Ex Parte Taguchi

Board of Patent Appeals and Interferences

Jun 22, 2011

11797690 (B.P.A.I. Jun. 22, 2011)

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.
11/797,690 05/07/2007 Tomohito Taguchi ISH-032 8889
32628 7590 06/22/2011
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
PICKARD, ALISON K
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
06/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOMOHITO TAGUCHI
____________________

Appeal 2010-001426
Application 11/797,690
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEVEN D. A. MCCARTHY, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001426
Application 11/797,690
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Soichi (JP H11-264473 A, pub. Sep. 28, 1999) and Boskamp (US 6,318,734
B1, iss. Nov. 20, 2001); and claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Soichi, Boskamp, and Belter (US 5,540,452, iss. Jul. 30,
1996). We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 3, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
A cylinder head gasket comprising:
at least one gasket plate having a fluid hole therein,
a rubber ring plate assembled with the gasket plate at the
fluid hole and having a rubber ring for sealing with a
communicating hole corresponding to the fluid hole,
a projection provided on one of the gasket plate and the
ring plate to project toward the other plate, said projection
projecting in a thickness direction of the gasket, and
an engaging hole provided in the other of the gasket
plate and the ring plate for engaging the projection, said
engaging hole extending in the thickness direction of the gasket
and engaging the projection so that the rubber ring plate is
positioned with respect to the gasket plate in an irrotational
state,
wherein said projection is formed of a rubber material
and projects upwardly from an outer surface of the rubber ring
plate, and said engaging hole is provided in the gasket plate.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2010-001426
Application 11/797,690
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ANALYSIS
Claim 3
The Examiner found, in relevant part, that Soichi teaches a ring plate
2 with a tab 8 and rubber ring 6. Ans. 3. Soichi provides a hole 14 on
gasket plate 4 through which the tab 8 may be viewed. Id.; see Soichi, para.
8 (the tab 8 is visible through hole 14 if and only if the gasket is properly
aligned, essentially allowing confirmation of proper gasket alignment
without disassembly). The Examiner found that Soichi does not describe a
bead (projection) but that Boskamp teaches a gasket with a bead 46 or 50
that fits through a hole 44 or 52 “to properly locate and secure the gasket.”
Ans. 3. Next, the Examiner concluded that it would have been obvious to
modify the tab 8 of Soichi to have a bead (as taught in Boskamp) to be
received in hole 14 “to more effectively locate and secure the rubber plate in
proper place.” Id. The Examiner then found that Soichi and Boskamp do
not teach a gasket having a projection formed of rubber material, but that
Belter teaches a gasket having a rubber ring plate covered with rubber. Ans.
3-4. The Examiner concluded that it would have been obvious to further
modify the rubber ring plate in Soichi, as modified, to be covered in rubber
material as taught in Belter. Id.
Appellant appears to argue that Boskamp is not analogous art. Appeal
Br. 5 (stating that Boskamp is “in a different field of endeavor” and that the
issues relating to cylinder head gaskets are distinguished from those in an
exhaust manifold). In response, the Examiner found that both Soichi and
Boskamp are gaskets with locating features, and Boskamp teaches a way “to
properly and securely install a gasket.” Ans. 4-5. Thus, the two references
Appeal 2010-001426
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appear to be in the field of gaskets1, particularly those preventing leakage of
fluids in a high-temperature engine environment2, and even further, those
gaskets with an aligning feature3. The present invention is concerned with
gaskets preventing leakage of hot fluids in an engine (Spec. 4:6-13, 25-27)
and particularly with gaskets having an alignment feature (Spec. 5:26-6:6).
Accordingly, in view of the similarities in design, problem, and environment
of Soichi and Boskamp with the present invention, as identified by the
Examiner, Appellant’s unexplained assertion that “issues related to passing
fluid through a cylinder head gasket are distinguished from those of an
exhaust manifold” does not tend to show the Examiner’s rejection relies on
non-analogous art.
Appellant argues that the Examiner’s rejection is predicated on
impermissible hindsight because neither Soichi nor Boskamp teach or
suggest the desirability of combining the references. Appeal Br. 5-6.
However, a proper conclusion of obviousness does not require an explicit
teaching, suggestion, or motivation. KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007) (holding a rigid insistence on teaching, suggestion, or
motivation [TSM] is incompatible with its precedent concerning

1 Soichi is titled “Gasket.” Boskamp is titled “GASKET WITH
INTEGRAL SUPPORT.”
2 Soichi, para. 1, describing “a gasket … for preventing water and dust from
coming in and for preventing oil leakage … [in] an engine,” para. 8,
describing the rubber ring of the gasket as “heat-resistant rubber.”
Boskamp, col. 1, ll. 10-25 (“Gaskets … prevent the escape of gas … in high-
temperature … environments, such as that of an internal combustion
engine.”).
3 Soichi, paras. 4, 8, describing the problem solved by the gasket is to
confirm properly assembly via protrusion (tab) 8. Boskamp, col. 4, ll. 32-
41, describing buttons (protrusions) 45 allowing to “more accurately
position [and retain] shield 22 within … gasket 10.”
Appeal 2010-001426
Application 11/797,690
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obviousness). Instead, the Examiner must provide “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 419).
The Examiner articulates that it would have been obvious to include a
projection on the tab 8 of Soichi to allow for more effective location and
security of the rubber ring plate 2. Ans. 3. This finding is based on the
teachings of Boskamp to align a heat shield on a gasket using projections.
Id. Appellant argues that such a combination will render Soichi “inoperable
for its intended purpose of providing a visual check of the tab placement.”
Appeal Br. 6. It is unclear how the Examiner’s proposed combination will
render the gasket of Soichi inoperable. In particular, the projection of the
Examiner’s proposed combination would likely project out from the hole 14;
the projection would still be visible and would further provide more
effective location and security to the rubber ring plate. Accordingly, we do
not agree that the Examiner’s proposed combination would render Soichi
inoperable for its intended purpose.
Appellant additionally argues that the rectangular gasket of Soichi
would prevent rotation (by the nature of its shape), such that one of ordinary
skill would not have any motivation to include a structure (such as the beads
46, 50 of Boskamp) to prevent rotation. Reply Br. 3. However, common
sense, and Appellant’s Specification, suggests that non-circular gaskets
require protection from rotation. See Spec. 5:27 – 6:6 (“the projection 12 …
engages the engaging hole 13 provided in the rubber ring plate 7.
Accordingly, even if the rubber ring plate 7 is formed in a noncircular shape
… [it] is positioned in the correct direction and fixed in the irrotational
Appeal 2010-001426
Application 11/797,690
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state”) (emphasis added). Thus, the rectangular shape of Soichi’s gasket
does not limit a desire to prevent further rotation.
Appellant argues that the “seal beads 46, 48 [of Belter] do not
constitute the projection recited in claim 3 to locate the gasket.” Appeal Br.
6. The Examiner’s proposed combination, however, is to modify the plate of
Soichi to include a locating bead as described in Boskamp and to
subsequently cover the bead (and the whole rubber ring plate 2 of Soichi)
with rubber in order to protect the rubber ring plate 24. Ans. 3-4, 5-6.
Appellant further argues that the claimed “‘projection formed of a rubber
material’ is distinguished from a rubber coating.” Reply Br. 3. It is not
clear what Appellant believes is the distinguishing characteristic. To the
extent Appellant is arguing that the projection must be solely formed from
rubber, we note that claim 3 uses open-ended “comprising” language and it
is clear that the projection in the Examiner’s proposed combination is
formed at least in part of rubber. See Ans. 4 (“one of skill would either form
the bead from the rubber coating or the metal plate would have the bead,
which would be coated [with rubber]”).
Lastly, Appellant argues that Belter suggests the seal beads are
elastomeric so that they may readily compress. Appeal Br. 3-4. Appellant
does not further expound on this point; it is not clear what error Appellant
alleges. The Examiner’s rejection states that it would have been obvious to
coat the rubber ring plate of Soichi “as taught by Belter.” Ans. 3-4. While
the Examiner’s articulated rationale is not a model of clarity, with respect to
the rubber coating, Belter teaches (and Appellant appears to agree) that the
rubber coating facilitates compression and therefore sealing. Belter, col. 3,

4 The Examiner also indicates it would have been obvious to “form the bead
from the rubber coating.” Ans. 4.
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ll. 43-49 (when … compressed … beads 46 and 48 provide an improved seal
for high pressure fluid flow .… [s]o that they may readily compress, beads
46 and 48 are formed from an elastomeric material.”). Accordingly, Belter
suggests that coating the rubber ring plate 2 in Soichi would improve sealing
(which is a common sense benefit for a gasket). A rubber coating of the
rubber ring plate 2 in Soichi would coat an underlying projection on the
plate, satisfying the limitation of claim 3 requiring a projection formed of a
rubber material. Appellant has not set forth any persuasive arguments that
point out how the Examiner erred in proposing to modify the rubber ring
plate of Soichi to include a projection to assist in alignment as taught in
Boskamp and a rubber coating to assist in sealing as taught in Belter.

Claim 7
The Examiner’s rejection of claim 7 is similar to that of claim 3 but
without the additional modification of the rubber ring plate 2 to include a
rubber coating as taught in Belter. Ans. 3-4. Appellant sets forth similar
arguments to those addressed above. Appeal Br. 7-8. These arguments are
unpersuasive for the same reasons. Appellant additionally argues that the
prior art does not disclose a rubber ring plate with a notch. Appeal Br. 7.
Soichi unambiguously teaches a notch. See figs. 1, 3; Ans. 6. Accordingly,
in light of the above, Appellant has not identified an error in the Examiner’s
rejection of claim 7.

Appeal 2010-001426
Application 11/797,690
8
DECISION
For the above reasons, we affirm the Examiner’s decision regarding
claims 3 and 7. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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