Ex Parte Unger et al

Patent Trial and Appeal Board

May 8, 2018

13974815 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/974,815 08/23/2013
27572 7590 05/10/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Hans UNGER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8470G-000101/US 1893
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
05/10/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS UNGER, RALF HELDMANN, INGO STEPHAN,
MARKUS CLEMENS, CARSTEN HARTMANN,
ERNST JAKOB, and STEPHAN REDDIG
Appeal2017-007473
Application 13/974,815
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAY AT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1, 6, 7, 11, and 12. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the invention is directed to a plug-in piece
that is "generally used to connect in a media-impermeable manner two
1 According to Appellants, the real party in interest is the Applicant, Carl
Freudenberg KG. Appeal Br. 2.
Appeal2017-007473
Application 13/974,815
mutually assigned housing parts, such as for example, an engine block with
auxiliaries." Spec. 1. Claim 1 is the sole independent claim on appeal.
Below, we reproduce claim 1 as illustrative of the appealed claims.
1. A plug-in piece ( 1) for the sealing connection of two
mutually aligned cylindrical surfaces, comprising a support
body (2) which is substantially in the shape of a hollow body and
has at least one annularly encircling sealing element which can
be brought into engagement with one of the cylindrical surfaces
to be sealed in order to produce a tight connection, wherein the
sealing element is designed as a first sealing bead (3) which
annularly encircles an outer surface of a first end of the support
body and has a curved sealing surface that has a partially circular
contour in cross-section, wherein the annularly encircling sealing
bead (3, 30) has an encircling wavy fluting including a plurality
of flutes (8.1, 8.2) that are recessed relative to the partially
circular contour of the curved sealing surface and with a raised
region having a surface extending along the partially circular
contour and disposed between the flutes and with the sealing
bead having a top surface following the partially circular contour
of the curved sealing surface that extends to outboard sides of the
flutes relative to the raised region.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 6, 7, 11, and 12 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
The Examiner rejects claims 1, 6, 7, 11, and 12 under 35 U.S.C.
§ 112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter that Appellants regard as the
invention.
The Examiner rejects claims 1, 6, 7, 11, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Nader (US 6,106,030, iss. Aug. 22, 2000).
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Application 13/974,815
The Examiner rejects claims 1, 6, 7, 11, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Kollsman (US 3,385,367, iss. May 28, 1968)
The Examiner rejects claims 1, 6, 7, 11, and 12 under 35 U.S.C. § 103
as unpatentable over Kramer (EP 1 024 322 A2, pub. Dec. 24, 1999) and
Egloff (US 2011/0001295 Al, pub. Jan. 6, 2011).
ANALYSIS
Written Description Rejection
The Examiner rejects claims 1, 6, 7, 11, and 12 as failing to comply
with the written description requirement. Specifically, the Examiner's
rejection is based on a finding that Appellants' "[F]igure IA does not show
the limitation 'a plurality of flutes recessed relative to the partially circular
contour of the curved sealing surface."' Answer 3; see also Final Action 5-
6. Based on our review of the record, however, we agree with Appellants
that their Figure 1 A appears to show that "the sealing bead has a top surface
including portions ... that all follow the circular contour of the curved
sealing surface" (Appeal Br. 6), "flutes 8.1 and 8.2 ... recessed relative to
the partially circular contour" (id. at 5), and "a raised region ... disposed
between ... flutes 8.1 and 8.2[,] and ... on the circular contour" (id. at 6).
Thus, we do not sustain the Examiner's written-description rejection.
Indefiniteness rejection
The Examiner rejects claims 1, 6, 7, 11, and 12 as indefinite.
Specifically, the Examiner's rejection is based on a finding that Appellants'
Figure IA "fails to show a plurality of flutes (8.1, 8.2) recessed relative to
the partially circular contour of the curved sealing surface." Answer 5; see
also Final Action 6-7. Even assuming that the Examiner's finding is a
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Application 13/974,815
proper basis for an indefiniteness rejection, for reasons similar to those set
forth above, we agree with Appellants that the figure illustrates "the sealing
bead has a top surface including portions ... that all follow the partially
circular contour of the curved sealing surface" (Appeal Br. 8), "flutes 8.1
and 8.2 ... recessed relative to the partially circular contour" (id. at 5), and
"a raised region ... disposed between ... flutes 8.1 and 8.2[,] and ... on the
circular contour" (id. at 6).
Anticipation rejection based on Nader
As set forth above, independent claim 1 recites, in relevant part
wherein the annularly encircling sealing bead (3, 30) has
an encircling wavy fluting including
a plurality of flutes (8.1, 8.2) that are recessed
relative to the partially circular contour of the curved
sealing surface and ...
a raised region having a surface extending along the
partially circular contour and disposed between the flutes
and ...
the sealing bead having a top surface following the
partially circular contour of the curved sealing surface that
extends to outboard sides of the flutes relative to the raised
reg10n.
Appeal Br., Claims App. (formatting added). Appellants argue that the
rejection is in error because Nader does not disclose flutes that are recessed
relative to a partially circular contour of a curved sealing surface, and a
raised region having a surface extending along the partially circular contour
and disposed between the flutes. Id. at 10-13. Based on our review, the
Examiner does not support adequately a finding that Nader discloses the
claimed flutes and raised regions. Thus, we do not sustain the anticipation
rejection.
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Application 13/974,815
The Examiner finds that Nader's Figure 5 illustrates "recess[ es]"
within raised projections 52, thereby disclosing the claimed flutes recessed
relative to a curved sealing surface. Answer 7-8. It is not clear to us,
however, that any such "recesses" in Nader are recessed relative to the
curved surface. See Appeal Br. 11-12. Instead, it appears that in Nader the
"recess[ es]" are formed next to, rather than recessed relative to, raised
projections 52.
Anticipation rejection base on Kollsman
Appellants argue that the rejection is in error because Kollsman does
not disclose flutes that are recessed relative to a partially circular contour of
a curved sealing surface and a raised region having a surface extending
along the partially circular contour and disposed between the flutes. Id.
at 13-14. Based on our review, the Examiner does not support adequately a
finding that Kollsman discloses the claimed flutes and raised regions. Thus,
we do not sustain the anticipation rejection.
The Examiner finds that Kollsman's Figure 4 illustrates "recess[ es]"
within "circular contours," which disclose the claimed flutes recessed
relative to a curved sealing surface. Answer 7-8. It is not clear to us,
however, that Kollsman discloses any such "recesses" that are recessed
relative to the curved surface. See Appeal Br. 11-12. Instead, it appears
that in Kollsman the "recess[ es]" are formed next to, rather than recessed
relative to, Kollsman's "circular contours."
Obviousness rejection based on Kramer and Egloff
The Examiner's obviousness rejection of claims 1, 2, 6, 7, 11, and 12
is based on Kramer and Egloff. Appellants' only argument is that
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Application 13/974,815
[ t ]here is no suggestion in Egloff for applying the wavy fluted
seal bead from a flat gasket [as disclosed in Egloff] to a tubular
plug-in-piece [as disclosed by Kramer]. [Appellants] submit that
there is no rational basis to apply the sealing contour of a sealing
bead of a flat metallic engine gasket . . . to an annular sealing
bead of a tubular plug-in-piece as suggested by the [E]xaminer.
Appeal Br. 16. In response to Appellants' argument, the Examiner
references Egloff s paragraph 18, and determines that it would have been
obvious to modify Kramer based on Egloffs because the combination would
be expected to provide "an outstanding sealing effect" and "resilience [that]
is considerably increased" as described in the cited portion of Egloff.
Answer 11-12, quoting Egloffi-f 18. Although Appellants filed a Reply
Brief, the Reply Brief does not address the Examiner's specific reasons for
combining Kramer and Egloff-rather, the Reply Brief argues that
[ t ]here is no suggestion in Egloff for applying the wavy fluted
seal bead from a flat gasket to a tubular plug-in-piece as
disclosed in Kramer. [Appellants] submit that there is no rational
basis to apply the sealing contour of a sealing bead of a flat
metallic engine gasket and apply it to an annular sealing bead of
a tubular plug-in piece as suggested by the Examiner. It is only
through impermissible hindsight that the Examiner's Answer has
applied the cross section from a flat metal gasket to an annular
seal to arrive at [Appellants'] claimed invention.
Reply Br. 15. Thus, Appellants do not establish that the Examiner's reasons
for combining the references, as the Examiner proposes, is erroneous.
Therefore, we sustain the obviousness rejection of claims 1, 2, 6, 7, 11,
and 12.
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DECISION
We REVERSE the Examiner's written description, indefiniteness, and
anticipation rejections of claims 1, 6, 7, 11, and 12.
We AFFIRM the Examiner's obviousness rejection of claims 1, 6, 7,
11, and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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