Ex Parte McManus et al

Patent Trial and Appeal Board

Mar 28, 2017

12783309 (P.T.A.B. Mar. 28, 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.
12/783,309 05/19/2010 Michael McManus 089129- 8072.U S00 6425
98783 7590 03/30/2017
Perkins foie T T P - DF.N freneral
EXAMINER
P.O. Box 1247 PIERCE, JEREMY R
Seattle, WA 98111-1247
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MCMANUS, PAUL NICHOLS, and
SHERWIN DAMDAR1
Appeal 2016-001734
Application 12/783,309
Technology Center 1700
Before JEFFREY B. ROBERTSON, CHRISTOPHER L. OGDEN, and
MONTE T. SQUIRE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1—5, 7, 8, 10-12, and 15—21 in the above
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Garlock Sealing Technologies, LLC as the real party
interest. Appeal Br. 1, May 22, 2015.
2 Final Office Action, Dec. 23, 2014 [hereinafter Action]; Examiner’s
Answer, Sept. 23, 2015 [hereinafter Answer],
Appeal 2016-001734
Application 12/783,309
BACKGROUND
Appellants’ claimed invention is directed to a reinforced gasket
material. Spec. 1 5. Independent claim 1 is representative:
1. A reinforced gasket material comprising:
a first gasket material layer;
a second gasket material layer; and
a non-metallic scrim layer interposed between the first
gasket material layer and the second gasket material layer;
wherein the first gasket material layer and the second
gasket material layer comprise a high-temperature sealing
material, the high-temperature sealing material comprising:
80 wt% or greater non-oxidizing high temperature
filler;
20 wt% or less high temperature fiber; and
6 wt% or less binding agent.
Appeal Br. Claim App. 1. Independent claim 21 recites similar limitations,
and that the first and second gasket material layers comprise a “non-asbestos
compressed fiber.” Id. at 2—3.
The Examiner maintains the following grounds of rejection:
I. Claims 1, 2, 5, 7, 8, 10-12, 15—19, and 21 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Howard3 in view of Foster.4
See Action 2-4.
IF Claims 1, 2, 5, 7, 8, 10—12, 15—19, and 21 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Howard in view of Halout.5
See Action 4—7.
3 Howard, U.S. Patent No. 4,961,991 (issued Oct. 9, 1990).
4 Foster, U.S. Patent No. 5,240,766 (issued Aug. 31, 1993).
5 Halout et al., U.S. Patent No. 5,437,767 (issued Aug. 1, 1995).
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Application 12/783,309
III. Claims 1, 2, 5, 7, 8, 10, 12, 15—17, 19, and 21 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Howard in view of
McDowell.6 See Action 7—9.
IV. Claims 3 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard in view of Foster, and further in view of
Sznopek.7 See Action 9—10.
V. Claims 3 and 20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Howard in view of Halout, as applied above to Claims 1
and 2, and further in view of Sznopek. See Action 10.
VI. Claims 3 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard in view of McDowell, and further in view of
Sznopek. See Action 10—11.
VII. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard in view of Foster, and further in view of Carl.8
See Action 11.
VIII. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard in view of Halout, and further in view of Carl.
See Action 11—12.
IX. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard in view of McDowell, and further in view of
Carl. See Action 12—13.
In the Appeal Brief, Appellants argue independent claims 1 and 21 as
a group. See Appeal Br. 4—7. Appellants make no distinct arguments
6 McDowell et al., U.S. Patent No. 4,834,279 (issued May 30, 1989).
7 Sznopek et al., U.S. Patent No. 4,319,950 (issued Mar. 16, 1982).
8 Carl et al., U.S. Patent No. 4,698,243 (issued Oct. 6, 1987).
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Appeal 2016-001734
Application 12/783,309
regarding the dependent claims. See id. at 8—9. Therefore, consistent with
37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our discussion to claim 1.
Independent claim 21 and dependent claims 2—5, 7, 8, 10-12, and 15—20
stand or fall with claim 1.
DISCUSSION
The Examiner finds that Howard discloses a reinforced gasket
material with first and second gasket material layers, and a non-metallic
scrim layer interposed between them as required by claim 1. See Action 2—
3. Although the Examiner finds that Howard does not disclose the
composition of the gasket material layers as set forth in claim 1, the
Examiner determines that using this composition would have been obvious
to a person of ordinary skill in the art, based on the teachings of either
Foster, Halout, or McDowell. See id. at 3—9.
Appellants argue that the Examiner’s proposed modifications to
Howard based on the teachings of Foster, Halout, and McDowell “would
clearly render the modified invention unsatisfactory for its intended
purpose.” Appeal Br. 5 (citing MPEP 2143.01.V; In re Gordon, 733 F.2d
900 (Fed. Cir. 1984)). According to Appellants, “one intended purpose of
Howard is to provide an improved graphite-based flexible laminate gasket
material.” Id. (citing Howard 1:10-56). Appellants argue that “[i]n the
modification proposed in the Final Office Action, the modified laminate
material would no longer be a graphite-based gasket material because the
graphite layers would be eliminated from the laminate structure. As a result,
the modified material of Howard would be unsatisfactory for providing a
graphite-based gasket material.” Id. at 6; see also Reply Br. 4. Appellants
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Application 12/783,309
further argue that “the applicable legal standard is not whether the proposed
modification would render the resulting invention inoperable, but whether
the proposed modification would render the resulting invention
unsatisfactory for its intended purpose.” Id. at 7; see also Reply Br. 5.
Appellants’ arguments do not persuade us of reversible error in the
Examiner’s rejection. In an obviousness analysis, we “ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
401 (2007). This is a flexible inquiry in which we take into consideration
the inferences and creative steps, as well as the routine steps, that an
ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). The prior art may
teach away from the combination of prior art teachings, by criticizing,
discrediting, or otherwise discouraging the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The prior art may also teach
away from the claimed invention if the combined references would produce
a seemingly inoperative device, In re Urbanski, 809 F.3d 1237 (Fed. Cir.
2016), or would “require a substantial reconstruction and redesign of the
elements shown” in the prior art, or “a change in the basic principles under
which the [prior art] construction was designed to operate.” In re Ratti, 270
F.2d 810, 813 (CCPA1959).
In Gordon, cited by Appellants, the Federal Circuit reversed an
obviousness rejection based on modifying a prior art liquid strainer by
turning it upside down, because the prior art apparatus relied on gravity for
its operation and thus, as modified, would have been rendered inoperable for
its intended purpose. See 733 F.2d at 902. In contrast to Gordon, the
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Examiner’s proposed modification of Howard, by incorporating the material
compositions taught or made obvious by Foster, Halout, and McDowell,
does not render the resulting gasket material product inoperable or
unsuitable for its intended purpose of providing a flexible gasket material.
See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir.
2007) (“[W]e do not ignore the modifications that one skilled in the art
would make to a device borrowed from the prior art.”)
Appellants have not persuasively shown that Howard or any other
reference teaches away from the use of materials other than graphite. Nor
have Appellants persuasively shown that the Examiner otherwise erred in
determining that a person of ordinary skill in the art would have had reason
to modify the flexible laminate gasket material of Howard by replacing the
graphite in Howard with the high temperature sealing materials taught by
Foster, Halout, and McDowell.
For the above reasons, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 1, and likewise, Appellants
have not persuaded us of reversible error in the rejections of claims 2—5, 7,
8, 10-12, and 15-21.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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