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 .
Election/Restrictions & Status of Claims
Claims 1-8, 16-17 and 20-21 are examined of which claims 1-2, 4, 8 and 20 were amended in the Applicant’s reply.
Claims 9-15 and 22-23 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09 June 2025.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is 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.
Claim 5 requires “The sliding element according to claim 1 one of, wherein the nitrided layer has a nitriding hardness depth Nht 700 HV0.1, measured according to ISO6621-2, section 4.2.15, of between 20 and 100 µm.” However, claim 1 as amended requires “a nitrided layer located on the base material, the nitrided layer having a surface hardness of greater than 700 HV1 and less than 900 HV1.” It is unclear how the hardness HV0.1 can be greater than the hardness HV1 for the same layer.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 requires “The sliding element according to claim 1 one of, wherein the nitrided layer has a nitriding hardness depth Nht 700 HV0.1, measured according to ISO6621-2, section 4.2.15, of between 20 and 100 µm.” However, claim 1 as amended requires “a nitrided layer located on the base material, the nitrided layer having a surface hardness of greater than 700 HV1 and less than 900 HV1.” Therefore, instant claim fails to further limit the subject matter of the claim upon which it depends, or for fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 16-17 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0253006 A1 of Ishikawa (US’006).
Regarding claims 1-5, 7-8, 16-17 and 20, US 2010/0253006 A1 of Ishikawa (US’006) teaches “[0001] The present invention relates to piston rings for internal combustion engines, and specifically to steel products suitable for making piston rings for aluminum alloy cylinders. [0009] (1) A steel product for piston rings sliding on the inside surface of aluminum alloy cylinder bores, wherein the steel product for internal combustion engine piston rings comprises 0.01 to 1.9% of C, 0.01 to 1.9% of Si, and 5.0 to 24.0% of Mn in terms of mass, the remainder being composed of Fe and unavoidable impurities. [0010] (2) According to (1), the steel product for internal combustion engine piston rings further includes 18.0% or less of Cr and/or 12.0% or less of Ni in terms of mass. [0011] (3) According to (1) or (2), the steel product for internal combustion engine piston rings further includes 1% or less of Al in terms of mass. [0012] (4) According to any one of (1) to (3), the steel product for internal combustion engine piston rings further includes 0.3% or less of N in terms of mass. [0013] (5) According to any one of (1) to (4), the steel product for internal combustion engine piston rings further includes one or more elements selected from the group consisting of Nb, Ti, Zr, Mo, and Cu in the total amounts of 4.0% or less in terms of mass. [0014] (6) Piston rings used in an internal combustion engine having an aluminum alloy cylinder block, where of the internal combustion engine piston rings are made of the steel product for piston rings according to any one of (1) to (5). [0015] (7) According to (6), the internal combustion engine piston rings have a surface treating layer on the all surfaces or the outer peripheral surface of the piston rings. [0016] (8) According to (7), the internal combustion engine piston rings, wherein the surface treating layer has a Vickers hardness of 700 to 1400 HV. [0017] (9) According to (7) or (8), the internal combustion engine piston rings, wherein the surface treating layer is a nitride layer. [0018] (10) According to any one of (7) to (9), the internal combustion engine piston rings include a diamond-like carbon film on the outer peripheral sliding surface of the surface treating layer.” “[0023] C contributes to the strengthening of the steel products, and its coexistence with Mn markedly stabilizes the austenite phase thereby increasing the thermal expansion coefficient of the steel products.” “[0027] Mn is an important element in the present invention. Mn contributes to the strengthening of the steel products, and its coexistence with a proper amount of C markedly stabilizes the austenite phase thereby increasing the thermal expansion coefficient of the steel products. These effects are achieved when the amount of Mn is 5.0% or more. If the amount of Mn is less than 5.0%, the austenite phase is unstable, and the increase of the thermal expansion coefficient is not recognized. On the other hand, if the amount of Mn exceeds 24.0%, austenite grains are coarsened.” “[0032] Ni is an element which strongly stabilizes austenite, and may be contained as necessary. The effect is achieved when the amount of Ni is 0.01% or more.” “[0038] N contributes to the strengthening of the steel products in the same manner as C. In addition, N stabilizes the austenite phase, and increases the thermal expansion coefficient of the steel products.” “[0049] From the viewpoints of wear resistance and corrosion resistance, it is preferred that the all surfaces or the outer peripheral surface of the piston rings may be subjected to surface treatment thereby forming a surface treating layer. The surface treating layer may be, for example, a nitride layer formed by nitriding, a hard-plated coating layer formed by chrome plating or dispersive plating, a thermal spraying layer formed by thermal spraying, a physical vapor deposition layer formed by physical vapor deposition (PVD), or a chemical vapor deposition layer formed by chemical vapor deposition (CVD). These layers are suitable as the surface treating layers of the piston rings of the present invention. From the viewpoint of wear resistance and opponent aggressivity, the surface treating layer is preferably a nitride layer. The physical vapor deposition layer or chemical vapor deposition layer may be a diamond-like carbon film (DLC film). From the viewpoint of opponent aggressivity, the DLC film is preferably formed on the outer peripheral sliding surface of the surface treating layer. The DLC film strengthens the tendency to lessen the opponent aggressivity. From these facts, it is preferred that, for example, a nitride layer and a DLC film may be formed in this order on the surface of the base material of piston rings. [0050] The hardness of the surface treating layer is preferably from 700 to 1400 HV from the viewpoint of opponent aggressivity. If the hardness is less than 700 HV in terms of Vickers hardness, wear resistance deteriorates. On the other hand, if the hardness of the surface treating layer is more than 1400 HV, compounds are formed to give high opposite aggressivity. In the present invention, from the viewpoint of opponent aggressivity, it is important that the surface treating layer formed on the surface of the piston ring is not so hard thereby preventing the formation of compounds. The hardness of the surface treating layer is preferably from 900 to 1200 HV. When the Vickers hardness is measured, the load is preferably from 100 gf or 200 gf. [0051] The thickness of the surface treating layer is preferably from 1 to 150 µm from the viewpoints of corrosion resistance and adhesion property. The nitriding treatment, hard-plated coating treatment, thermal spraying treatment, physical vapor deposition treatment, and chemical vapor deposition treatment may be carried out by common methods.” thereby reading on the sliding member, the base material, the DLC layer of the instant claims.
Regarding the chromium content of claims 1, 16-17 and 20, the prior art teaches “[0010] (2) According to (1), the steel product for internal combustion engine piston rings further includes 18.0% or less of Cr and/or 12.0% or less of Ni in terms of mass.” “[0030] Cr contributes to the strengthening of the steel products, improvement of corrosion resistance, and improvement of surface treatment properties. In the present invention, Cr may be contained as necessary. Specifically, when a nitride layer is formed on the surface of a piston ring, Cr effectively contributes to the improvement of surface treatment properties, particularly the improvement of the adhesion property of the surface treating layer. These effects are achieved when the amount of Cr is 0.01% or more. However, if the amount of Cr exceeds 18.0%, carbides and .sigma. phases are markedly formed, which results in the deterioration of corrosion resistance and workability. Accordingly, the amount of Cr is preferably 18.0% or less, more preferably from 2.0 to 15.0%, and even more preferably from 5.0 to 15.0%.” As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the hardness limitation of the instant claims 1 and 20, it is noted that the prior art teaches “surface treating layer has a Vickers hardness of 700 to 1400 HV” whereas instant claims 1 and 20 require it to be units of HV1. In other words, the prior art is silent regarding the hardness of the nitrided layer in units of HV1. It is also noted that the prior art is silent regarding the properties of instant claims 7-8. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), b) the claimed and prior art products are identical or substantially identical in structure (both steels are austenitic or martensitic stainless steels) and c) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0019]-[0034]; Prior art: [0047]-[0057]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 6 and 21, the prior art teaches DLC film of 5 microns thereby reading on claim 6. It is noted that instant claim 21 requires at least 10 microns. MPEP provides that with regard to the shape, merely changing the shape/size/proportion of a prior art product would not be sufficient to distinguish from that prior art product as it has been held that changing the shape/size/proportion would require only ordinary skill in the art and hence are considered routine expedients. See MPEP § 2144.04 (IV). Therefore, making the specific thickness as claimed in the instant claims would require only ordinary skill in the art since thickness modification of the layers is well known in the art and would be helpful to increase the wear resistance.
Response to Arguments
Applicant’s arguments with respect to claims 1-8, 16-17 and 20-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733