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
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) 8 and 10-17 is/are rejected under 35 U.S.C. 103 as being unpatentable Weinenger (US 2019/0264633) in view of Kiekhaefer (US 3,851,631), and further in view of Panyard (US 1,545,274).
Regarding claim 8, Weinenger discloses an a two-stroke engine (title, abstract), comprising:
a crankcase (Fig. 1, shown);
a cylinder 12 coupled to the crankcase (Fig. 1, shown), the cylinder extending along and centered on an axis (Fig. 1, shown cylinder having an axis);
a piston 10 housed within the cylinder, the piston extending along and centered on the axis (Fig. 1 and 2, shown), the piston comprising:
a piston head 30; and
a piston skirt 22 having a first longitudinal end coupled to the piston head and a second longitudinal end opposite the first end, the second end adjacent to the crankcase (Fig. 2, the piston having two ends and in Fig. 1, one being adjacent a crankcase);
a rail coupled to an exterior surface of the piston skirt (¶ [00015], the grooves 64 include piston rings/rails)
Weinenger faild to disclose the two-stroke engine being an inverted V-engine that has the rail extending circumferentially around the axis from a first end and a second end opposite the first end, the rail defining a notch extending along the rail between the first end and the second end; and a ring coupled to the rail and positioned within the notch of the rail, wherein the ring and rail are biased against rotating with respect to each other.
Kiekhaefer discloses a die cast V-type Two-Cycle Engine (Title), wherein the this construction allows for a compact engine that is more efficient and powerful within its space usage (Col. 1, Ln. 64 to Col. 2, Ln. 19).
It would have been obvious to one of ordinary skill in the art to modify the piston and engine of Weinenger to be included within the compact die cast inverted V-type design of Keikhaefer, wherein such a construction allows for a more compact and efficient two-stroke engine.
Panyard discloses a piston ring wherein the piston includes a rail 11 which includes a circumferential groove for the inclusion of a small ring 12 within it, wherein the rail 11 includes a gap for the inclusion of a spring notch 14, wherein this ring produces a durable, economic, low wear ring which prevents oil leakage (Pg. 1, Lns. 13-41).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the modified Weinenger with a ring construction such as that in Panyard wherein doing so provides the ring benefits of ceiling against the sidewalls while also being economical and durable.
Regarding claim 10, the modified Weinenger discloses the engine of claim 8, further comprising a wrist pin coupled to the piston, wherein the rail is positioned along the piston skirt between the wrist pin and the second longitudinal end (Fig. 2, of Weinenger shows a piston with lower rings below a wrist pin).
Regarding claim 12, the modified Weinenger discloses the engine of claim 8, further comprising an air port, wherein the rail is located between the air port and the crankcase (Fig. 1, the lower rings of Weinenger show it being between the ports 18 20 and the crankcase)
Regarding claims 11 and 13-17, the modified Weinenger discloses the engine of claim 10, but fails to disclose wherein the rail is spaced from the wrist pin by a distance between 1.6 inches and 1.8 inches in a direction parallel to the axis, wherein the first end of the rail and the second end of the rail are separated by a distance of 0.012 inches to 0.020 inches, wherein the rail has a height of 0.1120 inches to 0.1170 inches, wherein the ring has a height of 0.010 inches to 0.030 inches, wherein the rail has a width of 0.150 inches to 0.170 inches, and/or wherein the ring has a width of 0.1000 inches to 0.140 inches.
However, it would have been an obvious matter of design choice to modify the device of the modified Weinenger to suit such ranges and sizes since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further these changes amount to altering the ranges of a particular structure and 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. In this case, the modified Weinenger discloses a ring with the same structures but fails to disclose its particular size or range of sizes wherein one of ordinary skill in the art would use their best design choice for a ring to suit the engine and piston size and/or discover the optimum size through routine experimentation.
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 1-2, 4-10, 12, 14-16, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 10, 12-13, 15, 17, and 20 of U.S. Patent No. 12,292,013, hereinafter “013.” Although the claims at issue are not identical, they are not patentably distinct from each other because: the claim limitations of the instant invention are fully disclosed by the corresponding claims of 013. The chart below maps which claims of the instant invention correspond to the claims of 013.
Claims of the Instant Invention
Corresponding Claims of 013
1
1, 7, 13
2
1
4
7
5
2
6
3
7
15
8
1, 7, 13
9
1, 7, 13
10
1, 7, 13 (being located at the bottom of a skirt is between the wrist pin and crankcase end)
12
4-5
14
12
15
8
16
10
18
1, 7, 13
19
17
20
20
Claim 3, 11, 13, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable and obvious over claims 1, 7, and 13 of U.S. Patent No. 12,292,013.
Regarding claim 3, the claims of 013 do not disclose a second piston ring in the piston skirt. However, it is old and well-known in the art to include a plurality of piston rings/piston ring assemblies such that examiner takes official notice that it would have been obvious to one of ordinary skill in the art to modify the device of 013 with a second ring within its piston exterior because it would have improved the sealing against gas intrusion, piston stability, and/or the oil scraping capabilities.
Regarding claims 11, 13, and 17, while the claims of 013 do not specifically disclose the ranges of these values, it would have been obvious to one having ordinary skill in the art before the filing date of the invention to modify the device of 013 since it has been held that where the general conditions of a claim are disclosed, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, the claims of 013 disclose all the workable parts of the structure and merely omit the specific ranges of its sizing, wherein it would have been obvious to one of ordinary skill in the art to modify the rings to the specified sizes through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN A LATHERS whose telephone number is (571)272-1050. The examiner can normally be reached M-F 10a-6p.
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/KEVIN A LATHERS/Primary Examiner, Art Unit 3747
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