Ex Parte Haberer et al

Patent Trial and Appeal Board

Mar 26, 2018

14179961 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/179,961 02/13/2014
59582 7590 03/27/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Tyler Haberer
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.
HG-50162/710240-6949 3731
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
MAILDATE DELIVERY MODE
03/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TYLER HABERER, TAKASHI OKANO, and
DANIEL J. VIALARD
Appeal2017-003499
Application 14/179,961
Technology Center 3600
Before LINDAE. HORNER, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-22, as
supplemented by the Advisory Action (dated Feb. 4, 2016). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Federal-Mogul Corporation. App.
Br. 1.
Appeal2017-003499
Application 14/179,961
Claimed Subject Matter
The claimed invention "relates generally to gaskets for providing a
seal between two parts, and more particularly to multi-layer gaskets, such as
cylinder head gaskets." Spec. para. 1. Claims 1, 4, and 19 are independent.
Claim 1, reproduced below, illustrates the claimed subject matter.
1. A gasket, comprising:
a first functional layer including a first outer surface and
an oppositely facing first inner surface and extending between a
first edge surrounding a combustion chamber opening and a
second edge;
a portion of said first outer surface and said first inner
surface extending in a first direction to present a first full bead
around said combustion chamber opening;
a second functional layer including a second inner surface
facing said first inner surface and an oppositely facing second
outer surface and extending between a third edge surrounding
said combustion chamber opening and a fourth edge;
a portion of said second inner surface and said second
outer surface of said second functional layer extending in a
second direction opposite said first direction to present a second
full bead axially aligned with said first full bead;
a first stopper extending along said first inner surface of
said first functional layer between said first edge and said first
full bead;
a second stopper extending along said second outer
surface of said second functional layer;
said second stopper extending from a third stopper end
aligned with said third edge to a fourth stopper end located
between said third edge and said fourth edge and closer to said
third edge than said fourth edge; and
said second stopper being attached to said second outer
surface around said second full bead and spaced from said second
outer surface at said second full bead.
2
Appeal2017-003499
Application 14/179,961
Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 103 as unpatentable
over Stapel (US 6,796,562 B2, issued Sept. 28, 2004) and Takeda (JP
2010090945 A, published Apr. 22, 2010). Final Act. 2-7.
DISCUSSION
In rejecting independent claims 1, 4, and 19, the Examiner finds
Stapel teaches all limitations, except that Stapel does not explicitly disclose
the length of the second stopper 8. Final Act. 3. The Examiner finds
Takeda teaches a second stopper that "extends from a third stopper end (at 2)
aligned with a third edge of a second functional layer 12 to a fourth stopper
end located between said third edge and a fourth edge and closer to the third
edge (at 2) than the fourth edge (opposite 2)." Id. The Examiner finds one
of ordinary skill in the art would have modified the length of the second
stopper of Stapel to place its edge at the claimed location as taught by
Takeda "in order to increase the pressure around the combustion chamber
hole thus the sealing performance around the combustion chamber can be
improved," citing paragraph 8 of an English translation of Takeda. Id.
Appellants argue one of ordinary skill in the art "would have had no
reason to decrease the length of [Stapel's] bearing plate 8 so that the
bearing plate 8 would have an end located between two edges of the
functional layer and closer to one edge than the other, as recited in claims 1
4, and 19." App. Br. 10. Takeda, Appellants contend, would have
motivated one of ordinary skill in the art "only to increase the thickness of
the bearing plate 8 (which Examiner refers to as a second stopper) of
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Appeal2017-003499
Application 14/179,961
[Stapel]." Id. In support, Appellants quote paragraph 8 of the English
translation of Takeda, as follows:
Paragraph 0008 of Takeda actually states that "by setting the
thickness of the pressure increasing plate 14 appropriately, the
surface pressure around the combustion chamber holes 2 are
higher than the surface pressure of the outer portion than that, the
sealing performance around the combustion chamber holes 2 It
has to be able to be improved."
Id. at 9. 2
We agree with the Examiner that "the thickness variable of [Takeda's]
plate is just one factor in affecting pressure around the chamber hole." Ans.
3. Takeda's statement that using an appropriate thickness of plate 14 can
improve the pressure around the combustion chamber relates to the thickness
of the plate 14 shown in Takeda. Figures 1 and 2 of Takeda show that plate
14 generally surrounds the combustion chamber and extends just to the other
side of the full bead. Thus, in context, Takeda teaches that plate 14
improves pressure around the combustion chamber compared to the outer
2 Appellants argue in the Reply Brief that "[ s ]ince the Examiner has failed to
provide a complete English translation of Takeda, both outstanding
rejections under 35 U.S.C. 103 should be reversed for this reason alone."
Reply Br. 2. This argument is waived because Appellants have not shown
good cause as to why the argument was not raised in the Appeal Brief. 3 7
C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner's answer, ... will not be considered by the Board for purposes of
the present appeal, unless good cause is shown."). In addition, we note the
lack of a full translation in the record does not preclude us from deciding the
instant appeal. Appellants quote the relevant portion of an English
translation of Takeda apparently in their possession, and there is no
indication the Examiner disagrees with its content. Thus, there is no dispute
as to the content of the translation, and, in any event, we decide the appeal
based on Appellants' translation of paragraph 8.
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Appeal2017-003499
Application 14/179,961
portion of the gasket, and this can be affected by its thickness. Contrary to
Appellants' argument, Takeda's lack of a teaching that other aspects of plate
14 should be varied indicates that the structure shown is important for
achieving the desired result. Appellants also do not persuasively challenge
the Examiner's reasoning that Takeda's shortened stopper is able to improve
pressure within the chamber without the extra material that would be
required to extend the stopper along the full length of the gasket. Ans. 4.
Thus, we agree with the Examiner that one of ordinary skill in the art would
have modified Stapel's second stopper as shown in Takeda in order to
improve pressure within the combustion chamber and to decrease material
costs.
Appellants also argue that "plate 14 of Takeda, which the Examiner
refers to as a second stopper, is not attached to the outer surface of the
gasket substrate 12, which the Examiner refers to as a second functional
layer." App. Br. 10. As the Examiner indicates in the Answer, however,
Stapel is relied on for this limitation. Ans. 4; see Final Act. 3. Thus,
Appellants' argument does not inform us of error in the rejection.
Appellants separately argue that the Examiner does not provide any
explanation of why the references cited teach all of the features of claims 19,
21, and 22, "many of which are not addressed with regard to the other
rejected claims." App. Br. 11. The Examiner's Final Action, however,
provides an annotated Figure 3 of Stapel, which, in conjunction with the
Examiner's explanation, provides notice of the basis for the Examiner's
rejection as required by 35 U.S.C. § 132. Final Act. 6; see Ans. 5.
Appellants have not identified any particular limitation that is not addressed
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Appeal2017-003499
Application 14/179,961
by the rejection. In these circumstances, Appellants' argument does not
inform us of error in the rejection of claims 19, 21, and 22.
Appellants further contend that "the Examiner fails to explain why
one of ordinary skill in the art would have found it obvious to duplicate the
stoppers and layers, and also provide the other features recited in dependent
claims 11-14 and 20." App. Br. 12. The Examiner's rejection of these
claims explains that "it has been held that a mere duplication of parts has no
patentable significance unless a new and unexpected result is produced."
Final Act. 6-7 (citing Jn re Harza, 274 F.2d 669 (CCPA 1960)).
Appellants' argument does not address the Examiner's reasoning, and, thus,
fails to inform us of error in the rejection of claims 11-14 and 20.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claims 1-22
under 35 U.S.C. § 103 as unpatentable over Stapel and Takeda. 3 Thus, we
sustain the rejection of the claims.
DECISION
We affirm the Examiner's rejection of claims 1-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
3 Dependent claims 2, 3, 5-10, and 15-18 are argued only on the basis of
their dependence from claims 1 or 4. App. Br. 11.
6