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 .
Election/Restrictions
Applicant’s election without traverse of 1-7 in the reply filed on 9/23/25 is acknowledged.
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) 1-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katumaru et al. (US 7077402).
Regarding claim 1, Katumaru et al. discloses an oil ring 4 Fig. 1A that is a multi-piece-type oil ring provided on a piston 1 of an internal combustion engine comprising a ring body 5 including a rail 7, 8, and an expander 6 applying a tensile force to the ring body, wherein: the rail of the ring body is provided with a film 8 formed by means of a physical vapor deposition treatment; an outer peripheral face of the rail formed by the film includes: an actual land face 11a Fig. 1B that is formed to have a strip shape that extends in a circumferential direction and that abuts against and slides on an inner wall face 2a of a cylinder 2 of the internal combustion engine; and an inclined face 11b that continues from an edge of the actual land face in an axial direction to an outside in the axial direction and has a larger distance from the inner wall face on a further outside in the axial direction, but fails to explicitly disclose the process in which the inclined face includes a face obtained by polishing or grinding a surface of the film along the circumferential direction. Nevertheless, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) For the purposes of examination, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply the reference provided discloses the inclined face structure.
Regarding claim 2, Katumaru et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the actual land face is constituted by a face obtained by polishing or grinding a surface of the film along the axial direction. Nevertheless, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) For the purposes of examination, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply the reference provided discloses the inclined face structure.
Regarding claim 3, Katumaru et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein, in a case where a position in which an inclination angle of the inclined face with reference to the axial direction is 7° is defined as an assessment position, a reduced peak height Rpk obtained by measuring the assessment position along the circumferential direction is 0.15 μm or less. 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 angle of the inclined face to any number of positions (i.e. 0.15 μm or less) 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 4, Katumaru et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein, in a case where a position in which an inclination angle of the inclined face with reference to the axial direction is 7° is defined as an assessment position, a material ratio Rmr, in a case of generating a 0.3 μm height decrease with a 0.5% position as a starting point, obtained by measuring the assessment position along the circumferential direction is 35% or more. 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 angle of the inclined face to any number of positions (i.e. 35% or more) 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 7, Katumaru et al. as modified discloses wherein the film 8 is a chromium nitride-based alloy film or a hard carbon film (Col. 5, Ln. 26).
Allowable Subject Matter
Claims 5 and 6 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 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 5 and 6 including where the inclined face includes a hairline that extends in the circumferential direction. There is no motivation to modify the prior art references, absent the applicant’s own disclosure, in the manner required by the claims.
Conclusion
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