Ex Parte Schumacher et al

Patent Trial and Appeal BoardAug 21, 2013

11723014 (P.T.A.B. Aug. 21, 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. 11/723,014 03/15/2007 Thomas Schumacher 53072 2720 1609 7590 08/22/2013 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER BEACH, THOMAS A ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 08/22/2013 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 THOMAS SCHUMACHER, KLAUS BENDL, and PETER SCHWEITZER ____________________ Appeal 2011-009558 Application 11/723,014 Technology Center 3600 ____________________ Before: JAMES P. CALVE, JEREMY M. PLENZLER, and BEVERLY M. BUNTING, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009558 Application 11/723,014 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 15-46. Claims 1-14 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claims 15, 27, 31, and 40 are independent. Claim 40, reproduced below, is illustrative of the claimed subject matter: 40. A flat gasket, comprising: at least one elongated metallic carrier element extendable in a longitudinal direction over several sealing zones about a number of combustion chamber openings arranged in a row for a number of cylinders of a piston engine arranged in a row, said carrier element including several component elements interconnected to one another at adjacent longitudinal ends thereof, each said component element having at least one of said combustion openings; a first support element extending essentially over an entire length of said carrier element, adjoining said carrier element, and having several interconnected component elements, said component elements of said carrier element having a carrier number of said component elements thereof, said component elements of said support element having a support number of said component elements thereof, said carrier number and said support number being different; and joining sites of said component elements of said carrier element being axially spaced in said longitudinal direction from a joining site of said component elements of said support element, said joining sites being spaced and separate from said combustion openings. Appeal 2011-009558 Application 11/723,014 3 REJECTIONS 1. Claims 40-46 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa (US 7,207,572 B2; iss. Apr. 24, 2007); 2. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa and Mockenhaupt (US 5,375,851; iss. Dec. 27, 1994); 3. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa and Miyaoh (US 5,348,311; iss. Sep. 20, 1994); 4. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa, Mockenhaupt, and Braconier (US 5,137,674; iss. Aug. 11, 1992); 5. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa, Miyaoh, and Braconier; 6. Claims 31-39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa and Braconier; 7. Claims 15-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa, Durr (US 6,155,045; iss. Dec. 5, 2000), Dickson (US 2,034,610; iss. Mar. 17, 1936), and Schweiger (US 5,803,465; iss. Sep. 8, 1998); and 8. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Udagawa, Durr, Dickson, Schweiger, and Braconier. OPINION Claims 40-46 – Udagawa The Examiner finds that Udagawa discloses each of the elements of claim 40 in various embodiments and explains that it would have been Appeal 2011-009558 Application 11/723,014 4 obvious to modify the embodiment in Figures 4-5 such that each layer has a different number of elements (as shown in Figs. 8a-8d) with the connecting means (weld lines 6) spaced relative to each other in the different layers as a substitution of one known equivalent element for another yielding predictable results. Ans. 4. Appellants argue that although Udagawa discloses the individual elements of claim 40 in various embodiments, the reference does not disclose or suggest combining the various embodiments as proposed by the Examiner. App. Br. 7-8; Reply Br. 2-4. This argument is unpersuasive because there is no requirement that the prior art references themselves provide a reason for the proposed modifications. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”). The Examiner explains that the basis for the proposed modifications is a simple substitution of one known element for another and Appellants do not explain why one skilled in the art would not modify the various embodiments of Udagawa as proposed by the Examiner. For these reasons, we are not apprised of error and we sustain the rejection of claim 40. Claims 41-45 depend from claim 40. Appellants simply recite the limitations of claims 41-45 and allege that Udagawa fails to disclose or render the features recited therein obvious. See App. Br. 8-9. These general allegations do not apprise us of Examiner error and we also sustain the rejection of claims 41-45. Appeal 2011-009558 Application 11/723,014 5 Claim 46 indirectly depends from claim 40 and further recites that retaining projections of the crampings extend through recesses in the carrier element and that the recesses in the carrier element are large enough to allow movement of the carrier element relative to the support element. The Examiner finds that the combustion chamber openings in Udagawa disclose the claimed recesses. Ans. 12. Appellants argue that the recesses are different than combustion chamber openings. Reply Br. 4. Claim 40 recites combustion chamber openings in the carrier element. The Examiner has not explained how the combustion chamber openings in Udagawa disclose both the claimed combustion chamber openings and the claimed recesses. We do not sustain the rejection of claim 46. Claims 27-29 – Udagawa/Mockenhaupt The Examiner finds that the various embodiments of Udagawa disclose each of the elements of claim 27 except crampings used to join the component elements and the support elements at a location spaced and separate from combustion chamber openings. Ans. 4-5. The Examiner explains that the various embodiments of Udagawa would have been combined as simple substitutions of known elements with predictable results. Ans. 5. The Examiner additionally finds that Mockenhaupt teaches a multi-layered gasket with crampings used to join the layers at combustion chamber openings and at additional openings spaced from the combustion chamber openings and that Udagawa teaches larger holes (i.e., combustion chamber openings in second plate lamination pieces 51) around crampings in Figures 5a and 5b. Id. The Examiner reasons that it would, therefore, Appeal 2011-009558 Application 11/723,014 6 have been obvious to have modified Udagawa with additional crampings as taught by Mockenhaupt as a use of a known method to improve similar devices yielding expected results. Id. Appellants argue that Figures 5a and 5b do not disclose free spaces allowing relative movement. App. Br. 10. Based on the spacing between the carrier element (second plate lamination pieces 51) and the crampings at the combustion chamber openings illustrated in Figure 5a of Udagawa, the Examiner had a reasonable basis to find that Udagawa discloses relative movement between the carrier element and the crampings. Appellants have not explained why relative movement is not disclosed in Udagawa. Thus, we are not apprised of Examiner error. Appellants additionally argue that the cramping in Mockenhaupt is used to prevent all lateral movement of the various layers 12, 14, 16 relative to one another and, therefore, teaches away from the claimed arrangement allowing relative movement between layers in the longitudinal direction. App. Br. 10-11; Reply Br. 5. However, Appellants have not pointed to anything in Mockenhaupt that criticizes, discredits, or discourages investigation into the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (A reference does not teach away by merely disclosing an alternative invention without criticizing, discrediting, or otherwise discouraging investigation into the claimed invention.). Thus, we are not convinced that the lack of lateral movement in Mockenhaupt’s exemplary gasket teaches away from the claimed relative movement. The Examiner has simply cited Mockenhaupt as teaching cramping locations outside of the combustion chamber opening and Appellants have failed to explain why Mockenhaupt fails to provide such a teaching. Appeal 2011-009558 Application 11/723,014 7 For these reasons, we sustain the rejection of claim 27 as obvious in view of Udagawa and Mockenhaupt. Claim 28 depends from claim 27 and claim 29 depends from claim 28. Claim 28 further recites the relationship between component elements of the carrier element and the support elements and defines the location of the joining sites relative to one another, similar to claim 40. Appellants’ arguments are similar to those discussed above regarding claim 40 and are unpersuasive for similar reasons. See App. Br. 11. Appellants simply recite the limitations of claim 29 and allege that Udagawa fails to disclose or render the features recited therein obvious. See App. Br. 12. Thus, we are not apprised of Examiner error and we also sustain the rejection of claims 28 and 29 as obvious in view of Udagawa and Mockenhaupt. Claims 27-29 – Udagawa/Miyaoh The rejection of claim 27 as obvious in view of Udagawa and Miyoah is similar to the rejection of claim 27 as obvious in view of Udagawa and Mockenhaupt, except the Examiner now relies on Miyaoh as teaching a multi-layered gasket with crampings used to join the layers at combustion chamber openings and at additional openings spaced from the combustion chamber openings. Ans. 6. The Examiner additionally finds that Miyaoh teaches forming the middle layer with larger holes around the crampings and explains that it would have been obvious to have modified Udagawa with crampings taught by Miyaoh as a use of a known method to improve similar devices yielding expected results. Ans. 6-7. Appellants again argue that Figures 5a and 5b of Udagawa do not disclose free spaces allowing relative movement. App. Br. 12. Appellants Appeal 2011-009558 Application 11/723,014 8 additionally argue that although the notch B17b in Miyaoh is illustrated as being slightly larger than the bending strip (cramping) B16a, nothing in Miyaoh discloses allowing relative movement between the layers in the longitudinal direction. App. Br. 13; Reply Br. 5. As explained above regarding the rejection based on Mockenhaupt, the Examiner had a reasonable basis to find that Udagawa discloses relative movement between the carrier element and the crampings and Appellants have not explained why relative movement is not disclosed in Udagawa. In response to Appellants’ arguments that nothing in Miyaoh discloses allowing relative movement between the layers in the longitudinal direction, we note that the Examiner additionally explains that Figure 5a of Udagawa discloses relative movement between the carrier element and the crampings, similar to the rejection based on Mockenhaupt. See Ans. 14. Regardless of whether Miyaoh discloses the claimed relative movement, the Examiner relies on Miyaoh as teaching cramping locations outside of the combustion chamber opening and Appellants have failed to explain why Miyaoh fails to provide such a teaching. For these reasons, we sustain the rejection of claim 27 as obvious in view of Udagawa and Miyaoh. Claim 28 depends from claim 27 and claim 29 depends from claim 28. Claim 28 further recites the relationship between component elements of the carrier element and the support elements and defines the location of the joining sites relative to one another, similar to claim 40. Appellants’ arguments are similar to those discussed above regarding claim 40 and are unpersuasive for similar reasons. See App. Br. 13. Appellants simply recite the limitations of claim 29 and allege that Udagawa fails to disclose or Appeal 2011-009558 Application 11/723,014 9 render the features recited therein obvious. See App. Br. 14. Thus, we are not apprised of Examiner error and we also sustain the rejection of claims 28 and 29 as obvious in view of Udagawa and Miyaoh. Claim 30 – Udagawa/Mockenhaupt/Braconier Claim 30 depends from claim 27 and further recites elastomeric sealing lips on the component elements that form the carrier element. Appellants argue that Braconier only discloses sealing beads on a single reinforcing member (i.e., carrier element) rather than on individual component elements of a carrier element as claimed. App. Br. 15. This argument is unpersuasive because it attacks the references individually rather than the combination proposed by the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner explains that the plates of Udagawa would have been modified to include a sealing bead as taught by Braconier in order to provide improved sealing and Appellants fail to point to error in the Examiner’s rejection. We sustain the rejection of claim 30 as obvious in view of Udagawa, Mockenhaupt, and Braconier. Claim 30 – Udagawa/Miyaoh/Braconier The argument presented by Appellants in response to the rejection based on Miyaoh is similar to that discussed above regarding the rejection based on Mockenhaupt. See App. Br. 15. We are not apprised of error for the reasons discussed above and we sustain the rejection of claim 30 as obvious in view of Udagawa, Miyaoh, and Braconier. Appeal 2011-009558 Application 11/723,014 10 Claims 31-39 – Udagawa/Braconier The Examiner finds that the various embodiments of Udagawa disclose each of the elements of claim 31 except the claimed elastomeric sealing lips. Ans. 8. The Examiner finds that Braconier teaches the use of elastomeric sealing beads along edges and holes of a gasket to improve sealing and explains that it would have been obvious to modify the plates of Udagawa with the sealing beads taught by Braconier to improve sealing at different locations of the gasket. Id. Appellants’ initial argument is similar to the argument discussed above regarding claim 30 (see App. Br 16) and is unpersuasive for the reasons set forth above. Appellants additionally argue that the sealing beads 20 in Braconier are disposed on an elastomeric covering 18 in which a reinforcing member 16 is embedded, and are not molded directly on a carrier element. However, Braconier states that “[t]he reinforcing member 16 has molded thereover a rubber or elastomeric compound 18 which includes a bead portion 20.” Braconier, col. 2, ll. 18-20. Appellants do not explain, and we do not see, why the sealing bead 20 is not part of the elastomeric compound 18 and, therefore, molded directly on the reinforcing member 16. Thus, we are not apprised of Examiner error and we sustain the rejection of claim 31. Claims 34-38 depend from claim 31. Appellants simply recite the limitations of claims 34-38 and allege that the cited references fail to disclose or render the features recited therein obvious. See App. Br. 16-18. These general allegations do not apprise us of Examiner error and we also sustain the rejection of claims 34-38. Claim 32 depends from claim 31, claim 33 depends from claim 32, and claim 34 depends from claim 33. Claims 32 and 34 recite features Appeal 2011-009558 Application 11/723,014 11 similar to those found in claim 40 and claim 33 recites features similar those found in claim 27. Appellants’ arguments regarding claims 32 and 34 are similar to those presented regarding claim 40 and Appellants’ arguments regarding claim 33 are similar to those presented regarding claim 27. App. Br. 16-18. These arguments are unpersuasive for the reasons set forth above regarding the rejections of claims 27 and 40. We sustain the rejection of claims 32-34. Claims 15-25 – Udagawa/Durr/Dickson/Schweiger Appellants argue that Udagawa “discloses connecting the plate pieces 5a-5f by weld lines 6 along the abutting edges of the plate pieces” without any overlapping and offset tabs. App. Br. 19. The Examiner acknowledges that Udagawa does not disclose these features and, instead, relies on Durr as teaching overlapping tabs and Schweiger as teaching offsets for overlapping portions. Ans. 9-10. The Examiner explains that it would have been obvious to modify Udagawa with tabs as a substitute of one known element for another and to further modify the tabs to be offset overlapping tabs to help reduce the thickness of the gasket. Id. Appellants argue that the overlapping portions of the gasket in Durr are planar throughout, not staggered by offsets out of a main plane. App. Br. 20. Regardless of whether the overlapping portions of the gasket in Durr are staggered by offsets out of a main plane, Appellants’ argument is not persuasive because the Examiner does not rely on Durr for this feature. Instead, the Examiner relies on Schweiger as disclosing overlapping gasket portions staggered by offsets out of a main plane and explains that it would have been obvious to further modify the overlapping portions of the Appeal 2011-009558 Application 11/723,014 12 proposed modified gasket of Udagawa with offsets to reduce the thickness. See Ans. 9-10. Appellants do not point to error in this reasoning. Appellants argue that Schweiger does not disclose mounting gasket elements end-to-end as shown in Udagawa and does not teach the claimed offset or overlapping tabs of adjacent components. App. Br. 21. This argument is also not persuasive because Appellants are attacking the references individually rather than the modifications to Udagawa proposed by the Examiner. Appellants also attack Dickson individually, stating that Dickson does not disclose tabs offset in opposite directions, rather than the further modifications to the proposed modified gasket of Udagawa including rivets based on Dickson. App. Br. 20. For these reasons, we are not apprised of Examiner error and we sustain the rejection of claim 15. Claims 16-25 depend from claim 15. Appellants simply recite the limitations of claims 18-22 and 24 and allege that the cited references fail to disclose or render the features recited therein obvious. See App. Br. 21, 23. These general allegations do not apprise us of Examiner error and we also sustain the rejections of claims 18-22 and 24. Appellants’ arguments regarding claims 16 and 17 are similar to those presented regarding claim 40 and Appellants’ arguments regarding claims 23 and 25 are similar to those presented regarding claim 27. App. Br. 21-24. These arguments are unpersuasive for the reasons set forth above regarding the rejections of claims 27 and 40. We sustain the rejections of claims 16, 17, 23, and 25. Appeal 2011-009558 Application 11/723,014 13 Claim 26 – Udagawa/Durr/Dickson/Schweiger/Braconier Claim 26 depends from claim 15 and recites features similar to those found in claim 30. Appellants’ arguments regarding claim 26 are similar to the arguments presented regarding the rejections of claim 30 and are unpersuasive for the reasons discussed above regarding the rejections of claim 30. We sustain the rejection of claim 26. DECISION We AFFIRM the Examiner’s decision to reject claims 15-45. We REVERSE the Examiner’s decision to reject claim 46. 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-IN-PART mls