Ex Parte Swasey et al

Patent Trial and Appeal Board

Feb 27, 2018

14300694 (P.T.A.B. Feb. 27, 2018)

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.
14/300,694 06/10/2014 Thomas Swasey HG-50046/710240-7203 7814
59582 7590 02/27/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
02/27/2018 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 and CHRISTOPHER J. MAGEWICK
Appeal 2017-004288
Application 14/300,694
Technology Center 3600
Before STEFAN STAICOVICI, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Swasey and Christopher J. Magewick (“Appellants”)1 appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action
(dated Nov. 4, 2015, hereinafter “Final Act.”) rejecting claims 1—20. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 In Appellants’ Appeal Brief, at page 1, filed May 4, 2016, (hereinafter
“Appeal Br.),” Federal-Mogul Corporation is identified as the real party in
interest.
Appeal 2017-004288
Application 14/300,694
INVENTION
Appellants’ invention relates to “static gaskets” for a “gas/fluid-tight
seal between two members . . . clamped together.” Spec. para. 2.
Claims 1 and 11 are independent. Claim 1, shown below, is
illustrative of the claimed invention:
1. A static gasket, comprising:
at least one metal layer having opposite sides and
at least one through opening extending through said
opposite sides, at least one of said at least one metal layer
having a raised annular seal bead extending about said at
least one through opening; and
a plurality of protrusions extending outwardly
from at least one of said opposite sides between said at
least one through opening and said raised annular seal
bead to prevent the complete flattening of said raised
annular seal bead, said plurality of protrusions being
constructed from separate pieces of metal from one
another and from said at least one metal layer and being
individually fixed to said at least one metal layer via
separate bond joints.
REJECTIONS
I. The Examiner rejected claims 1, 2, 5—8, 11—15, 17, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Lafrenz et al. (US
2013/0087980 Al, published Apr. 11, 2013, hereinafter “Lafrenz”)
and Golombek et al. (US 2005/0140096 Al, published June 30, 2005,
hereinafter “Golombek”).
II. The Examiner rejected claims 3, 4, 9, 10, 18, and 19 under 35
U.S.C. § 103(a) as being unpatentable over Lafrenz, Golombek, and
Schmitt et al. (US 2012/0098210 Al, published Apr. 26, 2012,
hereinafter “Schmitt”).
2
Appeal 2017-004288
Application 14/300,694
III. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Lafrenz, Golombek, and Rorvick et al. (US
2006/0178708 Al, published Aug. 10, 2006, hereinafter “Rorvick”).
ANALYSIS
Rejection I
The Examiner finds that Lafrenz discloses a static gasket 40
including, inter alia, at least one metallic layer 28,30 having at least one
through opening 34, 38. Final Act. 2—3. The Examiner further finds that the
at least one metallic layer 28, 30 of Lafrenz has a raised annular seal bead
42, 44 and a plurality of protrusions 5 6 A, 56B located between through
openings 34, 38 and seal beads 42, 44, respectively. Id. (citing Lafrenz,
Figs. 3—9). The Examiner, however, finds that Lafrenz does not disclose
that “said plurality of protrusions [56A, 56B] . . . [are] constructed from
separate pieces of metal from one another and from said at least one
metal [lie] layer [28,30] and being individually fixed to said at least one
metallic] layer [28, 30] via separate bond joints.” Id. at 3. Nonetheless, the
Examiner finds that Golombek discloses a gasket having a protrusion 26 that
is either part of plate 20, or is separate from plate 20 and welded to it. Id.
(citing Golombek, para. 46, Figs. 2A, 2B, 3). Thus, the Examiner concludes
that
It would have been obvious to one of ordinary skill
in the art at the time of filing to modify the Lafrenz
reference to make the protrusions be separate pieces and
welded to the at least one metallic] layer in view of the
teachings of the Golombek reference in order to allow for
better pressure distribution while preventing gas and/or
heat to leak.
Id.
3
Appeal 2017-004288
Application 14/300,694
Appellants argue that that the Examiner’s modification of integral
protrusions 56A, 56B of Lafrenz, in view of Golombek’s welded shims 26,
130 is based on impermissible hindsight. Final Act. 5. Appellants note that
shims 26, 130 of Golombek are located outside ribs 22, 122 and are not
disclosed as limiting compression of sealing beads 22, 122. Id. at 5—6
(citing Golombek, paras. 5, 10, 28). Rather, Appellants contend that
Golombek’s stopper 24, 124 is disclosed as limiting the compression of
sealing beads 22, 122 (ribs) and as being located between through openings
12, 112 and ribs 22, 122. Id. at 5 (citing Golombek, para. 28). Hence,
Appellants conclude that absent hindsight, a person of ordinary skill in the
art would not have made the Examiner’s modification, but, rather, would
have added shims 26, 130 to layers 28, 30 of Lafrenz outside seal beads 42,
44 “to reduce stresses created by the stopper features 54 and to achieve
uniform tightening pressure on the entire gasket [40].” Id. (citing
Golombek, para. 6).
In response, the Examiner takes the position that “the Golombek
reference is being used merely as a teaching reference to modify a stopper.”
Examiner’s Answer 3 (dated Nov. 16, 2016, hereinafter “Ans.”). According
to the Examiner, as Golombek discloses making a stopper by either
stamping a single sheet or by placing material 26 on a base sheet, and
Lafrenz discloses stamping stopper 56, “[i]t is . . . well known ... to one of
ordinary skill in the art to modify the stopper of. . . Lafrenz ... in view of
the teachings of the Golombek reference.” Id. (citing Golombek, Figs. 2A,
2B; Lafrenz, para. 25).
Although we appreciate the Examiner’s position that Golombek
discloses a gasket having protrusion 26 constructed by either stamping plate
4
Appeal 2017-004288
Application 14/300,694
20 or by welding a shim onto plate 20, nonetheless, we find the Examiner’s
rejection insufficient. See Final Act. 3; see also Golombek, Figs. 2A, 2B.
Specifically, the Examiner’s rejection does not adequately explain what in
the prior art would have prompted a person having ordinary skill in the art to
modify stamped protrusions 56A, 56B of Faffenz to be separately
manufactured and welded onto metallic layer 28, 30, as taught by
Golombek. We agree with Appellants that the Examiner has not provided
any findings that Fafrenz recognized a problem with its stamped, integral
protrusions 56A, 56B in distributing pressure and preventing gas and/or heat
leakage. See Reply Brief 2 (dated Jan. 17, 2017, hereinafter “Reply Br.”).
We further agree with Appellants, that the Examiner does not provide any
factual support for the allegation that bonding protrusions 56A, 56B of
Faffenz to at least one metallic layer 28, 30, as taught by Golombek, “would
result in an improvement of pressure distribution and prevention of gas
and/or heat leakage over the integral protrusions of Fafrenz.” See id.
(emphasis added); see also Final Act. 3. Hence, the Examiner’s articulated
reason for combining the disclosures of Faffenz and Golombek, namely, “to
allow for better pressure distribution while preventing gas and/or heat to
leak,” is not supported by a preponderance of the evidence. See Final Act. 3
(emphasis added).
Accordingly, absent hindsight, we fail to see why a person having
ordinary skill in the art would have been led to modify stamped protrusions
5 6A, 56B of Fafrenz to be separately manufactured and welded onto
metallic layer 28, 30, as taught by Golombek. Moreover, we note that
Faffenz specifically discloses that separately forming and bonding stoppers,
i.e., protrusions 56A, 56B, “increase[s] manufacturing costs, material
5
Appeal 2017-004288
Application 14/300,694
handling complexities and increase[s] manufacturing time.” Laffenz, para.
7.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 2, 5—8, 11—15, 17, and 20 as
unpatentable over Lafrenz and Golombek.
Rejections II and III
The Examiner’s use of the Schmitt and Rorvick disclosures does not
remedy the deficiency of the combination of Lafrenz and Golombek
discussed supra. See Final Act. 5—7.
Therefore, for the same reasons discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claims 3, 4, 9, 10, 18, and
19 as unpatentable over Lafrenz, Golombek, and Schmitt and of claim 16 as
unpatentable over Lafrenz, Golombek, and Rorvick.
SUMMARY
The Examiner’s decision to reject claims 1—20 is reversed.
REVERSED
6