Ex Parte Jialanella et alDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200910943540 (B.P.A.I. Apr. 30, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GARY L. JIALANELLA and DAVID M. COURTER ____________ Appeal 2008-1233 Application 10/943,540 Technology Center 3700 ____________ Decided1: May 1, 2009 ____________ Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and JOHN C. KERINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-1233 Application 10/943,540 2 STATEMENT OF THE CASE Gary L. Jialanella and David M. Courter (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-18 and 20, the only claims pending in the application. Claim 19 was previously canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. THE INVENTION Appellants’ claimed invention is to a valve cover assembly, an engine assembly, and a method for bonding a valve cover to a cylinder head, all in which a continuous bead or film of adhesive is disposed on the perimeter of the mating surface of the valve cover. The adhesive is claimed as comprising a polythiol ether and a crosslinking agent, the polythiol ether having two or more reactive groups capable of reacting with a crosslinking agent. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A valve cover assembly comprising a valve cover having a mating surface adapted to be attached to a cylinder head of an internal combustion engine having a continuous bead of an adhesive disposed on the perimeter of the mating surface of the valve cover wherein the adhesive comprises a polythiol ether having two or more reactive groups capable of reacting with a crosslinking agent and a crosslinking agent. Appeal 2008-1233 Application 10/943,540 3 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Morgan US 4,002,798 Jan. 11, 1977 Jones US 2002/0112684 A1 Aug. 22, 2002 The following rejection is before us for review: 1. Claims 1-18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings of Morgan and Jones. ISSUES The principal issues raised in this appeal are whether Appellants have shown that the Examiner erred in asserting that it would have been obvious to a person skilled in the art to employ the adhesive disclosed in Morgan as a valve cover adhesive in the Jones apparatus, and whether the Examiner erred in finding that the adhesive disclosed in Morgan reads on the claimed adhesive composition. FINDINGS OF FACT The following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). FF 1. The Jones patent discloses that, in order to be suitable for use as a valve cover adhesive, the adhesive must be able to withstand exposure to hydrocarbon materials, engine oil, calcium chloride, brake fluid, glycol coolants, and windshield washer solvents, at elevated temperatures. (Jones, Appeal 2008-1233 Application 10/943,540 4 ¶¶[0025], [0026]). FF 2. The Jones patent discloses that suitable adhesives include high- temperature epoxy resins, polyimides, hi-bred polyimide/epoxy resin, silicone, fluorosilicone, alkylborane initiated acrylic, and epoxy novolac/nitrile rubber adhesives. (Jones, ¶[0026]). FF 3. The Morgan patent discloses that the composition therein is suitable for use as adhesives. (Morgan, col. 10, ll. 54-57; col. 11, ll. 24-29). FF 4. Morgan discloses that the composition therein is capable of withstanding severe temperature environments for extended periods, and is resistant to severe chemical and physical environments, including resistance to strongly acidic solutions, and conditions of high alkalinity. (Morgan, col. 2, ll. 5-10; col. 11, ll. 33-36). FF 5. The Morgan patent discloses the production of a polythiol ether polymer system formed by reacting polyene and polythiol components, optionally admixed or blended, prior to curing, with other polymeric or monomeric materials. (Morgan, col. 9, l. 31-col. 10, l.7). FF 6. In the Morgan disclosure, a polythiol ether is not present prior to the curing step, in that the polythiol ether is formed during the curing step. (Morgan, col. 9, ll. 31-36; col. 11, ll. 24-27). PRINCIPLES OF LAW In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, (1966), the Supreme Court set out a framework for applying the statutory language of §103: [T]he scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness Appeal 2008-1233 Application 10/943,540 5 of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Id. at 17-18. While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid or unpatentable under §103. See KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007). The Court noted that “[t]o facilitate review, this analysis should be made explicit.” Id. at 418, citing In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006) (rejections on obviousness grounds cannot be sustained by mere conclusory statements, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness). However, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. ANALYSIS All of claims 1-18 and 20 on appeal are rejected under 35 U.S.C. § 103(a) in view of Morgan and Jones. Appellants contend that the claims are to be divided into four groups (claims 1-6; claims 7-14; claims 15-18; and claim 20) for consideration of the separate patentability of these groups. (Appeal Br. 4). However, Appellants do not present any different arguments for any of these groups. (Appeal Br. 5-11). The issues joined by Appellants and the Examiner pertain to all claims, in any event. The analysis that Appeal 2008-1233 Application 10/943,540 6 follows will focus on claim 1. The basis for the Examiner’s obviousness rejection is that the Morgan patent discloses chemical compositions for adhesives that meet the claim elements directed to the adhesive, that Jones discloses the remaining claim elements, and that it would have been obvious to have used the adhesive of Morgan in the apparatus of Jones. (Answer 3). Appellants respond that Morgan does not disclose the adhesive as claimed, and further that the Examiner has failed to establish proper motivation for combining the Morgan and Jones references. The alleged lack of motivation is argued principally as being due to the lack of any evidence that the adhesive compositions disclosed in Morgan would be capable of holding up under or withstanding the conditions that would be experienced were the composition used in the Jones apparatus. (Appeal Br. 5). Following the lead of the Supreme Court in the KSR case, we will not rigidly adhere to a “teaching, suggestion, motivation” (TSM) test, and thus even if, as Appellants urge, specific and explicit motivation is lacking for combining Morgan and Jones, that alone is not determinative of the challenge to the propriety of the rejection. The Jones patent, as pointed out by Appellants, discloses that an adhesive suitable for use in bonding a valve cover to a cylinder head must possess certain properties so as to withstand the environment that it will be exposed to. Examples given in the Jones patent are that the adhesive must be able to withstand exposure to hydrocarbon materials, engine oil, calcium chloride, brake fluid, glycol coolants, and windshield washer solvents, at elevated temperatures. (FF 1). The Jones patent discloses that suitable Appeal 2008-1233 Application 10/943,540 7 adhesives include high-temperature epoxy resins, polyimides, hi-bred polyimide/epoxy resin, silicone, fluorosilicone, alkylborane initiated acrylic, and epoxy novolac/nitrile rubber adhesives. (FF 2). The Morgan patent discloses that the compositions therein are suitable for use as adhesives. (FF 3). Morgan further discloses that such compositions are capable of withstanding severe temperature environments for extended periods, and are resistant to severe chemical and physical environments, including resistance to strongly acidic solutions, and conditions of high alkalinity, (FF 4). The use of the adhesive in Morgan as an adhesive for a valve cover assembly, where the adhesive is disclosed as having properties that, according to the desired properties described in Jones, are well-suited for that environment, is seen as nothing more than a simple substitution of one element for another, in which predictable results would be obtained. As such, we are not persuaded that it was error to combine the teachings of the Morgan and Jones patents. We are persuaded, however, that the claimed adhesive composition is not disclosed or suggested in the Morgan patent. Claim 1 calls for the adhesive to include a polythiol ether having two or more reactive groups, and a crosslinking agent, with the reactive groups being capable of reacting with the crosslinking agent. (Appeal Br., Claims Appendix, claim 1). The Morgan patent discloses the production of a polythiol ether polymer system formed by reacting polyene and polythiol components, optionally admixed or blended, prior to curing, with other polymeric or monomeric materials. (FF 5). In the Morgan disclosure, however, a polythiol ether is not present prior to the curing step, in that the polythiol ether is formed during the Appeal 2008-1233 Application 10/943,540 8 curing step. (FF 6) As correctly noted by Appellants (Appeal Br. 6, 10), the cured polythiol ether polymer system which first comes into existence in the curing step, is effectively the final product disclosed in Morgan. Morgan does not contain any disclosure that this polythiol ether has two or more reactive groups, nor is there any disclosure that the polythiol ether is capable of being, or is to be, further reacted with a crosslinking agent.2 As such we are persuaded that the combination of the Morgan and Jones patents fails to render obvious the subject matter of claim 1. The same is true as to the subject matter of claims 2-18 and 20. CONCLUSION We conclude that Appellants have established that reversible error exists in the rejection of claims 1-18 and 20 under 35 U.S.C. § 103(a) in view of Morgan and Jones. ORDER The decision of the Examiner to reject claims 1-18 and 20 under 35 U.S.C. § 103(a) as unpatentable over Morgan and Jones is reversed. REVERSED 2 Morgan discloses that the polythiol ether produced is a crosslinked polymer, however, as best as we can determine, this is as a result of the polyene and polythiol precursors undergoing a crosslinking during the curing stage in producing the polythiol ether. (FF 6). Appeal 2008-1233 Application 10/943,540 9 LV: THE DOW CHEMICAL COMPANY INTELLECTUAL PROPERTY SECTION P.O. BOX 1967 MIDLAND, MICHIGAN 48641-1967 Copy with citationCopy as parenthetical citation