Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jul 27, 2018

13337352 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/337,352 12/27/2011
23911 7590 07/31/2018
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Norikazu Takahashi
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.
105729.64163US 3017
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIKAZU TAKAHASHI, MASATO SASAKI, and
TAKANORI SATO
Appeal2016-007332 1
Application 13/337,3522
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 4--12. We have jurisdiction under 35 U.S.C.
§ 6(b). Appellants participated in an oral hearing on July 12, 2018.
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Jan. 13,
2016), and the Examiner's Answer ("Ans.," mailed May 19, 2016) and Final
Office Action ("Final Act.," mailed July 14, 2015). The record includes a
transcript of the hearing held July 12, 2018.
2 Appellants identify Hitachi Automotive Systems, Ltd. as the real party in
interest. Br. 2.
Appeal 2016-007332
Application 13/337,352
CLAIMED INVENTION
Appellants' claimed invention "relates to a piston of an internal
combustion engine." Spec. 1, 11. 5---6.
Claims 1, 2, 4, and 5 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A piston of an internal combustion engine,
compnsmg:
a crown section; and
a wear-resistant ring formed in the crown section to be
used for forming a piston ring groove, the wear-resistant ring
including a porous formed body formed of a first material higher
in hardness and larger in specific gravity than a base material of
the piston, and a second material infiltrated in pores of the porous
formed body and containing 20 weight % or more of magnesium,
the second material being an alloy comprising aluminum and
magnesmm.
REJECTION
Claims 1, 2, and 4--12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Fujine (US 5,858,056, iss. Jan. 12, 1999) and Hofbauer
(US 2008/0134879 Al, pub. June 12, 2008). 3
ANALYSIS
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 1, 2, 4, and 5 under 35 U.S.C. § I03(a) at least because
Hofbauer fails to disclose "the wear resistant ring including . . . a second
material ... containing 20 weight % or more of magnesium, the second
3 We treat the omission of the Hofbauer reference in the heading for this
rejection as inadvertent. See Final Act. 2 (rejecting claims over Fujine ).
The body of the rejection makes clear that Hofbauer is relied upon. See id.
at 3 (applying Hofbauer to cure the deficiencies ofFujine).
2
Appeal 2016-007332
Application 13/337,352
material being an alloy comprising aluminum and magnesium," as recited in
claim 1, and similarly recited in claim 5. Br. 9-14. The Examiner relies on
paragraph 7 of Hofbauer as disclosing the argued limitation. Final Act. 3;
see also Ans. 4.
Hofbauer describes a piston constructed from several different parts.
Hofbauer ,r 5. An upper part and lower part consist of a light metal alloy,
such as magnesium and aluminum. See id. ,r,r 5, 7, claim 2. A piston ring
carrier is "made from a material other than that of the upper part and lower
part." Id. ,r 5. Hofbauer teaches to use "steel or grey cast iron" for the ring
carrier. Id.; see also id. ,r 34 ("[p ]iston ring carrier 6 is manufactured from
grey cast iron[,] and thermally insulting ring 8 is manufactured from
titanium"), claim 1. As such, Hofbauer fails to teach or suggest that its ring
carrier includes a second material containing 20 weight % or more of
magnesium, the second material being an alloy comprising aluminum and
magnesium, as called for in claims 1 and 5.
In the Answer, the Examiner responds that "the most common and
well[-]known way of fixing the ring in the crown of the piston is to cast the
piston around the ring," thereby infiltrating or impregnating the ring with the
metal alloy of the upper and lower parts. Ans. 5. However, the Examiner's
finding that Hofbauer' s steel or iron ring carrier would be infused or
impregnated with alloy material of the upper and lower parts runs counter to
Hofbauer's disclosure to make the ring carrier from a material other than the
upper and lower parts, and lacks adequate evidentiary support.
Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 2, 4, and 5 and their dependent claims under 35 U.S.C. § 103(a).
3
Appeal 2016-007332
Application 13/337,352
DECISION
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 1, 2, and
4--12 is reversed.
REVERSED
4