Ex Parte Rueger et al

Board of Patent Appeals and Interferences

Sep 8, 2010

11146735 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/146,735 06/07/2005 Ute Rueger CG-40085/71024-1015 5536
59582 7590 09/09/2010
DICKINSON WRIGHT PLLC
38525 WOODWARD AVENUE
SUITE 2000
BLOOMFIELD HILLS, MI 48304-2970
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
09/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UTE RUEGER, KERRY SMITH, BHAWANI TRIPATHY, and
THOMAS HEMMRICH
____________

Appeal 2009-008677
Application 11/146,735
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008677
Application 11/146,735

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STATEMENT OF THE CASE
Ute Rueger et al. (Appellants) appeal under 35 U.S.C. § 134 (2002)
from the Examiner’s decision finally rejecting claims 1-7, 11-15, 20, 21, and
34-37. Claims 8-10, 16-19, and 22-33 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a gasket for use in sealing multiple
fluids including a carrier 12, first elastomeric material 14, a second
elastomeric material 16 that is different from the first elastomeric material
14, and a third elastomeric material 24 that is a blend of the first and second
elastomeric materials. Spec., ¶¶ [0002], [0018], [0020], and [0021] and fig.
1.
Claim 20 is representative of the claimed invention and reads as
follows:
20. A gasket for sealing multiple fluids comprising:

a carrier having a plurality of fluid openings to be sealed
including at least first and second fluid openings;

a first elastomeric material disposed on a first region of said
carrier at least partially surrounding said first fluid opening, said first
elastomeric material being operable to seal a first fluid;

a second elastomeric material different than said first
elastomeric material disposed on a second region of said carrier
spaced from said first region and surrounding said second fluid
opening and spaced from said first fluid opening, said second
elastomeric material being operable to seal a second fluid different
than said first fluid; and

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Application 11/146,735

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a third elastomeric material comprising a blend of said first and
second elastomeric materials disposed on a third region of said carrier
extending between said first and second regions, said third elastomeric
material being operable to seal a third fluid different than said first
and second fluids.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Forry US 2003/0230856 A1 Dec. 18, 2003
McElwee US 2004/0132912 A1 Jul. 8, 2004
Duclos US 2005/0098962 A1 May 12, 2005

The following rejections are before us for review:
The Examiner rejected claim 20 under 35 U.S.C. § 102(e) as
anticipated Forry.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Forry.
The Examiner rejected claims 1-7, 11, 12, 15, and 34-37 under 35
U.S.C. § 103(a) as unpatentable over Forry and Duclos.
The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Forry, Duclos, and McElwee.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 20 requires “a third elastomeric material
comprising a blend of said first and second elastomeric materials.” App.
Appeal 2009-008677
Application 11/146,735

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Br., Claims Appendix. Appellants argue that the intrusion zone 26 of Forry
as shown in the embodiment presented in Figure 9 does not constitute a third
elastomeric material, as called for by independent claim 20. App. Br. 6, l.
33 through App. Br. 7, l. 5. Pointing to the embodiment shown in Figure 9
of Forry, the Examiner found that Forry teaches a first elastomeric material
between 37 and 38 (the edge coating), a second elastomeric material
indicated by reference number 82, and a third elastomeric material indicated
by reference number 26. Ans. 4. The Examiner further notes that because
“the rubber coating penetrates the base material,” the intrusion zone 26 of
Forry constitutes the third elastomeric material. See Ans. 11.
Although we appreciate that the intrusion zone 26 in the embodiment
shown in Figure 9 of Forry constitutes a region where the first elastomeric
material 37, 38 (the edge coating) penetrates the exposed pores of the second
elastomeric material 8 (see Forry, ¶ [0019]), we do not find that intrusion
zone 26 constitutes a blend of the first and second elastomeric materials, as
called for by independent claim 20. At the outset, we note that Appellants’
Specification does not expressly define the term “blend” or otherwise
indicate that this term is used in a manner other than its ordinary and
customary meaning. We find that an ordinary and customary meaning of the
term “blend” is “to combine or associate so that the separate constituents or
the line of demarcation cannot be distinguished.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997). This definition is consistent with
Appellants’ description of the third elastomeric material as the result of

2 Forry uses the reference numerals 8 and 9 to label the opposed faces of the
base sheet. ¶ [0061]. For simplicity, we adopt the Examiner’s use of the
reference numeral 8 to denote the top layer of the layered base sheet 24 in
the Figure 9 embodiment of Forry.
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Application 11/146,735

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flowing and mixing of the first and second elastomeric materials. Spec. 7, ¶
[0021]. In contrast, the penetration of the first elastomeric material 37, 38
into the second elastomeric material 8 in Forry is merely a migration of the
first elastomeric material into the pores of the second polymeric material,
such that the separate constituents, namely the first and second elastomeric
materials, can still be distinguished as the second elastomeric material
occupies the pores of the first elastomeric material. See Forry, ¶¶ [0027] and
[0053]. Hence, because the first and second elastomeric materials in
intrusion zone 26 of Forry can still be distinguished, we do not agree with
the Examiner that the intrusion zone 26 constitutes a blend of the first and
second elastomeric materials, as called for by independent claim 20.
Therefore, since Forry does not teach all the elements of independent claim
20, the rejection of claim 20 under 35 U.S.C. § 102(e) as anticipated by
Forry cannot be sustained.
With respect to the rejection of claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Forry, the Examiner’s proposed modification of Forry
does not remedy the deficiencies of Forry as described above. Accordingly,
the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Forry likewise cannot be sustained.
Similarly, the addition of Duclos and McElwee does not cure the
deficiencies of Forry as described above. As such, the rejection of claims 1-
7, 11, 12, 15, and 34-37 as unpatentable over Forry and Duclos and claims
13 and 14 as unpatentable over Forry, Duclos, and McElwee also cannot be
sustained.

Appeal 2009-008677
Application 11/146,735

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SUMMARY
The decision of the Examiner to reject claims 1-7, 11-15, 20, 21, and
34-37 is reversed.

REVERSED

mls

DICKINSON WRIGHT PLLC
38525 WOODWARD AVENUE
SUITE 2000
BLOOMFIELD HILLS, MI 48304-2970