Ex Parte Evans et al

Patent Trial and Appeal Board

Mar 28, 2018

13645320 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/645,320 10/04/2012 Wayne Evans
98783 7590 03/30/2018
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
089129-8081.USOl 2160
EXAMINER
USYATINSKY, ALEXANDER
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/30/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE EV ANS, CHAD YODER,
SHERWIN DAMDAR, PAUL JUDE NICHOLS, and
RICHARD LYNN DIBBLE
Appeal2017-004929
Application 13/645,320
Technology Center 1700
Before ROMULO H. DELMENDO, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-3 and 6-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In our Decision we refer to the Specification filed October 4, 2012
("Spec."), the Non-Final Office Action appealed from dated November 10,
2015 ("Non-Final"), the Appeal Brief filed May 10, 2016 ("Appeal Br."),
the Examiner's Answer dated January 4, 2017 ("Ans.") and the Reply Brief
filed February 2, 2017 ("Reply Br.").
2 The real party in interest in this appeal is Garlock Sealing Technologies,
LLC. Appeal Br. 1.
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Application 13/645,320
STATEMENT OF THE CASE
The subject matter on appeal relates to a spiral wound gasket that
includes a resilient sealing element that "include[ s] spirally wound,
alternating layers of metal banding and winding fill material." Spec. 7.
Claim 1, reproduced below with emphasis on key limitations, is illustrative
of the claimed subject matter:
1. A spiral wound gasket comprising:
a resilient sealing element including spirally wound,
alternating layers of metal banding and winding fill material; the
winding fill material comprising from approximately 60% to
90% by weight talc, approximately 1 % to 14% by weight fiber,
and approximately 1 % to 5% by weight organic binder; and
a layer of facing material adhered to at least one axial face
of the sealing element of the spiral wound gasket;
wherein the total amount of organic material present in
the winding fill material is less than 5% by weight.
Claims App 'x 1 (emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1, 2, 6, and 9--12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Deluca3 in view of Amano. 4
Non-Final 4.
B. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Deluca in view of Amano and further in
view of Nikirk. 5 Id. at 11.
3 Deluca et al., WO 2010/100469 Al, published September 10, 2010
("Deluca").
4 Amano et al., US 5,763,094, issued June 9, 1998 ("Amano").
5 Nikirk et al., US 5,511,797, issued April 30, 1990 ("Nikirk").
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C. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Deluca in view of Amano and further in
view of Mecklenburg. 6 Id.
Appellants request reversal of Rejections A---C. See generally Appeal
Br. Appellants present arguments for claim 1 (together with claims 9 and
12) and claim 12. Id. at 4 and 9. Appellants do not separately argue the
remaining claims or Rejections Band C. We therefore limit our discussion
to claims 1 and 12. The remaining claims (claims 2, 3, 6-8, 10, and 11), not
separately argued, stand or fall with the claim from which they depend.
OPINION
The Examiner rejects claim 1 (among others) as obvious over Deluca
in view of Amano. Non-Final 4. The Examiner finds that Deluca teaches a
spiral wound gasket as claimed except that Deluca does not disclose a
winding fill material having "approximately 60% to 90% by weight talc,
approximately 1 % to 14 % by weight fiber, and approximately 1 % to 5 %
by of organic binder as well as a total amount of organic material present in
the layer of facing material is less than 5% by weight." Id. But, the
Examiner finds that Amano describes a gasket having a composition similar
to the claims, however, the organic binder being present in an amount of 6%.
Id. at 5. The Examiner reasons that it would have been obvious to "replace
the find [sic] winding fill material of Deluca with the winding fill material of
Amano because such modification would provide a gasket with excellent
sealing property, heat resistance and superior chemical resistance." Id. The
6 Thomas Mecklenburg, US 5,298,549, issued March 29, 1994
("Mecklenburg").
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Application 13/645,320
Examiner also determines that even though the amount of organic material
does not overlap with the claimed range, under Titanium Metals, "a prima
facie case of obviousness exists where the claimed ranges and the prior art ..
. are close enough that one skilled in the art would have expected them to
have the same properties." Id. at 6. Alternatively, the Examiner finds that
the amount of organic binder present in the composition is a result effective
variable that one skilled in the art would optimize. Id.; Ans. 17.
Claim 1:
Appellants argue that the Examiner fails to make out a prima facie
case of obviousness because ( 1) no showing that a person of skill in the art
would view 6% organic content as "close enough to the less than 5%"
organic content as claimed (Appeal Br. 7-8), and (2) "Amano does not
recognize reducing the amount of organic material as a result effective
variable" (Id. at 10).
Appellants' arguments regarding Amano' s failure to disclose the
reduction of organic material as a result effective variable do not persuade us
of reversible error by the Examiner. 7 "[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation." In re Aller, 220
F.2d 454, 456 (CCPA 1955). Said another way, "the discovery of an
optimum value of a variable in a known process is usually obvious." Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007)(emphasis added);
7 Because we determine the Examiner's findings that the content of organic
binder present-and by extension the content of total organics in the
composition-to be a result effective variable, we need not address the
Examiner's findings and reasoning under Titanium Metals.
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Application 13/645,320
In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (finding the "[d]iscovery of
an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art."). Here, the Examiner notes Amano' s
teaching that it is possible to optimize the binder in an amount that does not
adversely impact the sheet material. Final Act. 6. Specifically, Amano
further explains that
it is possible to add an organic binder such as acrylic resin
emulsion, phenolic resin emulsion, polyvinyl alcohol emulsion,
rubber emulsion or the like in an amount not adversely affecting
the properties of the resulting sheet material. Incidentally, some
of the above-mentioned fillers, such as clay, talc, silica,
wollastonite, mica and the like function also as a binder and can
increase the strength of the resulting sheet material; therefore,
there is no distinct difference between the filler and the binder in
the present invention.
Amano col. 5, 11. 42-52. Furthermore, we observe that range of components
identified in column 4 of Amano is exemplary. In particular, Amano states
that "[t]he proportions of the individual components mentioned above can
[be] appropriately [] determined depending upon the application purposes
and conditions of the present sheet." Id. col. 4, 11. 35-39. From these
teachings, the skilled artisan would have reason to develop optimum ranges
for the binder material of claim 1. Thus, the Examiner properly established
a prima facie case for obviousness and Appellants have not rebutted the
Examiner's prima facie case. In re Antonie, 559 F.2d 618, 620 (CCPA
1977).
Appellants similarly argue that the motivation to combine Deluca and
Amano fails because the reduction in organic binder cannot be attributed to
the improvements identified by the Examiner. Appeal Br. 8. We are not
persuaded by Appellants' arguments. First, the skilled artisan would have
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reason to modify the amount of organic binder-thus impacting the total
amount of organics in the fill material-in order to develop workable ranges
for result-effective parameters as disclosed in Amano and as discussed
above. In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Second, the
Examiner relied upon Amano to provide the amounts for the individual
components of the winding fill material, i.e., talc, fiber, and organic binder.
Non-Final 5. And, according to the Examiner, the sheet material of Amano,
having the same components as Deluca but in amounts specified by Amano,
achieves a material "which exhibits excellent flexibility, sealing propert[ies ],
and heat resistance without using an asbestos fiber." See e.g., Amano col. 1,
8-14; see also id. col. 1, 11. 55-56 and col. 9, 11. 16-21. Therefore,
Appellants argument fails to identify error because Appellants do not
address the rejection as presented by the Examiner.
Claim 12:
In addition to the arguments presented above, Appellants contend that
the combination fails to disclose the facing material as claimed. Appeal Br.
11. In particular, claim 12 requires "a layer of facing material adhered to at
least one axial face of the sealing element of the spiral wound gasket."
Claims App 'x 2-3. Appellants explain that "the discussion in the Office
Action of the fill material disclosed in Amano and how it would be obvious
to use this material as the fill material of Deluca clearly fails to address the
elements actually recited in claim 12." Appeal Br. 11.
Appellants fail to identify reversible error in the Examiner's rejection
of claim 12. The Examiner finds that Deluca describes "a layer of facing
material adhered to at least one axial face of the sealing element of the spiral
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wound gasket (Fig. 6 and 7, see also analog of full assembly in Fig. 1
regarding turns of metal 10 are wound into a spiral soft gasket material 16;
([0066]), Fig. 4)." Non-Final 9. Appellants do not address or dispute these
additional findings by the Examiner, which we adopt as fact. Cf In re
Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (a finding not shown by the
Appellants to be erroneous may be accepted as fact). Thus, Appellants'
arguments do not address the rejection presented by the Examiner and, as a
result, is not persuasive of harmful error.
CONCLUSION
Appellants failed to identify reversible error in the Examiner's
rejection of claims 1, 2, 6, and 9-12 under 35 U.S.C. § 103(a) as
unpatentable over Deluca in view of Amano.
Appellants failed to identify reversible error in the Examiner's
rejection of claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Deluca in view of Amano and further in view of Nikirk.
Appellants failed to identify reversible error in the Examiner's
rejection of claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Deluca in view of Amano and further in view of Mecklenburg.
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DECISION
For the above reasons, the Examiner's rejection of claims 1-3 and 6-
12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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