Ex Parte Kinoshita

Patent Trial and Appeal Board

Jan 29, 2016

12003978 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/003,978 01/04/2008
32628 7590 02/02/2016
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Yuichi Kinoshita
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ISH-036 7032
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
02/02/2016 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHI KINOSHITA
Appeal2013-002210
Application 12/003,978 1
Technology Center 3600
Before WILLIAM A. CAPP, BART A. GERSTENBLITH, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Yuichi Kinoshita (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1--4, 6-12, and 14--16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Ishikawa Gasket Co., Ltd as the real party in interest.
Appeal Br. 3.
Appeal2013-002210
Application 12/003,978
CLAIMED SUBJECT MATTER
Claims 1, 8, and 16 are the independent claims on appeal. Claim 16,
reproduced below, is illustrative of the claimed subject matter.
16. A metal gasket comprising:
at least two metal plates forming the metal gasket, each of said
metal plates having a hole to be sealed, at least one of the two metal
plates having a half bead adjacent to the hole, said at least two metal
plates being separated from each other and laminated together such
that a space is formed between the two metal plates from the half bead
to the hole, and
a U-shaped ring having a flat upper portion and a flat lower
portion to form an open side and a closed side, said U-shaped ring
being situated in the space between the at least two metal plates and
between the half bead and the hole such that the flat upper and lower
portions directly contact the at least two metal plates, respectively,
and the open side faces the holes to thereby allow a fluid in the holes
to enter inside the U-shaped ring.
REJECTIONS 2
I. Claim 10 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicant regards as the invention.
IL Claims 1--4, 6, 8-12, 14, and 16 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hunter
(US 2007/0262534 Al, pub. Nov. 15, 2007) in view of
Larsson3 (US 876,977, iss. Jan. 21, 1908).
2 In the Answer, the Examiner withdrew six of the prior art rejections
previously presented in the Final Office Action. Ans. 3.
3 The Examiner refers to Larsson as "Larson." See, e.g., Ans. 4.
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Application 12/003,978
III. Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hunter, Larsson, and Nakamura
(US 2003/0075873 Al, pub. Apr. 24, 2003).
ANALYSIS
Rejection I
Claim 10 depends, indirectly, from claim 8, and recites additionally,
inter alia, "wherein the half bead has two bent portions." Appeal Br. 19.
The Examiner asserts that it is unclear how the half bead has two bent
portions because "[ n ]owhere in the Specification or drawings does it
describe a half bead formed by two bent portions." Ans. 4; see Final Act. 2.
We are persuaded of Examiner error by Appellant's argument that the
half beads 11, 21, as described in Figure 1 of Appellant's Specification,
disclose half beads having two bent portions. Appeal Br. 7. For example,
half bead 11 is formed by two bent portions in metal plate 10 where the first
bent portion is shown adjacent to U-shaped ring 30 and a second bent
portion is shown where metal plate 10 straightens and appears to contact
metal plate 20. Spec., Fig. 1. Accordingly, we agree with Appellant that the
Examiner has not demonstrated that those skilled in the art would not
understand the scope of claim 10 as required by 35 U.S.C. § 112, second
paragraph.
Re} ection II
Claims 1-4 and 6
The Examiner finds that Hunter discloses the invention substantially
as recited in claims 1--4 and 6, including a cylinder head gasket having at
least two metal plates 22 and 24, each metal plate having a hole (e.g., hole
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Application 12/003,978
corresponding to cylinder hole) and a half bead 18, and a ring 20 between
the at least two metal plates. Final Act. 6. The Examiner acknowledges that
Hunter does not disclose a U-shaped ring with the opening facing the hole to
be sealed. Id. at 7. However, the Examiner determines that it would have
been obvious to one having ordinary skill in the art to replace Hunter's
ring 20 with the U-shaped seal disclosed in Larsson's Plunger-Packing "to
provide compressibility and not los[ e] any sealing effectiveness (e.g.
function of a hollow ring with a resilient sealing element inside thereof)."
Id. The Examiner also finds that substituting Larsson' s U-shaped ring for
Hunter's ring is "the simple substitution of one known ring for another."
Ans. 6.
Appellant first argues that Larsson is non-analogous art. Specifically,
Appellant asserts that Larsson's packing ring 10, 11 cannot be combined
with Hunter's metal gasket because "the field and technique for sealing the
eievator shaft as disclosed in Larsson is entire difforent[iy] from the fieid
and technique of the gasket for sealing between the cylinder head and
cylinder block of the invention." Reply Br. 3; see Appeal Br. 15. In the
Answer, the Examiner responds that Larsson is "solving a similar problem
with which the Appellant was concerned with which is providing a U-shaped
seal that is open and receives fluid pressure, which spreads the U-shaped
ring." Ans. 5 (citing Larsson 1, 11. 55---66).
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
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Application 12/003,978
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Bigio, 381F.3d1320, 1325 (Fed. Cir.
2004).
Here, we agree with the Examiner that Larsson is reasonably pertinent
to the particular problem with which Appellant is involved, which is to
improve the performance of a seal under fluid pressure. In particular,
Appellant's Specification indicates that "an object of the present invention is
to provide a metal gasket which can improve the sealing performance
around the sealing target bore such as the cylinder bore of the engine using
the pressure of fluid of the sealing target." Spec. 2, 11. 6-10 (emphases
added). Further, the Specification provides that
when the pressure of fluid of a sealing target such as the
combustion gas of an engine is elevated, the fluid entered into
the U-shaped ring opens the U-shaped ring, and the metal
formation plates on both sides holding the U-shaped ring is
pressed to the members. Consequently; the fluid of the sealing
target becomes more difficult to enter between the metal
formation plates, and the pressure of fluid of the sealing target
can be used for sealing swface pressure, so that the sealing
peiformance improves.
Id. at 2, 11. 20-29 (emphasis added).
Larsson is directed to a similar sealing problem. Larsson discloses a
hydraulic plunger for an elevator in which the plunger moves through a
stuffing box. Larsson 1, 11. 32-35. Larsson notes that "it is a matter of some
difficulty to secure a water tight joint in the stuffing box." Id. To address
this sealing problem, Larsson provides U-shaped packing rings that are
arranged at opposite sides of the stuffing box. Id. at 1, 11. 50-55. Larsson
teaches that the "pressure of the water acts inside of these packing rings, the
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Appeal2013-002210
Application 12/003,978
U-shaped interior of the inside packing ring preferably extending up into the
upper packing ring so that the water pressure will serve to seat both rings."
Id. at 1, 11. 55---60. Thus, we are not persuaded that Larsson is non-analogous
art.
Additionally, Appellant asserts that Larsson "cannot" be combined
with Hunter's gasket because Larsson's seal is placed around elevator
plunger E, and not assembled with metal plates. Reply Br. 3. However,
Appellant's assertion amounts to no more than attorney argument
unsupported by sufficient evidence or technical reasoning. Additionally, we
are not persuaded that one of ordinary skill in the art would not be able to
combine the teachings as proposed by the Examiner. Accordingly, we are
not apprised of any Examiner error on this basis.
Appellant further argues that the object of Larsson's packing Pis
different from that of ring 20 disclosed in Hunter because Hunter's ring 20
resists compression to increase iocai damp ioading and Larsson's ring is not
designed to increase the local clamp loading, and is used to seal between two
members while receiving water pressure in packing P. Reply Br. 4.
Appellant has, at most, identified a potential drawback of the proposed
modification, without weighing this drawback against the benefits also
taught by Larsson, including improved sealing. This bare identification of a
drawback is not sufficient to show that a person of ordinary skill in the art
would have been directed away from combining the teachings of Hunter and
Larsson. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) ("a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine"); Winner Int 'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
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Application 12/003,978
(Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Thus, we are not apprised of Examiner error on this basis. We sustain the
Examiner's decision rejecting claim 1.
Claims 2--4 and 6 depend from claim 1. Appellant does not present
arguments for these claims separate from those presented for independent
claim 1. For the same reasons discussed, we sustain the Examiner's decision
rejecting claims 2--4 and 6.
Claims 8-12 and 14
For independent claim 8, Appellant relies on the arguments presented
for claim 1, and further argues that Hunter combined with Larsson does not
disclose
the open side faces the hoies so that the U-shaped ring receives
a fluid pressure in the holes in a direction to open the upper
portion and the lower portion to thereby press the upper and
lower portions to the respective metal plates contacting thereto
to prevent a fluid in the holes from entering between the two
metal plates.
Appeal Br. 15.
First, as discussed above, Appellant's arguments with respect to
claim 1 are not persuasive. Second, the Examiner's proposed combination
would place Larsson's U-shaped ring between Hunter's metal plates with the
open side facing Hunter's opening 16 because fluid is provided through
opening 16 by pipes. Final Act. 6-7; Ans. 6. Larsson discloses that the
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Application 12/003,978
open side of its U-shaped packing ring also faces water and receives water
pressure. Larsson 1, 11. 55-60.
Appellant does not present arguments for claims 9-12 and 14 separate
from those presented for independent claim 8. Accordingly, we sustain the
Examiner's decision rejecting claim 8 and its dependent claims 9-12 and 14.
Claim 16
For independent claim 16, Appellant relies on the arguments
discussed above, and further argues that Hunter combined with Larsson does
not disclose the two metal plates with a half bead or a U-shaped ring with
flat upper and lower portions. Appeal Br. 16. However, the Examiner
explains that Hunter discloses two metal plates 22 and 24 with half bead 18
and ring 20 that directly contacts metal plates 22 and 24. Final Act. 6;
Ans. 6. The Examiner adds that Larsson's U-shaped ring has flat upper and
lower portions. Ans. 6.
We agree with the Examiner's findings with respect to the iimitations
of claim 16. Accordingly, we sustain the Examiner's decision rejecting
claim 16.
Re} ection III
With respect to claims 7 and 15, Appellant relies on the arguments
discussed above for independent claims 1 and 8. Appeal Br. 16. For the
same reasons discussed, we are not apprised of any Examiner error by
Appellant's arguments. Accordingly, we sustain the Examiner's decision
rejecting claims 7 and 15.
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Application 12/003,978
DECISION
The Examiner's decision rejecting claim 10 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's decision rejecting claims 1--4, 6-12, and 14--16 under
35 U.S.C. § 103(a) 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
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