Ex Parte Jialanella et al

Board of Patent Appeals and Interferences

Apr 30, 2009

10943540 (B.P.A.I. Apr. 30, 2009)

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
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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).
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Application 10/943,540

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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.

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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,
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¶¶[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
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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
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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
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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
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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).
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