Ex Parte Shah et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10126713 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KANU G. SHAH and THOMAS E. STAAB
____________

Appeal 2009-005790
Application 10/126,713
Technology Center 3600
____________

Decided: April 29, 2010
____________

Before: LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Kanu G. Shah et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3-9, and 11-19, which
are all of the claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2009-005790
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THE INVENTION
Appellants’ claimed invention is a metallic gasket for a vehicle
exhaust pipe system. Spec. 1, para. [0001]. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A generally annular gasket for sealing between a pair of
mutually facing, axially spaced-apart interface surfaces, said
gasket comprising a hoop wrap that includes a bottom portion
and side portions that overlap so as to form a continuous
metallic outer portion defined by a periphery, said periphery of
said metallic outer portion completely enclosing at least one
metal spring washer, wherein said spring washer has a generally
rectangular cross section.
THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 1, 3-9,
and 11-19 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent
3,806,138 to Herrington, issued April 23, 1974, and U.S. Patent 3,519,281 to
Teucher, issued July 7, 1970.1
ISSUES
The Examiner found Herrington discloses an annular gasket
comprising a hoop wrap (toroidal metal shell 16) that includes bottom and
side portions that overlap to form a continuous metallic outer portion defined
by a periphery, and that enclose at least one metal spring washer 14. Ans. 3.
The Examiner found that Harrington does not disclose that the metal washer
has a rectangular cross-section. Ans. 3. The Examiner found that Teucher
discloses a metal spring wave style washer having a generally rectangular

1 With regard to the rejection of claims 5-7 and 14-16, the Examiner also
referred to U.S. Patent 6,517,086 B1 to Jamrog, issued Feb. 11, 2003, as
evidence that “301 and 304 stainless steels are known to be used in gaskets
with a resilient core and over-wrap and to provide the claimed temperature
resistance.” Ans. 4.
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cross section (support spring 2). Ans. 3. The Examiner concluded that it
would have been obvious to substitute the metal spring washer of Teucher
for the metal spring washer of Herrington as art equivalent spring shapes to
provide resiliency and impart sealing pressure to the hoop wrap. Ans. 3-4.
Appellants argue claims 1, 3-9, and 11-18 as a group. App. Br. 7-17.
We select claim 1 as the representative claim, and claims 3-9 and 11-18
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appellants
present an argument for independent claim 19, in addition to the arguments
made for claim 1. Appellants argue generally that the subject matter of
independent claims 1 and 19 would not have been obvious in view of
Herrington and Teucher because: (1) the Herrington does not teach a spring
washer with a rectangular cross section (claim 1) or a wave style washer
within a hoop wrap (claim 19) and Teucher does not teach a hoop wrap;
(2) Herrington and Teucher cannot be properly combined; (3) Herrington
teaches away from a spring washer with a “generally rectangular cross
section” (claim 1); and (4) the Examiner has failed to provide a reasoned
basis to modify Herrington with the spring of Teucher. App. Br. 7-17.
The issues before us are:
Does Herrington, as modified by Teucher, teach a spring washer with
a rectangular cross section within a hoop wrap, as called for in claim 1?
Does Herrington, as modified by Teucher, teach a wave style washer
within a hoop wrap, as called for in claim 19?
Would the subject matter of claims 1 and 19 have been obvious to one
having ordinary skill in the art at the time of the invention in view of
Herrington and Teucher?
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FINDINGS OF FACT
We find that the following enumerated facts 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).
1. Appellants’ Specification describes that the metal spring washer 30
of the annular gasket 20 resiliently compresses under compressive
forces when compressed along an axis “a-a” of the gasket 20.
Spec. 4, para. [0015]; fig. 3).
2. Herrington discloses a sealing ring suitable for sealing a cylinder
bore in an internal combustion engine. Herrington, col. 1, ll. 3-5.
3. Herrington discloses that the sealing ring S is comprised of a
toroidal metal shell 16 surrounding a core 10. Herrington, col. 1,
ll. 26-31. Toroidal metal shell 16 is formed of sheet metal and
completely surrounds the assembled core 10 with an overlap 18 to
provide a closed figure in cross-section. Harrington, col. 1, l. 42 –
col. 2, l. 3; figs. 1, 2. Core 10 includes three first annular members
12 between two adjacent second annular members 14. Herrington,
col. 1, ll. 27-37; fig. 2.
4. Herrington discloses that second annular member 14 “can be of
any curved shape provided it will resiliently compress or flatten
when opposed axially directed forces are applied to the ring.”
Herrington, col. 1, ll. 13-16. While Herrington depicts an
embodiment of second annular member 14 having a shape that is
curved in a radial cross-section, Herrington does not explicitly
recite that second annular member 14 is limited to embodiments
that curve in radial cross-section. Herrington, passim. In the
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preferred embodiment, second annular member 14 has a
corrugated cross-section. Herrington, col. 1, ll. 16-17; fig. 2. The
peaks of the corrugation of second annular member 14 engage
opposite sides of the surrounding toroidal metal shell 16 with little
or no force. Herrington, col. 2, ll. 3-5, fig. 2.
5. Herrington does not discuss, discourage, or discredit the notion of
using other than a curved shape for second annular member 14.
Herrington, passim. More specifically, Herrington does not
discuss, discourage, or discredit the notion of use of a core 10
(consisting of first and second annular members 12 and 14) having
a rectangular cross section. Herrington, passim.
6. Although Herrington discloses that the peaks of the corrugation of
second annular member 14 engage opposite sides of the
surrounding toroidal metal shell 16 continuously, Herrington does
not discuss, discourage, or discredit the notion of using a second
annular member 14 with a shape that contacts toroidal metal shell
16 other than continuously (i.e., intermittently). Herrington, col. 2,
ll. 3-5; passim; fig. 2.
7. Teucher discloses a cylinder head gasket comprised of a sheath 3
mounted on a gasket body 1 that partially encloses a plastically
deformed metal band-type support spring 2. Teucher, col. 1, l. 14-
16; col. 2, ll. 54-56; fig. 1. Support spring 2 is corrugated in, and
provides resilience in, a direction at right angles to the gap to be
sealed by the gasket. Teucher, col. 2, ll. 56-58; fig. 1. The upper
and lower corrugations of the support spring 2 press against the
sheath 3 to provide sealing pressure to the gap to be sealed by the
gasket. Teucher, col. 1, ll. 14-17; col. 2, ll. 59-62.
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ANALYSIS
Claim 1 is directed to a generally annular gasket comprising a hoop
wrap that forms a continuous metallic outer portion completely enclosing at
least one metal spring washer having a generally rectangular cross-section.
Claim 19 is directed to a similar gasket wherein the metal spring washer is a
wave style washer. Appellants’ Specification describes that the metal spring
washer compresses axially (Fact 1).
Herrington discloses a sealing ring comprised of a hoop wrap (toroidal
metal shell 16) completely enclosing a metal spring washer (core 10) (Facts
2, 3). The metal spring washer (core 10) includes second annular members
14 having a corrugation that contacts the opposite sides of the hoop wrap
(toroidal metal shell 16) (Facts 3, 4). Second annular member 14 can be of
any curved shape, provided it will resiliently compress when opposed axially
directed forces are applied (Fact 4).
Teucher discloses a cylinder head gasket comprised of a metal spring
washer (support spring 2), partially enclosed in sheath 3 of gasket body 1
(Fact 7). Teucher’s metal spring washer provides resilience to axial
compression (Fact 7).
The Examiner found that Teucher’s metal spring washer is a wave
style washer having a generally rectangular cross section and concluded that
it would have been obvious to one of ordinary skill in the art to substitute the
metal spring washer of Teucher for the metal spring washer of Herrington as
art equivalent spring shapes to provide resiliency and impart sealing pressure
to the hoop wrap of Herrington. Ans. 3-4. We agree with the Examiner’s
findings and reasoning as set forth in the Answer, and we find Appellants’
arguments that the Examiner has not provided a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
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would have combined the references as proposed to be unconvincing. App.
Br. 12-13, 15-17.
Herrington and Teucher each disclose sealing gaskets having metal
spring washers that provide resilience to axial compression (Facts 4, 7).
Replacing Herrington’s metal spring washer with Teucher’s metal spring
washer to reach the subject matter of claims 1 and 19 involves only the
simple substitution of one known metal spring washer for another. A prima
facie conclusion of obviousness may be supported by a showing that the
claims are directed to a process, machine, manufacture, or composition of
matter already known in the prior art that is altered by the mere substitution
of one element for another known in the field, and such modification yields
a predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
Appellants also argue that Herrington does not disclose the claimed
metal spring washer having a generally rectangular cross section, as called
for in claim 1 or the wave style washer within a hoop wrap, as called for in
claim 19, and that Teucher does not disclose the claimed hoop wrap. App.
Br. 7-8. Given that the Examiner found Herrington discloses the claimed
hoop wrap and Teucher discloses the claimed wave style washer having a
generally rectangular cross section, Appellants’ arguments are an
unconvincing individual attack on the references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981) (One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references).
Appellants argue that Herrington requires the metal spring washer to
have a curved radial cross-section, which “teaches directly away from the
‘generally rectangular cross section’” of independent claim 1. App. Br. 11.
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First, Herrington does disclose that second annular member 14 “can be of
any curved shape”; however, Herrington does not explicitly disclose that the
curve may only be in radial cross-section (Fact 4). Given this, a person of
ordinary skill in the art would understand that Herrington’s disclosure that
second annular member 14 “can be of any curved shape provided it will
resiliently compress or flatten when opposed axially directed forces are
applied to the ring” includes a second annular member 14 having a
circumferentially or radially curved cross-section. Further, even assuming,
arguendo, that Herrington discloses a second annular member 14 that is
limited to a radially curved cross section, Herrington does not discuss,
discourage, or discredit the notion of using other then a curved shape for
second annular member 14 (Fact 5). Given this, we fail to see, and
Appellants have failed to convincingly explain, how Herrington’s disclosure
would have led a person of ordinary skill in the art in a direction divergent
from that chosen by Appellants. In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference,… would be led in a direction
divergent from the path that was taken by the applicant.”).
Similarly, Appellants argue that Herrington’s disclosure that the peaks
of the corrugation of second annular member 14 continuously engage the
hoop wrap (toroidal metal shell 16) teaches away from use of a spring with a
curved circumferential cross-section, such as Teucher’s, that contacts the
hoop wrap intermittently. App. Br. 9. Herrington does not discuss,
discourage, or discredit the notion of using a second annular member 14
with a shape that contacts the hoop wrap (toroidal metal shell 16)
intermittently (Fact 6). Again, we fail to see, and Appellants have failed to
convincingly explain, how Herrington’s disclosure would have led a person
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of ordinary skill in the art in a direction divergent from that chosen by
Appellants.
Appellants argue that Herrington requires that the radial cross-
sectional shape of the “spring” compress, while claims 1 and 19 do not
contain such a requirement. App. Br. 9. Appellants’ argument is not
commensurate with the scope of claims 1 and 19 as neither claim contains a
limitation requiring any particular compression of the spring.
Appellants argue that contrary to the Examiner’s finding that the
spring shown in Figure 6 of Teucher is similar to the spring of Herrington,
“Teucher offers no suggestion that the protuberances 13 that contact the
sheath 12 at discreet [sic] locations in a circular path would behave similarly
to the circular peak of the second members 14 [of Herrington].” App. Br.
11. We disagree. Herrington and Teucher each discloses sealing gaskets
having metal spring washers (including the washer shown in Figure 6 of
Teucher) that provide resilience to axial compression (Facts 4, 7). Further,
the proposed combination does not use Teucher’s spring shown in Figure 6,
but rather uses Teucher’s spring shown in Figure 1.2 Ans. 3.
Appellants argue that a person of ordinary skill would not combine
Teucher and Herrington as proposed because carrier member 10, 10’ of
Teucher would interfere with operation of the metal spring washer. App. Br.
12, 13-14. Appellants’ contention refers to an alternate embodiment of

2 The proposed combination uses support spring 2 of Teucher as shown in
Figure 1, and makes reference to Figure 6 of Teucher only to show similarity
to Herrington’s device. Ans. 3.
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Teucher’s spring not relied on by the Examiner for the proposed
modification of Herrington.3
CONCLUSIONS
Herrington, as modified by Teucher, teaches a spring washer with a
rectangular cross section within a hoop wrap, as called for in claim 1.
Herrington, as modified by Teucher, teaches a wave style washer
within a hoop wrap, as called for in claim 19.
The subject matter of claims 1 and 19 would have been obvious to one
having ordinary skill in the art at the time of the invention in view of
Herrington and Teucher.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 3-9, and 11-
19.
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

mls
MARSHALL & MELHORN, LLC
FOUR SEAGATE
8TH FLOOR
TOLEDO OH 43804

3 As mentioned, supra, the proposed combination uses support spring 2 of
Teucher as shown in Figure 1. Ans. 3. Embodiments that include carrier
member 10, 10’ are shown in Figures 5 and 6. Teucher, figs. 1, 5, 6.