DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 105, 106, 109 and 110 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon the thermal shock resistance of the discrete section of the insulation. It is unclear how to reduce the thermal shock with the same insulation material. Does it possible due to the gap, gap size, filler, or size of the discrete insulation material?
It is also not clear how to increase the thermal shock resistance of the discrete section?
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims105, 106 and 109 and 110 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. It is unclear what “the multiple said discrete sections comprise part or all of the thermal insulation material, with said discrete sections of material bonded to each other, wherein some part of the materials between two of said discrete section are bonded together, while materials in other parts of the two said discrete sections are not bonded, leaving gaps” is meant. The use of the term “lower tensile strength” (in claim 110) is relative term. It is unclear what “said material being configured to (i) fracture under thermal stress internally generated and present within each said partition of the thermal shock to form cracks, and (ii) reduce the gap width by filling the gaps” (in claim110) is meant.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 105, 106, 109 and 110 are rejected under 35 U.S.C. 103 as being unpatentable over Tomita (US 2014/0290617) in view of Vance (US 2010/0260960).
Tomita discloses a piston engine comprising a heat- resistant material with: (1) multiple discrete sections made of thermal insulation material that cover a surface of a piston, a cylinder, a cylinder head, or a combustion chamber that is in contact with high-temperature gas in the cylinder, forming a thermal insulation layer to reduce heat dissipation from the high-temperature gas in the cylinder. (See the reference numeral 1 in Fig. 2, Abstract, [0001] [0033] [0038] [0051] [0062]). The insulation can be manufactured a thin plate (See [0067]). Vance teaches the use of the thermal insulation material are separated by gaps rather than being directly joined together, wherein the gaps are configured to segment the thermal insulation material, reduce the thermal stress internally generated by and present with each said discrete section of the thermal insulation material, and improve the thermal shock resistance of the thermal insulation layer (See [0020] and Fig. 5). Since the prior art references art from the same field of endeavor, the purpose disclosed by Vance would have been recognized in the pertinent art of Tomita. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to provide the device of Tomita with the insulation materials between the gaps as taught by Vance.
Regarding claim 106, Vance teaches that the multiple said discrete sections comprise part or all of the thermal insulation material, with said discrete sections of material bonded (60) to each other, wherein some part of the materials between two of said discrete section are bonded together, while materials in other parts of the two said discrete sections are not bonded, leaving gaps (38), wherein the bonded parts increase the strength of the thermal insulation layer, and the gaps are configured to segment the thermal insulation material, reduce the thermal stress internally generated by and present within each said discrete section of the thermal insulation material, and improve thermal shock resistance of the thermal insulation layer (See Fig.4-8).
Regarding claim 109. Tomita as modified with Vance (US 2010/0260960) shows the reciprocating piston engine comprising a heat- resistant thermal insulation material layer for a piston, cylinder, cylinder head, or combustion chamber (See Fig. 2 in Tomita), wherein the thermal insulation layer includes one or more gaps (See Fig.4-8 in Vance) and the function of the gaps is to reduce the thermal stress internally generated and present within each partition of the thermal material, and improve thermal shock resistance of the thermal insulation layer when the temperature changes as explained supra.
Regarding claim 110, the claimed the use of a lower tensile strength material for gaps, the selection of a particular material is considered within the skill of an average artisan in the art as a matter of obvious engineering design choice.
Response to Arguments
Applicant's arguments filed October 16, 2025 have been fully considered but they are not persuasive. The applicant’s representative argues that the insulation layer in the present invention is horizontal while the prior art reference is vertical. The examiner could not understand how the applicant’s representative get the sense of the direction of the insulation layers. The applicant’s representative is required how to get the direction of the insulation layers as alleged.
The issue in this application is whether the combination of the prior art references could reduce the thermal stress/increase the thermal shock. Since both references are to protect the engine parts from the heat explosion, protect the engine parts by blocking the thermal transmitting, reducing the thermal stress/shock of the engine parts would be natural.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN KWON whose telephone number is (571)272-4846. The examiner can normally be reached M-F; 9A-5P. EST.
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/JOHN KWON/Primary Examiner, Art Unit 3747 January 23, 2026