12904521 (P.T.A.B. Oct. 20, 2014)

Ex Parte Gladfelter

Patent Trial and Appeal BoardOct 20, 2014

12904521 (P.T.A.B. Oct. 20, 2014)

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. 12/904,521 10/14/2010 Harry F. Gladfelter CG-40368-1/710240-05323 6109 59582 7590 10/20/2014 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER REDMAN, JERRY E ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 10/20/2014 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 HARRY F. GLADFELTER ____________ Appeal 2012-010013 Application 12/904,5211 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and SCOTT C. MOORE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellant, “[t]his application is assigned to Federal- Mogul World Wide, Inc.” App. Br. 3. Appeal 2012-010013 Application 12/904,521 2 Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A shaped gasket of the type for sealing two mating surfaces over a non-circular geometrical contact region, said gasket comprising: a hollow, resilient tube extending continuously between first and second ends, said tube having a naturally straight configuration but easily bent into predetermined non-circular configurations, said first and second ends joined together in end-to-end fashion; a core of cured liquid rubber compound completely filling said hollow, resilient tube; and said core of cured liquid rubber compound being set in a non-circular geometric shape whereby said hollow, resilient tube is forcibly held in the non-circular geometric shape by said core of cured rubber compound while said tube continually strains toward a straight configuration. Rejections Claims 1–7 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1–4, 6, and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Keys (US 5,181,341, iss. Jan. 26, 1993) and Tsutomu (JP 63280967 A, pub. Nov. 17, 1988). Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Keys, Tsutomu, and Moody (US 5,538,580, iss. July 23, 1996). Appeal 2012-010013 Application 12/904,521 3 ANALYSIS Indefiniteness The Examiner explains that the phrase “the type” in “[a] shaped gasket of the type for sealing two mating surfaces over a non-circular geometrical contact region,” as recited in claim 1, is indefinite because the phrase lacks antecedent basis. Ans. 4, Final Act. 2. The Appellant contends one “of ordinary skill in the art would understand that this term merely sets forth the category of gasket claimed, i.e.[,] a gasket for sealing two mating surfaces over a non-circular geometrical contact region.” App. Br. 5. The Appellant’s contention is persuasive. Thus, the Examiner’s rejection of claims 1–7 under 35 U.S.C. § 112, second paragraph, as indefinite, is not sustained. Obviousness based upon Keys and Tsutomu The Examiner finds that the claimed “hollow, resilient tube” reads on Keys’s second portion 16 having chamber 30, and that the claimed “core of cured liquid rubber compound” reads on Keys’s elastomeric foaming material 36. See Ans. 5, Keys Fig. 2. The Examiner also finds that the claimed “non-circular geometric shape” reads on the opening between vehicle door 20 and flange 18 of a vehicle frame. See Ans. 5, Keys Fig. 2. The Appellant contends that Keys does not disclose “whereby said hollow, resilient tube is forcibly held in the non-circular geometric shape by said core of cured rubber compound while said tube continually strains toward a straight configuration,” as recited in claim 1. See Reply Br. 8; see also App. Br. 5–6. The Appellant asserts that even if Keys’s weather Appeal 2012-010013 Application 12/904,521 4 stripping is in a non-circular geometric shape, “it is not forcibly held by a cured rubber compound (the cured resin 36).” Reply Br. 8 (italics added). The Appellant’s contention is persuasive because the Examiner’s application of Keys’s disclosure lacks an adequate explanation concerning how Keys discloses the contested limitation of claim 1. The Appellant points out that Keys’s securement projections 26, which secure elongated body portion 12 to vehicle frame flange 18, hold second portion 16 in a non- circular geometric shape before any of foaming material 36 is injected into chamber 30, and during the injection process. See Reply Br. 8, Keys col. 3, ll. 46–62, Figs. 1–2. Notably, Keys discloses securement projections 26 are formed by an elastomeric coating, wherein steel U-shaped core member 24 is embedded within the elastomeric coating. Keys col. 3, ll. 7–11. Accordingly, the non-circular shape of Keys’s weather stripping between vehicle door 20 and vehicle frame flange 18 is established prior to injecting elastomeric type foaming material 36 into chamber 30. The Appellant also points out, “[t]he Examiner has provided no reasoning as to why the forces which hold the hollow tube 12 in the non- circular geometric shape would be transferred from the securement projections 26 to the cured resin 36 after the curing process was complete.” Reply Br. 8. Indeed, the Examiner’s rejection does not explain how once the non-circular shape of Keys’s weather stripping, including second portion 16, is forcibly held by securement projections 26, the forces that maintain the non-circular shape transfers to elastomeric foaming material 36 once it cures, i.e., becomes rigid. See also Keys col. 3, l. 62–col. 4, l. 15, Fig. 2. As such, the Examiner’s finding that Keys discloses “whereby said hollow, resilient tube is forcibly held in the non-circular geometric shape by Appeal 2012-010013 Application 12/904,521 5 said core of cured rubber compound while said tube continually strains toward a straight configuration,” as recited in claim 1, lacks adequate support. Turning to the secondary reference, Tsutomu, the Examiner relies on Tsutomu to disclose a connector between the ends of a gasket (Ans. 5), which does not remedy the deficiency of the Examiner’s finding discussed above with regard to claim 1. Thus, the Examiner’s rejection of claim 1, and its dependent claims, under 35 U.S.C. § 103(a) as unpatentable over Keys and Tsutomu is not sustained. Obviousness based upon Keys, Tsutomu, and Moody The remaining rejection based on Keys and Tsutomu in combination with Moody relies on the same inadequately supported finding discussed above. As such, we do not sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Keys, Tsutomu, and Moody. DECISION We REVERSE the rejections of claims 1–7. REVERSED mls