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 § 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.
Claim(s) 1, 5, 7-9, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito et al. (US 2013/0043659) in view of Strong et al. (US 2017/0254418).
Regarding claims 1 and 25, Ito et al. discloses a piston ring 1 Fig. 1, comprising: a base portion formed of a metallic material (Para. 0003); an outer contact surface and an inner contact surface extending between a first face and a second face that is opposite the first face of the piston ring; a chromium coating layer 11 on the inner contact surface, the outer contact surface, and the second face; a layer of diamond-like carbon (DLC) 12 disposed over the chromium coating layer on the outer contact surface. However, Ito et al. fails to disclose a phosphate layer on the first face of the piston ring. Strong et al., a piston ring 110 Fig. 3, discloses the use of a phosphate layer on the first face of the piston ring. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a surface of the piston ring of Ito et al. with a phosphate layer as taught by Strong et al. in order to facilitate improvements in wear and lubrication characteristics as well as help prevent rust and/or oxidation (Para. 0003 of Strong et al.).
Regarding claims 5 and 29, the combination discloses a piston ring capable of having physical vapor deposition chrome interlayer (PVD treated layer) interposed between the DLC 12 (or a DLC layer) and the chromium coating layer 11 (a chromium plated layer) along the outer contact surface (claim 5).
Regarding claims 7, 22 and 24, the combination discloses the invention as claimed above but fails to explicitly disclose the DLC has an approximately constant thickness along the outer contact surface and a diminishing thickness at a lower outer corner region of the base portion and an upper outer corner region of the base portion. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Regarding claims 8, 23, 28, the combination discloses the invention as claimed above but fails to explicitly disclose wherein: the chromium coating layer has an approximately constant thickness along the outer contact surface, the lower outer corner region, the second face, a lower inner corner region of the base portion, and the inner contact surface; and the chromium coating layer has a diminishing thickness at the upper outer corner region and an upper inner corner region of the base portion. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) Regarding claims 9 and 31, the combination discloses the invention as claimed above but fails to explicitly disclose wherein the chromium coating layer has a thickness of between 10 μm and 20 μm with a thickness variation of equal to or less than 5 μm, and wherein the chromium coating layer has a flatness of equal to or less than 2 μm along the second face and the inner contact surface. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness/flatness of the chromium layer to any number of ranges (i.e. between 10 μm and 20 μm, equal to or less than 2 μm ) disclosed by Applicant, 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.
Regarding claim 21, the combination discloses a piston ring 1 Fig. 1, comprising: a base portion formed of a metallic material (Para. 0003); an outer contact surface and an inner contact surface extending between a first face and a second face that is opposite the first face of the piston ring; a chromium coating layer 11 on the inner contact surface, the outer contact surface, and the second face; a layer of diamond-like carbon (DLC) 12 disposed over the chromium coating layer on the outer contact surface, but fails to explicitly disclose dimension wherein the layer of DLC has a diminishing thickness at a lower outer corner region of the base portion and an upper outer corner region of the base portion. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. in view of Strong et al. and further in view of Sasaki et al. (US 2015/0226327).
Regarding claims 6 and 30, Ito et al. and Strong et al. disclose the invention as claimed above but fails to explicitly disclose a polymer layer overlaying the DLC. Sasaki et al., a piston ring Fig. 3, discloses the use of polymer layer on an upper surface and a lower surface of the piston ring. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the piston ring of Ito et al. with layer of polymer overlaying the piston ring as taught by Sasaki et al. in order to provide a solid lubricant to outer contact surface of the piston ring to allow faster break-in of engine components and improve durability of piston ring (Para. 0006 of Sasaki et al.).
Allowable Subject Matter
Claims 2-4, 26 and 27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: In view of the Applicants arguments and a review of the prior art by the Examiner; the prior art of record neither teaches nor suggests all of the claimed subject matter of claims 2-4, 26 and 27 including specifically where the phosphate layer is disposed directly on the metallic material of the base portion of the first face between an upper outer corner region and an upper inner corner region of the base portion and partially overlaps the DLC layer at an upper outer corner region of the base portion and partially overlaps the chromium coating layer at an upper inner corner region of the base portion. There is no motivation to modify the prior art references, absent the applicant’s own disclosure, in the manner required by the claims.
Response to Arguments
Applicant's arguments filed 11/11/25 have been fully considered but they are not persuasive. Applicant argues that the Strong reference fails to disclose or suggest a phosphate layer provided on a first face. This is not persuasive since the Strong reference does in fact suggest the used of a phosphate layer being be used on surfaces of the piston ring to reduce sliding friction between an outer contact surface of a piston ring and an interior surface of a cylinder wall. With regards to which surface the phosphate is arrange on, it is considered an obvious design choice or engineering expedient for one of ordinary skill in the art to arrange the layer where selected and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Conclusion
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 EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675