosses and extending between said pin bosses in a direction that is generally parallel with said pin bore axis, said skirt portions depending from said upper crown to a lowermost free edge with at least one of said skirt portions having a recess extending upwardly from said lowermost free edge beyond said pin bore axis and completely through from an exterior surface of said skirt portions to an interior surface thereof; and wherein said piston body has only a single one of said recesses and wherein said recess is on said thrust side of said piston body and said anti-thrust side does not have said recess. ANALYSIS Consistent with the Final Action, in the Answer, the Examiner summarizes the factual findings supporting the obviousness determination as follows: The prior arts teach in combination a regular piston (Rein), wherein recesses are added to the skirt panels (Abraham) for the purpose of reducing weight and reducing frictional losses (Azevedo) and that if the piston were to have at least one recess on the piston that the greatest benefit would come from forming a recess on the thrust side due to the thrust side experiencing the highest amount of frictional forces (Beardmore). Ans. 3; see also Final Act. 4—6 (citing Figs, la, 2a, and 4a). Appellant challenges the Examiner’s finding that Abraham discloses a monobloc 2 Appeal 2016-004490 Application 12/869,906 piston with “skirt portions depending from [the] upper crown to a lowermost free edge . . . having a recess extending upwardly from [the] lowermost free edge beyond [the] pin bore axis and completely through from an exterior surface of [the] skirt portions to an interior surface thereof,” as claim 1 recites. As discussed below, we find Appellant to have shown persuasively that the Examiner’s finding that Abraham discloses the recited skirt portions is not adequately supported. We begin by addressing the Examiner’s determination Appellant’s claim 1 “does not recite structure to define the piston skirt,” which is a matter of claim interpretation. Adv. Act. 2 (entered Feb. 13, 2015). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re American Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Federal Circuit cases “on [broadest reasonable construction] make clear that the proper [broadest reasonable construction] is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.'1'’ In re Man Machine Interface Techs. LLC, 822 F.3d 1282, 1287 (Fed. Cir. 2016). A construction that is “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Microsoft Corp. v. Proxiconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Considering first the phrase “skirt portion” within the context of claim 1, we disagree, even under the broadest reasonable standard, with the 3 Appeal 2016-004490 Application 12/869,906 Examiner that claim 1 does not recite structure to define a piston skirt. In particular, claim 1 recites a “monobloc piston, comprising: a piston body having ... a thrust side and an anti-thrust side ... a pair of laterally spaced skirt portions . . . having a recess . . . wherein said piston body has only a single one of said recesses and wherein said recess is on said thrust side of said piston body and said anti-thrust side does not have said recess.” Appeal Br. 14 (Claims App.). It is clear from the above language that the “skirt portion” is part of the piston body. The Specification also informs, and confirms, our interpretation of claim 1. For example, the Specification states, “monobloc construction pistons hav[e] a fixed skirt formed as one piece of material with the piston.'1'’ Spec. 13 (emphasis added); see also 11 9, 18, 22. Moreover, the Specification consistently describes the “skirt portion” as a guide for the piston within a cylinder bore and addresses issues associated with performing that function. See ^3—5, 18,22. Therefore, the broadest reasonable interpretation of the “skirt portion” in claim 1 requires a piston skirt. Turning now to Abraham, Figures la, 2a, and 4a fail to disclose a skirt portion. In fact, as Appellant notes, Abraham states expressly those figure do not disclose a piston skirt. Reply 4 (citing Abraham, col. 4,11. 65—66). Instead, the structure the Examiner refers to is described as “a pair of support portions 34 extending from a base portion 36.” Abraham, col. 4,11. 61—63. We further note that, rather than a monobloc piston, Abraham clearly states that its disclosure is directed to an “articulated piston assembly,” which is comprised of “a piston head and a separate piston skirt connected to both the piston head and a small end of a connecting rod by a common wrist pin.” Id. col. 1,11. 7—11, 20-23, col. 2,11. 53—67. 4 Appeal 2016-004490 Application 12/869,906 For the foregoing reasons, we are persuaded by Appellant’s argument that Abraham does not disclose “skirt portions depending from [the] upper crown to a lowermost free edge . . . having a recess extending upwardly from [the] lowermost free edge beyond [the] pin bore axis and completely through from an exterior surface of [the] skirt portions to an interior surface thereof,” as claim 1 recites. Therefore, we do not sustain the Examiner’s rejection of claim 1, or claims 2 and 4 that depend therefrom. DECISION We reverse the Examiner’s decision to reject claims 1, 2, and 4. REVERSED 5