Yuichi Kinoshita

Patent Trials and Appeals Board

Apr 21, 2020

12003978 - (D) (P.T.A.B. Apr. 21, 2020)

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.
12/003,978 01/04/2008 Yuichi Kinoshita ISH-036 7032
32628 7590 04/21/2020
KANESAKA BERNER AND PARTNERS LLP
2318 MILL ROAD
SUITE 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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):
docketing@ipfirm.com
office@uspatentagents.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUICHI KINOSHITA

Appeal 2018-005385
Application 12/003,978
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 8, 11, 12, and 14–16.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ishikawa Gasket Co., Ltd. as the real
party in interest. Appeal Br. 2.
Appeal 2018-005385
Application 12/003,978

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a metal gasket. Claim 8 is illustrative,
and is reproduced below:
8. A metal gasket comprising:
at least two metal plates forming the metal gasket, each of said
metal plates having a hole to be sealed, said at least two metal
plates being separated from each other and laminated together
such that a space is formed between the two metal plates at a side
of and adjacent to the holes, and
one ring having a U-shape in cross section, and including an
upper flat portion and a lower flat portion to form an open side,
and a closed side, said ring being situated in the space between
the at least two metal plates such that the upper and lower flat
portions directly contact the at least two metal plates forming the
metal gasket, respectively, the closed side is located away from
the holes, and the open side faces the holes so that a fluid pressure
in the holes is adapted to be applied to the ring in a direction to
open the upper flat portion and the lower flat portion to thereby
press the upper and lower flat portions to the respective metal
plates contacting thereto to prevent a fluid in the holes from
entering between the two metal plates through the upper and
lower flat portions contacting the respective metal plates,
wherein at least one of the two metal plates is provided with a
half bead adjacent to the hole thereof to form the space from the
half bead toward the hole, said ring being provided between the
half bead and the hole to cooperate with the half bead for
preventing the fluid from entering between the two metal plates,
and
the half bead has two bent portions, a distance from the bent
portion near the hole to an edge of the hole being substantially
same as a distance of the upper or lower flat portion of the ring.

Appeal 2018-005385
Application 12/003,978

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THE REJECTIONS
The Examiner rejects:
(i) claims 8, 11, 12, 14, and 15 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement;
(ii) claims 8, 11, 12, 14, and 15 under 35 U.S.C. § 112(b) as being
indefinite;
(iii) claims 8, 11, 12, 14, and 16 under 35 U.S.C. § 103 as being
unpatentable over Hunter (US 2007/0262534 A1, published Nov. 15, 2007)
in view of Fuhrmann (US 3,519,278, issued July 7, 1970);
(iv) claim 15 under 35 U.S.C. § 103 as being unpatentable over
Hunter in view of Fuhrmann and Nakamura (US 2003/0075873 A1,
published Apr. 24, 2003);
(v) claims 8, 11, 14, and 16 under 35 U.S.C. § 103 as being
unpatentable over Terai (US 5,322,299, issued June 21, 1994) in view of
Fuhrmann;
(vi) claim 15 under 35 U.S.C. § 103 as being unpatentable over Terai
in view of Fuhrmann and Nakamura; and
(vii) claim 12 under 35 U.S.C. § 103 as being unpatentable over Terai,
Fuhrmann, and Hunter.
Withdrawn on appeal are several rejections relying on Nicholson (US
3,761,102, issued Sept. 25, 1973) as a secondary reference in lieu of
Fuhrmann. Ans. 3.

Appeal 2018-005385
Application 12/003,978

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ANALYSIS
Claims 8, 11, 12, 14, and 15--Written Description
The Examiner takes the position that the claim limitation that reads,
“the half bead has two bent portions, a distance from the bent portion near
the hole to an edge of the hole being substantially the same as a distance of
the upper or lower flat portion of the ring,” does not have written descriptive
support in the application as filed. Final Act. 6. Appellant’s position is that
the drawings as originally filed disclose structure that corresponds to this
claim limitation. Appeal Br. 5. In reply, the Examiner presents an annotated
version of the left portion of Appellant’s Figure 1,2 explaining how the
drawings fail to provide written descriptive support for the claim limitation.
Ans. 5. That annotated drawing is reproduced below:

2 One of the annotations to the drawing reproduced above is a statement
identifying the drawing as “figure 2.” However, the drawing includes the
legend, “Fluid Pressure,” which appears only in Appellant’s Figure 1.
Appeal 2018-005385
Application 12/003,978

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Depicted above is an Examiner-annotated version of the left-side portion of
Appellant’s Figure 1, which is a fragmentary sectional view of Appellant’s
cylinder head gasket. Spec. 4:10–12.
As can be seen in the drawing figure above, the Examiner includes
two-dimensional lines that purport to illustrate the difference between the
claimed distances3 recited as being “substantially the same.” The
Examiner’s position is that a person of ordinary skill in the art would not
understand these dimensions to be “substantially the same,” as claimed, and
therefore do not provide written descriptive support for the claim language at
issue. Ans. 4–5.
The two distances identified in the above-annotated drawing appear to
be “substantially the same” in our view. In addition, it appears that the
upper and lower flat portions of the ring extend from a position at the edge
of the hole, and closely conform to the shape of the inner surfaces of the
metal plates all the way to the point at which the “bent portion near the hole”
starts. This evidences that Appellant was in possession of the claim
limitation at issue because the drawings form part of the application as filed.
The Examiner shortchanges Appellant’s disclosure by selecting a point at
the inner surface of the ring where the shape of the ring transitions from
being flat to being curved, when the outer surface of the ring appears to
remain flat for a longer distance.
The rejection of claims 8, 11, 12, 14, and 15 as failing to meet the
written description requirement is not sustained.

3 The dimensioning at the top of the drawing is intended to represent the
distance from the “bent portion near the hole to an edge of the hole,” and, at
the bottom, the distance “of the upper or lower flat portion of the ring.”
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Application 12/003,978

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Claims 8, 11, 12, 14, and 15--Indefiniteness
The Examiner’s indefiniteness rejection is based on a limitation,
“substantially the same as,” which is a term of approximation. Final Act. 6–
7.
Terms of approximation are not per se indefinite. “Such broadening
usages as ‘about’ must be given reasonable scope; they must be viewed by
the decisionmaker as they would be understood by persons experienced in
the field of the invention. Although it is rarely feasible to attach a precise
limit to ‘about,’ the usage can usually be understood in light of the
technology embodied in the invention.” Modine Mfg. Co. v. U.S. ITC, 75
F.3d 1545, 1554 (Fed. Cir. 1996); see also Anchor Wall Sys. Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310–11 (Fed. Cir. 2003)
(citations and quotations omitted) (“[W]ords of approximation, such as
‘generally’ and ‘substantially,’ are descriptive terms ‘commonly used in
patent claims’ to avoid a strict numerical boundary to the specified
parameter.”).
The Examiner provides no reasoning as to why a person of ordinary
skill in the art would not be able to understand “substantially the same” in
this instance, in light of the technology embodied in the claimed invention.
As such, the rejection is seen as being a per se application of the
indefiniteness provisions of § 112(b).
To the extent that underlying basis for the rejection is the asserted lack
of adequate written description of the limitation, the analysis above
addresses the issue.
The rejection of claims 8, 11, 12, 14, and 15 as being indefinite is not
sustained.
Appeal 2018-005385
Application 12/003,978

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Claims 8, 11, 12, 14, and 16--35 U.S.C. § 103--Hunter/Fuhrmann
Appellant argues these claims as a group, and does not present
argument for the separate patentability of any claim or claims. We take
independent claim 8 as representative, and claims 11, 12, 14, and 16 stand or
fall with claim 8.
The Examiner finds that Hunter discloses a cylinder head gasket
having most of the limitations set forth in claim 8, with the exception that
ring 20 is not U-shaped, as claimed, nor the additional claimed features
attendant to the U-shaped ring. Final Act. 9–11. The Examiner cites to
Fuhrmann as disclosing a U-shaped ring in Figure 9 thereof that faces fluid
pressure, and that has upper and lower flat portions, an open side facing fluid
pressure and a closed side, with seal ring 2 provided at the interior of the
U-shaped ring. Id. at 11. The Examiner concludes that it would have been
obvious to modify Hunter to include a U-shaped ring with a seal ring inside,
as taught by Fuhrmann, in order to provide compressibility and effective
pressure on the surfaces of the metal plates or flat sections. Id.
Appellant argues that Hunter does not disclose that each of two metal
plates 22, 24, do not have half beads thereon, but are merely “bent portions
that . . . are portions of the metal plates forming the groove 12 for the wire
ring 20, and are not the half bead, as recited in claim 8.” Appeal Br. 8.
Appellant, however, does not explain how the claimed half beads
structurally distinguish over the acknowledged bent portions, which are
constructed and appear to function the same as, or substantially the same as,
Appellant’s claimed half beads.
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Appellant further argues that Hunter does not disclose the dimensional
limitations requiring that a distance from a bent portion near the hole to an
edge of the hole is substantially the same as a distance of an upper or lower
flat portion of a ring. Appeal Br. 8. Appellant maintains, in this regard, that
the Examiner admits that Hunter does not disclose a U-shaped ring, but only
a ring shaped of metal wire that does not meet the claimed dimensional
limitations. Id. at 8–9.
The Examiner points out that the diameter of the ring in Hunter
extends a distance from an edge of the bend portion near the hole to the edge
of the hole, providing an annotated version of Figure 6 of Hunter (Final
Act. 10) to illustrate the point, but, in any event, the argument amounts to an
individual attack on the teachings of Hunter, whereas the rejection involves
modifying Hunter to include the U-shaped seal of Fuhrmann. As such, the
argument does not point to Examiner error.
Turning to Fuhrmann, Appellant points out that U-shaped core
layer 39 and spring coil 2 are not disposed between two metal plates, and
that, even if those elements were disposed between the two metal plates of
Hunter and as claimed, “since the coil is located inside the core layer 39, the
fluid pressure is not properly applied to the core layer 39. Therefore, the
core layer cannot provide the pressure to the two plates to seal
therebetween.” Appeal Br. 12. This is seen as mere attorney argument not
supported by the evidence of record.
Fuhrmann discusses, in the context of Figure 9, on which the
Examiner relies, that the U-shaped sheath or seal is to have a relatively hard,
but resilient, layer onto which two layers of softer material are to be
disposed. Fuhrmann 5:69–74. Fuhrmann notes that an outer layer of the
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softer material “will come in contact with the surface to be sealed and will
thereby achieve a more effective sealing since it will more readily conform
to any irregularities in this surface.” Id. at 5:75–6:3. Further, given the
substantially identical geometry of the Fuhrmann U-shaped seal to
Appellant’s U-shaped seal, Appellant has not adequately explained how its
seal would differ functionally than the Fuhrmann seal upon exposure to fluid
pressure. The arguments thus fail to apprise us of error in the rejection.
Appellant additionally argues that “[s]ince the core layer 39 of
Fuhrmann et al. is arranged in the space or dent in the cylinder block, such a
core layer 39 cannot be used instead of the ring 20 of Hunter, to which high
tightening pressure is applied.” Appeal Br. 12. This, too, is seen as
constituting mere attorney argument unsupported by evidence or sound
technical reasoning. The sealing element of Fuhrmann is employed in
sealing a cylinder head to an engine block (see, e.g., Fuhrmann 3:44–49), as
is the sealing element of Hunter, and neither reference expresses that
tightening pressure is much higher for one type of sealing element as
compared with the other. The argument does not apprise us of error.
Appellant argues, in the Reply Brief, that it is not possible to use core
layer 39 of Fuhrmann without coil 2, in that the core layer cannot provide
the sealing function, resulting in an overall change in function. Reply Br. 4.
The Examiner’s proposed modification to Hunter involves the use of both
the core layer and coil (Final Act. 11), therefore the argument does not
address the rejection as presented. Appellant again argues that, with the coil
located inside the core layer, “the fluid pressure is not properly applied to
the core layer 39.” Reply Br. 5. We address this argument above.
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Application 12/003,978

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The rejection of claim 8 as being unpatentable over Hunter and
Fuhrmann is sustained. Claims 11, 12, 14, and 16 fall with claim 8.

Claim 15--35 U.S.C. § 103--Hunter/Fuhrmann/Nakamura
The Examiner relies on Nakamura for its disclosure of a metal gasket
having liquid holes in the metal plates, and half beads for sealing the liquid
holes. The Examiner concludes that it would have been obvious to include
the same in the metal plates of the metal gasket formed by the combination
of the teachings of Hunter and Fuhrmann, to allow for circulation of cooling
fluid in an engine. Final Act. 12.
Appellant argues that the Nakamura gasket has no member disposed
inside the half beads, as required by claim 8. Appeal Br. 14; Reply Br. 5.
Either for this reason, or some unstated reason, Appellant maintains that
“there is no motivation to combine the gasket disclosed in Nakamura with
the gasket of Hunter and Fuhrmann.” Id.
We see no reason why the presence or absence of a sealing member
disposed inside the half beads of a metal gasket would cause a person of
ordinary skill in the art to not look to Nakamura for its teaching of liquid
holes. Additionally, the Examiner provides a reason to modify Hunter in
view of Nakamura, which Appellant does not challenge as lacking in
rational underpinnings.
Appellant additionally argues that Nakamura does not overcome the
deficiencies in the combination of Hunter and Fuhrmann in rendering
obvious the subject matter of claim 8. Appeal Br. 14; Reply Br. 5. As
discussed, infra, we are not persuaded that any such deficiencies exist.
Appeal 2018-005385
Application 12/003,978

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The rejection of claim 15 as being unpatentable over Hunter,
Fuhrmann, and Nakamura, is sustained.

Claims 8, 11, 14, and 16--35 U.S.C. § 103--Terai/Fuhrmann
The Examiner applies the teachings of Terai (Figure 6) to claim 8 in
essentially the same manner as in the rejection applying Hunter. Final
Act. 13–14. Terai, like Hunter, fails to disclose a U-shaped ring and its
attendant limitations. Id. at 14. The Examiner proposes to modify Terai in
view of Fuhrmann in the same manner as was done in rejecting the claims
over Hunter and Fuhrmann, i.e., by employing the U-shaped ring with seal
ring inside, as disclosed by Fuhrmann, in the space between the two metal
plates of Terai. Id.
Appellant argues that Terai’s disclosure of bending two metal plates
to form a space, into which a fire guard 11 made of a material resistant to
high temperatures, does not disclose a half bead, as claimed. Appeal Br. 15,
16. Appellant, however, does not explain how the claimed half beads
structurally distinguish over the acknowledged bent portions, which are
constructed and appear to function the same as, or substantially the same as,
Appellant’s claimed half beads.
Appellant further argues that Terai does not disclose the dimensional
limitations requiring that a distance from a bent portion near the hole to an
edge of the hole is substantially the same as a distance of an upper or lower
flat portion of a ring. Appeal Br. 15. Appellant maintains, in this regard,
that the Examiner admits that Terai does not disclose a U-shaped ring. Id.
The Examiner points out that the ring in Terai extends a distance from
an edge of the bend portion near the hole to the edge of the hole (Final
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Application 12/003,978

12
Act. 14), but, in any event, the argument amounts to an individual attack on
the teachings of Terai, whereas the rejection involves modifying Terai to
include the U-shaped seal of Fuhrmann. As such, the argument does not
point to Examiner error.
Appellant relies on the same arguments directed to Fuhrmann that
were presented in the rejection of the claims over Hunter and Fuhrmann.
Appeal Br. 16. For the reasons discussed in the section above directed to
that rejection, we are not persuaded of Examiner error in the rejection.
The rejection of claims 8, 11, 14, and 16 as being unpatentable over
Terai and Fuhrmann is sustained.

Claim 15--35 U.S.C. § 103--Terai/Fuhrmann/Nakamura
Appellant presents the same arguments traversing this rejection as are
presented for the rejection of claim 15 over Hunter, Fuhrmann, and
Nakamura. Appeal Br. 17. For the reasons discussed above, the arguments
do not point to Examiner error.
The rejection of claim 15 as being unpatentable over Terai, Fuhrmann,
and Nakamura is sustained.

Claim 12--35 U.S.C. § 103--Terai/Fuhrmann/Hunter
Appellant argues only that “Hunter does not rectify the deficiencies of
Terai and Fuhrmann.” Appeal Br. 18. In that we do not find the
combination of Terai and Fuhrmann to be deficient in rendering obvious the
subject matter of claim 8, this argument is unavailing for claim 12, which
depends from claim 8.
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Application 12/003,978

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The rejection of claim 12 as being unpatentable over Terai, Fuhrmann,
and Hunter is sustained.

DECISION
The rejection of claims 8, 11, 12, 14, and 15 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement is reversed.
The rejection of claims 8, 11, 12, 14, and 15 under 35 U.S.C. § 112(b)
as being indefinite is reversed.
The rejection of claims 8, 11, 12, 14, and 16 under 35 U.S.C. § 103 as
being unpatentable over Hunter and Fuhrmann is affirmed.
The rejection of claim 15 under 35 U.S.C. § 103 as being unpatentable
over Hunter, Fuhrmann, and Nakamura is affirmed.
The rejection of claims 8, 11, 14, and 16 under 35 U.S.C. § 103 as
being unpatentable over Terai and Fuhrmann is affirmed.
The rejection of claim 15 under 35 U.S.C. § 103 as being unpatentable
over Terai, Fuhrmann, and Nakamura is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103 as being unpatentable
over Terai, Fuhrmann, and Hunter is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
8, 11, 12,
14, 15
112(a) Written Description 8, 11, 12, 14,
15
8, 11, 12,
14, 15
112(b) Indefiniteness 8, 11, 12, 14,
15
Appeal 2018-005385
Application 12/003,978

14
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
8, 11, 12,
14, 16
103 Hunter, Fuhrmann 8, 11, 12,
14, 16

15 103 Hunter, Fuhrmann,
Nakamura
15
8, 11, 14,
16
103 Terai, Fuhrmann 8, 11, 14,
16

15 103 Terai, Fuhrmann,
Nakamura
15
12 103 Terai, Fuhrmann,
Hunter
12
Overall
Outcome

8, 11, 12,
14–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED