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(b)
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.
Claims 11, 18, and 20 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.
Regarding claim 11, the claimed “wherein a length of each straight segment is less than an outer diameter of the cylinder liner” is indefinite as the claim is specifying a length based on an undefined structure (cylinder liner). The claimed “cylinder liner” is not claimed in a way that conveys this is part of the “piston alignment tool” and, rather, the liner seems to be part of the structure that is installed by the tool. As such, the “cylindrical liner” doesn’t have just one outer diameter, but an endless and indefinite number of diameters.
Additionally, there is no range of diameters inherent to cylinder liners. If one knew the length of each straight line segment, one could not definitely ascertain whether that length falls into a range that would be satisfied as being “less than an outer diameter of the cylinder liner.”
Applicant is advised either to claim an explicit length or range of lengths, being careful not to add new matter, or to claim this in a way where the relative feature is part of the claimed tool. For example, “wherein a length of each straight segment is less than an outer diameter of the cylinder liner” might be said as “wherein a length of each straight segment is less than [an inner diameter of the base].” Alternatively, Applicant may also remove the limitation to overcome the rejection under indefiniteness.
Regarding claim 18, the claimed “wherein the axially extending overhang engagement tab directly interfaces with the outer circumference of the cylindrical liner” is indefinite. It is unclear if this is meant to positively require the cylindrical liner as part of the “engine kit” that is claimed. The term “directly interfaces” implies either that it is meant to directly interface with the cylindrical liner or that it is interfaced with the liner. The term “interface” can mean a connection, but the term “interfaces” to connect by means of an interface (verb). It’s therefore unclear if this is meant to mean that it is connected in the claim, requiring the liner to be part of the kit, or whether it is merely meant to be for connecting to the liner, not requiring the liner to be part of the kit. For the purpose of examination, the examiner will consider this to be a functional statement and will be treated as “wherein the axially extending overhang engagement tab is configured to directly interface with the outer circumference of the cylindrical liner.”
Regarding claim 20, the claimed “extended portion contacts an inner surface of a packaging container” is indefinite as to whether “contacts” is meant to convey “configured to contact” (i.e. functional limitation) or “connected to” (i.e. a connection between the packaging container and the extended portion, essentially requiring the “packaging container” and a connection as part of the claimed engine kit of claim 20). For the purpose of examination, the examiner will consider this to be “extended portion is configured to contact an inner surface of a packaging container.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-16 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meunier (WO2014080125).
Regarding claim 1, Meunier (WO2014080125) discloses a piston alignment tool, comprising:
a body (1B);
an inner guide surface (inner surface of extending along an inner diameter of the body 1B that guides the piston 2 into the cylinder block), the inner guide surface being configured to guide the piston (piston 2); and
an axially extending overhang engagement tab (guide portion 1A) extending from the body (1B) (Fig. 1), the axially extending overhang engagement tab (guide portion 1A) being configured to interface with an outer circumference of the cylinder (cylinder 2) (Fig. 1).
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As to the tool being “for a cylinder liner and a piston,” this is considered intended use and is not considered to require any liner structure as part of the structure of “the piston alignment tool.” In other words, the claim is merely stating the intention of the tool is to be used “for a cylinder liner and a piston” and that tool is defined by the body of the claim. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
As to the inner guide surface being configured to guide the piston with respect to an inner diameter of the cylinder liner and the axially extending overhang engagement tab being configured to interface with an outer circumference of the cylinder liner, this is considered functional language. A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In this case, a “liner” is understood, according to the specification, as a round structure with an non-defined diameter or size. Therefore, a structure configured to engage a “liner” is merely considered a structure considered to engage a round cylindrical device, akin to the piston. Since the prior art shows these structures attached to a cylindrical piston, then the prior art structure is considered to meet the functional structure.
Regarding claim 2, Meunier discloses the piston alignment tool of claim 1, wherein the axially extending overhang engagement tab (guide portion 1A) extends from an outer circumference of the body (1B) (the portions 1A and 1B are part of the same body and, as such, the outermost guide portions 1A form an outer thickness of the body 1B in the same way as Applicant’s tabs 30, 32, 34, 36 from an outer thickness of the body 26 in order to axially extend from an outer circumference of the body 26).
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Regarding claim 3, Meunier discloses the piston alignment tool of claim 1, further comprising a second axially extending overhang engagement tab (guide portion 1A) extending from the body (1B) (Fig. 1), the second axially extending overhang engagement tab (guide portion 1A) being configured to interface with the outer circumference of the cylinder (piston 2) liner (where a structure configured to interface with a cylinder liner is structurally equivalent to an interface with a cylindrical piston, as explained in claim 1).
Regarding claim 4, Meunier discloses the piston alignment tool of claim 3, wherein the axially extending overhang engagement tab (1A) is diametrically opposed from the second axially extending overhang engagement tab (1A) (Fig. 1).
Regarding claim 5, Meunier discloses the piston alignment tool of claim 3, further comprising a third axially extending overhang engagement tab (1A) extending from the body (1B), the third axially extending overhang engagement tab (1A) being configured to interface with the outer circumference of the cylinder (2) liner (where a structure configured to interface with a cylinder liner is structurally equivalent to an interface with a cylindrical piston, as explained in claim 1).
Regarding claim 6, Meunier discloses the piston alignment tool of claim 4, further comprising a fourth axially extending overhang engagement tab (1A) extending from the body (1B) (Fig. 1), the fourth axially extending overhang engagement tab (1A) being configured to interface with the outer circumference of the cylinder (2) (Fig. 1) liner (where a structure configured to interface with a cylinder liner is structurally equivalent to an interface with a cylindrical piston, as explained in claim 1).
Regarding claim 7, Meunier discloses the piston alignment tool of claim 6, wherein the axially extending overhang engagement tab (1A) is diametrically opposed to the second axially extending overhang tab (1A) (Fig. 1), and the third axially extending overhang engagement tab (1A) is diametrically opposed to the fourth axially extending overhang tab (1A) (Fig. 1).
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Regarding claim 8, Meunier discloses the piston alignment tool of claim 6, wherein each axially extending overhang engagement tab (1A) has a rounded contour contact surface (the interior surface) (Figs. 1 and 2).
Regarding claim 9, Meunier discloses the piston alignment tool of claim 8, further comprising a plurality of at least partially recessed portions (see annotated Fig. 1 below) between each adjacent axially extending overhang engagement tab (1A).
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Regarding claim 10, Meunier discloses the piston alignment tool of claim 9, wherein each at least partially recessed portion comprises a straight segment (Fig. 1).
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Regarding claim 11, Meunier discloses the piston alignment tool of claim 10, wherein a length of each straight segment is less than an outer diameter of the cylinder liner (considered to be intended use as the “cylinder liner” is not part of the claim. Therefore, this is considered akin to stating that the intention is to use the claimed tool on a cylinder liner greater than a length of each segment).
Regarding claim 12, Meunier discloses the piston alignment tool of claim 10, wherein each of the rounded axially extending overhang engagement tabs (1A) and each of the straight segments comprise an outer circumference of the body (1B) such that the outer circumference of the body has a squircle shape (having a diameter, but with straight square sides) (Fig. 1).
Regarding claim 13, Meunier discloses the piston alignment tool of claim 12, wherein the outer diameter of the body (1B) and the inner diameter of the body (1B) are concentric (Figs. 1 and 2).
Regarding claim 14, Meunier discloses the piston alignment tool of claim 6, further comprising a plurality of at least partially extended portions (portions of member 7, annotated in Fig. 1 below) between each adjacent axially extending overhang engagement tab (1A) (Fig. 1).
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Regarding claim 15, Meunier discloses the piston alignment tool of claim 14, wherein each at least partially extended portion (portions of member 7, annotated in Fig. 1 below) comprises a straight segment (Fig. 1).
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Regarding claim 16, Meunier discloses the piston alignment tool of claim 15. As to “wherein each of the straight segments are configured to interface with a packaging container,” this is considered functional language. Applicant shows a packaging container 18 which “is a box 70 in this implantation” [Application Publication; paragraph 0037]. Applicant shows the box in Figure 4 as a dotted rectangle surrounded the tool. Applicant also implies other types of packaging containers as this is only one implementation. Applicant also does not limit this only to this type of packaging container either in the specification or in the claims. The straight segments that touch the packaging container are simply outer surfaces of the tool. With all of these considerations, it is considered that “configured to interface with a packaging container” is simply an outer surface. Since the straight segments of Meunier have outer surfaces, then they are considered to meet the claimed functional structure.
Regarding claim 18, Meunier discloses an engine kit comprising the piston alignment tool of claim 1. As to “wherein the axially extending overhang engagement tab (guide portion 1A) directly interfaces with the outer circumference of the cylinder liner,” this is considered intended use akin to “wherein the axially extending overhang engagement tab [is intended to directly interface] liner” is not explicitly part of “the piston alignment tool” which makes up the “engine kit,” then the claimed structure isn’t considered to explicitly require a cylinder liner. As such, this would become intended use and/or functional language. Since a functional aspect would be essentially indefinite as the “liner” is a variable, rather than a definite constant value or range, then it would make more sense that this be considered intended use. Since intended use is a statement of how to use the claimed structure, then one having the claimed structure would be considered to have the claimed structure that is used in such a manner. Since the prior art contains the claimed structure, then it therefore meets the intended use limitation.
Regarding claim 19, Meunier discloses the engine kit of claim 18, wherein the axially extending overhang engagement tab (guide portion 1A) has a rounded contour contact surface adjacent an at least partially extended portion (Figs. 1 and 2).
Regarding claim 20, Meunier discloses the engine kit of claim 19. As to “wherein the at least partially extended portion contacts an inner surface of a packaging container,” this is considered intended use. Since the “packaging container” is not explicitly part of “the piston alignment tool” which makes up the “engine kit,” then the claimed structure isn’t considered to explicitly require a packaging container. As such, this would become intended use and/or functional language. Since a functional aspect would be essentially indefinite as the “packaging container” is a variable, rather than a definite constant value or range (even in a broad sense), then it would make more sense that this be considered intended use. Since intended use is a statement of how to use the claimed structure, then one having the claimed structure would be considered to have the claimed structure that is used in such a manner. Since the prior art contains the claimed structure, then it therefore meets the intended use limitation.
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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meunier (WO2014080125) over Voris (US-2016/0067922).
Regarding claim 17, Meunier discloses the piston alignment tool of claim 1, but fails to disclose wherein the body has a honeycomb microstructure.
However, Voris (US-2016/0067922) teaches that making a body with a honeycomb microstructure is a result of a manufacturing process using 3D printing, wherein “the interior portions of the 3D object are printed in a honeycomb or another infill design, e.g., to reduce the amount of material that has to be printed to provide the printed 3D object” [Voris; paragraph 0004]. Therefore, it would’ve been obvious using a commonly known manufacturing technique, such as the 3D printing technique taught by Voris, in order to achieve the tool of Meunier suing less material relative to other manufacturing processes [Voris; paragraph 0004].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO8403082A1, US-6,318,551, US-4,594,760, US-2,697,870, US-2014/0325840, US-2002/0069499, US-1,488,628, US-1,425,075, US-1,367,622, DE4216564A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-270-5947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL D CRANDALL/Examiner, Art Unit 3723