Ex Parte Tripathy et al

Patent Trial and Appeal Board

Feb 13, 2013

12045215 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/045,215 03/10/2008 Bhawani Tripathy HG-40882/710240-3435 8855
59582 7590 02/14/2013
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
02/14/2013 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 BHAWANI TRIPATHY and
THOMAS O. ZURFLUH
________________

Appeal 2011-013456
Application 12/045,215
Technology Center 1700
________________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013456
Application 12/045,215

2

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-13 and 15-18. Claims 19-31, which are all of the
other claims, stand withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a metal gasket. Claim 13 is illustrative:
13. A metal gasket, comprising:
a gasket sheet having at least one cold-worked embossed sealing bead
made from an iron-nickel-chromium alloy, said embossed sealing bead
having a residual cold-worked microstructure as embossed and being
sealably operable with substantially full recovery in a fully-clamped, sealed
joint at a temperature up to about 1000 ̊ F.

The References
Rakowski US 6,352,670 B1 Mar. 5, 2002
Katsuragi (as translated) JP 2000-204449 A Jul. 25, 2000
Tomimura (as translated) JP 2006-070314 A Mar. 16, 2006
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3-8, 13, 15 and 16 over Tomimura, claim 9 over Tomimura in view of
Rakowski and claims 10-12 , 17 and 18 over Tomimura in view of
Katsuragi.

Appeal 2011-013456
Application 12/045,215

3
OPINION
We reverse the rejections. We need to address only the independent
claims, i.e., claims 1 and 13.1 Those claims require a metal gasket sheet
having at least one embossed sealing bead which has a residual cold-worked
microstructure and is sealably operable with substantially full recovery in a
fully-clamped, sealed joint at a temperature up to about 1000 ºF.
The Appellants’ Specification indicates that the recited property of
substantially full recovery in a fully-clamped, sealed joint at a temperature
up to about 1000 ºF is obtained by cold rolling and optional precipitation
hardening without any post-embossment heat treatment that would harden
the gasket sheet metal (Spec. ¶¶ 0005-7, 0026, 0047).
Tomimura discloses an austenitic stainless steel strip which is suitable
for making products including metal gaskets (¶¶ 0001, 0005-6).
Tomimura’s steel is cold worked and then recrystallized at 550-600 ºC
(abstract; ¶¶ 0004, 0025-26).
The Examiner argues that “[e]ven though the metal gasket of
Tomimura et al. is subjected to heat treatment after cold working, the gasket
of Tomimura et al., before heat treatment (intermediate product of
Tomimura et al.), appears to have the same, or substantially the same
cold-worked embossed structure as claimed” (Ans. 9).
Tomimura’s intermediate product before recrystallization is not a
metal gasket but, rather, is a metal strip which, after recrystallization, can be
made into a product which can be a metal gasket (¶¶ 0001, 0005, 0027).

1 The Examiner does not rely upon Rakowski or Katsuragi for any disclosure
that remedies the deficiency in Tomimura with respect to the independent
claims (Ans. 6-9).
Appeal 2011-013456
Application 12/045,215

4
The Examiner argues that the Appellants’ and Tomimura’s metal
sheets have substantially identical compositions and are made by
substantially identical processes and that, therefore, an embossed sealing
bead in a gasket made from Tomimura’s metal sheet would be expected to
have the Appellants’ recited property of substantially full recovery in a
fully-clamped, sealed joint at a temperature up to about 1000 ºF (Ans. 6).
The Appellants’ and Tomimura’s metal sheets are not made by
substantially identical processes because, unlike the Appellants’ process,
Tomimura’s process includes recrystallization at 550-600 ºC after cold
working (abstract; ¶ 0026). The Examiner has not established that an
embossed sealing bead in a gasket made from Tomimura’s recrystallized
metal sheet would have the property of substantially full recovery in a
fully-clamped, sealed joint at a temperature up to about 1000 ºF.
Thus, the Examiner has not carried the burden of establishing a prima
facie case of obviousness of the Appellants’ claimed metal gasket. See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d
1048, 1051 (CCPA 1976).
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 3-8, 13, 15 and 16
over Tomimura, claim 9 over Tomimura in view of Rakowski and
claims 10-12 , 17 and 18 over Tomimura in view of Katsuragi are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc/sld