Ex Parte Chen et al

Board of Patent Appeals and Interferences

Oct 5, 2009

10350844 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte COLIN C. CHEN, FRANK W. POPIELAS,
EDWARD A. RADEN, JEFFERY A. FOSTER, and MIKE KESTLY
____________

Appeal 2009-002868
Application 10/350,844
Technology Center 3600
____________

Decided: October 6, 2009
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Colin C. Chen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-17. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is to multiple-layered steel (MLS)
cylinder head gaskets having stopper layers to provide enhanced sealing
about combustion apertures. Spec. 1, para. 0002. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A cylinder head gasket comprising first and
second beaded layers of metal; a third layer of
metal interposed between said first and second
layers; said interposed layer further comprising:
a) a sealing bead defining at least one
generally circular undulation and surrounding at
least one aperture adapted to be positioned
intermediately between said two first and second
layers, all of said layers including apertures
adapted to be situated in registration with at least
one engine cylinder bore;
b) said bead defining a trough positioned on
its underside, and a metal/epoxy material that
includes a cured mixture of epoxy resin and
powered metal so as to form a hard coating
substantially filling said trough to present a
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circumferential composite bead structure about
said at least one engine bore; and
c) wherein both said trough and said
metal/epoxy material comprise a composite
structure having a varying and undulating height
about said bore, so as to provide varying sealing
pressures about said bore to compensate for
varying load differentials about the circumference
of the bore.

THE EVIDENCE
The Examiner relies upon the following evidence:
Abe US 6,073,938 Jun. 13, 2000
Maeda US 6,145,847 Nov. 14, 2000
Jinno EP 0 987 474 A2 Mar. 22, 2000

THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 1-17
under 35 U.S.C. § 103(a) as being unpatentable over Jinno, Maeda, and Abe.

ISSUES
Appellants chose to argue claims 1-17 as a group in the Appeal Brief.1
App. Br. 11-15. In the Reply Brief, Appellants made new arguments that
claims 2 and 12 and claims 3 and 13 are separately patentable. Reply
Br. 5-8.

1 The Appeal Brief referred to herein is the Second Amended Appeal Brief
filed on December 28, 2006.
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Appellants state in the Reply Brief that “[t]he Arguments beginning
on page 3 of this Reply Brief are meant to compliment the original
arguments and are being filed in response to the Examiner’s Answer.”
Reply Br. 2. The Grounds of Rejection section of the Examiner’s Answer is
identical in its explanation of the basis of the rejection of claims 1-17 as the
reasoning presented by the Examiner in the Non-Final Rejection of January
3, 2006, from which this appeal was taken. We find that the Non-Final
Rejection provided a clear explanation of how the Examiner was combining
the teachings of Jinno, Maeda, and Abe to result in the claimed subject
matter. We fail to see how positions taken by the Examiner in the Answer
necessitated these new arguments in Appellants’ Reply Brief, and
Appellants have not provided any explanation as to why the new arguments
as to claims 2 and 12 and claims 3 and 13 were not raised in the Appeal
Brief. The purpose of a reply brief is to reply to points raised in the
examiner’s answer, and not to ambush the examiner with new arguments
that should have been raised in the appeal brief. As such, we will treat
claims 1-17 as a group, based on the manner in which the arguments were
originally presented by Appellants in the Appeal Brief. We select claim 1 as
the representative claim, and claims 2-17 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Examiner found Jinno discloses the cylinder head gasket as
claimed except that Jinno does not specifically state that the resin used to
form a stopper portion is made of an epoxy/metal material. The Examiner
found that Jinno discloses the resin can comprise a polyamide or polyamide-
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imide with a filler (such as glass fiber or clay). The Examiner found that
Maeda teaches a gasket having a bead filled with a resin and that art
equivalent resins include epoxy, polyimide, or polyamide-imide. The
Examiner further found that Abe teaches a gasket having a resin hard
coating, and that art equivalent fillers used with epoxies and polyimides
include glass fiber, ceramics, and metallic powder. Thus, the Examiner
concluded it would have been obvious to make the resin filling of Jinno from
an epoxy/metallic material as such are known art equivalent resin materials
and fillers, as taught by Abe and Maeda. Ans. 3.
Appellants contend that “the office action has provided no motivation
for the proposed combination.” App. Br. 13. Further, Appellants argue that
Abe teaches away from the claimed invention. Id. Appellants also argue
that one of ordinary skill in the art would not have been motivated to
combine the teachings of Jinno and Abe to solve Appellants’ problem of
avoiding undesirable bead deflection. App. Br. 14. Appellants also contend
that one having ordinary skill in the art would have had no reasonable
expectation of success because undesirable bead deflection would not be
avoided by combining the teachings of Jinno and Abe. App. Br. 14-15.
Finally, Appellants submit evidence of secondary considerations in the form
of test data to evidence superiority in sealing effectiveness of the claimed
gasket design versus prior art designs. App. Br. 15; Appendix B.
The issue presented by this appeal is:
Have Appellants shown the Examiner erred in concluding that the
cylinder head gasket of claim 1 having a bead trough substantially filled
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with a metal/epoxy material, which includes a mixture of epoxy resin and
powdered metal, would have been obvious to one having ordinary skill in
the art at the time of Appellants’ invention in view of the combined
teachings of Jinno, Maeda, and Abe?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Jinno teaches the use of a resin layer 21, comprising polyamide or
polyamide-imide, disposed within an air gap 14 to “improve
sealing performance.” Jinno, col. 7, ll. 53-55 and col. 8, ll. 5-9.
2. Jinno further discloses that the resin “may be blended with a filler
such as a graphite, carbon fibre, glass fibre or clay in order to
improve the strength, the heat resistance and/or adhesion.” Jinno,
col. 8, ll. 8-12.
3. Jinno shows the resin 21 substantially filling the trough (inner
projection 3A) in second gasket substrate 3. Jinno, fig. 8.
4. Jinno discloses that the resin 21 can be secured to at least one of
the gasket substrates 2 or 3. Jinno, col. 7, ll. 55-57.
5. Maeda similarly discloses elements disposed in the bead portion of
a metal laminate gasket to serve as stoppers “for limiting the
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degree of compression of the bead portion(s).” Maeda, col. 1,
ll. 5-11.
6. In particular, Maeda discloses using a rigid synthetic resin layer
that is non-compressible and non-deformable, such as “an epoxy
resin, thermoset polyimide resin, polyamide-imide resin and
silicon resin….” Maeda, col. 2, ll. 58-63.
7. As such, Maeda discloses that epoxy resins, polyimide resins, and
polyamide-imide reins are art-recognized equivalent stopper
materials.
8. Abe discloses a sealing structure of a control valve unit for an
automatic gear of an automobile. Abe, col. 4, ll. 12-13.
9. A sealing portion 21 of the structure is formed on a separating
plate 6, and the sealing portion 21 includes first and second sealing
layers 22, 23. Abe, col. 5, ll. 1-5.
10. Abe discloses that the sealing layers 22, 23 can be made from
epoxy resin or polyimide resin, in which either resin is mixed with
any of a metallic powder, a glass powder, glass fibers, a ceramic
powder, ceramic fibers, and a powder of molybdenum disulfide.
Abe, col. 5, l. 65 – col. 6, l. 11.
11. Abe further discloses embodiments in which the sealing portion
can be applied to an engine cylinder head gasket. Abe, col. 8, ll.
30-32. In these embodiments, the sealing portion 42 is comprised
of sealing layers 47, 48, which are made of the same materials as
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sealing layers 22, 23. Abe, col. 8, ll. 48-54. Sealing layer 47
serves as a stopper around bead 45. Abe, col. 8, ll. 66-67.
12. Thus, Abe discloses that use of an epoxy resin mixed with metallic
powder as a stopper material for a cylinder head gasket was a
known equivalent substitute for a polyimide resin mixed with glass
fibers.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and reaffirmed principles based on its precedent that “[t]he
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416. “In
United States v. Adams, … [t]he Court recognized that 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.” Id. “Sakraida and
Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established function.” Id. at 417.
When an article is said to achieve unexpected (i.e., superior) results,
those results must logically be shown as superior compared to the results
achieved with other articles. An applicant relying on comparative tests to
rebut a prima facie case of obviousness must compare his claimed invention
to the closest prior art. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

ANALYSIS
We find that the Examiner articulated a reasonable rationale for
combining the teachings of Maeda and Abe with Jinno. The Examiner set
forth findings that both Maeda and Abe teach art equivalent resins that were
known to be used as stopper materials in prior art gaskets. The Examiner’s
conclusion of obviousness was based on the rationale that the use of an
epoxy/metal material in the bead trough of a prior art cylinder head gasket is
nothing more than the use of known equivalent materials in place of the
resin of Jinno to achieve predictable results. We agree.
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In particular, Jinno teaches the use of a resin, which may be blended
with a filler such as graphite, carbon fiber, glass fiber, or clay, and which
substantially fills a trough formed by an inner projection of a gasket
substrate (Facts 1-4). Maeda similarly discloses using a rigid synthetic resin
layer that is non-compressible and non-deformable, such as “an epoxy resin,
thermoset polyimide resin, polyamide-imide resin and silicon resin…,” as a
stopper in the bead portion of a metal laminate gasket (Facts 5, 6). As such,
as the Examiner correctly found, Maeda discloses that epoxy resins,
polyimide resins, and polyamide-imide reins are art-recognized equivalent
stopper materials (Fact 7). Abe discloses a stopper for a cylinder head
gasket that can be made from epoxy resin or polyimide resin, in which either
resin is mixed with any of a metallic powder, a glass powder, glass fibers, a
ceramic powder, ceramic fibers, and a powder of molybdenum disulfide
(Facts 8-11). Thus, as the Examiner correctly found, Abe discloses that use
of an epoxy resin mixed with metallic powder as a stopper material for a
cylinder head gasket was a known equivalent substitute for a polyimide resin
mixed with glass fibers, used as a stopper in Jinno. We find that the use of
known stopper materials, as taught in Maeda and Abe, in place of the
stopper material disclosed in Jinno, to result in the claimed cylinder head
gasket, was the product not of innovation but of ordinary skill and common
sense. See KSR, 550 U.S. at 421. The Examiner’s rationale for why one
having ordinary skill in the art at the time of the invention would have found
it obvious to use an epoxy/metal material as a stopper in the cylinder head
gasket of Jinno to result in the claimed invention is reasonable.
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Appellants’ argument that one of ordinary skill in the art would not
have been motivated to combine the teachings of Jinno and Abe “as a means
for avoiding undesirable bead deflection as according to the embodiments of
Appellants’ invention” does not address the Examiner’s reason for
combining. The Examiner did not state that one would have been led to
modify Jinno with Abe’s stopper material to cure the problem of undesirable
bead deflection. Rather, the Examiner’s proposed combination is based on
the fact that Jinno describes substantially filling a groove with stopper
material, and Abe teaches that a known stopper material for use in a cylinder
head gasket includes an epoxy resin mixed with metallic powder. We see no
error in the Examiner’s proposed combination simply because it is not
directed to the problem Appellants were trying to solve. See KSR, 550 U.S.
at 419 (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.”).
Appellants also argue the Examiner erred in combining the references
because Jinno teaches away from using a hard coating, citing to figure 5 and
column 7, lines 11-16 of Jinno. Reply Br. 3. The cited portion of Jinno
describes that as the gasket is bolted between the cylinder head and the
cylinder block, the inner projections 2A and 3A of gasket substrates 2 and 3
will experience an increased magnitude of plastic deformation toward the air
gap. Appellants argue that if a hard coating substantially filled the trough of
inner projection 3A, plastic deformation could not occur in the direction of
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the air gap. Reply Br. 3-4. We disagree. Jinno describes that in the case
where resin material 21 is used in either inner projection 2A or inner
projection 3A, the resin material has a thickness which is preferably equal to
or less than one-half of the height of the air gap 14. Jinno, col. 8, ll. 1-4. As
shown, for example, in figure 8 of Jinno, the resin 21 substantially fills inner
projection 3A so that the upper half of air gap 14 (corresponding to inner
projection 2A) is open and allows the inner projection 2A to undergo plastic
deformation as described. As such, we are not persuaded by Appellants that
Jinno teaches away from the use of a hard coating as claimed.2
We now address Appellants’ evidence of superior results. We
recognize that evidence of secondary considerations, such as that presented
by Appellants, must be considered in route to a determination under
35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness
under § 103, carefully evaluating and weighing both the evidence relied

2 Appellants made a similar argument for the separate patentability of claims
3 and 13, arguing that modifying Jinno to include a filling bead having a
convex meniscus top surface would destroy Jinno’s disclosed function by
preventing deformation of the inner projections 2A and 3A. Reply Br. 6-7.
We find this argument equally unpersuasive for the same reasons as
explained above. Specifically, if such a filling bead were used in one of the
inner projections 2A or 3A, the other projection would remain open and be
able to undergo plastic deformation, as specifically described in Jinno (col.
8, ll. 1-4). We find Appellants’ argument for the separate patentability of
claims 2 and 12 (Reply Br. 5) equally unpersuasive, because we construe the
phrase “upon installation of the gasket in an engine” to be broad enough to
encompass asymmetry of the inner projections that occurs during installation
of the gasket in the engine.
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upon by the Examiner and the objective evidence of non-obviousness
provided by Appellants.
Appellants submitted a declaration from Edward Raden entitled
“SECOND DECLARATION UNDER RULE 1.132 – DATED 9/9/05”
(“Decl.”) as Appendix B to the Appeal Brief. Mr. Raden, a co-inventor of
the present application, attested that prior to development of the claimed
gasket, Dana had manufactured and supplied an MLS gasket that included a
metallic stopper layer used with sealing beads having a uniform depth and
height around the cylinder bore. Decl., paras. 4, 5. Mr. Raden stated that
compression around the combustion seal in this prior art MLS gasket varied
from one location to the other, causing buckling of the gasket and
compromising sealing performance. Decl., para. 5. Mr. Raden testified that
the inventors of the present application determined that varying the height
with a hard coating around the combustion bore would permit substantially
even sealing stresses around the combustion sealing area. Decl., para. 6.
Mr. Raden then testified that tests were performed on two different
Ford engines equipped with the gasket design that is claimed. Decl., para. 7.
The results of these tests were compared with tests performed on the same
Ford engines equipped with: (1) a competitor’s foldover design,3 and

3 Although not explained in the Declaration, we understand a “foldover
design” to refer to a gasket in which the edge of the gasket surrounding the
periphery of each combustion chamber bore is strengthened by folding over
the metal of the gasket back onto itself at this edge. See e.g., Maeda, col. 1,
ll. 22-26(describing a prior art stopper portion “formed by turning back the
peripheries of the combustion chamber holes of the metal plates.”) See also
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(2) Dana’s prior art MLS gasket having a metallic stopper layer used with
sealing beads having a uniform depth and height around the cylinder bore.
Decl., para. 7. Mr. Raden attests that the gasket as claimed performed better
than the competitor’s gasket of foldover design and better than Dana’s prior
art MLS gasket when tested on the Ford engines. Decl., para. 7 (spanning
pages 22-26).
We will assume, for sake of brevity, that Appellants met their burden
of establishing a nexus between the claimed invention and the evidence of
secondary considerations. In re Huang, 100 F.3d at 139-40. Even with such
an assumption being made, Appellants’ evidence of superior results is not
entitled to much, if any, weight because it does not include a comparison of
the Appellants’ claimed gasket with the closest prior art. Even assuming
that no modification were made to the gasket disclosed in Jinno, the gasket
of Jinno is the closest prior art to the claimed gasket. That is because Jinno
discloses a bead having a trough that varies in height and width. Jinno, col.
9, ll. 29-39. The trouble with Appellants’ evidence of superior results is that
the claimed gasket is being compared with prior art gaskets having beads of
uniform height and width. The only difference between the gasket of Jinno
and the claimed gasket, as found by the Examiner, is that Jinno does not
explicitly disclose the claimed epoxy/metal stopper material claimed.
Ans. 3. This fact is uncontested by Appellants. App. Br. passim. As such,

Spec. 2, para. 0004(describing that “[i]n some cases the stoppers have been
formed by extra layers of metal, consisting either of layers folded over or
under primary sealing layers.”)
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to persuasively show superior results, Appellants’ testing should have
presented evidence comparing the claimed gasket to the gasket of Jinno,
which has the same sealing bead and trough as claimed, but which uses a
stopper made of a polyamide or polyamide-imide resin mixed with a filler,
such as graphite, carbon fibre, glass fibre, or clay (Fact 2).
Appellants argue, for the first time in the Reply Brief, that Appellants
also provided evidence of commercial success in the first Declaration of
Edward Raden filed on January 7, 2005. Reply Br. 8. Appellants also
included in the Arguments section of the Reply Brief updated data
concerning sales that have occurred since the date of the first declaration.
Reply Br. 8-9.
37 C.F.R. § 41.37(c)(1)(ix) provides, in part, that the appeal brief shall
contain an appendix containing copies of any evidence submitted pursuant to
§§ 1.130, 1.131, or 1.132 of this title or any other evidence entered by the
examiner and relied upon by appellant in the appeal. Appellants did not
refer to the first Declaration of Edward Raden in the Evidence Appendix to
the Appeal Brief and did not include a copy of the declaration as part of the
Appeal Brief. As such, the first Declaration of Edward Raden is not
properly before us for our consideration.
With respect to the new sales data referenced in the Arguments
section of the Reply Brief, the sales data was not attested to in a declaration
or affidavit and is thus not properly presented as objective evidence.
Further, even if it is treated as objective evidence, § 41.33(d)(2) states that
evidence filed after the date of filing an appeal and after the date of filing a
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brief will not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1). These cited sections of the rules allow new
evidence only after the case has either been remanded or a new ground of
rejection has been entered and prosecution has been subsequently reopened.
Such is not the case before us in the present appeal. As such, we will not
consider the evidence of commercial success referenced in Appellants’
Reply Brief.
Having now considered the evidence presented by Appellants against
obviousness and weighing all the evidence anew, it is our conclusion that the
evidence in support of obviousness outweighs the evidence against
obviousness. See In re Fenton, 451 F.2d 640, 632 (CCPA 1971) (the court
balanced the Patent Office’s case against the strength of appellant’s
objective evidence of non-obviousness.) Based on our review and
consideration of all of the evidence before us, we conclude that the subject
matter of claim 1 would have been obvious to one having ordinary skill in
the art at the time the invention was made in view of the prior art. As
explained supra, claims 2-17 fall with claim 1.

CONCLUSIONS
Appellants have failed to show the Examiner erred in concluding that
the cylinder head gasket of claim 1 having a bead trough substantially filled
with a metal/epoxy material, which includes a mixture of epoxy resin and
powdered metal, would have been obvious to one having ordinary skill in
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the art at the time of Appellants’ invention in view of the combined
teachings of Jinno, Maeda, and Abe.

DECISION
The decision of the Examiner to reject claims 1-17 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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