Federal-Mogul Nurnberg GmbH

Patent Trials and Appeals Board

Jul 1, 2020

14397267 - (D) (P.T.A.B. Jul. 1, 2020)

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.
14/397,267 10/27/2014 Celestine Obuna 35745-00054 2678
59582 7590 07/01/2020
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
DWPatents@dickinson-wright.com
tgood@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CELESTINE OBUNA, JACQUES GUYON, and THOMAS
HUTZLER
Appeal 2019-005352
Application 14/397,267
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
Appeal 2019-005352
Application 14/397,267
2
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–2 and 7–10. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a piston casting process and a
corresponding piston casting tool. Spec. 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for producing a piston for an internal combustion
engine, comprising the steps of:
filling a casting cavity having the shape of a piston with a
material from a feeder at a side of the casting cavity, an axis of
rotation of the piston being substantially horizontal during the filling
step, and the casting cavity having a recess extending into a side wall
of the casting cavity which runs parallel to the axis of rotation of the
piston, the piston including a side wall which runs parallel to the axis
of rotation of the piston and which has a top end and a bottom end, the
recess being spaced from the top end and the bottom end of the side
wall of the piston, and the recess being located at a highest point of
the piston during the filling step;

1 This Decision refers to the Specification filed Oct. 27, 2014 and as
amended on the same date (“Spec.”), Final Office Action dated Oct. 16,
2018 (“Final Act.”), Appeal Brief dated Mar. 18, 2019 (“Appeal Br.”),
Examiner’s Answer dated May 3, 2019 (“Ans.”), and Reply Brief dated July
3, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Federal-Mogul
Nurnberg GmBH. Appeal Br. 1.
Appeal 2019-005352
Application 14/397,267
3
tilting the casting cavity after the filling step and before
solidification of the material by at least 45 degrees about a horizontal
axis such that the axis of rotation of the piston moves to a
substantially vertical position, the feeder is located at a highest point
of the piston, and the recess is located at a side of the piston; and
removing impurities located in the recess after the tilting step.
Appeal Br. 11 (Claims Appendix) (italics added). Claim 8, the other
independent claim on appeal, is directed to a casting tool for use in
performing the method of claim 1, and includes the same limitations as those
italicized above in claim 1. Id. at 12. The italicized limitations relate to a
recess in the casting cavity, and are the main limitations discussed below.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Wang CN 85105357 A Sep. 9, 1987
Morris US 2,195,960 Apr. 2, 1940
Menge US 2010/0166596 A1 Jul. 1, 2010
Sulprizio US 2,620,530 Dec. 9, 1952

REJECTIONS
1. Claims 8–10 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wang and Morris. Final
Act. 3.
2. Claims 1–2 and 8–10 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Wang, Menge, and
Morris. Final Act. 5.
3. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Wang, Menge, Morris, and Sulprizio.
Final Act. 7.
Appeal 2019-005352
Application 14/397,267
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OPINION
Appellant presents substantially the same arguments against the
rejections of claims 1 and 8, focusing on the limitations relating to the
location of the recess as italicized in claim 1 above. See Appeal Br. 5–9.
Appellant does not separately argue any of the dependent claims. Id.
Accordingly, we focus on the common limitations as argued by Appellant.
The Examiner finds that Wang teaches a method for producing a
piston comprising the steps of claim 1, except that it does not explicitly
teach (1) rotating the casting cavity to vertical before solidification, or (2) a
recess extending into a sidewall of the casting cavity which runs parallel to
the axis of rotation of the piston with the recess being located at a highest
point of the piston during the filling step and at a side of the piston after
being tilted. Final Act. 5–6. The Examiner finds that Menge teaches
pivoting the mold after filling but prior to solidification (id. at 6 (citing
Menge 2:15–35, 5:50–65)) and determines that in view of Menge, it would
have been obvious to a person of ordinary skill in the art to rotate Wang’s
mold prior to beginning solidification in order to prevent defects due to
shrinkage. Id.
As to the limitations of the appealed claims relating to the recess, the
Examiner finds that Morris teaches a casting apparatus that turns about a
pivot in order to fill the mold, and having vent 5′ including a ball portion.
Id. at 6 (citing Morris Figs. 1–3, p.1, 1:35–50). The Examiner finds that
Morris’s vent extends into the sidewall of the cavity and is spaced from the
top end and the bottom end of the side wall, and that upon turning the
apparatus to fill the cavity, the vent will be located at the highest point of the
cavity. Id. The Examiner further finds that Morris’s vent takes up
impurities in the ball portion, which will be knocked off the completed
Appeal 2019-005352
Application 14/397,267
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casting. Id. (citing Morris 1, 2:50–2, 1:2). The Examiner determines it
would have been obvious to a person of ordinary skill in the art to modify
Wang to include a recess/vent which would be located at a highest point of
the cavity shown in Wang’s Figure 3 during filling (corresponding to the
position of Morris’s vents after tilting of the apparatus, when filling occurs),
and that after tilting, the recess/vent would be located at the side of the
piston. Id. at 6–7 (citing Wang Figs. 3, 4). The Examiner determines a
person of ordinary skill in the art would have modified Wang to include such
a recess to take up impurities during filling which can be knocked off the
casting at a later step. Id. at 6–7.
Appellant argues that Morris’s vent 5′ does not extend into a wall
which runs parallel to an axis of rotation, and that Morris fails to suggest that
the location of the vent during a filling step or after a tilting step is relevant.
Appeal Br. 6. Appellant further argues that even if Morris’s vent were
placed in a corresponding position in Wang’s casting tool, “the
corresponding position would be the side of the mold before rotation to the
left ninety degrees and the highest point of the casting after rotating the
cavity to left ninety degrees.” Reply Br. 4. Appellant provides the
following annotated illustration of Figures 3–4 of Wang:

Appeal 2019-005352
Application 14/397,267
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In the annotated illustration above, Appellant has drawn arrows on Figures 3
and 4 of Wang identifying the corresponding position where Morris’s vent
purportedly would be placed. Reply Br. 5. Appellant explains that in this
modification of Wang, the recess/vent would be located “perpendicular to
the axis of rotation of the piston (x-x), not parallel to the axis of rotation (x-
x), as recited in claims 1 and 8” and the vents 5′ “would be located at the top
of the piston of Wang after rotating, not at a side of the piston, like the
recess recited in claims 1 and 8.” Id.
Appellant’s arguments do not persuasively identify reversible error.
The Examiner’s obviousness determination is based on Morris’s teaching
that the mold assembly of Figure 2 is rotated by ninety degrees to the left
and then filled with material, followed by a return of the mold assembly to
its original position. Morris Fig. 2, 1, 1:35–48, 2, 1:12–15. When the mold
assembly of Figure 2 is rotated by ninety degrees to the left for filling, vent
5′ is located at the highest point of the cavity. Morris Fig. 2, 1, 2:50–2, 1:1–
2. In other words, Morris’s Figure 2 depicts the orientation of vent 5′ prior
to performing a filling step. With regard to filling, which is the process step
shown in Wang’s Figure 3, Morris’s mold is filled after the assembly is
rotated to the left from the orientation shown in Morris’s Figure 2.
Appellant’s argument concerning the placement of the recess/vent in Wang
as modified by Morris misconstrues the Examiner’s finding that Morris
teaches the vent is located at the highest point of the cavity at the time of
filling. For that reason, Appellant’s argument is not responsive to the basis
for the rejection. Further, the Examiner’s basis for determining that a person
of ordinary skill in the art would have modified Wang to include a
recess/vent is reasonable. See Final Act. 6–7.

Appeal 2019-005352
Application 14/397,267
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CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–10 103(a) Wang, Morris 8–10
1–2, 8–10 103(a) Wang, Menge, Morris 1, 2, 8–10
7 103(a) Wang, Menge, Morris,
Sulprizio
7
Overall
Outcome:
1, 2, 7–10

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED