Ex Parte Jones et al

Board of Patent Appeals and Interferences

Sep 29, 2005

10051417 (B.P.A.I. Sep. 29, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BART R. JONES, EUGENE J. NYKYFORIAK,
DAVID H. BANK, RAVI RAMANATHAN
and DAVID W. RECKTENWALD

____________

Appeal No. 2005-2180
Application No. 10/051,417
____________

ON BRIEF
____________

Before PAK, WARREN and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 7,
11 to 14, 18 to 23 and 26 to 32, all of the pending claims. (Brief, p. 2). We have
jurisdiction under 35 U.S.C. ' 134.
BACKGROUND
The present invention relates to a valve cover assembly comprising a valve
cover having a mating surface having a continuous bead of an adhesive disposed on
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Application No. 10/051,417

the perimeter of the mating surface wherein the adhesive has sufficient adhesive
strength to hold the valve cover in place. Representative claims 1 and 18 appear
below:

1. 1. A valve cover assembly comprising a valve cover having a mating
surface adapted to be attached to a cylinder head of an internal
combustion engine having a continuous bead of an adhesive disposed
on the perimeter of the mating surface of the valve cover wherein the
adhesive has sufficient adhesive strength to hold the valve cover in place
during normal operating conditions.

18. A method for bonding a valve cover to a cylinder head comprising
a) applying to the valve cover or the cylinder head, wherein the valve
cover has a mating surface adapted to be mated with a mating surface of
a cylinder head, a continuous bead or film of adhesive along the entire
mating surface of the valve cover or the cylinder head wherein the
adhesive has sufficient cohesive strength to hold the valve cover in place
during normal operating conditions;
b) contacting the mating surface of the valve cover with the mating
surface of the cylinder head such the continuous bead or film of adhesive
is disposed between the mating surfaces of the valve cover and the
cylinder head;
c) curing the adhesive to form a permanent bond between the
mating surfaces of the valve cover and the cylinder head wherein the
adhesive forms a seal between the valve cover and the cylinder head.

The Examiner relies on the following references in rejecting the appealed
claims:
Mochizuki et al. (Mochizuki) 4,985,523 Jan. 15, 1991
Santella 5,375,569 Dec. 27, 1994
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Claims 1-3, 11, 18-21, 26-32 stand rejected under 35 U.S.C. '103(a), as
obvious over Mochizuki . Claims 4-5, 7, 12-14 and 22-23 are rejected under 35 U.S.C.
'103(a) as obvious over the combined teachings of Mochizuki and Santella. Claim 6
is rejected under 35 U.S.C. '103(a) as obvious over the combined teachings of
Mochizuki and Santella, and further in view of design choice. (Answer, pp. 3-5). We
affirm the rejections.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellants regarding the above-noted rejections, we make reference to the
Answer (mailed March 05, 2004) for the Examiner's reasoning in support of the
rejection, and to the Brief (filed February 02, 2004) and the Reply Brief (filed May 05,
2004) for the Appellants= arguments there against.
We initially note that Appellants assert that for purposes of appeal the claims
are grouped into the following groups; Group I, claims 1, 11 and 18; Group II, claims 2
and 32; Group III, claims 26, 28 and 30 and Group IV, claims 22 and 23. (Brief, p. 5).
We will consider the groups of claims separately to the extent that these groups of
claims have been argued separately in the brief.
OPINION
We look to the specification for a discussion of the claim requirement "wherein
the adhesive has sufficient cohesive strength to hold the valve cover in place during
normal operating conditions.@ During patent prosecution, claims are given their
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Application No. 10/051,417

broadest reasonable interpretation consistent with the specification, and the claim
language is to be read in view of the specification as it would be interpreted by one of
ordinary skill in the art. In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983);
In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976). This review of
the specification does not reveal the specific Anormal operating conditions@ for an
internal combustion engine. We note that Appellants have not directed us to specific
portions of the present record which disclose or describe normal operating conditions
for an internal combustion engine. Thus, in resolving the issues of the present
appeal, we determine that the phrase Anormal operating conditions@ applies to any
operating condition of internal combustion engines of varying size from small to large.
Appellants are free to recite features of an apparatus either structurally or
functionally. See In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed.
Cir. 1997). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971).
However, when describing the invention the inventor must describe it specifically to
avoid the prior art. Appellants argue that Mochizuki fails to teach or suggest the use
of a structural adhesive to bond a valve cover to a cylinder head. Specifically,
Appellants state:
The references [Mochizuki and Santella] either singly or in combination
fail to teach or suggest the use of a structural adhesive to bond a valve
cover to a cylinder head; the use of an adhesive wherein the adhesive
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has sufficient adhesive strength to hold the valve cover in place (Claims
1, 11 and 18); that the valve cover does not have bolt holes which have
a primary function of holding of the valve cover to the cylinder head
(Claims 2 and 32); the adhesive used demonstrates a cohesive strength
of 250 psi or greater when measured in lap shear modes according to
ASTM D-3165-91 (Claims 26, 28 and 30); and (Claims 22 and 23), the
presence of integral fastening means present to hold the valve cover in
place until the adhesive cures.
(Brief, p. 5).
The Examiner found that Mochizuki discloses multiple adhesive sealing
compositions which are suitable for application to an engine head and head cover
(column 1, line 18) and a joint between an engine head and a head cover (column 7,
line 28). Mochizuki discloses the adhesive provides a seal with excellent heat
resistance and oil resistance for use in internal combustion engines (column 7, lines
9-26). Mochizuki (column 7, lines 29-35) discloses the adhesive sealant has a tensile
strengths up to 40 kgf/cm2 which the Examiner has determined to be approximately
568 psi. (Answer, p. 3). The Examiner acknowledges that Mochizuki fails to recite
the functional language "wherein the adhesive has sufficient cohesive strength to hold
the valve cover in place during normal operating conditions." (Answer, p. 5).
However, the Examiner has reason to believe that the adhesive of Mochizuki would
hold during "normal operating conditions" since Mochizuki discloses that its adhesive
is useful for an engine head and a valve cover and has a holding strength up to
568 psi. (Answer, p. 5). Appellants have not directed us to evidence that indicates
that the Mochizuki adhesive would not function as claimed. When the USPTO shows
sound basis for believing that the products of the applicant and the prior art are the
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same or slightly different, the applicant has the burden of showing that they are not.
See In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986); In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
Appellants argue AMochizuki discloses anaerobically curing adhesive
compositions; see col. 1, lines 64 to col. 2, line 49. The adhesive is designed to seal
joints in automobile engines, see col. 1, lines 16-20. Note this passage indicates that
the adhesive can be used to seal head covers to engine heads. The reference does
not disclose the features recited hereinbefore.@ (Brief, p. 6).
These arguments are not persuasive. As recognized above by Appellants,
Mochizuki discloses that the adhesive can be used to seal head covers to engine
heads. Appellants have not adequately explained why this disclosure fails to render
the subject matter of claim 1 unpatentable. Appellants have not directed us to
evidence that the adhesive strength disclosed by Mochizuki is not suitable to hold a
valve cover in place during normal operating conditions.
Appellants argue, Brief page 7, that Japanese Patent 61-218754 and Frohwerk
et al., U.S. Patent 5,957,100, describe a head cover secured to an engine head using
nuts and bolts. Appellants have also cited six additional references in the Reply Brief
for similar teachings. These arguments are noted. However, these references do not
necessarily indicate that the adhesive disclosed by Mochizuki can only be used with
nuts and bolts as a fastening means for a valve cover and engine head as argued by
Appellants. We again reiterate that Appellants have not directed us to evidence that
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Application No. 10/051,417

the adhesive of Mochizuki does not have sufficient strength to seal a head cover to an
engine head as disclosed in the reference. Moreover, the subject matter of claim 1,
by virtue of using “comprising,” does not preclude the use of bolts in the valve cover
assembly together with an adhesive.
Appellants, Brief page 8, argue that AMochizuki demonstrates that the
adhesives disclosed would not be suitable for holding a valve cover in place under
normal operating conditions.@ Appellants have not identified the adhesive strength
required for normal operating conditions. The subject matter of claim 1 does not
preclude the use of nuts and bolts to aid in the holding of a valve cover in place under
normal operating conditions. Further, Appellants arguments focus on the sample with
the lowest tensile strength. Appellants have failed to make similar comments
regarding the higher tensile strength adhesives disclosed by Mochizuki.
Appellants argue AMochizuki discloses that low adhesive strength is desirable
so that the sealing material can easily be removed from the cylinder head or valve
cover. See col. 4, lines 5-6 and col. 4, lines 54-63.@ (Brief, p. 8). This argument is not
persuasive. Appellants= argument fails to consider the disclosure by Mochizuki that
applies to the use of adhesives on parts where high strength is required. (Col. 4, ll.
57-60).
Appellants recognize that Mochizuki discloses how to make higher strength
adhesives, but argue that Mochizuki provides no motivation to do so. (Brief, p. 8).
Appellants' argument is not well taken since a reference is available for all that it
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Application No. 10/051,417

teaches, not just the preferred embodiments, and a teaching of the preferred
embodiment is not a "teaching away" from the unpreferred embodiment. In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); and In re Mills, 470 F.2d 649, 651,
176 USPQ 196, 198 (CCPA 1972).
Regarding Group II, we select claim 2 as representative. Appellants argue
A[t]he fact that at the time of the invention, adhesives existed which had appropriate
adhesive strength to function in this manner is irrelevant as no one had imagined
using an adhesive in such a manner, and it is incumbent for the Final Rejection to
provide some motivation in the art which clearly suggests to one skilled in the art that
such an adhesive be used to bond and hold a valve cover on an engine cylinder
head.@ (Brief, p. 9).
Appellants argument is not persuasive. As stated above, Mochizuki discloses
adhesives suitable for bonding and holding a valve cover on an engine cylinder head.
Further, as indicated above by the Appellants, persons of ordinary skill in the art
would have known that adhesives exist which have the required adhesive strength
properties to replace bolts. Persons of ordinary skill in the art viewing the Mochizuki
would have recognized that the disclosed adhesives could have been used in for the
seal between the head cover and engine head. Those skilled in the art would have
recognized the appropriate pressure requirements of an engine operating under
normal conditions and select the an adhesive disclosed by Mochizuki to be suitable
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Application No. 10/051,417

for that purpose. Further, contrary to Appellants= argument, the subject matter of
claim 2 does not exclude the presence of bolts used to hold the valve cover in place.1
Here again, we recognize that Appellants have not directed us to evidence that
shows the adhesive of Mochizuki is not suitable for the stated purpose.

1 The claim language does not prevent the valve cover from having a nut that would receive a
bolt.
Regarding the claims of Group III, we select claim 26 as representative. Claim
26 provides that the adhesive have a cohesive strength above 250 psi when
measured according to the stated ASTM D3165-91 4 standard. The Examiner has
determined that Mochizuki discloses an adhesive sealant having a tensile strength of
approximately 568 psi. Mochizuki does not indicate a particular ASTM standard was
used in this determination. The USPTO does not have facilities to perform test.
When the Examiner provides a reference which is reasonably expected to produce
the claimed requirements the burden is shifted to the Appellants to perform the
requisite testing to demonstrate the cited reference does not possess the claimed
property. See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433-34 (CCPA 1977).
Appellants have offered no comparison data which satisfies this burden.
The Examiner rejected claims 4-5, 7, 12-14 and 22-23 under 35 U.S.C. '103(a)
as obvious over the combined teachings of Mochizuki and Santella. The Examiner
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Application No. 10/051,417

also rejected the subject matter of claim 6 over the combined teachings of Mochizuki
and Santella, and further in view of design choice. (Answer, pp. 4-6). We select
claims 4 and 6 as representative.
Claim 4 specified that the valve cover is fabricated from a plastic material. The
Examiner relies on the Santella for disclosing the suitability of forming combustion
engine parts from thermoplastic materials. (Answer, p. 4). With regard to claim 6, the
Examiner asserts that the specifically stated polymer composition would have been
encompassed by the teaching of Santella and that Appellants have not exhibited
unexpected results for the stated composition. (Answer, p. 5). The Appellants have
not specifically rebutted the Examiner=s determinations. Thus, for the reasons stated
above and in the Answer we affirm the rejection of these claims.
Regarding Group IV we select claim 22 as representative. Santella discloses
the presence of securing flange (20) which aids in holding the valve cover in place.
Thus, use of such fastening means would have been obvious to a person of ordinary
skill in the art.
Appellants arguments present in the Reply Brief have been noted. Appellants
have not indicated in the Reply Brief that the Examiner has raised new issues in the
Answer. The issues raised by Appellants are substantially the same as have been
raised in the principle brief and addressed above.

CONCLUSION
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Application No. 10/051,417

For the foregoing reasons and those set forth in the Answer, giving due weight
to Appellants= arguments, we determine that the preponderance of evidence weighs in
favor of the Examiner=s rejections. Accordingly, the Examiner's rejections under 35
U.S.C. ' 103(a) are affirmed.

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Application No. 10/051,417

TIME FOR TAKING ACTION
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR ' 1.136(a)(1)(iv)(effective Sep. 13, 2004; 69 Fed.
Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).

Affirmed

CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS/kis
Appeal No. 2005-2180 Page 2
Application No. 10/051,417

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