Ex Parte Udagawa

Board of Patent Appeals and Interferences

Mar 17, 2011

11177307 (B.P.A.I. Mar. 17, 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.
11/177,307 07/11/2005 Tsunekazu Udagawa ISH-015 1710
32628 7590 03/17/2011
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
03/17/2011 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 TSUNEKAZU UDAGAWA
____________________

Appeal 2009-012283
Application 11/177,307
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012283
Application 11/177,307
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 6-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a metal gasket. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1 A metal gasket for sealing between a cylinder head and
a cylinder block of an engine, comprising:
a metal plate having a cylinder bore and at least one bolt
hole formed around the cylinder bore,
a main bead provided around the cylinder bore, and
a secondary bead provided outside the main bead and
having a protruding portion protruding toward the bolt hole in
plan view within a range of 30 degrees on two sides of a
straight line connecting a center of the cylinder bore and a
center of the bolt hole, said secondary bead being completely
separated from the main bead and formed independently only in
said range of 30 degrees.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Geshi US 6,076,833 Jun. 20, 2000

REJECTION
Claims 1 and 6-10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Geshi. Ans. 3.

Appeal 2009-012283
Application 11/177,307
3
OPINION
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have reached the finding that the applied prior art does not establish the lack
of novelty of the claimed subject matter. Therefore the rejection on appeal is
reversed. Our reasons follow.
The Examiner has made findings with respect to the embodiment of
Figure 1 of the Geshi reference. The Examiner has summarized these
findings in a sketch adapted from Geshi that appears on page 4 of the
Examiner’s Answer. The Examiner is reading the half bead 20, which
surrounds the bolt hole 16, as the Appellant’s secondary bead provided
outside the main bead. See, also, Geshi, col. 8, ll. 15-17. The main bead of
Geshi is bead 7 which surrounds the cylinder. The claims require that the
secondary bead have a protruding portion which protrudes from the main
bead toward the bolt hole. In our view, the secondary bead or half bead 20
from the Geshi reference, which completely surrounds the bolt hole 16, does
not have any portion which can be said to protrude toward the bolt hole 16.
If anything, the semi-circular portion of the half bead 20 on the side nearest
the cylinder bore is concavely shaped and thus might be construed as
protruding away from the bolt hole 16 toward the cylinder bore 16.
Inasmuch as Geshi does not have structure that satisfies this claim limitation,
it is our finding that the subject matter of Geshi does not anticipate the
subject matter of the claims on appeal. Therefore the rejection of all claims
on appeal is reversed.

Appeal 2009-012283
Application 11/177,307
4
DECISION
The rejection of claims 1 and 6-10 under 35 U.S.C. § 102(b) is
reversed.

REVERSED

nlk

KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA VA 22314-2848