Ex Parte Casler et al

Patent Trial and Appeal Board

Jul 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

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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.

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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.
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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.
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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].
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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
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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
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“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.
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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).

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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

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