Ex Parte Schmitz

Board of Patent Appeals and Interferences

Sep 23, 2010

11063073 (B.P.A.I. Sep. 23, 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.
11/063,073 02/22/2005 Jeorg Schmitz SP-30591 (71024-921) 5251
59582 7590 09/24/2010
DICKINSON WRIGHT PLLC
38525 WOODWARD AVENUE
SUITE 2000
BLOOMFIELD HILLS, MI 48304-2970
EXAMINER
SPAHN, GAY
ART UNIT PAPER NUMBER
BPAI
MAIL DATE DELIVERY MODE
09/24/2010 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 JEORG SCHMITZ
____________

Appeal 2009-007596
Application 11/063,073
Technology Center 3600
____________

Before JENNIFER D. BAHR, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, 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 2009-007596
Application 11/063,073

2
STATEMENT OF THE CASE
Jeorg Schmitz (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision rejecting claims 1, 3, 6, 7, and 12 under 35 U.S.C. §
103(a) as being unpatentable over Ueta (EP 0 606 567 A1, pub. Jul. 20,
1994) and Miyamoto (US 6,431,554 B1, iss. Aug. 13, 2002); and claims 16,
18, 21, 22, and 27 under 35 U.S.C. § 103(a) as being unpatentable over
Miura (US 6,283,480 B1, iss. Sep. 4, 2001), Miyamoto, and Ueta. The
Examiner has withdrawn claims 8-11, 13-15, 23-26, and 28-30, the only
other pending claims, from consideration. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellant’s claimed invention is directed to multilayer metal gaskets.
Spec. 1, para. [0002]. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A multilayer metal gasket, comprising:
at least first and second gasket layers having generally
planar bodies and formed with at least one aligned hole and at
least one associated sealing bead in each of the gasket layers
aligned opposite one another and projecting out of the plane of
their respective bodies in radially outwardly spaced surrounding
relation to said hole; and
a partial stopper layer disposed between said gasket
layers and having an area less than that of either of said gasket
layers, said stopper layer extending fully across said sealing
bead from a position radially inward of said sealing beads to a
position radially outward of said sealing beads, and being fixed
to at least one of said gasket layers radially inwardly of said
sealing beads and being free radially outward of the sealing
beads.

Appeal 2009-007596
Application 11/063,073

3
SUMMARY OF DECISION
We AFFIRM-IN-PART.
OPINION
Ueta and Miyamoto
Independent claim 1 requires a partial stopper layer having an area
less than that of either gasket layer, extending fully across the sealing bead,
and being fixed to at least one of the gasket layers radially inwardly of the
sealing beads and free radially outward of the sealing beads. At issue in the
appeal of this rejection is whether the Examiner has established that Ueta
and Miyamoto would have rendered obvious a gasket having such a partial
stopper layer.
In making the rejection, the Examiner expressly relies exclusively on
the prior art gasket of Figure 12 of Ueta in combination with the teachings of
Miyamoto. Ans. 4, 12. Ueta clearly teaches that because the beads in the
base plates extend inwardly toward one another, the subplate must not
extend beyond the flat area between the cylinder bore holes and the beads.
Col. 4, ll. 14-18. The subplate 36 is secured to at least one of the base plates
30, 31 at securing line 37 radially inwardly of the bead 32, so as to suppress
vibration amplitude from the flat area 35 to the bead 32. Col. 2, ll. 20-37;
Fig. 12.
Recognizing that the subplate of the gasket described and depicted in
Figure 12 of Ueta does not extend fully across the bead to a position radially
outward of the sealing bead, so as to satisfy the limitations of the partial
stopper layer of claim 1, the Examiner turns to the teachings of Miyamoto,
and particularly the metal gasket depicted in Figure 6, f1 of Miyamoto. Ans.
4.
Appeal 2009-007596
Application 11/063,073

4
Unlike the gasket of Figure 12 of Ueta, which comprises base plates
having inwardly extending beads, Figure 6 of Miyamoto is directed to a
gasket having a single bead plate 1 with a shim 2 laid on the bead plate. Col.
6, ll. 22-24; col. 8, ll. 44-52. Thus, unlike the subplate in the Figure 12
gasket of Ueta, the Figure 6 gasket of Miyamoto is not constrained by the
disadvantage of the Figure 12 gasket noted by Ueta, namely, that the
subplate/shim width is limited to the flat area between the cylinder bore
holes and beads. Consequently, it is not apparent to us, and the Examiner
has not adequately explained, why a person of ordinary skill in the art would
have been prompted by the teachings of the Figure 6 gasket of Miyamoto to
modify the gasket of Figure 12 of Ueta so as to extend the subplate fully
across the bead, contrary to the teachings of Ueta. Moreover, Miyamoto
simply describes the shim 2 as “laid” or “overlaid” on (not fixed to) the
surface of the bead plate 1 (col. 6, l. 24; col. 8, l, 55), with the shim 2 having
been made with a bead 12 conforming to the bead 7 on the bead plate (col. 8,
ll. 49-50). Further, the Examiner has not pointed to any teaching in
Miyamoto, with respect to any of the gasket embodiments,2 to fix the shim
radially inwardly of the bead and leave the shim free radially outwardly of
the bead. Thus, even if the teachings of Miyamoto were combined with the
Figure 12 gasket of Ueta, the Examiner has not adequately explained how
such combination would satisfy the limitations of claim 1, or claims 3, 6, 7,
and 12, which depend from claim 1.

2 The Figure 9 embodiment of Miyamoto’s gasket (not relied on by the
Examiner) includes two confronting bead plates 1 with a sheet of shim 2
disposed between the plates and extending fully across the beads. Col. 9, ll.
52-55; Fig. 9, a2; Fig. 9, b2.
Appeal 2009-007596
Application 11/063,073

5
For the above reasons, we do not sustain the rejection of claims 1, 3,
6, 7, and 12 as being unpatentable over Ueta and Miyamoto.
Miura, Miyamoto, and Ueta
Independent claim 16 differs from claim 1 in that claim 16 is directed
to an assembly comprising an engine block, cylinder head, and gasket. Like
the gasket of claim 1, the gasket of claim 16 includes a partial stopper layer
having an area less than that of either gasket layer, extending fully across the
sealing bead, and being fixed to at least one of the gasket layers radially
inwardly of the sealing beads and free radially outward of the sealing beads.
The issue raised in the appeal of this rejection is whether the combined
teachings of Miura, Miyamoto, and Ueta would have rendered obvious an
assembly including a gasket having such a partial stopper layer.
Miura describes in Figure 10 (the embodiment relied upon by the
Examiner) an assembly including a cylinder block 50 provided with a
cylinder bore 52 and a gasket comprising elastic metal plates 2, 3 and shim
46 disposed between the plates. Col. 11, ll. 1-12. Miura’s shim member 46
“has a cross-sectional shape in conformity with that of an elastic metal plate
3” (col. 11, ll. 3-4), and thus does not appear to be a partial layer having an
area less than that of either gasket layer as called for in claim 16. The
Examiner found that Miura describes an assembly satisfying all of the
limitations of claim 16, except that Miura fails to disclose that the stopper
layer (shim) is fixed to at least one of the gasket layers radially inwardly of
the bead and free radially outwardly of the bead. Ans. 6.
The Examiner found that Miyamoto (Fig. 6, f1) discloses a partial
stopper layer (shim 2) which extends from the bore aperture fully across the
bead of the gasket layer (bead plate 1), but has an area less than that of the
Appeal 2009-007596
Application 11/063,073

6
gasket layer (bead plate 1). Ans. 6; see, e.g., Miyamoto, col. 2, ll. 58-63
(teaching variation of the radial width of the shim continuously around the
bore aperture on the bead plate to balance variations in sealing stress). The
Examiner also found that Ueta discloses a metal gasket having a stopper
layer fixed at a securing line 37 to at least one of the gasket layers radially
inwardly of the sealing bead. Ans. 7; see Ueta, col. 2, ll. 34-36 (noting that
securement at the securing line 37 suppresses the vibration amplitude
starting from the flat area to the bead).
The Examiner concluded that it would have been obvious to modify
Miura’s gasket by making the stopper layer (shim member 46) extend fully
across the sealing bead and have an area less than that of the gasket layer
(plates 2 and 3), as taught by Miyamoto, and to fix the stopper layer to at
least one of the gasket layers (plates 2 and 3) radially inwardly of the sealing
beads so as to be free radially outwardly of the sealing beads as taught by
Ueta, in order to regulate the sealing stresses and deformation of the metal
gasket. Ans. 7. Appellant has not contested either the Examiner’s findings
or the Examiner’s articulated reason for the proposed modification3, and thus
has not persuaded us that the Examiner’s rejection should be reversed. We
sustain the rejection of claim 16, as well as claims 18, 21, 22, and 27, for
which Appellant has not presented any separate argument for patentability.
See 37 C.F.R. § 41.37(c)(1)(vii).

3 The Examiner’s rejection does not propose to simply replace the gasket of
Miura with the gasket of Ueta, modified in view of Miyamoto as proposed in
the rejection of claims 1, 3, 6, 7, and 12, as Appellant’s argument (App. Br.
7-8) would seem to imply.
Appeal 2009-007596
Application 11/063,073

7
DECISION
The Examiner’s decision is affirmed as to claims 16, 18, 21, 22, and
27, and reversed as to claims 1, 3, 6, 7, and 12.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

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