Ex Parte Takeda et al

Patent Trial and Appeal BoardAug 14, 2017

12998973 (P.T.A.B. Aug. 14, 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. 12/998,973 06/20/2011 Yasumaro Takeda 4300.P0238US 1140 23474 7590 08/16/2017 FLYNN THIEL BOUTELL & TANIS, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER KONERU, LAKSHMI S ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 08/16/2017 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): DOCKET@FLYNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YASUMARO TAKEDA and MASANORI KUSANO Appeal 2015-007998 Application 12/998,973 Technology Center 3600 Before JENNIFER D. BAHR, BRANDON J. WARNER, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yasumaro Takeda and Masanori Kusano (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s October 24, 2014 non-final decision (“Non-Final Act.”) rejecting claims 4, 8, 10-13, 17, and 18. Br. 1. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Nippon Gasket Co., Ltd. Br. 1. Appeal 2015-007998 Application 12/998,973 SUMMARY OF THE DECISION We AFFIRM. SUMMARY OF THE INVENTION Appellants’ disclosure is directed to “a seal structure for sealing oil drop holes provided in [a] cylinder head gasket.” Spec. I.2 Claim 17, reproduced below from page 2 of the Claims Appendix of the Appeal Brief, is illustrative of the claimed subject matter: 17. A cylinder head gasket having an oil drop hole seal structure comprising: first and second seal plates having oil drop holes respectively provided therein; half beads formed on the first and second seal plates that endlessly surround the oil drop holes, project in a direction toward each other and are mutually pressed; and auxiliary beads formed on the first and second seal plates outside the respective half beads at a position of only an outside portion of the cylinder head gasket from the oil drop holes that project in a direction toward each other and are mutually pressed, wherein the first seal plate is laminated on and in direct contact with the second seal plate. REJECTIONS Claims 4, 8, 10-13, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Detmann (US 2005/0206091 Al, published Sept. 22, 2005) and Hohe (US 7,000,924 B2, issued Feb. 21, 2006). 2 Citations herein to the Specification are to page number only because not every paragraph is numbered. See, e.g., Spec. 1. 2 Appeal 2015-007998 Application 12/998,973 Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable overDetmann, Hohe, andNovil (US 2007/0200301 Al, published Aug. 30, 2007). ANALYSIS Rejection Based on Detmann and Hohe The Examiner finds that Detmann discloses a cylinder head gasket substantially as recited in independent claim 17, including first and second seal plates (cover layers 30)3 having half beads (sealing bead 50) and auxiliary beads (sealing bead 40) formed therein, but does not disclose the first seal plate being laminated and in direct contact with the second seal plate. Non-Final Act. 3 (citing Detmann, Figs. 1, 8A). The Examiner finds that Hohe teaches seal plates in direct contact with each other, and reasons that it would have been obvious to one of ordinary skill “to modify the gasket of Detmann with the contacting layers of [the] gasket of [Hohe] to better adapt to the local requirements of the engine depending on the spacing requirement.” Id. (citing Hohe, Fig. 6G). Appellants traverse, arguing that because Detmann’s “bead 40 continuously surrounds three combustion chamber apertures 12, 14 and 16 not only at the outer side of the oil return aperture 26 and a bead 50 as shown in Figure 1,” Detmann “does not disclose the two seal plates, as defined by the present claims, in contact with each other and an auxiliary bead as required by the present claims.” Br. 4. 3 Parentheticals refer to the terminology of the cited references. 3 Appeal 2015-007998 Application 12/998,973 Appellants’ arguments are unpersuasive. Claim 17 does not preclude the recited auxiliary bead from also surrounding the combustion chambers. It appears that Appellants are suggesting that the word “only” in claim 17 means the auxiliary bead is only in the region immediately surrounding the half beads. This interpretation, however, is not supported by the claim language or the Specification—we note that Appellants did not provide any supporting citation for such an interpretation, nor does our review reveal any such support. We interpret “only” in claim 17 to mean the auxiliary bead is only formed outside the half bead; that is, no part of the auxiliary bead is inside the loop formed by the half beads “endlessly surround[ing] the oil drop holes,” as recited in the claim. Appellants’ argument that Detmann “does not disclose the two seal plates ... in contact with each other” (Br. 5) is not persuasive because the Examiner’s rejection modifies Detmann’s head gasket to include seal plates “in direct contact with each other” based on the teachings of Hohe (Non-Final Act. 3). Similarly, Appellants’ argument that Hohe does not disclose the recited half beads and auxiliary beads (Br. 5) are not persuasive because the Examiner relies on Detmann to disclose the recited beads (Non-Final Act. 3). Appellants also argue that “there is no motivation in [Hohe] that shows that anything advantageous would occur by removing the critical intermediate plate in the cylinder head gasket of [Detmann].” Br. 5. Appellants’ argument is unpersuasive because the reason to modify or combine references need not be found in the references themselves. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415-21 (2007) (setting forth 4 Appeal 2015-007998 Application 12/998,973 that the motivation to modify or combine reference teachings may arise in any of the interrelated teachings of multiple prior art references, the effects of demands known to the design community or present in the marketplace, the background knowledge possessed by a person having ordinary skill in the art, the existence at the time of invention of a known problem for which there was an obvious solution encompassed by the claims, and common sense). Appellants do not address the Examiner’s reasoning as to why one would have combined the references’ teachings. Appellants allege that Detmann’s carrier layer 32 is “critical,” but do not provide any explanation for this contention. Br. 5. To the extent that Appellants mean the carrier layer is critical because Detmann discloses supporting device 60 to be on carrier layer 32 (see Detmann 132, Fig. 2; see also id. 7—8), we note that Detmann’s supporting device 60 and stopper 36 have the same structure of a “chessboard-like pattern of elevations and recesses,” and are both provided on carrier layer 32. Id. H 29, 33. Thus, we understand Detmann’s supporting layer 60 and stopper 36 to be equivalents. We further note that Hohe’s profiling 2 provides the same function as Detmann’s stopper and is provided on the seal plates. Hohe 2:57—58, 5:41— 50, 7:41—45. Accordingly, when incorporating “the contacting layers of [the] gasket of [Hohe]” into Detmann’s gasket, as set forth by the Examiner, one of skill in the art would include both Detmann’s stopper 36 and supporting device 60 into cover layers 30. Additionally, even if Detmann considers carrier layer 32 to be critical, the disclosure of Hohe discussed above sets forth that it is recognized in the art that such internal layers are 5 Appeal 2015-007998 Application 12/998,973 optional. Therefore, Appellants’ conclusory “critical” argument fails to apprise us of error. Accordingly, for the foregoing reasons, we sustain the rejection of claim 17 and dependent claims 4, 8, and 10-13, which are not argued separately, as being unpatentable over Detmann and Hohe. Rejection Based on Detmann, Hohe, and Novil Independent claim 18 recites a cylinder head gasket similar to that of claim 17, but additionally requires both the half beads and the auxiliary beads to overlap each other. Claims App. 2. The Examiner relies on Detmann and Hohe as set forth above regarding the rejection of claim 17, and relies on Novil to teach half beads formed on first and second plates at a position overlapping each other and auxiliary beads on the first and second plates at a position overlapping each other. Non-Final Act. 5—6 (citing Novil, Fig. 17). The Examiner reasons that it would have been obvious to one of ordinary skill “to modify the first and second seal plates of Detmann with the half beads and auxiliary beads of Novil to provide better sealing when there is a relative movement between the sealing members due to thermal, mechanical or fluid conditions or environments.” Id. at 6. Appellants traverse, incorporating the arguments made regarding the rejection of claim 17. Br. 5. These arguments are unpersuasive for the reasons set forth above. Appellants also argue that “it is critical to the sealing gasket of [Novil] that an intermediate layer be provided therein,” and that Novil “does not disclose first and second seal plates being laminated to and directly in contact with each other as required by Claim 18.” Id. at 6. 6 Appeal 2015-007998 Application 12/998,973 Appellants’ arguments are unpersuasive. We understand Appellants’ reference to Novil’s “intermediate layer” to correspond to shim 970, which Novil discloses as being optional and, therefore, not critical. Novil 144, Fig. 17. Appellants’ argument that Novil does not disclose the two seal plates in contact with each other is not persuasive because the Examiner relies on Hohe to teach this feature. Non-Final Act. 5; see also id. at 3. Accordingly, for the foregoing reasons, we sustain the rejection of claim 18 as being unpatentable over Detmann, Hohe, and Novil. DECISION The Examiner’s decision to reject claims 4, 8, 10-13, 17, and 18 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7