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 § 102
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 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.
Claim(s) 1, 6 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kakehi (JPH 1061777).
Regarding claim 1, Kakehi discloses a piston ring used in a reciprocating compressor, wherein: the piston ring is formed of a resin composition that contains aromatic polyether ketone resin (Para 0018 of English translation) having the glass transition point of 150 °C or more, as a main component (Para 0058 of English translation); and the resin composition contains one or more carbon materials in which the content of a sulfur atom is 200 ppm or less (Para. 0018 of English translation). Regarding claim 6, Kakehi discloses a wherein the aromatic polyether ketone resin is polyether ketone resin or polyether ketone ether ketone ketone resin (Para. 0030 of English translation).
Regarding claim 9, Kakehi discloses a wherein the content of the sulfur atom in the piston ring is 250 ppm or less (Para. 0018 of English translation).
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) 2-5, 7, 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakehi.
Regarding claim 2, Kakehi discloses the invention as claimed above but fails to explicitly disclose the specific range of the resin composition containing 5-35 vol% of the carbon material relative to the whole of the resin composition. 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 amount of resin composition present to any number of ranges (i.e. 5-35 vol%) 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 3, Kakehi as modified discloses wherein the carbon material includes at least carbon fiber (Para. 0018 of English translation).
Regarding claim 4, Kakehi as modified discloses wherein the carbon fiber is a PAN based carbon fiber (Para. 0033 of English translation).
Regarding claim 5, Kakehi discloses the invention as claimed above but fails to explicitly disclose wherein the resin composition contains 5-25 vol% of polytetrafluoroethylene resin relative to the whole of the resin composition. 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 amount of polytetrafluoroethylene resin present to any number of ranges (i.e. 5-25 vol% ) 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, Kakehi as modified discloses wherein: the aromatic polyether ketone resin is polyether ketone resin or polyether ketone ether ketone ketone resin, the carbon material includes at least PAN based carbon fiber but fails to explicitly disclose that the resin composition contains 5-35 vol% of the carbon material relative to the whole of the resin composition, and the resin composition contains 5-25 vol% of polytetrafluoroethylene resin relative to the whole of the resin composition. 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 amount of resin or polytetrafluoroethylene resin present to any number of ranges (i.e. 5-35, 5-25 vol%, respectively) 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 8, Kakehi as modified discloses wherein: the carbon material is only the PAN based carbon fiber, or a combination of the PAN based carbon fiber and graphite, and the resin composition does not contain other carbon materials (Para. 0033 of English translation).
Regarding claim 10, Kakehi discloses the invention as claimed above but fails to explicitly disclose the intended use of the piston ring wherein the reciprocating compressor is configured as a hydrogen gas reciprocating compressor that compresses hydrogen gas. Nevertheless, [A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
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
