Tenneco Inc.

Patent Trials and Appeals Board

Feb 27, 2020

14286328 - (D) (P.T.A.B. Feb. 27, 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.
14/286,328 05/23/2014 Norbert G. Schneider 710240-7055/HD-50220 1914
59582 7590 02/27/2020
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
MOUBRY, JAMES G
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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 NORBERT G. SCHNEIDER

Appeal 2019-004792
Application 14/286,328
Technology Center 3700
____________

Before MICHAEL L. HOELTER, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 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 Corporation.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to pistons for internal
combustion engines.” Spec. ¶ 1. Apparatus claim 1 and method claim 13
are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A piston, comprising:
an upper wall surrounding a center axis and presenting a
combustion surface;
an outer rib extending from said upper wall to a base wall
and presenting an outer surface;
an inner rib disposed between said outer rib and said center
axis and extending from said upper wall to said base wall;
said upper wall and said ribs and said base wall presenting
a cooling chamber therebetween;
said outer rib presenting an outer surface including a
plurality of ring grooves;
a single piston ring received in each of said plurality of
ring grooves;
said plurality of ring grooves including a first ring groove
being the ring groove closest to said combustion surface and a
second ring groove being the ring groove second closest to said
combustion surface;
said single piston ring received in said second ring groove
being made as a single piece;
each of said ring grooves including a pair of side flanks
extending inwardly from said outer surface to a base flank;
said side flanks of said first ring groove extending
perpendicular to said base flank of said first ring groove; and
each of said side flanks of said second ring groove being
disposed at an angle greater than 90 degrees relative to said base
flank of said second ring groove and said side flanks of said
second ring groove diverging away from one another.
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EVIDENCE
Name Reference Date
Hanson US 1,426,072 Aug. 15, 1922
Stratton et al. (“Stratton”) US 4,986,167 Jan. 22, 1991
Ogino et al. (“Ogino”) US 2009/0255504 A1 Oct. 15, 2009
Schneider US 8,065,985 B2 Nov. 29, 2011
Muscas US 2012/0037112 A1 Feb. 16, 2012
REJECTIONS
Claims 1–8, 10, 11, and 13–18 are rejected under 35 U.S.C. § 103 as
unpatentable over Stratton and Hanson.
Claims 9 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over Stratton, Hanson, and Schneider.
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Stratton, Hanson, Ogino, and Muscas.
ANALYSIS
Although claims 1–11 and 13–20 are rejected under different
combinations of references (see above), Appellant argues all the claims on
appeal together.2 See Appeal Br. 8–16. Separately, Appellant presents
arguments for dependent claim 5 (see Appeal Br. 14–15) and dependent
claim 17 (see Appeal Br. 16), whose arguments are similar to each other.

2 Regarding independent method claim 13, Appellant contends that the
rejection of this claim “is believed to be improper for basically the same
reasons set forth above in conjunction with claim 1.” Appeal Br. 15.
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Rejection I: Claims 1–8, 10, 11, and 13–18
Claims 1–4, 7, 8, 10, 11, and 13–16
We select claim 1 for review, with claims 2–4, 7, 8, 10, 11, and 13–16
standing and falling with claim 1. See 37 C.F.R. § 41.37(c)(iv).
Claim 1 describes the structure of a piston, including a “plurality of
ring grooves” and “a single piston ring received in each of said plurality of
ring grooves.”3 Claim 1 specifies, “a first ring groove being the ring groove
closest to said combustion surface and a second ring groove being the ring
groove second closest to said combustion surface.” Claim 1 further recites,
“said side flanks of said first ring groove extending perpendicular to said
base flank” and “each of said side flanks of said second ring groove being
disposed at an angle greater than 90 degrees relative to said base flank.”
The Examiner primarily relies on Stratton, and particularly Figure 3
thereof, for disclosing the recited limitations. See Final Act. 3–4. However,
the Examiner acknowledges that “Stratton does not specifically illustrate”
the recited order of the first “perpendicular” and second “at an angle”
grooves, and relies on Hanson for such teaching. Final Act. 4 (referencing
Figures 2 and 3 of Hanson). The Examiner finds that it would have been
obvious to modify Stratton’s piston “by providing the arrangement of” the
grooves (and rings) described in Hanson. Final Act. 5 (emphasis added).
Thereafter, the Examiner provides a reason for incorporating Hanson’s
arrangement. See Final Act. 5.
For clarity and comparison purposes, Figure 1A depicting Appellant’s
piston, Figure 3 depicting Stratton’s piston, and Figure 2 depicting Hanson’s

3 Claim 1 requires that each ring groove has “a pair of side flanks” and also
“a base flank.”
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piston are replicated below, in that order. Each figure is an enlarged cross-
sectional view of the ring/groove portion of that piston, and each also depicts
an upper groove (“first”) and a groove immediately below that (“second”).

The above is a depiction of Appellant’s Figure 1A.

The above is a depiction of Stratton’s Figure 3.
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The above is a depiction of Hanson’s Figure 2.
To reiterate, the Examiner acknowledges that the primary reference to
“Stratton does not specifically illustrate” the recited order of the first
“perpendicular” and second “at an angle” grooves, and relies on Hanson for
disclosing such an “arrangement.” Final Act. 4, 5. To clarify that only the
“arrangement” of Hanson is being relied upon, the Examiner explains that
Hanson is “incorporated as a teaching reference into the rejection,” and “that
it is well-known to have a traditional-style piston ring groove [(i.e.,
‘perpendicular’)] as the top-most ring groove to facilitate preventing leakage
at the point where leakage most commonly occurs.” Final Act. 15; Ans. 16
(each of their citation to Hanson omitted as containing an error). This
finding by the Examiner is consistent with Hanson’s teaching of “the top of
the cylinder [having] an annular groove 18 . . . of conventional construction,
to assist in preventing leakage at the point where leakage most commonly
occurs and to promote the general efficiency of the packing.” Hanson 3:63–
71. In turn, Hanson’s above teaching is consistent with the Examiner’s
reason for modifying Stratton with Hanson’s “arrangement” (i.e., changing
the order of Stratton’s grooves), which is “to improve the sealing
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characteristics of the piston rings to facilitate preventing leakage around the
piston during engine operation.” Final Act. 5; see also Ans. 15, 16.
Appellant appears to not fully understand the Examiner’s reliance on
Hanson’s “arrangement” only. See Appeal Br. 8–12, 14; Reply Br. 3–5.
This is because Appellant contends that a skilled person would not have
incorporated “the angled surfaces of the Hanson ring groove into the Stratton
piston without also bringing along the multi-piece ring taught in Hanson.”
Appeal Br. 8; see also id. at 14; Reply Br. 3, 4. In other words, Appellant
appears to be under the impression that the Examiner is incorporating the
angled groove (and associated ring) from Hanson into Stratton’s piston,
without realizing that Stratton already teaches an angled groove (and
associated single piece ring). See, e.g., Stratton Fig. 3. Appellant does not
persuasively explain why there is a need to incorporate Hanson’s structure
into Stratton when Stratton already discloses such structure. See, e.g., Ans.
15–16. Instead, as clearly stated, the Examiner is only incorporating “the
arrangement” of Hanson’s grooves/rings into Stratton, not any of Hanson’s
structure.4 Final Act. 5. Thus, Appellant’s contentions regarding
incorporating Hanson’s angled groove necessitating the further incorporation
of Hanson’s multi-piece angled rings, is not persuasive.5 See Appeal Br. 8–
12, 14.

4 To clarify the lack of incorporating structure into Stratton, the Examiner
states, “Stratton is not being modified in the rejection.” Final Act. 15;
Appeal Br. 13.
5 We understand Appellant’s focus on the inclusion of Hanson’s multi-piece
angled ring into Stratton is driven by the fact that in doing so, Hanson’s
incorporated ring would be inconsistent with the claim limitation of the
second ring “being made as a single piece.” See Reply Br. 5. However,
Appellant does not dispute that Stratton’s angled ring is a single-piece ring.
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Appellant further contends, “the inventors have unexpectedly
discovered that, pistons constructed according to the invention of claim 1 . . .
operate with little ring sticking” at “a temperature of greater than 280ºC.”
Appeal Br. 10. On this point, however, we have been instructed that “the
discovery of a previously unappreciated property of a prior art composition,
or of a scientific explanation for the prior art’s functioning, does not render
the old composition patentably new to the discoverer.” Atlas Powder Co. v.
Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). We mention this in light
of Hanson addressing the maintenance of the piston in a precise position in
order to eliminate or reduce “pivotal play of the piston producing what is
commonly known as piston slap.” Hanson 2:6–10; see also id. at 1:12–19;
Ans. 16. Stratton also addresses a need for “a high output engine piston
assembly . . . which is capable of continuous and efficient operation,”
because, “[a]s present day engines are converted or upgraded[,] the piston
assembly is subjected to even higher combustion chamber pressures and
temperatures.” Stratton 2:21–23, 1:19–21. Thus, our instruction above that
if the product is old, a newly discovered fact about the association between
its components or functions does not remove it from the domain of prior-art
products. See Atlas, 190 F.3d at 1347.
However, to buttress Appellant’s argument on this point of “new and
unexpected results,” Appellant presents an Affidavit by one of the inventors,
Mr. Norbert G. Schneider (hereinafter “Affidavit”). Appeal Br. 10. The
Examiner states, “the Affidavit filed under 37 C.F.R. § 1.132 on July 25,

See Final Act. 4 (referencing Stratton Fig. 3); Ans. 16; Appeal Br. 13–14
(“Appellant is not arguing that single piece angled piston rings did not exist
at the time of the subject invention.”).
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2018 has been fully considered” (Final Act. 2), but is not dispositive (Final
Act. 16). For example, the Examiner notes where the “Affidavit asserts that
‘I arrived at this conclusion because if the Stratton inventors contemplated
better sealing from locating the keystone ring in the second ring groove
below the square ring, then they would have given their piston this
configuration.’” Final Act. 16 (referencing Affidavit ¶ 9). The Examiner
“submits that this merely amounts to a conclusory statement, as the
Applicant cannot possibly know the thinking of the inventors of the Stratton
patent.” Final Act. 16. The Examiner states, “Applicant should present
factually supported objective evidence when presenting such a response, and
that mere conclusory statements are insufficient to overcome the prima facie
case of obviousness (see MPEP § 2145).” Final Act. 16.
We note that Stratton is silent as to achieving better sealing by one
particular order over another. Instead, Stratton discloses a preferred
embodiment (the keystone ring topmost, see Stratton Figure 3) stating,
“[o]ther aspects, objects and advantages of this invention can be obtained
from a study of the drawings, the disclosure and the appended claims.”
Stratton 6:56–58. Hanson, as noted above, is directed to avoiding “play”
during piston movement because “piston slap” results in “wear and tear on
the cylinder wall.” Hanson 1:12–19; 2:6–10; see also Ans. 16. Neither
Appellant, nor the Affidavit, explains how Hanson’ avoidance of “piston
slap” fails to enhance piston sealing. Thus, Hanson’s teachings buttress the
Examiner’s reliance on Hanson’s “arrangement,” and also supports the
Examiner’s reasoning for being combined with Stratton. See Final Act. 5.
Consequently, statements in the Affidavit to the effect that a skilled person
“would not have considered it obvious to modify the piston taught in the
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Stratton reference” (Affidavit ¶ 5; see also id. ¶¶ 9, 10) are not persuasive of
Examiner error.
Furthermore, regarding an assertion of unexpected results, we have
been instructed that a party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected.
See In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); see also In re
Mayne, 104 F.3d 1339, 1344 (Fed. Cir. 1997). Further, conclusory
statements cannot constitute evidence of unexpected results in the absence of
factual support. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). A mere
pleading unsupported by proof or showing of facts is inadequate. See In re
Borkowski, 505 F.2d 713, 718 (CCPA 1974). In the matter before us, we are
not presented with factual evidence that a piston “with little ring sticking” at
“a temperature of greater than 280ºC” (Appeal Br. 10) has not already been
contemplated by Stratton and/or Hanson. See above.
Appellant further contends that in an earlier office action “the
rejection of claim 1 over Stratton in view of Hanson has been withdrawn”
and that “a new ground(s) of rejection is made in view of Malina.” Appeal
Br. 12, 13; see also Reply Br. 5. Indeed, a review of the prosecution history
of this application indicates that Non-Final Office Action dated April 7,
2016 rejected claim 1 in view of Stratton and Hanson. See Paragraph 5 of
that Non-Final Office Action. Claim 1 was subsequently amended (see
Amendment dated July 7, 2016) and, in a following Final Office Action
dated October 7, 2016, the Examiner withdrew that rejection involving
Hanson and stated, “upon further consideration, a new ground(s) of rejection
is made in view of Malina.” See Paragraph 49 of that Final Office action. In
a later non-final office action dated January 12, 2017 (after a claim
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amendment, see Amendment dated January 4, 2017), the rejection involving
Malina was withdrawn by the Examiner and “upon further consideration, a
new ground(s) of rejection is made in view of Hanson.” See Paragraph 47 of
that Non-Final Office Action; see also Advisory Action dated December 30,
2016. The Examiner currently maintains the rejection claim 1 in view of
Stratton and Hanson, which is the basis of the appeal before us. See Final
Act. 3. The Examiner states, “the claims as presented herein are in a much
different form than those referred to by Appellant in the Responses to Office
Action dated July 7, 2016” and that “[t]he most applicable art and basis for
rejection is provided herein.” Ans. 17.
Appellant’s contention above that the teachings of Hanson can no
longer be re-employed because a reliance thereon had once been withdrawn,
is not persuasive. This is because, as expressed by the Examiner, “[t]he
most applicable art” is being applied, and also in view of subsequent
amendments made by Appellant. Appellant further provides no support for
this contention that might explain a basis for precluding the Examiner from
re-applying the teachings of Hanson, and especially when such re-
employment was applied in the furtherance of a new ground of rejection
(and claim amendment). See Non-Final Office Action dated January 12,
2017, ¶ 47.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claim 1 and claims 2–4, 7, 8, 10, 11, 13–16 fall
therewith.
Claims 5 and 17, and claims 6 and 18 depending therefrom
Claims 5 and 17 each recite the limitation that the flank of the tapered
groove is disposed “at an angle greater than 90 degrees and not greater than
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135 degrees relative to said base flank.” In other words, both claims recite a
limitation of a certain angle range from the vertical as depicted in
Appellant’s Figure 1A above (see reference α). The Examiner relies on
Hanson as disclosing this limitation. See Final Act. 6 (referencing Hanson
1:64–70, Figs. 2, 3). For clarity, the Examiner provides the following
sketches.

The Examiner describes the above as depicting “the subject matter of
presently pending Claims 5 and 17 is shown at (A), while the teachings of
Hanson are shown at (B).” Ans. 18.
We are not apprised of error in the Examiner’s math of “20º + 90º =
110º” as depicted in B above, nor the Examiner’s finding that 110º “is within
the range disclosed in Claims 5 and 17.” Ans. 18. However, what is in
dispute is Hanson’s description of its tapering. Hanson states that wall 6 of
Figure 2 (and 6a of Figure 3) are “inclined at a gentle angle, namely an
angle of about 20º with respect to the bottom wall of the groove and
longitudinal axis of the piston.” Hanson 1:64–70. Appellant provides the
following illustration for clarity.
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Appellant describes this illustration as showing “the 20º measurement
as being taken with respect to the bottom wall of the groove” as described in
Hanson. Reply Br. 6–7; see also Hanson 1:64–70.
There is merit to Appellant’s contention because both the bottom wall
of the groove, and the longitudinal axis of the piston, as referenced in
Hanson, are both vertical in the figures provided. See Hanson Figs. 2 and 3.
Thus, Hanson expressly states an angle of “about 20º” to these vertically
depicted surfaces. See Appellant’s illustration above. As can be seen, the
Examiner relies on an angle of “about 20º” with respect to a horizontal line,
but provides no explanation as to why this horizontal line is either Hanson’s
“bottom wall of the groove” or Hanson’s “longitudinal axis of the piston.”
Hanson 1:64–70. Additionally, Appellant references MPEP § 2125 which
warns against scaling drawings when the drawings are not indicated as being
to scale. See Appeal Br. 14. Because there is no indication that Hanson’s
figures are drawn to scale, the focus of our attention is on Hanson’s written
disclosure, which does not support the Examiner’s findings. Even should a
discrepancy exist between Hanson’s figures and Hanson’s description, an
obviousness-type rejection cannot be based on speculation or unfounded
assumptions. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
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Accordingly, we do not sustain the Examiner’s rejection of claims 5
and 17, and their respective dependent claims 6 and 18, as being obvious
over Stratton and Hanson.
Rejections II and III
As stated supra, Appellant chose not to present separate arguments for
the patentability of claims 9, 19, and 20, which depend from independent
claims 1 and 13, apart from the arguments presented above with respect to
claim 1 and Rejection I. Accordingly, for essentially the same reasons as
presented supra, we also sustain the Examiner’s rejection of claims 9, 19,
and 20.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10,
11, 13–18
103 Stratton, Hanson 1–4, 7, 8,
10, 11,
13–16
5, 6, 17, 18
9, 20 103 Stratton, Hanson,
Schneider
9, 20
19 103 Stratton, Hanson,
Ogino, Muscas
19
Overall
Outcome
1–4, 7–11,
13–16, 19,
20
5, 6, 17, 18
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART