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 .
Requirement for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
Did Applicant test each combination of base material and coating (or any other than those of Examples 1-17 and Comparative Examples 1-3) to see if they meet the presently required functional material properties of the claim? If so what were the results of such? And if not is there any specific technical reasoning or rationale that Applicant has to believe that each of the listed combinations is capable of providing a piston ring with the claimed material properties?
Did Applicant measure Ra and Rv prior to the corrosion test for any specific examples? If so what were those results?
What if any working conditions, surface treatments, heat treatments, or the like were used when constructing Examples 1-17 and Comparative Examples 1-3 in the specification?
Does Applicant believe that every possible combination of base material and coating material of claim 1 would meet the claimed properties of the piston ring, especially if having a low enough Ra and Rv prior to the corrosion test?
In response to this requirement, please state the specific improvements of the subject matter in claims 1-2 over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to the requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Claim Objections
Claim 1 is objected to because of the following informalities: the comma after “and” at the end of line 10 should be canceled, there should be a comma after “µm” in line 12, “an upper surface” in line 15 should read “the upper surface”, and “a coating at least one or more selected from the group consisting of…” in line 19 should read “a coating selected from the group consisting of…” followed by “and combinations thereof” at the end of the Markush group. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement and/or the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention and/or the claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
First, Examiner notes that the claims recite a vast amount of piston rings (i.e. specifically regarding the possible combinations of materials thereof and the disclosed but unclaimed various manufacturing conditions and surface treatments thereof) and though elements of such each appear to have literal antecedent basis support they do not all appear to have sufficient disclosure that each of the vast quantity of possible combinations (i.e. of base material and coatings along with the only vaguely described “surface treatments”, “heat treatments”, etc. of the specification) would meet the claimed functional properties of the claimed piston ring, and thus is not considered described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The only embodiments discussed in the specification that appear to definitively have the claimed properties (and thus for Applicant to reasonably be considered to have possession of) appear to be ones that have a triiron tetraoxide coating on a low alloy steel, a manganese-based phosphate coating on a low alloy steel, a nitride treated coating on a low alloy steel, or a nitride treated coating on a high alloy steel (see Table 1). This is further complicated by the disclosure appearing to only credit the materials/material properties (and the unclaimed and only vaguely disclosed surface treatments) as the reasons for the measured properties in the claims. Additionally the phosphate coating only appears to be disclosed on an example that does not meet the claim limitations per Applicant’s specification, and the resin coating does not appear to be supported as Applicant’s specification states it is removed before the corrosion test and thus the piston ring of that example is not what is recited in the claim. Still further there is no specific support in the specification regarding combinations of the claimed coatings (as would be required by the “at least one or more” limitation), and it appears that Applicant would clearly not have possession of all possible combinations thereof (e.g. at least a combination of all of the coatings, etc.). Finally as the specification discloses examples (see Examples 6-11 in Table 1) that meet the claimed functional properties without a coating it is unclear if the coatings are even required for the claimed functional properties. Appropriate correction is required. Examiner recommends limiting the claims to the above-mentioned materials that there is clear possession of.
Second, the vast amount of piston rings that the claims encompass (i.e. due to the vast amount of material combinations that read on such) lead to subject matter that is not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention without undue experimentation. Specifically as it is clear that not all of the disclosed materials would meet the material property limitations in the claims (e.g. see above and see Applicant’s comparative examples 1-3 where though they are disclosed as having a phosphate coating as claimed they do not meet the claimed material property limitations (see in para. [0033]-[0035] including Table 1)) one of ordinary skill in the art would be required to test all of the possibly millions or more combinations of base materials, coatings (even perhaps the cross-section/section modulus and the vaguely disclosed “surface treatments”) as the art is replete with different low alloy steels high alloy steels each having slightly different chemical structures and physical properties and a different coating(s) selected from Applicant’s claimed group (which alone would require 36 possible different broad combinations of coating (e.g. a PVD coating in combination with a phosphate coating, a PVD coating in combination with a DLC coating and a triiron tetraoxide coating, etc.), and each of those 36 broad combinations having a large number of possible specific coatings (i.e. as there are many different PVD coatings, nitriding coatings, etc.)) just to see if a specific combination would satisfy the claim limitations and result in the claimed functional properties. Thus it would appear that this exceedingly large quantity of disclosed material combinations would require undue experimentation for one of ordinary skill in the art to make the invention or be able to determine what similar material combinations would not read on the claims (e.g. to avoid infringement). See MPEP 2164. Appropriate correction is required. Examiner recommends limiting the claims to the above-mentioned materials that are clearly enabled.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Smith et al. (US 2018/0283553).
With regard to claim 1, Smith discloses a piston ring (10 with 20) for use in an internal combustion engine that uses a hydrogen gas fuel (Examiner notes this is an intended use limitation in the preamble and is given little patentable weight. As the piston ring of Smith can physically be used in such it anticipates this limitation), wherein the piston ring comprises: a base material (10) comprising a low alloy steel or a high alloy steel (as disclosed in claim 10, etc.) with a coating (20) at least one or more selected from the group consisting of a PVD- treated coating, a DLC coating, a hard chromium plating coating, a nitriding-treated coating, a triiron tetraoxide coating, a phosphate coating, a manganese-based phosphate coating, and a resin coating (see para. [0005], etc. disclosing a PVD coating, a DLC coating, and a nitriding treated coating), wherein the piston also satisfies: Ra ≤5 µm, and Rv ≤ 14 µm (see para. [0025], Table 1, etc. disclosing an example embodiment with 0.3µm for Ra and 2.12 µm for Rz, which Examiner notes must essentially always be less than or equal to Rv based on how such is measured as Rv only measures the valley while Rz measures the entire peak to valley range) wherein: Ra (µm) is an arithmetic mean roughness of an upper surface of the piston ring (see para. [0025], etc., as well as this being a standard in the art value) and Rv (µm) is a maximum valley depth of an upper surface of the piston ring ((see para. [0025], etc., as well as this being a standard in the art value); wherein the piston ring has: a transverse rupture index, FP1, determined by a first transverse test conducted under a predetermined condition, and a post-corrosion transverse rupture index, FP2, determined by a second transverse test conducted under the predetermined condition after a corrosion test is conducted in which the piston ring is immersed in a 1% aqueous nitric acid solution for 30 minutes (Examiner notes that as these are defined as material property test of the piston ring, and as the piston ring of Smith is capable of undergoing these test it meets the claimed limitations); wherein a transverse rupture strength maintenance rate, FPS, wherein FPS = FP2/FP1 ≥ 0.75 (Examiner notes that such appears to be a material property and as Smith discloses several embodiments of materials identical to several of the large number of claimed materials/material combinations it would be considered to also disclose these claimed material properties/claimed limitations), wherein KDA is a first strength maintenance coefficient defined as KDA = FPS/Ra, and KDA ≥ 0.2 µm-1 (Examiner notes that such appears to be a material property and as Smith discloses several embodiments of materials identical to several of the large number of claimed materials/material combinations it would be considered to also disclose these claimed material properties/claim limitations). Though Smith is silent as to what the Ra and Rv values would be after a corrosion test, as Smith discloses several embodiments of materials identical to several of the large number of claimed materials/material combinations it would be considered to also disclose these claimed material properties/claim limitations, especially as Smith explicitly discloses much lower Ra and Rv values as such appear to be inherent properties of the material combination.
In the event that Applicant disagrees with Examiner’s interpretation of Smith (e.g. with respect to the after-corrosion values) it would have been considered obvious to one having ordinary skill in the art, at the time of filing, to have modified the device of Smith such that it has as low as possible arithmetic mean roughness (Ra) and maximum valley depth (Rv) and that Ra ≤5 µm and Rv ≤ 14 µm after such a corrosion test, as Examiner hereby takes Official Notice that the art is replete with examples of very smooth surfaces on piston rings and as some exceedingly low value must result in the claimed piston ring material properties of Ra ≤5 µm and Rv ≤ 14 µm after corrosion. Additionally see Applicant’s own para. [0023] that material selection and setting roughness low allows for such, and Applicant admission that it is common knowledge in the art for one of ordinary skill to know how to adjust Ra and Rv (see the 21 January 2026 arguments page 5 second to last paragraph).
With regard to claim 2, Smith discloses that a second strength maintenance coefficient, KDV(µm⁻¹), of the piston ring measured after the corrosion test, is defined as KDV(um⁻¹) = FPS/Rv, and KDV≥ 0.06 µm⁻¹ (Examiner notes that such appears to be a material property and as Smith discloses several embodiments of materials identical to several of the large number of claimed materials/material combinations it would be considered to also disclose these claimed material properties/claim limitations).
In the event that Applicant disagrees with Examiner’s interpretation of Smith (e.g. with respect to the after-corrosion values) it would have been considered obvious to one having ordinary skill in the art, at the time of filing, to have modified the device of Smith such that it has as low as possible arithmetic mean roughness (Ra) and maximum valley depth (Rv) and that thus KDV≥ 0.06 µm⁻¹ after such a corrosion test, as Examiner hereby takes Official Notice that the art is replete with examples of very smooth surfaces on piston rings and as some exceedingly low value must result in the claimed piston ring material properties of KDV≥ 0.06 µm⁻¹ after corrosion. Additionally see Applicant’s own para. [0023] that material selection and setting roughness low allows for such, and Applicant admission that it is common knowledge in the art for one of ordinary skill to know how to adjust Ra and Rv (see the 21 January 2026 arguments page 5 second to last paragraph).
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of claim 1-2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's other arguments filed 21 January 2025 have been fully considered but they are not persuasive.
Specifically the arguments against the 112(a) written description rejection are not persuasive as Applicant’s claimed limitations allow for an exceedingly large amount of possible material combinations (in addition to the unspecified number of possible “surface treatments”, “heat treatments”, and “working conditions” alluded to in the specification and arguments) would still appear to not each have fully written description support in that each of the claimed combinations thereof must have written description support and it is not clear that each possible combination would have the claimed material properties.
Next even if written description support can be persuasively argued against Examiner is still of the opinion that the claims would require undue experimentation for one of ordinary skill in the art to make and use the invention and thus fail the 112(a) enablement requirement. Specifically there are at least 16 basic combinations of base material and coating material, but as Applicant also allows for one or more of the coating materials there are up to 510 basic possible combinations (i.e. 255 different basic coating combinations on each of the two classes of base material). Additionally each category of coating and base material has a plethora of possible specific materials in the relatively broad categories listed (e.g. CrN, TiN, composite layered nitride coatings, etc. are all types of nitriding treated coatings; Stainless steel, tool steel, etc. are all types of high alloy steel; the exact material composition of each coating; etc.). Still further Applicant states that each of these can have different “surface treatments”, “heat treatments”, and “working conditions” that allow for the claimed measured properties of the piston ring (without specific limit to what kinds of treatments could be performed on such and still result in a piston ring that meets the claimed properties). Combined there would be hundreds of thousands if not millions of possible alternatives covered by the claims without a clear distinction on which would or would not read on the claims without testing each. As one of ordinary skill would realize that not all of the possible alternatives are likely to read on the claims properties (Ra and Rv post corrosion, FPS, etc.) they would be required to perform a vast amount of testing to see which combinations thereof would read on the claimed invention either to avoid infringement of similar piston rings or make and use the device after patent expiry. Essentially such would require one of ordinary skill to test a great many possible combinations of base material, coating, and various treatments, with each combination having to undergo two rupture test and a corrosion test, to ascertain what is covered by such a patent and to make the claimed invention upon patent expiry. Though one of ordinary skill in the art would know how to do such, it is the vast number of possible alternatives that would require an excessive amount of experimentation.
Regarding the phosphate coating, as the only specific references to it indicate in the specification are that when placed on a cast iron base material it would not meet the claimed Rv values after the corrosion test, it does not appear clear that such coating would meet the other claimed measured material properties of claim 1.
Regarding the resin coating, as the specification discloses how it is peeled off prior to the corrosion test the resulting Ra, Rv, and FP2 values measured after such a test would have to be without the coating, but then they not have written description support as it would no longer have the coating and thus claim 1 would not read on it.
Examiner recommends limiting the claims to the triiron tetraoxide coating or a manganese-based phosphate coating on a low alloy steel as those appear to both have 112(a) written description support and enablement as well as not being taught by the prior art of record (in combination with the other elements of claim 1).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675