Ex Parte Wahl et al

Patent Trial and Appeal Board

Dec 16, 2016

13655377 (P.T.A.B. Dec. 16, 2016)

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.
13/655,377 10/18/2012 Michael H. Wahl ACHP2060US 4419
116845 7590 12/16/2016
T err ft nre. A M eft H nr
EXAMINER
Achates Power, Inc. BRAUCH, CHARLES JOSEPH
4060 Sorrento Valley Boulevard
San Diego, CA 92121 ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
12/16/2016 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 MICHAEL H. WAHL, RYAN G. MACKENZIE,
and JAMES U. LEMKE
Appeal 2014-008130
Application 13/655,3771
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Achates Power,
Inc. Appeal Br. 3.
Appeal 2014-008130
Application 13/655,377
ILLUSTRATIVE CLAIM
1. A piston for an internal combustion engine,
comprising:
an end surface the crown of the piston with a bowl to
define a combustion chamber;
at least one cooling gallery under the end surface; and,
an openwork with a pattern of holes defining cavities
embedded in the crown, between the end surface and the
cooling gallery.
REJECTION
Claims 1—31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lemke et al. (US 2009/0293820 Al, pub. Dec. 3, 2009) (“Lemke”) and
Munro et al. (US 4,679,493, iss. July 14, 1987) (“Munro”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellants allege error in the rejection for several reasons, each
of which is addressed below. As explained herein, the Appellants’ argument
regarding the “openwork” limitations of claims 1—22 and 24—31 is
persuasive, such that the rejection of those claims under 35 U.S.C. § 103(a)
is not sustained. The Appellants’ other arguments are not persuasive of
Examiner error.
2
Appeal 2014-008130
Application 13/655,377
1. The Motivation to Combine References
The Appellants argue that claims 1—31 were rejected erroneously
because there is no motivation to combine Lemke with Munro. Appeal
Br. 5. According to the Appellants, neither reference teaches or suggests the
critical trade-off between cooling a piston crown and reducing the flow of
heat through it. Id. Indeed, the Appellants argue that Lemke teaches away
from the claimed invention — which involves both cooling and insulating
features to control the thermal properties of a piston crown — because
Lemke addresses cooling exclusively. Appeal Br. 6; Reply Br. 1. Further,
because increasing the thermal impedance and/or reducing piston cooling
would be contrary to Lemke’s teachings, the Appellants argue that
modifying Lemke (as in the rejection) subverts Lemke’s principle of
operation and that the combination of Lemke and Munro draws upon
impermissible hindsight. Reply Br. 2—3.
According to the Examiner, Lemke’s disclosure of reducing the
crown’s cross section, in order to increase the rate of heat transfer
(specifically, for the purpose of limiting thermal deformation) also
necessarily discloses the converse — i.e., that changing the structure of the
piston crown would limit heat transfer. Answer 11.
The Appellants’ argument is not persuasive of error. We agree with
the Examiner’s finding that Lemke teaches the interplay of thermal
impedance and cooling, which the Appellants contend to be absent in the
reference. Thus, the combination does not violate Lemke’s principle of
operation or render it inoperable. Moreover, the Appellants do not address
the reason given in the rejection for combining Lemke and Munro —
specifically, availing Lemke of Munro’s teachings, for the purpose of
3
Appeal 2014-008130
Application 13/655,377
strengthening the seat for a piston ring, so as to place it close to the crown
and thereby reducing dead volume at the top of the piston. See Final Action
2, 6, 9. Although the Appellants frame the object of the claimed
embodiments to be that of thermal management, the reason for combining or
modifying references need not be the same reason that motivated the
Appellants; rather, “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Also, the Appellants have not demonstrated
that Lemke teaches away from the prior art combination/modification,
because there is no showing that Lemke “criticize[s], discredits], or
otherwise discourage[s] the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
2. The “cooling gallery” Limitations
The Appellants contend that neither Lemke nor Munro teaches or
suggests a piston with a “cooling gallery” — a limitation that appears in
each of claims 1—31. Appeal Br. 6. Yet, the Appellants’ argument is not
persuasive because the Appellants do not articulate what features the
claimed “cooling gallery” might possess that are not present in the cited
prior art. See Answer 11—12. Indeed, the Appellants admit that Lemke
teaches piston cooling through technology for applying jets of coolant to the
back surface of the crown, but the Appellants do not explain why Lemke
allegedly does not show the claimed “cooling gallery.” Id.
With regard to the further qualification, in independent claim 1 (and,
therefore, dependent claims 2—12, as well), that the “cooling gallery” is
located “under the end surface” of the piston, the Appellants argue that
4
Appeal 2014-008130
Application 13/655,377
Lemke’s Figures 13A— 13E show a radial array of ribs 1322 acting against
the back surface of the crown, but that the ribs do not channel coolant.
Appeal Br. 6. The Appellants’ argument is unpersuasive, because it is not
commensurate with the claim language. The “under the end surface” feature
concerns the location of the claimed “cooling gallery,” not whether it
channels coolant, per the Appellants’ argument. See id. Moreover, the
Appellants do not address the Examiner’s finding (Final Action 2) that the
limitation is taught by Lemke paragraph 51, which discloses a piston with an
internal open space where coolant is dispensed to the underside of the
crown.
With regard to claim 13, the Appellants assert that the cited prior art
does not teach a “cooling gallery” having the claimed “asymmetric profile
that rises under the ridge.” Appeal Br. 6. Yet, the Appellants do not address
the Examiner’s finding that the feature is inherent in Lemke. Final Action 5
(citing Lemke 1 63). Accordingly, the Appellants’ argument is not
persuasive of error.
The Appellants contend that the cited references lack a “cooling
gallery” that is “in the crown,” as recited in independent claims 14 and 23
(and, therefore, respective dependent claims 15—22 and 24—31, as well).
Appeal Br. 6. Yet, the Appellants do not address the Examiner’s finding
(Final Action 6) that this feature is taught in Lemke paragraph 66, which
explicitly says that liquid coolant is applied to the inner surface of a piston,
“up to and including its crown.” Accordingly, the Appellants’ argument is
not persuasive of error.
The Appellants also allege that the cited prior art lacks the feature of
an “annular gallery that follows the periphery of the crown,” appearing in
5
Appeal 2014-008130
Application 13/655,377
claim 15 (and, therefore, claim 16 depending therefrom). Appeal Br. 6. Yet
the Appellants do not address the Examiner’s finding that this feature is met
by Lemke’s polymeric rings located in annular grooves. Final Action 7
(citing Lemke 1 72). Accordingly, the Appellants’ argument is
unpersuasive.
3. The “openwork” Limitations
The Appellants contend that the Examiner erred in rejecting claims 1—
22 and 24—31 because the cited prior art lacks the “openwork” limitations of
those claims. Appeal Br. 6—7.
For example, claim 1 recites, in part, “an openwork with a pattern of
holes defining cavities embedded in the crown.”
The Appellants contend that this limitation is not met by the cited
Munro reference, which teaches a structure having “recesses” therein.
Appeal Br. 6—7 (citing Munro, col. 2,11. 62—65, col. 5,11. 27—38). The
Appellants argue that the characterization of the term “openwork” in the
Specification and claims is consistent with the definition provided from
Dictionary.com: “any kind of work, especially ornamental, as of
embroidery, lace, metal, stone, or wood, having a latticelike nature or
showing openings through its substance.” Id. at 7. According to the
Appellants, Munro’s structure having recesses does not teach either the
“openwork” or the “holes” recited in claim 1. Id.
According to the Examiner, “[t]he attempt to distinguish a hole from a
recess is a distinction without a difference” because “in the end, there will be
a set of cavities in the crown that are defined by the openwork and the
piston” of Munro. Answer 12. Further, the Examiner determines that the
term “openwork,” as used in the Specification and the claim language, does
6
Appeal 2014-008130
Application 13/655,377
not require the notion for which Appellants advocate — i.e., an empty area
that completely passes through another object. Id. at 13. The Specification
says that “openwork is a work of metal or equivalent material having a
pattern of openings or holes.” Spec. 1 34. The Examiner regards the words
“hole” and “opening” as both lacking the property of complete passing
through, pointing out that the empty area from the top of a recess to its
bottom is a “hole” and the “opening of ajar of peanut butter” does not pass
completely through the j ar. Answer 12—13.
The Appellants’ argument turns on whether the phrase “an openwork
with a pattern of holes defining cavities embedded in the crown” requires the
“openwork” to have open areas that completely pass through its substrate. A
person of ordinary skill in the art would have understood the term
“openwork” to include such open areas passing through the substrate. The
identified dictionary definition is particularly probative of this construction.
The characterization of “openwork” in the Specification does not negate the
notion of open areas passing through a substrate, by its use of the phrase
“openings or holes.” Spec. 134. By contrast, Munro’s structure having
recesses only — but no completely open areas — would not have been
regarded as “openwork.”
Therefore, the Appellants’ argument persuades us that the Examiner
erred in rejecting claims 1—22 and 24—31 under 35 U.S.C. § 103(a). The
rejection of these claims is not sustained.
4. The “curved protruding ridge” Limitation
The Appellants contend (Appeal Br. 7) that the Examiner erred in
rejecting claims 23—31 because the prior art lacks the following limitation of
independent claim 23 (and, therefore, dependent claims 24—31, as well):
7
Appeal 2014-008130
Application 13/655,377
“the end surface [of the piston crown] having a contour including an
elongated bowl adjoined by a curved protruding ridge.” Specifically, the
appellants allege that the cited art does not teach the “curved protruding
ridge.” Id.
The Appellants argue that Lemke’s Figures 2A, 2B, 3A—3F, 5A, and
5B show pistons with flat crowns, and Lemke’s Figures 13B, 13C, and 13E
show a crown with an indented bowl-shaped contour, but none of Lemke’s
identified embodiments shows a crown with a “curved protruding ridge.” Id.
In response, the Examiner states that Munro {not Lemke) is identified
as teaching the recited “curved protruding ridge,” as the Examiner set forth
in the Final Office Action. Answer 13 (citing Munro, Fig. 1); see also Final
Action 8.
The Appellants do not dispute the Examiner’s finding that Munro
teaches the “curved protruding ridge.”
Accordingly, the Appellants’ argument is unpersuasive of error.
DECISION
We AFFIRM the Examiner’s decision rejecting claim 23 under 35
U.S.C. § 103(a).
We REVERSE the Examiner’s decision rejecting claims 1—22 and
24—31 under 35 U.S.C. § 103(a).
No time 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
8