Ex Parte Christain et al

Patent Trial and Appeal Board

May 6, 2013

11239561 (P.T.A.B. May. 6, 2013)

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.
11/239,561 09/29/2005 Ken Christain 710240-1087 1856
59582 7590 05/06/2013
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
05/06/2013 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 KEN CHRISTIAN, MIGUEL AZEVEDO, and
CARMO RIBEIRO
____________

Appeal 2011-002842
Application 11/239,561
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 4-8. Claims 2 and 3 have been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-002842
Application 11/239,561

2
CLAIMED SUBJECT MATTER
Claims 1 and 8 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A monobloc piston assembly comprising:
a piston head having a combustion bowl formed in an
upper surface thereof and a ring belt formed with a plurality of
ring grooves in an outer surface of said ring belt;
an oil cooling gallery formed in said piston head adjacent
said combustion bowl and said ring belt;
a pair of pin bosses extending from said piston head
having outwardly facing side surfaces;
a piston skirt formed as one immovable piece with said
pin bosses;
an oil drainage groove formed below said ring grooves
extending continuously between said pin bosses across said
skirt and which is discontinuous and open across said side
surfaces of said pin bosses; and
a plurality of oil drain holes formed in said oil drainage
groove at locations only outside of said side surfaces of said pin
bosses and open to an interior of said piston skirt.

REJECTION
Claims 1 and 4-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gaiser (US 6,557,514 B1, iss. May 6, 2003) and Ludlam
(US 1,465,647, iss. Aug. 21, 1923).1

1 The Examiner also included claims 2 and 3 in the same rejection. Final
Rej. 2. However, the Examiner subsequently agreed that claims 2 and 3
were previously cancelled. Misc. Comm. mailed Sep. 18, 2009.
Appeal 2011-002842
Application 11/239,561

3
ANALYSIS
The rejection of claims 1 and 4-8 as unpatentable over Gaiser and Ludlam
The Examiner finds that all elements of claim 1 are disclosed by
Gaiser with the exception of “a plurality of oil drain holes,” as called for by
independent claim 1. Ans. 3. The Examiner relies upon Ludlam as
evidencing that the use of oil drain holes in an oil drainage groove which
open to the interior of a piston skirt is old in the art. Ans. 4. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Gaiser with oil drain holes to improve drainage in the areas where
the oil does not drain directly downwardly along the pin bosses. Id.
The Appellants argue that Ludlam uses circumferentially placed oil
drain holes (14, 15) in an oil drainage groove to direct oil back to the crank
case, whereas Gaiser directs the oil collected in the oil drainage groove out
across the recessed faces on the pin bosses. App. Br. 3-4. The Appellants
argue that there would be no motivation to add oil drain holes to Gaiser as
Gaiser already has sufficient drainage. App. Br. 3; Reply Br. 3-4. Although
we appreciate the Appellants’ position, nonetheless, we agree with the
Examiner’s finding that while Gaiser has good drainage around the pin bore,
the rest of the piston would benefit from oil drainage holes. Ans. 5.
The Appellants also argue that the two references disclose separate
ways of managing the drainage of oil but that the two are mutually
exclusive. App. Br. 3-4; Reply Br. 3-4. That is, a person of ordinary skill in
the art would either use oil drain holes like Ludlam or a partially open oil
drainage groove like Gaiser, but not a combination of the two. Id. The
Appellants argue that the Examiner’s combination is the result of
impermissible hindsight reconstruction. App. Br. 4; Reply Br. 4-5.
Appeal 2011-002842
Application 11/239,561

4
However, since the Examiner has found that adding Ludlam’s oil drainage
holes to Gaiser’s oil drainage groove would improve overall drainage (see
Ans. 5-6) and since the Appellants fail to convincingly rebut this finding, we
are not persuaded of hindsight in the Examiner’s rejection based on Gaiser
and Ludlam.
The Appellants further argue that Gaiser teaches away from using oil
drain holes which open to the interior of the piston skirt. App. Br. 3-4;
Reply Br. 2-3. Specifically, the Appellants point to column 3, lines 21 to 30
of Gaiser which states that the oil drainage groove 52 “does not extend
through to the . . . interior of the skirt 46.” Id. The Examiner correctly finds
that while the embodiment in Gaiser does not use openings to the interior of
the piston skirt, the disclosure does not teach against such drainage holes.
Ans. 5. The disclosure in Gaiser does not constitute a teaching away from
using oil drain holes because it “does not criticize, discredit, or otherwise
discourage” that solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Thus, the rejection of claim 1 as unpatentable over Gaiser and
Ludlam is sustained.
With respect to the rejection of claims 4-8, the Appellants do not raise
any additional substantive arguments separate from those made with respect
to the rejection of claim 1 under 35 U.S.C. § 102(b). Ans. 4-5.
Accordingly, for the reasons set forth supra, we likewise sustain the
rejection under 35 U.S.C. § 103(a) of claims 4-8.

Appeal 2011-002842
Application 11/239,561

5
DECISION
We AFFIRM the rejection of claims 1 and 4-8 under 35 U.S.C.
§ 103(a) as unpatentable over Gaiser and Ludlam.
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

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