Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Claim Objections
Claim 7 is objected to because of an informality: the word “wherein” should be added after “claim 1,”. Claim 8 is objected to because of an informality: the word “claim” should be added between “according to” and “1”. Claim 11 is objected to because of an informality: the comma after “5 percent” should be removed. Appropriate correction is required.
Rejections under 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.
Claims 1-7, 9, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP-3333277-A1 (“Sidenor”).
Claim 1 recites a piston blank for a piston. Sidenor teaches providing pieces of steel which can subsequently be machined or formed into a piston (para. [0001], [0023], [0057]-[0060] & [0064]), i.e. piston blank. Sidenor further discloses the piston blank is manufactured at least in sections from a steel alloy comprising: a chromium content of 0.5 to 2 percent by weight; and a silicon content of 2.5 to 3.5 percent by weight (para. [0028], wherein the ranges in Sidenor overlap with the claimed ranges and disclose the claimed ranges with sufficient specificity; see also Table 1 in para. [0066] which teaches specific chromium and silicon values that are within the claimed range—steels A and C comprising specific chromium and silicon values that are each within the claimed range).
Regarding claim 2, Sidenor further discloses the chromium content is 0.9 to 1.2 percent by weight or the silicon content is 2.85 to 3 percent by weight (para. [0028], wherein the ranges in Sidenor overlap with the claimed ranges and discloses the claimed ranges with sufficient specificity; see also Table 1 in para. [0066] which teaches specific chromium values that are within the claimed range).
Regarding claim 3, Sidenor further discloses the steel alloy comprises a carbon content of 0.35 to 0.5 percent by weight (para. [0028], wherein the range in Sidenor overlaps with the claimed range and discloses the claimed range with sufficient specificity; see also Table 1 in para. [0066] which teaches specific carbon values that are within the claimed range).
Regarding claim 4, Sidenor further discloses the steel alloy comprises a manganese content of 0.5 to 0.9 percent by weight (para. [0028], wherein the range in Sidenor overlaps with the claimed range and discloses the claimed range with sufficient specificity; see also Table 1 in para. [0066] which teaches specific manganese values that are within the claimed range).
Regarding claim 5, Sidenor further discloses the steel alloy comprises a titanium content of 0.005 to 0.015 percent by weight (para. [0046]).
Regarding claim 6, Sidenor further discloses the steel alloy comprises a molybdenum content of 0.1 to 0.3 percent by weight (para. [0028], wherein the range in Sidenor overlaps with the claimed range and discloses the claimed range with sufficient specificity; see also Table 1 in para. [0066] which teaches specific molybdenum values that are within the claimed range).
Regarding claim 7, Sidenor further discloses the steel alloy comprises an increased resistance to scaling at 550 to 650 °C (paras. [0001], [0024] & [0057]).
Claim 9 recites the piston blank is an integral component made from the steel alloy throughout. Sidenor teaches providing a piece of the steel that is subsequently formed/machined into at least a part of the piston (paras. [0001], [0023], [0025], [0058]-[0060] & [0064]). Thus, this integral piece of steel/blank is made from the steel alloy throughout. The examiner notes that this claim does not require the piston blank to form the entire piston.
Regarding claim 16, Sidenor further discloses the chromium content is 0.9 to 1.2 percent by weight and the silicon content is 2.85 to 3 percent by weight (para. [0028], wherein the ranges in Sidenor overlap with the claimed ranges and discloses the claimed ranges with sufficient specificity; see also Table 1 in para. [0066] which teaches specific chromium values that are within the claimed range and silicon values near each end of the claimed range).
Claim 17 recites a piston blank for use in a piston of an internal combustion engine. Sidenor teaches providing pieces of steel which can subsequently be machined or formed into piston blanks for use in a piston of an internal combustion engine (para. [0001], [0023], [0057]-[0060] & [0064]), i.e. piston blank. Sidenor further discloses the piston blank made from a steel alloy comprising: a chromium content of 0.5 to 2 percent by weight; a silicon content of 2.5 to 3.5 percent by weight; a carbon content of 0.35 to 0.5 percent by weight; a manganese content of 0.5 to 0.9 percent by weight; and a molybdenum content of 0.1 to 0.3 percent by weight (para. [0028], wherein the ranges in Sidenor overlap with the claimed ranges and discloses the claimed ranges with sufficient specificity; see also Table 1 in para. [0066] which teaches specific chromium, silicon, carbon, manganese, and molybdenum values that are within the claimed range—steels A and C comprising specific chromium, silicon, carbon, manganese, and molybdenum values that are all within the claimed range).
Sidenor further teaches a titanium content of 0.005 to 0.015 percent by weight (para. [0046]).
Regarding claim 18, Sidenor further discloses the chromium content of 0.9 to 1.2 percent by weight; the silicon content of 2.85 to 3 percent by weight; the carbon content of 0.4 to 0.44 percent by weight; the manganese content of 0.6 to 0.8 percent by weight; and the molybdenum content of 0.15 to 0.2 percent by weight (para. [0028], wherein the ranges in Sidenor overlap with the claimed ranges and discloses the claimed ranges with sufficient specificity; see also Table 1 in para. [0066] which teaches specific chromium, carbon, manganese, and molybdenum values that are within the claimed range, and teach silicon values near each end of the claimed range).
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
In the alternative, claims 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sidenor as applied to claims 1 and 17, respectively.
Regarding claim 16, Sidenor further discloses the chromium content is 0.9 to 1.2 percent by weight and the silicon content is 2.85 to 3 percent by weight (para. [0028], wherein a prima facie case of obviousness is created since the ranges in Sidenor overlap with the claimed ranges; see also Table 1 in para. [0066] which teaches specific chromium values that are within the claimed range and silicon values near each end of the claimed range).
Regarding claim 18, Sidenor further discloses the chromium content of 0.9 to 1.2 percent by weight; the silicon content of 2.85 to 3 percent by weight; the carbon content of 0.4 to 0.44 percent by weight; the manganese content of 0.6 to 0.8 percent by weight; and the molybdenum content of 0.15 to 0.2 percent by weight (para. [0028], wherein a prima facie case of obviousness is created since the ranges in Sidenor overlap with the claimed ranges; see also Table 1 in para. [0066] which teaches specific chromium, carbon, manganese, and molybdenum values that are within the claimed range, and teach silicon values near each end of the claimed range).
Claims 8-9, 11-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sidenor as applied to claim 1, above, and further in view of US Patent No. 5,081,967 (“Kemnitz”).
Regarding claim 8, Sidenor fails to explicitly teach the piston blank comprises a piston lower part; and a piston upper part made from the steel alloy, wherein the piston lower part is made from a further material having a higher thermal conductivity than the steel alloy. However, this would have been obvious in view of Kemnitz.
Kemnitz is directed to a piston for an internal combustion engine having improved efficiency and heat transfer from the piston head (col. 1 lines 5-15). The piston comprises an upper piston head 1 made from forged steel, and a piston skirt 2 made from aluminum that is below portions of the piston head (fig. 1, col. 2 lines 13-19).
In this case, Sidenor teaches a steel material used in a piston and capable of being forged, but is silent as to a specific piston structure. Kemnitz teaches a specific piston structure with improved efficiency and having at least one piece formed from steel. Since the piston head is subjected to the highest temperatures and pressures, it is predictable that using the steel of Sidenor to create the piston head of Kemnitz will take advantage of the Sidenor steel benefits such as high resistance to oxidation and good mechanical strength at high temperature. Thus, it would be obvious to use the steel of Sidenor to create the piston of Kemnitz so that the piston head 1 of Kemnitz is formed out of the steel and the skirt is formed out of aluminum.
Given the above modification, one of skill in the art will appreciate that the aluminum lower part has a higher thermal conductivity than the steel upper part since it is well known for aluminum to have a significantly higher thermal conductivity than steels.
Claim 9 recites the piston blank is an integral component made from the steel alloy throughout. When modifying Sidenor in view of Kemnitz for the same reasons detailed in the rejection to claim 8, above, Kemnitz teaches the steel upper part being a forged integral piece (fig. 1, col. 2 lines 13-19).
Regarding claim 11, Sidenor is modified in view of Kemnitz as detailed in the rejection to claim 8, above (i.e. the steel of Sidenor is used to create the piston head 1 of Kemnitz). Given this modification, Sidenor et al. teach a piston comprising the piston blank (1) according to claim 1 (fig. 1. Of Kemnitz, wherein head 1 is a blank at least before being attached to the skirt 2), the piston further comprising: a combustion chamber bowl (10) (Kemnitz, fig. 1, col. 2 lines 33-34); and a cooling canal (7) running at least in sections around the combustion chamber bowl (Kemnitz, fig. 1, col. 2 lines 27-32), wherein an average first wall thickness of a first wall (8) provided between the combustion chamber bowl and the cooling canal is greater than 5 percent, of a piston diameter of the piston (Kemnitz, col. 2 lines 33-39).
Regarding claim 12, Sidenor et al. fail to explicitly teach the average first wall thickness (w31) is at least 5 millimeters. However, MPEP 2144.04(IV)(A) states that mere scaling up of an invention capable of being scaled up is not patentable. In this case, the piston is capable of being formed in larger sizes. Thus, merely scaling up the piston to a larger size that has an average first wall thickness of at least 5 millimeters is not patentable.
Claim 13 recites an average second wall thickness of a second wall provided between the combustion chamber bowl and an inner form of the piston is greater than 5 percent of the piston diameter. As illustrated in fig. 1 of Kemnitz, the bottom/second wall of the bowl 10 that also delimits an inner form of the piston has a wall thickness greater than the first wall 8 thickness. Thus, since the first wall thickness is taught to be more than 5 percent of the piston diameter, the bottom/second wall thickness will also be more than 5 percent of the piston diameter.
Regarding claim 14, Sidenor et al. fail to explicitly teach the average second wall thickness is at least 5 millimeters. However, MPEP 2144.04(IV)(A) states that mere scaling up of an invention capable of being scaled up is not patentable. In this case, the piston is capable of being formed in larger sizes. Thus, merely scaling up the piston to a larger size that has an average second wall thickness of at least 5 millimeters is not patentable.
Regarding claim 19, Sidenor is modified in view of Kemnitz as detailed in the rejection to claim 8, above (i.e. the steel of Sidenor is used to create the piston head 1 of Kemnitz). Given this modification, Sidenor et al. teach a combustion chamber bowl (10) having a combustion chamber surface configured to be in communication with a combustion chamber (Kemnitz, fig. 1, col. 2 lines 33-34), wherein the chromium content and the silicon content are operable to allow for a higher combustion chamber surface temperature and a resistance to scaling of the combustion chamber surface (Sidenor, paras. [0001], [0023]-[0024], [0032] & [0035]).
Regarding claim 20, Sidenor et al. further teaches a cooling canal (7) running at least in sections around the combustion chamber bowl (Kemnitz, fig. 1, col. 2 lines 27-32), wherein an average first wall thickness of a first wall (8) provided between the combustion chamber bowl and the cooling canal is greater than 5 percent of a piston diameter of the piston (Kemnitz, col. 2 lines 36-39).
Claim 20 also recites an average second wall thickness of a second wall provided between the combustion chamber bowl and an inner form of the piston is greater than 5 percent of the piston diameter. As illustrated in fig. 1 of Kemnitz, the bottom/second wall of the bowl 10 that also delimits an inner form of the piston has a wall thickness greater than the first wall 8 thickness. Thus, since the first wall thickness is taught to be more than 5 percent of the piston diameter, the bottom/second wall thickness will also be more than 5 percent of the piston diameter.
Claim 20 lastly recites the average first wall thickness and the average second wall thickness are configured to reduce heat dissipation through the first wall and the second wall providing the higher combustion chamber surface temperature. The wall thicknesses of the first and second walls are capable of reducing heat dissipation therethrough at least when comparted to thinner walls.
Regarding claim 21, Sidenor et al. fail to explicitly teach the average first wall thickness is at least 5 millimeters, and the average second wall thickness is at least 5 millimeters. However, MPEP 2144.04(IV)(A) states that mere scaling up of an invention capable of being scaled up is not patentable. In this case, the piston is capable of being formed in larger sizes. Thus, merely scaling up the piston to a larger size that has average first and second wall thicknesses of at least 5 millimeters is not patentable.
Claim 22 recites the average first wall thickness is greater than 7 percent of the piston diameter. Kemnitz teaches the average first wall thickness being between 4 and 7 percent of an outer piston diameter (fig. 1, col. 2 lines 36-39). Thus, Kemnitz teaches a range of the average wall thickness including values above 7 percent with respect to an inner piston diameter, for example the inner diameter of the piston skirt. In addition, even if the diameter is interpreted as the maximum outer diameter, a prima facie case of obviousness exists because the range of 4-7 percent is so close to the range of greater than 7 percent that one skilled in the art would have expected them to have the same properties.
Claim 22 also recites the second wall thickness is greater than 7 percent of the piston diameter. As illustrated in fig. 1 of Kemnitz, the bottom/second wall of the bowl 10 that also delimits an inner form of the piston has a wall thickness greater than the first wall 8 thickness. Thus, since the first wall thickness is taught to be up to 7 percent of the piston diameter, the bottom/second wall thickness will be more than 7 percent of the piston outer diameter. The examiner also notes that the second wall thickness is also more than 7 percent of the inner diameter of the skirt.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Sunil Singh (571-272-3460). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”