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 .
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
Applicants’ argument filed that the reference of Kanei does not teach the main component is polyimide is not persuasive, since Kanei teaches the main component is PI with additive as PTFE (see paragraph 0044-0053 and entire document). This was explained in an interview with applicant’s representative.
Applicants’ argument with regard paragraph 0047 of Kanei is not persuasive since the reference clearly states that the main component is PI alone (e.g. paragraph 0044) or combination of PI and PTFE (e.g. paragraph 0044). Also see paragraph 0052.
Again table regarding claim 7 and 1 to reference of Kanei is not persuasive in view of what is stated in paragraph 0043-0053, PI alone, combination of PI and PTFE and additive of CF
Applicants argument with regard to claim 3 is not persuasive since the reference of Oga is used to teach different size of fibers.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-4, 7, 9 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent application 18278175. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18278175 teach limitations of claim 1-11 of the current application (applicant should compare claims of 18278175 to current application).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 7, 9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kanei et al (US 20210156371A1).
Kanei discloses a piston ring (e.g. 11 and/or 12) used in a reciprocating compressor that compresses gas, wherein the piston ring is formed of a resin composition (e.g. paragraph 0044-0053, “PI alone”) containing thermoplastic polyimide resin as a main component (e.g. see paragraph 0044 and 0052, PI alone or combination of PTFE and PI), the resin composition contains carbon material (e.g. see CF) in which the content of sulfur atom is 200 ppm or less (e.g. see paragraph 0049, “sulfur-free material”), the carbon material is at least one of carbon fiber, graphite, and coke powder (e.g. paragraph 0044-0045, carbonfiller, carbon fibers and graphite) and the resin composition contains total 5-35 vol% of the carbon material (e.g. 5%-40%) relative to the whole of the resin composition (e.g. paragraph 0044-0053).
Wherein the resin composition contains 5-25 vol% of polytetrafluoroethylene resin relative to the whole of the resin composition (e.g. paragraph 0044, which states portion greater than additive which is 5-40% by mass and paragraph 0052 which teaches combination thereof, PI and PTFE).
Regarding claim 3: Wherein the carbon material includes at least the carbon fiber (e.g. carbon fiber stated in the reference).
Regarding claim 4: Wherein the content of the sulfur atom in the piston ring is 250 ppm or less (see paragraph 0049).
Regarding claim 7: Kanei discloses a piston ring used in a reciprocating compressor that compresses gas, wherein the piston ring is formed of a resin composition containing thermoplastic polyimide resin or polyamideimide resin as a main component (e.g. paragraph 0050-0052) and the content of a sulfur atom in the piston ring is less than 5 ppm (e.g. paragraph 0049).
Regarding claim 9: Wherein the resin composition does not contain carbon material and sulfide (e.g. see paragraph 0052 and paragraph 0045, it is noted that the resin composition does not contain both carbon material and sulfide).
Regarding claim 11: Wherein the resin composition contains, as the additives, the polytetrafluoroethylene resin and the aromatic polyester resin, and the total compound rate of the polytetrafluoroethylene resin and the aromatic polyester resin is 5-50 vol% relative to the whole of the resin composition (e.g. paragraph 0044, which states portion greater than additive which is 5-40% by mass and paragraph 0052 which teaches combination thereof, PI and PTFE).
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) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kanei in view of Oga et al (JP2022058162A).
Kanei discloses the invention as claimed above but fails to disclose the carbon fiber having the average fiber length of the carbon fiber is 20-200 micrometer. Oga discloses a piston ring (e.g. figures) used in a reciprocating compressor that compresses gas, wherein the piston ring is formed of a resin composition and carbon fibers (e.g. see PEEK resin) containing at least polyetheretherketone resin or thermoplastic polyimide resin as a main component (e.g. see above), the resin composition contains carbon material (e.g. Oga states the carbon fibers and the filler fibers is about 200 micrometer). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the size of the carbon fibers in Kanei to be between 20-200 micrometer as taught by Oga with reasonable expectation of success to provide effective wear resistance (see Oga “The length of the filler fiber contained in the resin forming the seal ring 1 is preferably 1000 μm or less. If the length of the filler fiber exceeds 1000 μm, shrinkage anisotropy during injection molding becomes strong, which is not preferable. Further, it is desirable that the average length of the filler fibers is about 200 μm. The filler fiber is not limited to the above length, and may be any shape and size that can exhibit the effect of wear resistance. Further, although carbon fiber is exemplified as the filler fiber, the present invention is not limited to carbon fiber, and may be, for example, glass fiber or CNF (cellulose nanofiber)”).
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant should review document US20200408302 which teach all the limitation of the claims, document US20200340582 teach all the limitations of the claims, reference JP2013155846 teach the limitation of the claims, US20020168506 teaches limitations of claim, paragraph 0049 and JPH02175793.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675
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