Ex Parte Martins et al

Patent Trials and Appeals Board

Sep 28, 2016

13446683 - (D) (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/446,683 04/13/2012
59582 7590 09/29/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Airton Martins
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.
HD-419181710240-6100 9133
EXAMINER
TRAN,LONGT
ART UNIT PAPER NUMBER
3747
MAILDATE DELIVERY MODE
09/29/2016 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 AIR TON MARTINS and CARMO RIBEIRO
Appeal2014-007821
Application 13/446,683
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Airton Martins and Carmo Ribeiro (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-31. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
We REVERSE.
Appeal2014-007821
Application 13/446,683
THE INVENTION
Appellants' claimed invention is directed to a method of making a
piston. Claim 1, reproduced below, is illustrative:
1. A method of making a piston comprising the steps of:
preparing a single piece cast upper crown member having a
combustion bowl cast to a final form and a top surface adjacent
the combustion bowl final form;
preparing a lower crown member as a discrete component
separate from the upper crown member;
joining the upper and lower crown members together;
establishing the top surface or a portion of the combustion bowl
of the upper crown member as a datum plane for at least one
subsequent machining operation; and
machining at least a portion of the joined upper and lower
crown members other than said top surface and combustion
bowl based on the datum plane.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 4, 5, 9--24, 26-29 and 31under35 U.S.C. § 102(b) as
being anticipated by Ribeiro (US 7 ,005,620 B2, issued Feb. 28, 2006);
ii) claims 3, 6, 25, and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Ribeiro in view of Rein (US 2005/0087166 Al, published
Apr.28,2005);and
(iii) claims 7 and 8 under 35 U.S.C. §103(a) as being unpatentable
over Ribeiro in viewofGoloff(US 4,079,661, issued Mar. 21, 1978).
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Appeal2014-007821
Application 13/446,683
ANALYSIS
Claims 1, 2, 4, 5, 9--24, 26-29 and 31--Anticipation by Ribeiro
The Examiner finds that Ribeiro discloses a method in which a single
piece upper crown member is cast having a combustion bowl cast to a final
form, as set forth in independent claim 1. Final Act. 2. The Examiner
interprets the claim limitation "cast to a final form," as not precluding
subsequent machining of elements or components recited as being "cast to
final form." Ans. 5 ("the machining taking place in Ribeiro ... does not
affect the final form that has been cast").
Appellants maintain that the claim expression "cast to final form" is to
be interpreted as meaning cast to its final or ultimate form, with no
subsequent machining or other subsequent process that would alter the
shape, or final form, of the combustion bowl. Reply Br. 1. Appellants
point out that Ribeiro discloses that "prior to welding of the first part 12 to
the second part 14, the first part 12 is preferably machined, and still further
preferably machined to provide a final finished surface to the combustion
bowl." Appeal Br. 8 (emphasis omitted) (quoting Ribeiro, col. 4, 11. 34--37).
Under Appellants' proffered claim interpretation, Appellants maintain that
this passage in Ribeiro evidences a lack of disclosure that the combustion
bowl is cast to final form. Id. at 8-9.
The issue thus joined is whether the broad interpretation employed by
the Examiner is or is not reasonable in light of Appellants' disclosure. In re
Morris, 127 F. 3d 1048, 1054 (Fed. Cir. 1997) ("the PTO applies to the
verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
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Appeal2014-007821
Application 13/446,683
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification.").
Appellants' Specification states that "[t]he upper crown member 22 is
cast such that the combustion bowl 26 is in its final form after the casting
process is complete, and thus, the combustion bowl 26 does not require any
subsequent machining process." Spec., para. 19. Elsewhere, in discussing
fabrication of the top surface of the upper crown member, the Specification
states that the top surface is "cast into final form or machined to its final
form," which is indicative that casting to final form excludes casting
followed by machining. Spec., para. 7.
Given these disclosures, we conclude that the Examiner's
interpretation of "cast to a final form" is unreasonably broad, and that the
limitation does not allow for machining of the combustion bowl subsequent
to casting. Appellants' position that Ribeiro discloses machining the
combustion bowl subsequent to casting, and thus does not anticipate claim 1,
is supported by the evidence. Independent method claim 18 includes a
similar limitation requiring the combustion bowl to be cast to final form, and
therefore is also not anticipated by Ribeiro.
Independent claim 27 is directed to a piston that has machined
surfaces and unmachined surfaces, wherein the unmachined surfaces include
the combustion bowl. App. Br. 18, Claims Appendix. This limitation is
stating, in slightly different terms, that the combustion bowl of the piston is
cast to its final form, and thus claim 27 is not anticipated by Ribeiro.
Independent claim 23 is directed to a method of making a piston that
includes the step of preparing a piston blank having a cast upper crown with
an unmachined combustion bowl. Although not separately and specifically
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Appeal2014-007821
Application 13/446,683
addressed by the Examiner, this claim could possibly be construed as not
requiring the combustion bowl (and the top surface) to remain unmachined
in the finished product. The claim requires preparing a piston blank having
an unmachined top surface and combustion bowl, and then machining
portions of the piston other than the top surface and combustion bowl, using
the unmachined top surface or combustion bowl as a datum surface.
However, the claim employs the open-ended transitional term "comprising,"
which means that the claimed method may include additional steps beyond
those recited. Such an additional step might be the machining of the
combustion bowl, possibly using some other portion of the piston blank as
the datum surface.
Notwithstanding that claim 23 may be of greater breadth in this
respect, Ribeiro still does not anticipate the claim. As pointed out by
Appellants, the portion of Ribeiro relied on by the Examiner as purportedly
disclosing the use of the unmachined top surface or unmachined combustion
bowl as a datum surface for a machining of a different portion of the piston
blank (col. 4, 1. 47---col. 5, 1. 18), does not appear to actually disclose such a
feature. Appeal Br. 10-11. That portion of Ribeiro does not mention the
use of a datum surface as a reference point for machining of surfaces, and
the Examiner fails to adequately explain how a person of ordinary skill in
the art would interpret it as such.
The rejection of independent claims 1, 18, 23, and 27, and of claims
2-5, 9-17, 19-22, 24, 26, 28, 29, and 31, each depending from one of the
independent claims, as being anticipated by Ribeiro, is not sustained.
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Appeal2014-007821
Application 13/446,683
Claims 3, 6, 25, and 30--Unpatentable over Ribeiro and Rein
The Examiner does not rely on Rein in any manner that cures the
deficiency noted above with respect to Ribeiro relative to the independent
claims on appeal. The rejection of claims 3, 6, 25, and 30 is thus not
sustained.
Claims 7 and 8--Unpatentable over Ribeiro and Goloff
The Examiner does not rely on Go lo ff in any manner that cures the
deficiency noted above with respect to Ribeiro relative to the independent
claims on appeal. The rejection of claims 7 and 8 is thus not sustained.
DECISION
The rejections of claims 1-31under35 U.S.C. §§ 102(b) and 103(a)
are reversed.
REVERSED
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