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 on 1/15/2026 have been fully considered but they are not persuasive.
Applicant arguments that the added limitation “when the piston ring is new and unworn” is not taught by Urabe is not persuasive since the reference also teaches virtual actual contact width that is g in figure 2 which has the range of 0.05mm to 0.4mm (See translation section of Urabe “In the top ring 50, the virtual actual contact width g is formed to be 0.05 mm or more, preferably 0.10 mm or more, and more preferably 0.15 mm or more. More preferably, it is formed to be 0.3 mm or more, more preferably it is set to be larger than 0.3 mm, and even more preferably it is 0.4 mm or more.”). It is furthermore noted that in an interview examiner explained that the virtual contact is when the piston ring is unworn and new (virtual contact is a calculated width).
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11994219 (Assignee Kabushiki Kaisha Riken teaches in claims 1-13 what is stated in claims 8-9 of the current application) in view of references that reject claims 1-7 and also references which are stated in the NPL document PCTJP2022046957 (see documents 1-9). Applicant should compare limitations of current claims with claims of Patent 11994219 and limitations provided in JP2002323133.
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) 1-3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Urabe (JP2021060048A).
Urabe discloses a piston ring (e.g. 50, figure 2) comprising an annular main body portion having an inner peripheral surface (e.g. surface opposite of 53), an outer peripheral surface (e.g. surface having 56), a first side surface (e.g. top surface of 50 in figure 2) and a second side surface (e.g. bottom surface of 50 in figure 2) substantially orthogonal to the inner peripheral surface, the outer peripheral surface of the piston ring comprising a first curved surface (e.g. 1st curve surface 52 adjacent to the top surface) provided on a side of the main body portion toward the first side surface, the first curved surface being convexly curved outwards in a radial direction of the main body portion (e.g. see figures 2), a second curved surface (e.g. 2nd curve surface 52 adjacent to the bottom surface) provided on a side of the main body portion toward the second side surface, the second curved surface being convexly curved outwards in the radial direction of the main body portion (e.g. see figures 2 and 2) and an intermediate surface formed to extend in a width direction of the main body portion so as to connect the first curved surface to the second curved surface, wherein, when the piston ring is new and unworn (e.g. see ring in figure 2), the intermediate surface has a flat portion and a width of the intermediate surface in the width direction is between 0.05 mm and 0.30 mm (e.g. see width of “g”, “In the top ring 50, the virtual actual contact width g is formed to be 0.05 mm or more, preferably 0.10 mm or more, and more preferably 0.15 mm or more. More preferably, it is formed to be 0.3 mm or more, more preferably it is set to be larger than 0.3 mm, and even more preferably it is 0.4 mm or more”).
Regarding claim 2: Wherein the flat portion has a width dimension of 50% or more of the width of the intermediate surface in the width direction (e.g. that is the case as seen in figures).
Regarding claim 3: Wherein at least one of a first wedge angle and a second wedge angle is 1.5° or less, the first wedge angle being an angle formed between the intermediate surface and a first virtual line in contact with the first curved surface at a first boundary between the first curved surface and the intermediate surface, and the second wedge angle being an angle formed between the intermediate surface and a second virtual line in contact with the second curved surface at a second boundary between the second curved surface and the intermediate surface (e.g. that is the case since the angle is very tiny or almost zero between the curved surfaces and the intermediate surface, see figure 2 and 16 also see figures of oil ring with rails by way of example).
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) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Urabe in view of Laugenio (DE3833322A1).
Urabe discloses the invention as claimed above but fails to disclose that the intermediate is asymmetrical (e.g. limitation which would satisfy claims 4-5). Laugenio teaches a piston ring with an outer peripheral surface with symmetrical shape in figure 1 and also teaches a piston ring with an outer peripheral surface with asymmetrical shape in figure 2. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to configure the outer peripheral surface of Urabe to be asymmetrical as taught by Laugenio with reasonable expectation of success wit advantages stated in the section “Description” in the translation attached on form 892 and see claim 3 of Laugenio. It is further noted that having a particular shape is considered to be art equivalent (see figures of Laugenio).
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Urabe in view of Sasaki et al (JP2003328852A).
Urabe discloses the invention as claimed above but fails to disclose an inner cut surface extending obliquely relative to the width direction so as to connect the first side surface to the inner peripheral surface. Sasaki teaches 1st embodiment of piston ring with inner surface, outer surface opposite the inner surface, top surface, bottom surface opposite the top surface and the top and bottom surface being orthogonal to the inner surface (e.g. figure 3 or 6), also teaches a second embodiment of piston ring with inner surface, outer surface opposite the inner surface, top surface, bottom surface opposite the top surface, the top and bottom surface being orthogonal to the inner surface and an inner cut surface (e.g. inner cut surface shown in figures 9 or 10) that joins the inner surface to the top surface. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the piston ring of Urabe to have a inner cut surface as taught by Sasaki with reasonable expectation of success, since having a ring with inner cut surface (e.g. see figures 9 or 10 of Sasaki) is art equivalent with a ring without cut surface (e.g. figures 1 or 3 or 6 or 7 or 8 of Sasaki) to provide same or similar seal function.
Regarding claim 7: The limitation of claims 7 is taught by the combination of Urabe and Sasaki which provide each and every structural limitation which is capable of torsion angle of the piston ring in a predetermined cylinder mounting state is 5 to 90 arcminute (e.g. intended use or method limitation given little or no patentable weight in an apparatus claim when the structure of the piston ring is taught, see MPEP 2113-2114).
Claim(s) 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Urabe in view of Shimizu et al (US20180038483, compare figures of Shimizu to the current application figures).
Urabe further discloses the piston ring according to claim 1 and an oil control ring including a pair of side rails (e.g. 73a-73b, figure 3) and a spacer expander (e.g. expander having 74m) disposed between the pair of side rails, wherein each side rail has an outer peripheral rail surface (e.g. surface having 85), an inner peripheral rail surface (e.g. surface opposite 85), a first side rail surface (e.g. top surface of 73a), and a second side rail surface (e.g. e.g. bottom surface of 73a opposite the top surface), the inner peripheral rail surface has a vertically symmetrical shape in a cross section in an axial direction (e.g. figure 3 shows this), the inner peripheral rail surface has an inner tip portion (e.g. inner tip portion that contacts ear of the spacer expander), the spacer expander includes a plurality of ear portions (e.g. 74m), plurality of rail facing portions (e.g. other portions of the spacer expander that are not the plurality of ear portions and adjacent to the plurality of ear portions) facing the rail surface (e.g. top and bottom surfaces of the rails that face the facing portions of the spacer expander), the inner peripheral rail surface abutting on the ear portions, the plurality of ear portions satisfying a following condition W/H is > 1.5 (e.g. compare the width top 74m in figure 3 to height of bottom 74m in cross-section, the width is at least 1.5 larger than the height), wherein W represents a width of each of the ear portions at a position moved by 0.05 mm from a highest position of each of the ear portions in a direction of a corresponding one of the rail facing portions, and H represents a height difference between a highest position of a region in each of the rail facing portions, the region being adjacent to the corresponding one of the ear portions and the highest position of each of the ear portions but fails to disclose the inner tip portion satisfying the following condition in the cross section in the axial direction: 0.7 < R1/LhO < 1.1, wherein R1 represents a radius of curvature of a curve forming the inner tip portion, and LhO represents a height of the side rail. Iwata discloses plurality of rails, a spacer expander between the plurality of rails, an inner surface of each of the plurality of rails having a inner tip portion that satisfy a condition in the cross sectional in the axial direction 0.7 < R1/LhO < 1.1 (e.g. this is the case as comparing the surface 13 in Shimizu to surface 103g of the current application), wherein R1 represents a radius curvature of a curve forming the inner tip portion and LhO represents a height of the rail (see figure 4 of Shimizu). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the inner tip portion of Urabe to have the relationship as taught by Shimizu with reasonable expectation of success to provide proper contact between the ear portions and the inner tip of the rail (e.g. proper curvature would provide excellent contact to prevent the rails from twist and having a particular shape is non-limiting, see description of 13 in Shimizu US 20180038483).
The combination of Urabe and Shimizu teach wherein the inner peripheral rail surface of the side rail is continuously curved along an inner tip portion, a first peripheral edge portion and a second peripheral edge portion of the side rail, wherein a radius of curvature of the inner tip portion is a first radius of curvature, a radius of curvature of the first peripheral edge portion is a second radius of curvature that is smaller than the first radius of curvature, and a radius of curvature of the second peripheral edge portion is a third radius of curvature that is smaller than the second radius of curvature (as shown in figure below Shimizu teaches 1st radius, 2nd radius and 3rd radius, where 2nd radius is smaller than 1st radius and 3rd radius is smaller than 1st radius).
See figure having 1st radius, 2nd radius and 3rd radius:
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Examiner is also providing evidence that when a single radius is provide the figure would appear as the one in reference US20190360585A, see figure 3 below. The radius of the inner peripheral surface is made of one radius.
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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. Examiner is providing many references that teach at least claim 1 (see form 892, US2004119242, US20170175893, US20110100318, US20180031127, US20180038483, US20040061291, US20210164568, JP2021060048A, WO2019069748, DE4429649, DE3833322). It is further noted that applicant should review all rejections provided in US application 18/550701 which teach the limitation of current claims 8-9. Assignee and/or applicants should review US 20150167844 which teach the concept or relationship of width relative to height of the ear portions of an spacer expander, see figures 1-3.
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