Ex Parte SWASEY

Patent Trial and Appeal Board

May 23, 2018

14665178 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/665,178 03/23/2015
59582 7590 05/23/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
THOMAS SWASEY
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.
HG-419721710240-7521 4891
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
MAILDATE DELIVERY MODE
05/23/2018 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 THOMAS SWASEY
Appeal2017-006716
Application 14/665, 178 1
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-7 and 9. Final Office Action (May
16, 2016) (hereinafter "Final Act."), as modified in the Advisory Action
(July 21, 2016) (hereinafter "Adv. Act.") and the Examiner's Answer
1 Federal-Mogul Corporation ("Appellant") is the applicant as provided for
under 3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal
Brief 1 (October 17, 2016) (hereinafter "Appeal Br.").
Appeal2017-006716
Application 14/665, 178
(January 25, 2017) (hereinafter "Ans."). 2 We have jurisdiction under
35 U.S.C. § 6(b ).
The claimed subject matter relates to static gaskets used to establish a
gas-tight seal between two members to be clamped together. Specification
i-f 2 (March 23, 2015) (hereinafter "Spec."). The Examiner determined that
the subject matter of the claims would have been obvious to one having
ordinary skill in the art at the time of Appellant's invention in light of the
prior art and Appellant's admitted prior art. Ans. 2-6. Appellant argues that
the Examiner improperly took Appellant's comments out of context and that
the Examiner has failed to articulate adequate reasoning to explain why the
prior art teachings would have led one having ordinary skill in the art to the
claimed subject matter. Reply Brief 2-5 (March 27, 2017) (hereinafter
"Reply Br."). We find no error in the Examiner's rejections. Accordingly,
we AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal and is reproduced
below.
1. A static gasket configured for establishing a seal
between a first member and a second member, comprising:
at least one layer having at least one opening and at least
one compression bead projecting out of a plane and extending
circumferentially about and spaced from said at least one
opening; and
a compression limiter disposed radially between said
opening and said compression bead of said layer, and wherein
said compression limiter is a work hardened, flattened metal wire
2 Claim 8 is allowed. Final Act. 1.
2
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Application 14/665, 178
having substantially planar opposite sides which is induction or
resistance welded to said layer.
Appeal Br., Ex. A (Claims Appendix).
REJECTIONS
The following rejections are before us on appeal: 3
1. Claims 1-6 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Miyaoh (EP 0 717 218 Al, published June 19,
1996) and Applicant Admitted Prior Art (AAPA). 4 Ans. 2-5.
2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Miyaoh, AAPA, and Zurfluh (US 2008/0042370 Al,
published February 21, 2008). Id. at 5.
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Miyaoh, AAPA, and Schmitt (WO 2010/130469 Al,
published November 18, 2010). 5 Id. at 6.
ISSUES
With respect to claim 1, the Examiner found that Miyaoh teaches the
claimed static gasket, as shown, for example, in the embodiment of Figure 3.
Ans. 3. Figure 3 of Miyaoh is reproduced below.
3 In the Advisory Action, the Examiner modified the rejections set forth in
the Final Office Action. Adv. Act. 2, i-f 4. The Examiner further modified
the rejections in the Examiner's Answer. Ans. 2.
4 The Examiner identifies AAP A as an alleged admission by Appellant made
on page 5 of a Response dated November 13, 2015, in which Appellant
acknowledged, "it is known to flatten metal wire into metal rings." Ans. 3.
5 The Examiner relies on the US counterpart published application
(US 2012/0126491 Al, published May 24, 2012) as the English language
translation of Schmitt. Final Act. 5, n.4. All citations in this Decision are to
the published US application.
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Application 14/665, 178
Fig. 3
A2 l A20a A
He l 11,1,,I;" .~,, 'f"".:
A23 A20
Figure 3 shows part of a first embodiment of a single metal gasket A.
Miyaoh, col. 3, 11. 19-21.
The Examiner found gasket A includes layer A20 having an opening
He and compression bead A20a and compression limiter A21 disposed
radially between opening He and compression bead A20a. Ans. 3. The
Examiner found that Miyaoh discloses compression limiter A21 is a flat
metal ring, but does not teach that the compression limiter is a work
hardened, flattened metal wire. 6 Id.
The Examiner found, however, that Miyaoh teaches in another
embodiment that metal wire is a suitable material for the compression
limiter. Id. (citing Miyaoh, Fig. 4, element B21 ). Figure 4 of Miyaoh is
reproduced below.
Fig. 4
, B B21 B20a
HQ H=~; ;q;ifL ~ z u\ z m
B22 B20b B20
6 The Examiner interprets "work hardened flattened metal wire" to require a
flat end product that contains structural changes imparted to the wire as a
result of work hardening. Ans. 3. The Examiner finds that work hardening
can be achieved by any known process in the art that imparts a hardening
structural change on metal wire, including flattening. Id. Appellant does not
contest, and we agree with, the Examiner's interpretation.
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Appeal2017-006716
Application 14/665, 178
Figure 4 shows part of a second embodiment of a single metal gasket B.
Miyaoh, col. 3, 11. 22-24.
The Examiner also stated, "applicant has admitted that it is known that
metal wire rings can be flattened into flat metal wire discs." Id. (citing
AAPA). The Examiner found that such a disc would be the same shape as
the flat metal compression limiter in Figure 3 of Miyaoh. Id. The Examiner
determined that it would have been obvious to use the known technique of
forming metal rings by flattening metal wire to make the flat metal ring of
the embodiment of Figure 3 of Miyaoh to yield predictable results when
used as a compression limiter. Id. at 4. The Examiner further found that a
flat metal ring formed by flattening metal wire would be work hardened. Id.
Appellant first contends that in relying on AAP A, the Examiner has
taken Appellant's comments out of context. Reply Br. 3. 7 Appellant further
argues the Examiner erred in the rejection because flattening the wire ring
B21 of the Figure 4 embodiment would destroy the functionality of the wire
rmg. Reply Br. 2 (citing Miyaoh, col. 4, 11. 21-34).
As to dependent claim 7, the Examiner found Miyaoh does not teach
that the compression limiter has an annular groove and the layer has an
annular lip disposed in the annular groove. Ans. 6. The Examiner found
that Schmitt teaches compression limiter 16 has a groove that interlocks with
a protruding step portion of the underlying layer to provide anti-slip
functionality. Id. (citing Schmitt i-f 64, Figs. 1-2). The Examiner
7 Appellant argues claims 1-6 and 9, which are subject to the first ground of
rejection, as a group. Reply Br. 4. We select claim 1 as representative of
the group, and claims 2-6 and 9 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appeal2017-006716
Application 14/665, 178
determined that it would have been obvious to modify Miyaoh's gasket to
include the claimed groove and lip to obtain the anti-slip benefit. Id.
Appellant contends that the Examiner's reasoning is deficient because
stoppers A21, C21, and D25 of Miyaoh are disposed and secured in
respective recesses A22, C22, D23, and no slip problem exists. Reply Br. 4.
The issues before us in this appeal are: (1) whether the Examiner
properly relied on a statement made by Appellant as admitted prior art; and
(2) whether the Examiner provided adequate reasoning based on rational
underpinnings to explain why one having ordinary skill in the art at the time
of Appellant's invention would have been led to modify Miyaoh's gasket in
the manner recited in claims 1 and 7.
ANALYSIS
First Ground of Rejection: Unpatentability of Claims 1-6 and 9 over
Miyaoh and AAP A
AAPA
With regard to AAP A, Appellant asserts, "Appellant simply
acknowledged that based on the teachings of [Ulam8], that it is known to
flatten wire for some purpose unrelated to Appellant's claimed gasket."
Reply Br. 3. We examine the comments presented by Appellant in the
November 13, 2015 response. In this response, Appellant argued:
Further yet, the examiner draws attention to Ulam ... to
again provide support for the notion that it is known in the
mechanical arts to flatten metal wire into metal rings. Once
8 The Examiner previously relied on Ulam (US 4,646,935, issued March 3,
1987) to teach that "it is known in the mechanical arts to form planar rings
out of metal wire by compressing them." Final Act. 3. Appellant argued
that Ulam is not analogous art, and the Examiner withdrew the use of Ulam
as prior art in favor of AAP A. Adv. Act. 2.
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Application 14/665, 178
again applicant acknowledges that it is known to flatten metal
wire into metal rings, but again contends the examiner is
attempting to apply a non-analogous reference to arrive at an
obviousness rejection.
Amendment and Request for Continued Examination 5 (November 13,
2015) (hereinafter "Amendment").
The Examiner relied on Ulam as evidence of the background
knowledge of one having ordinary skill in the art of a known technique in
the mechanical arts for forming a flattened metal ring. Appellant, by the
comments quoted above, admitted that this technique would have been
within the background knowledge of one having ordinary skill in the art at
the time of Appellant's invention. We find no error in the Examiner relying
on this admission by Appellant as evidence of a known technique in the art
at the time of Appellant's invention. We are not persuaded by Appellant's
attempts to characterize the statement above as limited to an admission that
it was known to flatten wire only within the context of Ulam or some other
more limited field of mechanical arts. The statement Appellant made was
unqualified, and not limited to the disclosure of Ulam. 9 As such, the
Examiner properly relied on Appellant's statement as admitted prior art.
Proposed Modification
Appellant's second argument asserting error in the proposed
modification of Miyaoh's Figure 4 embodiment does not address the
rejection as articulated by the Examiner. The Examiner did not state that it
would have been obvious to modify the metal wire in the embodiment of
9 Appellant made a similar admission with regard to the teachings of Pope
(U.S. 2009/0171341, published July 2, 2009), which further supports the
Examiner's position that the admission was unqualified. Amendment 5.
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Application 14/665, 178
Figure 4. As explained in the Answer, the rejection cites to the embodiment
of Figure 4 to establish that metal wire is a suitable material for a
compression limiter. Ans. 7. The Examiner combines this finding with the
fact that one having ordinary skill in the art, as a matter of background
knowledge, would have known that one could flatten a metal wire to form a
flat metal ring, as the basis for determining that it would have been obvious
to flatten a metal wire to make the flat metal ring compression limiter of the
embodiment of Figure 3. Id. As the Examiner explains, the rejection is "a
logical chain of thoughts springing from the teachings of [Miyaoh]." Id.
We find no error in the Examiner's reasoning. As explained in KSR:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue .... As our precedents make
clear, however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the
Examiner that the disclosure of the use of metal wire as a compression
limiter in Figure 4 of Miyaoh would have suggested to one having ordinary
skill in the art that metal wire was a suitable material to use to form the
flattened metal ring of the compression limiter in the Figure 3 embodiment
of Miyaoh. Further, we agree with the Examiner that application of the
known technique of flattening metal wire to form the flattened metal ring of
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Figure 3 is a predictable application of a known technique within the level of
skill of one having ordinary skill in the art. See id. at 417.
As such, we do not find error in the Examiner's rejection of claim 1.
Accordingly, we sustain the rejection of claim 1, and claims 2-6 and 9
which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over
Miyaoh and AAP A.
Second Ground of Rejection: Unpatentability of Claim 9 over Miyaoh,
AAP A, and Zurfluh
Appellant does not address the rejection of claim 9 in either the
Appeal Brief or the Reply Brief. Instead, Appellant relies on the arguments
presented in support of claim 1 as the basis for patentability of claim 9.
Appeal Br. 6; Reply Br. 4. As such, for the same reasons discussed above,
we sustain the second ground of rejection of claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Miyaoh, AAPA, and Zurfluh.
Third Ground of Rejection: Unpatentability of Claim 7 over Miyaoh, AAPA,
and Schmitt
Appellant's argument that Miyaoh's gasket does not encounter the
slip problem addressed by Schmitt is not supported by a preponderance of
the evidence. Reply Br. 4. Miyaoh is directed to gaskets that use thin ring
plates and addresses the difficulty of fixing a thin ring plate to a metal plate
by welding. Miyaoh, col. 1, 11. 45--4 7. Miyaoh addresses this problem by
forming a recess in the portion of the first plate where the first annular ring
is placed, so that the thickness of the first annular ring need not be made so
thin. Id. at col. 2, 11. 22-26. This technique allows for spot welding of the
first annular ring to the metal plate. Id. at col. 3, 11. 53-55.
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Application 14/665, 178
Schmitt teaches that in the case of cylinder head gaskets for engines, it
is known to fasten the compression limiter onto functional layers by laser
welding or mechanical joining techniques. Schmitt i-f 5. Schmitt teaches that
using these ways to fasten poses a "risk that the compression limiter
... shifts during the operation of the engine." Id. i-f 6. Thus, Schmitt
describes that slipping was a known problem in gaskets in which a
compression limiter is welded to a functional layer.
As discussed above, Miyaoh uses the recess in the metal plate to
control the thickness of the annular ring, and Miyaoh does not teach that the
recess prevents slipping of the ring relative to the metal plate. We agree
with the Examiner that slipping would have been a problem in the welded
gasket of Miyaoh because Schmitt teaches that welded members can shift
during operation of the engine. As such, we find that the Examiner provided
adequate reasoning based on rational underpinnings for the proposed
modification of Miyaoh's gasket with the annular groove and annular lip
anti-slip features of Schmitt. As such, we sustain the rejection of claim 7
under 35 U.S.C. § 103(a) as unpatentable over Miyaoh, AAPA, and Schmitt.
DECISION
The decision of the Examiner rejecting claims 1-7 and 9 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)(l )(iv).
AFFIRMED
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