Ex Parte TaguchiDownload PDFBoard of Patent Appeals and InterferencesJun 22, 201111797690 (B.P.A.I. Jun. 22, 2011) Copy Citation 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 3 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 Application 11/797,690 4 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 5 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 6 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. Appeal 2010-001426 Application 11/797,690 7 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 hh Copy with citationCopy as parenthetical citation