DETAILED ACTION
This office action is a reply to the amendment dated March 2, 2026.
Claims 1, 8, 9, 12, 19, 20, 23 and 24 have been amended; and claims 6, 13, 14 and 18 have been canceled.
Claims 1-6, 7-12, 15-17 and 19-24 remain pending in this application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 4, 8-10, 15, 16 and 19-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gentscheff et al. (DE 8914785 U), hereafter Gentscheff, in view of Ernst et al. (US 2019/0301393 A1), hereafter Ernst, and in further view of Azevedo et al. (US 7,438,038 B2), hereafter Azevedo.
Regarding claims 1, 3, 4, 10, 16, 19-21, 23 and 24 Gentscheff discloses a system comprising a cylinder liner (10) configured to couple to an internal combustion engine (Fig. 1, [0003]), wherein the cylinder liner comprises an outer wall configured to be fitted in a cylinder liner bore of a crank case (known in the art), and an inner circular wall forming at least partly a gliding surface for a reciprocating piston with at least one piston ring (4) during operation of the internal combustion engine; and a coating (6; hard, wear resistant material; [0006]) disposed on a surface of the inner circular wall, the coating is disposed only on at least a part of an area of the inner circular wall which is not reached by the at least one piston ring during reciprocation of the piston, wherein the coating protrudes radially inward relative to the gliding surface and which serves as an anti-polishing ring, and wherein the coating defines an inner annular surface that extends linearly in an axial direction relative to the longitudinal axis along an entirety of the axial length of the coating (Fig. 1; [0013-0014]).
Gentscheff is silent to having a thickness of the coating less than or equal to 200 micrometers, an axial length of the coating is less than or equal to 60 mm, and the coating is distanced away in a range between 0.1 and 2 mm from the at least one piston ring of the reciprocating piston along a longitudinal axis of the cylinder liner when the reciprocating piston is in a top dead center position, wherein a material of the coating comprises a Co-based alloy, a Ti-based alloy, a Ni-based alloy, or a ceramic.
Ernst discloses a method of applying a thermal coating (8) of a cylinder wall (2), wherein the coating material is ceramic, or other suitable alloys [0030]. Ernst further discloses a method wherein a desired thickness can be achieved by manipulating a plasma gun rotational frequency as a factor of the used material [0028]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the coating of Gentscheff as taught by Ernst in order to achieve a desired hardness of the resistant material.
And, Azevedo discloses an engine cylinder liner (10) comprising an upper portion (32) with material (34) that extends radially inward toward the central axis; the material is provided above the uppermost piston ring (24), (Fig. 1, Fig. 2 and Fig. 3 ; column 3, line 30-43); and the material has thickness of 100 micrometers or less (Column 3, line 58-61 discloses clearance (r) of about 0.100 mm, and from Fig. 2 it can be concluded that thickness of the material has peaks and valleys with diameter less than the radial clearance (r)). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the coating of Gentscheff as taught by Ernst and with the thickness as taught by Azevedo, in order to achieve a desired thickness and scrapping capabilities.
Azevedo, further discloses: “The width (w) of the material 34 extends axially along the central axis 21, and can be varied in length of coverage, as desired, however, it preferably extends to an area of the cylinder upper portion 32 immediately adjacent the imaginary TDC plane 28.” Column 3, line 64 – Column 4, line 1.
Gentscheff as taught by Ernst and Azevedo is silent to having a thickness of the coating less than or equal to 200 micrometers, an axial length of the coating is less than or equal to 60 mm, and the coating is distanced away in a range between 0.1 and 2 mm from the at least one piston ring of the reciprocating piston along a longitudinal axis of the cylinder liner when the reciprocating piston is in a top dead center position. However, it would have been obvious to one having ordinary skill in the art before the effective dated of the claimed invention to provide the coating with having a thickness of the coating is less than or equal to 200 micrometers, an axial length of the coating is less than or equal to 60 mm, and the coating is distanced away in a range between 0.1 and 2 mm from the at least one piston ring, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In this instance, the size of the engine, including the size of the cylinder and piston would be deciding factors for the coating and its dimensions. In addition, the applicant has not disclosed a criticality of the claimed dimensions.
Regarding claims 2, 5, 7, 15 and 17, Azevedo discloses an engine wherein the cylinder liner comprises a front face facing cylinder head in a mounted state of the cylinder liner, wherein the area extends along the longitudinal axis of the cylinder liner starting from the front face along the axial length of maximally 20% of the inner diameter of the inner circular wall and wherein the coating protrudes radially inward (column 3, line 64 to column 4, line 4; Fig. 3). Hence, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the coating of Gentscheff as taught by Ernst and Azevedo in the area of the cylinder as taught by Azevedo in order to prevent the flow of oil and gases outwardly from the cylinder bore via exhaust emissions.
In regards to the coating extending directly from the front face of the top portion of the cylinder liner to a distance in a range of 57 mm to 60 mm away from the front face along the longitudinal axis of the cylinder liner, it would have been obvious to one having ordinary skill in the art before the effective dated of the claimed invention to provide the coating with the claimed specifications, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In this instance, the size of the engine, including the size of the cylinder and piston would be deciding factors for the coating and its dimensions. In addition, the applicant has not disclosed a criticality of the claimed dimensions.
Regarding claims 8, 9 and 22, Gentscheff discloses a cylinder liner comprising a flange, and an embodiment wherein the coating is disposed only on the part of the area at an axial offset distance away from a front face of a top portion of the cylinder liner, wherein the thickness of the anti-polishing coating is constant along the axial length of the anti-polishing coating, and an inner diameter of the inner annular surface is constant along the axial length of the anti-polishing coating.
Gentscheff does not disclose the coating being axially offset distance is greater than the axial length of the coating, or the coating is offset away the top flange at another axial offset distance below the bottom surface of the top flange. It would have been obvious to one having ordinary skill in the art before the effective dated of the claimed invention to provide the coating being axially offset distance greater than the axial length of the coating, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In this instance, the size of the engine, including the size of the cylinder and piston would be deciding factors for the coating and its dimensions. In addition, the applicant has not disclosed a criticality of the claimed dimensions. In addition, it is known in the art to provide coating having different lengths and thicknesses’ (i.e. US 9,534,559 B2, Donahue).
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gentscheff et al. (DE 8914785 U), in view of Ernst et al. (US 2019/0301393 A1), and in further view of Azevedo et al. (US 7,438,038 B2) and Donahue (US 9,534,559 B2).
Regarding claims 11 and 12, Gentscheff discloses a cylinder liner via coating which area is not reached by the at least one piston ring (Fig. 3). And Erns discloses a method of cylinder running surfaces are usually activated by various processes before thermal coating, e.g. by corundum jets, hard casting jets, high-pressure water jets, various laser processes or other well-known activation processes [0007], wherein subsequent to the surface treatment process, the coating is applied via a well cladding or brazing, and plurality of cladding layers applied via a laser cladding process ([0024], [0031]; Fig. 1). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the cylinder treatment and coating process of Ernst in the cylinder liner of Gentscheff in order to apply the coating more efficiently. And Azevedo discloses an embodiment wherein the coating extends along the longitudinal axis of the cylinder liner starting from the front face along the axial length of maximally 30%, preferably maximally 20% of the inner diameter of the inner circular wall (Fig. 1), and wherein the thickness of the coating is between 40 and 200 micrometers (Column 3, line 58-61).
Gentscheff as modified with Ernst and Azevedo is silent to the method wherein the coating is post-treated by turning, milling, honing or grinding. Donahue discloses a method of applying coating to the inner surface of a cylinder liner method wherein the coating is post-treated by turning, milling, honing or grinding (column 2, line 59-67). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the finishing process of Donahue to the cylinder liner coat of Gentscheff as applied with the process of Ernst in order to create a uniform surface.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
“Applicant stresses that Azevedo cannot overcome the deficiencies of Gentscheff and Ernst, and thus Gentscheff, Ernst, and Azevedo cannot support a prima facie case of obviousness of independent claims 1, 19, and 20 and their dependent claims. In particular, Applicant submits that the Examiner's interpretation of Azevedo is improper, because Azevedo does not specifically disclose a thickness range and Azevedo does not indicate that the drawings are to scale. As summarized above, arguments based on dimensions of the drawing features are of little value where the reference does not disclose specific dimensions or any indication of whether the drawings are to scale.” Page 12.
Examiner respectfully disagrees. As provided in the rejection above, prior art Gentscheff discloses a cylinder liner for an engine, the liner comprising a top flange, and a coating disclosed on the top surface of the cylinder liner, the coating having a smaller diameter than the cylinder liner, and the coating extending away from the top of the liner and away from at least one piston ring. Prior art Ernst teaches a type of material used for the coating, and prior art Azevedo further discloses dimensions proposed for the coating. In re Aller, 105 USPQ 233 rationale was applied since the prior art Azevedo discloses: “The width (w) of the material 34 extends axially along the central axis 21, and can be varied in length of coverage, as desired, however, it preferably extends to an area of the cylinder upper portion 32 immediately adjacent the imaginary TDC plane 28.” Column 3, line 64 – Column 4, line 1. And, clearance (r) is about 0.100 mm. Column 3, line 58-61. Hence, Azevedo teaches that these dimensions can be varied in length and coverage, and based on the noted information potentially overlap. However, the applicant has not provided why the given ranges are critical to the invention, and it appears that the Gentscheff in view of Ernst and Azevedo teach the claimed invention. Upon further search, prior art Pennila (US 4,074,671) discloses an engine liner with “an internal wall surface having a thin coating thereon of ceramic material, the exposed surface of said coating being able to increase and decrease its temperature very rapidly in response to temperature changes in the combustion chamber during said strokes, said coating having a thickness from 0.2 to 1 mm.” Claim 1.
Applicant argues that the Examiner did not address the specific material recited in claims 19 and 20 (“Co-based alloy, a Ti-based alloy, or a Ni-based alloy”). As recited in the rejection, the Examiner stated: “Ernst discloses a method of applying a thermal coating (8) of a cylinder wall (2), wherein the coating material is ceramic, or other suitable alloys [0030].” Paragraph [0030] recites: “A ceramic coating material, in particular TiO.sub.2 or Cr.sub.2O.sub.3, is preferably used as coating material”. TiO2 is titanium dioxide-based composite used as a coating.
The applicant merely states :” Preferably, it is provided, that the material of the coating is Co-, Ti- or Ni- based alloy or ceramics.” No further disclosure of any of the noted alloys without ceramics as an option was provided. Hence, the coating material of Ernst meets the criteria.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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/TEUTA HOLBROOK/
Examiner
Art Unit 3747
/GEORGE C JIN/ Primary Examiner, Art Unit 3747
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