Ex Parte Casler et al

Patent Trial and Appeal BoardJul 25, 2013

11611234 (P.T.A.B. Jul. 25, 2013)

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. 11/611,234 12/15/2006 Arvid Casler 710240-692 4063 59582 7590 07/26/2013 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER BEACH, THOMAS A ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 07/26/2013 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 ARVID CASLER and GREG BARCLAY ____________________ Appeal 2011-007420 Application 11/611,234 Technology Center 3600 ____________________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007420 Application 11/611,234 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 16-19. Claims 1-15 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention relates to “relatively rigid multi-layer gaskets such as found in an internal combustion engine.” Spec., para. [0001]. Claim 16, reproduced below, is the sole independent claim and representative of the claimed subject matter. 16. A multilayer gasket, comprising: at least one gasket layer having at least one aperture and being free of any sealing bead embossments encircling said at least one aperture; said at least one aperture having at least three channels each surrounding said at least one aperture, with two of said channels being formed on one side of said at least one gasket layer in radially spaced relation to one another, and the third of said channels being formed on the opposite side of said at least one layer at a location radially between said two of said channels, and wherein at least one of the three channels has a channel depth which differs over its circumference and including rigid annular ring seals formed as separate constructional elements from said gasket layer and disposed in each of said three channels. Appeal 2011-007420 Application 11/611,234 3 REFERENCES The Examiner relies upon the following prior art references: Saunders Weiss Wallace Sadowski US 519,413 US 5,522,604 US 5,564,715 US 7,401,790 B2 May 8, 1894 Jun. 4, 1996 Oct. 15, 1996 Jul. 22, 2008 REJECTIONS The following rejections are before us on appeal: Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wallace and Weiss. Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sadowski, Saunders and Weiss. ANALYSIS Rejection of claims 16-19 based on Wallace and Weiss Claim 16 The Examiner finds that Wallace discloses the gasket of independent claim 16 except for a channel having a depth which differs over its circumference. Ans. 3. Regarding the claimed “rigid annular ring seals,” the Examiner finds that Wallace teaches using a variety of seals and seal materials, including rigid materials such as metals, and notes that “‘rigid’ is a relative term.” Id. (citing Wallace, col. 6, ll. 33-67); see also id. at 5. The Examiner further finds that Weiss discloses varying channel depth to vary the overall height of a seal and concludes it would have been obvious to one of ordinary skill in the art to vary the depth of Wallace’s channels to “improve the sealing surface pressure.” Ans. 4. Appeal 2011-007420 Application 11/611,234 4 Appellants argue that Wallace fails to disclose rigid seal elements, asserting that “all the seal elements within the teachings of Wallace are reliant on being non-rigid, so as to be moved from a relaxed state (Figures 1- 4) to a compressed state (Figures 5 and 6).” App. Br. 3-4 (citing Wallace, col. 6, ll. 26-32); see also Reply Br. 1. Appellants also argue that, contrary to the Examiner’s interpretation, “rigid” is not a relative term and contend that “[r]igid means rigid, wherein the term ‘rigid’ is to be construed within the ordinary meaning of rigid.”1 Reply Br. 1. To determine whether Wallace discloses rigid seals, we first must construe the meaning of “rigid” as the term is used in the claims. The words of a claim are generally given their ordinary and customary meaning, which is the meaning the words would have to a person of ordinary skill in the relevant art at the time of invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Furthermore, during examination, patent claims are given their broadest reasonable interpretation in light of the specification. Id. at 1316. In this case, Appellants’ Specification states: The rigid seal 22 may be formed from any suitably rigid material, including rigid polymers, reinforced polymers and polymer composites, metals and the like. As with gasket sheet 12, the degree of rigidity required will depend on many factors, such as the design and materials used in the flange associated with the sealed joint in which gasket seal 10 is being applied. Spec., para. [0048] (emphasis added). Thus, the rigid seal 22 has a “degree of rigidity,” indicating “rigid” is a relative term allowing for some degree of 1 The assertion that rigid means rigid is a circular argument that does not shed any light on how the term should be interpreted in view of the Specification by one of ordinary skill in the art. Appeal 2011-007420 Application 11/611,234 5 flexibility rather than absolute inflexibility.2 Accordingly, when considered in light of how the phrase is used in the Specification, the broadest reasonable interpretation of “rigid” means having limited flexibility but does not require absolute inflexibility. Applying this interpretation, we agree with the Examiner that some of Wallace’s seals, particularly the spiral-wound seals made of metals such as stainless steel alloys or titanium alloys, could be considered to be “rigid.” See Ans. 3, 5; Wallace, col. 6, ll. 33-39. Wallace discloses that the seal elements are compressed from a relaxed state to a compressed state. Wallace, col. 3, ll. 38-41; col. 7, ll. 35-41; figs. 4-6. However, as noted supra, “rigid,” as broadly used in the claims, does not require absolute inflexibility, and the claims do not specify a particular degree of rigidity. Thus, the small amount of compression Wallace’s seals undergo does not necessarily mean the seals are non-rigid. Appellants also argue that one of ordinary skill in the art would not have been prompted to modify Wallace in view of Weiss. App. Br. 4; Reply Br. 1-2. In particular, Appellants contend that, given the non-symmetrical geometry of the channels in Figure 7 of Wallace, the proposed modification would destroy “the ability to provide seal elements that comport in shape with the opposite acute and right angled sidewalls.” App. Br. 4. We do not find this argument to be persuasive. One of ordinary skill in the art would understand how to provide Wallace’s non-symmetrical channel with a varying depth in order to improve sealing surface pressure 2 We also note that the rigid gasket sheet 12 is described as having a flexible portion 32, further showing that a rigid structure can exhibit some flexibility. Spec., para. [0055]. Appeal 2011-007420 Application 11/611,234 6 without destroying the functionality of the channel. Furthermore, the Examiner correctly notes that Wallace discloses symmetrical, rectangular channels in addition to the non-symmetrical channels. Ans. 5. We are also not persuaded by Appellants’ argument that, because the Figure 8 embodiment of Wallace (which has rectangular channels 332, 334 with straight walls) is disclosed as being particularly useful for applications where high-pressure and fire resistance are desired, one would not be motivated to jeopardize the desired high-pressure and fire-resistant capabilities. App. Br. 4-5 (citing Wallace, col. 9, ll. 29-34); see also Reply Br. 1-2. The mere fact that the particular embodiment is particularly useful for such applications does not mean that the proposed modification would jeopardize or compromise the desired high-pressure and fire-resistant capabilities. In view of the above, Appellants’ arguments do not apprise us of error, and we sustain the rejection of claim 16 and of claim 19, which depends from claim 16 and is not argued separately (App. Br. 5). Claim 17 Claim 17 recites that “one of the ring seals has a width that differs over its circumference.” The Examiner finds that Weiss discloses “a seal can be varied in width . . . to control sealing surface pressures” and concludes it would have been obvious to one of ordinary skill in the art to vary the width of Wallace’s rings to “improve the sealing surface pressure.” Ans. 3-4. Appellants argue “all that is disclosed by Weiss is that the first area supporting the free leg has a topographically freely selected shape and/or variable width along the circumference . . . (Col. 1, lines 56-60)” and this Appeal 2011-007420 Application 11/611,234 7 does not address “the width of the material reinforcements 16, 16’, but only the first area supporting the free leg, which is taken to be the recess areas designated by references numerals 18, 18’.” App. Br. 5. Appellants further argue that Weiss discloses that the “various material reinforcements 16, 16’ can have different widths, not that the widths differ, or vary over there [sic] circumference, as claimed.” Id. We understand Appellants’ position to be that Weiss discloses that different gaskets can have material reinforcements of different widths, rather than a single gasket having a material reinforcement that varies in width over the circumference. These arguments are not persuasive. Weiss discloses that “the first area supporting the free leg has a . . . variable width along the circumference of the passage opening.” Weiss, col. 1, ll. 57-59. We disagree with Appellants that the “first area supporting the free leg” is necessarily the recess 18. Referring to the embodiment of Figure 1, for example, Weiss discloses a gasket having a head-side gasket plate 10, a block-side gasket plate 11, a carrier sheet 14, and an intermediate sheet 17. Weiss, col. 2, ll. 14-20. The head-side gasket plate 10 is provided with a bead 12 having a free leg 9 spaced from the intermediate sheet 17. Weiss, col. 2, ll. 23-25. A material reinforcement 16 is positioned below the free leg 9 to prevent the bead 12 from becoming completely flattened when subject to load. Weiss, col. 2, ll. 26-31. Thus, the material reinforcement 16, not the recess 18, supports the free leg 9 and consequently is disclosed as having a variable width along the circumference of the passage opening. Regarding Appellants’ second argument, Weiss discloses “the recesses 18 and the material reinforcements 16, 16’ obtained can have a topographically freely selected shape and different widths” such that it is Appeal 2011-007420 Application 11/611,234 8 “very easily possible to obtain different material reinforcements 16, 16’ within the same gasket.” Weiss, col. 4, ll. 47-54 (italicized emphasis added). Accordingly, this passage of Weiss discloses that the widths of the material reinforcements can be different within the same gasket. For these reasons, we are not apprised of Examiner error, and we sustain the rejection of claim 17 and of claim 18, which depends from claim 17 and is not argued separately (App. Br. 5). Rejection of claims 16-19 based on Sadowski, Saunders and Weiss The Examiner finds that Sadowski discloses a gasket having, inter alia, at least two rigid seals that can have a varied width or depth but are not located in channels3, and Saunders discloses a gasket that includes three seal rings located in corresponding channels. Ans. 4. The Examiner concludes that it would have been obvious to modify the gasket of Sadowski to provide three seal rings in channels as taught by Saunders “as such is an equivalent configuration” that “would yield expected results.” Id. The Examiner further concludes that, given the teachings of Weiss, it would have been obvious to modify the width and depth of the channels to provide an overall varied width or depth of the seal rings. Id. at 4-5. Appellants argue “Sadowski already thoroughly address[es] the issue of attaching the seals 34 to the upper and lower surfaces 26, 28 of the gasket sheet 24 . . . and thus, one of skill in the art would not be prompted to modify the mechanism of attachment of the seals 34.” App. Br. 6. Appellants also argue that because Sadowski addresses variation in the 3 We note that the Examiner uses the term “recess” rather than “channel” in this ground of rejection but understand these terms are intended by the Examiner to be interchangeable. Appeal 2011-007420 Application 11/611,234 9 thickness and width of the seals 34, these “teachings do not require modification, as they are already sufficient to accomplish the intended load distribution.” Id. However, it is not necessary that Sadowski suggest a need for improvement in order for one of ordinary skill in the art to consider a modification. We agree with the Examiner that a person having ordinary skill in the art would have recognized the proposed modifications as simple substitutions of one known mechanical element for another that produces predictable results. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. The Examiner’s rationale thus provides adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to modify Sadowski in the manner proposed. Accordingly, we do not find Appellants’ arguments persuasive. We thus sustain the rejection of claim 16 and of claims 17-19, which depend from claim 16 and are not argued separately (App. Br. 6). Appeal 2011-007420 Application 11/611,234 10 DECISION We affirm the decision of the Examiner rejecting claims 16-19. 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). AFFIRMED hh