Ex Parte Gadomski et al

Patent Trial and Appeal BoardDec 4, 2017

13577501 (P.T.A.B. Dec. 4, 2017)

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. 13/577,501 08/07/2012 Bartosz Gadomski 710280-00058 9077 59582 7590 12/04/2017 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER NEUBAUER, THOMAS L ART UNIT PAPER NUMBER 3675 MAIL DATE DELIVERY MODE 12/04/2017 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 BARTOSZ GADOMSKI and MANFRED KLINNER ____________ Appeal 2017-002036 Application 13/577,5011 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is Federal Mogul Sealing Systems GMBH. Appeal Br. 3. Appeal 2017-002036 Application 13/577,501 2 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A gasket for sealing between two components of an exhaust line of a combustion engine, comprising: - an upper spring-elastic spring steel layer; - a lower spring-elastic spring steel layer; and - an insert, which is not resistant to exhaust gases and is arranged between the upper and lower spring steel layers; wherein - the gasket comprises at least one through-opening; - the upper and the lower spring steel layers on the sealing surface each have at least one stamped bead, which encloses the at least one through-opening; and - the upper and lower spring steel layers are welded together in the region adjoining the at least one through-opening, wherein the weld comprises a continuous weld such that the insert is protected from exhaust gasses, and wherein the upper and lower spring steel layers are directly connected by positive locking in the edge region facing away from the through- opening. Rejections I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kozerski (US 5,803,462, issued Sept. 8, 1998), Klinner (US 2011/0298186 A1, published Dec. 8, 2011), and Bleyh (US 6,565,098 B2, issued May 20, 2003). Appeal 2017-002036 Application 13/577,501 3 II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Bleyh, and Goshima et al. (US 2010/0007094 A1, published Jan. 14, 2010) (hereinafter “Goshima”).2 III. Claims 4–7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Bleyh, and Sueda (US 2006/0145427 A1, published July 6, 2006). ANALYSIS Rejections I & III Independent claim 1 recites, “[a] gasket for sealing between two components of an exhaust line of a combustion engine” including an upper and a lower spring-elastic spring steel layer, and “an insert, which is not resistant to exhaust gases and is arranged between the upper and lower spring steel layers.” Appeal Br. 12, Appendix A (emphasis added). The Examiner rejects claim 1 by combining teachings of Kozerski, Klinner, and Bleyh. Final Act. 4–5. The Examiner finds that Kozerski discloses a gasket having upper and lower spring-elastic spring steel layers (i.e., surface plates 21, 22) and an insert (i.e., central carrier plate 20), which is not resistant to exhaust gases and is arranged between the upper and lower spring steel layers. Final Act. 4; Kozerski, col. 3, ll. 22–25, col. 4, ll. 23–26, Fig. 2. Additionally, the Examiner modifies the teachings of Kozerski in view of the teachings of Klinner and Bleyh. Final Act. 5. However, the 2 Although the Examiner does not include Bleyh in the statement of the ground of rejection, the body of the rejection includes Bleyh. Final Act. 7. The Examiner’s failure to include Bleyh in the statement of the ground of rejection is merely a minor oversight. Appeal 2017-002036 Application 13/577,501 4 modifications do not affect the location or, more importantly for the issue presented in this appeal, the material of Kozerski’s insert. The material of the Kozerski’s insert 20 is preferably made of steel. Kozerski, col. 4, ll. 23–26. Kozerski also discloses that plate 20 is generally “composed of [a] more rigid material than is ring 14,” which is a “yieldable combustion ring 14 [that] is usually metallic” and “can be formed from carbon steel, stainless steel, beryllium-copper alloys, or any other material having the requisite material properties.” Kozerski, col. 4, ll. 20–25 (italics added). The foregoing description of the material of Kozerski’s insert 20 includes a vast number of materials that are rigid. The Examiner finds that Kozerski’s insert is “made of metal.” See Final Act. 3. At least because Kozerski’s insert may be made of steel, the Examiner’s finding is correct. The other rigid materials described in Kozerski are non-specific. And, because the Examiner does not explain what other types of metal are “rigid” in view of Kozerski’s description, the only material of record that is made of metal and meets the requirements for Kozerski’s insert is steel. The Appellants argue that “[t]hose of ordinary skill in the art will appreciate that steel is resistant to exhaust gasses, and thus, the Kozerski reference falls short of claim 1 for lacking an insert that is ‘not resistant to exhaust gasses.[’]” Appeal Br. 8 (citing Kozerski, col. 4, ll. 19–27). Here, a useful point underlying the Appellants’ argument is the meaning of the claimed phrase “not resistant to exhaust gasses.” Appeal Br. 7. The Appellants argue that the phrase “not resistant to exhaust gasses,” in the context of claim 1, means a material that “does not resist damage when exposed to exhaust gasses.” Id. The Appellants also argue that a person of Appeal 2017-002036 Application 13/577,501 5 ordinary skill in the art would understand that “not resistant to exhaust gasses” refers to when the combustion engine is operating normally. Reply Br. 2. The claimed phrase “not resistant to exhaust gasses” is not defined in the Specification. See also Ans. 8. Accordingly, we turn to the plain and ordinary meaning of the claimed phrase “not resistant to exhaust gasses,” for example, “does not resist damage when exposed to exhaust gasses,” as presented by the Appellants. Supra. We determine that the foregoing definition is consistent with the broadest reasonable interpretation of the claimed phrase in light of the Specification as understood by one of ordinary skill in the art. Additionally, we note that the Specification provides an example of an insert material, “which is not resistant to exhaust gasses,” i.e., “the insert comprises a soft material layer or a fibre insert.” Spec. 3, ll. 21– 22. See also Appeal Br. 12, Appendix A (Claim 2, which depends from claim 1, specifies the insert as including a material made of fiber). Turning back to the Examiner’s rejection, and more specifically to the Examiner’s finding that Kozerski’s insert corresponds to the claimed “insert, which is not resistant to exhaust gases,” the Examiner only identifies Kozerski’s insert 20 as being made of a non-specific metal. Final Act. 3. The Examiner fails to acknowledge that Kozerski’s preferred insert material is steel. Additionally, the Examiner finds that Kozerski does not disclose an insert made of a soft material or a fiber insert (albeit for the rejection of claim 2, which is rejected under a separate ground). See Final Act. 7. The Examiner takes a general position that exhaust gases may affect a material due to changes in temperature, pressure, and time (e.g., corrosion). See Ans. 8–9. Appeal 2017-002036 Application 13/577,501 6 The Examiner, however, fails to adequately explain why Kozerski’s insert 20 is made of material that will not resist exhaust gases, e.g., “does not resist damage when exposed to exhaust gasses.” Rather, the Examiner’s position is based on conjecture. The Examiner speculates that a non-specific metal may not resist a non-specific exhaust gas due to the potential effects that the non-specific exhaust gas would have on the non-specific metal due to non-specific changes in temperature, pressure, or time. See Ans. 8–9. Additionally, the Examiner does not identify a particular type of metal (e.g., steel) that does not resist damage when exposed to all types of exhaust gas or identify a type of exhaust gas that would damage all types of metals without resistance. In light of the above, we determine that the Examiner’s position lacks evidence and technical reasoning to be adequately supported. Thus, we do not sustain the Examiner’s rejection of independent claim 1 as unpatentable over Kozerski, Klinner, and Bleyh. We also do not sustain the Examiner’s rejection of claim 3, which depends from claim 1, under the same ground of rejection for the same reasons. The Examiner’s rejection of claims 4–7, based on Kozerski, Klinner, and Bleyh in combination with Sueda, relies on the same inadequately supported finding as discussed above, i.e., that the claimed “insert, which is not resistant to exhaust gases” reads on Kozerski’s insert 20. This rejection is not cured by additional findings and reasoning associated therewith. Thus, we do not sustain the rejection of claims 4–7 as unpatentable over Kozerski, Klinner, Bleyh, and Sueda. Appeal 2017-002036 Application 13/577,501 7 Rejection II Claim 2 recites, “[t]he gasket according to Claim 1, wherein the insert comprises a fiber insert.” Appeal Br. 12, Appendix A. The Examiner’s rejection of claim 2 –– based on Kozerski, Klinner, and Bleyh in combination with Goshima –– includes findings and reasoning that remedy the inadequately supported finding that the claimed “insert, which is not resistant to exhaust gases” reads on Kozerski’s insert 20. First, the Examiner finds that “Kozerski does not disclose: the insert comprises a soft material layer of a fiber insert.” Final Act. 7. Second, the Examiner finds that Goshima “teaches a fiber insert . . . for the purpose of prevent [sic] vibration damage.” Id. (citing Goshima 1, col. 1, ll. 33–34). Lastly, the Examiner concludes that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Kozerski with a fiber insert as taught by Goshima . . . for the expected benefit of supporting the metal layers and increasing the rigidity of the seal assembly.” Final Act. 7 (emphasis omitted). Here, the Examiner’s rejection of claim 2, which includes additional findings and reasoning, remedies the deficiency of the rejection of claim 1. The Appellants do not present a separate argument for the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Bleyh, and Goshima. In view of the foregoing, we sustain the Examiner’s rejection of claim 2 as unpatentable over Kozerski, Klinner, Bleyh, and Goshima. Although claim 2 depends from independent claim 1, the Examiner does not reject claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Bleyh, and Goshima. Hence, a rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Appeal 2017-002036 Application 13/577,501 8 Bleyh, and Goshima is not before us on appeal. In this case, we decline to make such a new ground of rejection. DECISION We AFFIRM the Examiner’s decision rejecting claim 2 under 35 U.S.C. § 103(a) as unpatentable over Kozerski, Klinner, Bleyh, and Goshima. We REVERSE the Examiner’s decision rejecting under 35 U.S.C. § 103(a): claims 1 and 3 as unpatentable over Kozerski, Klinner, and Bleyh; and claims 4–7 as unpatentable over Kozerski, Klinner, Bleyh, and Sueda. 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-IN-PART