Ex Parte Yasuda

Board of Patent Appeals and Interferences

Apr 22, 2011

11524306 (B.P.A.I. Apr. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KISHO YASUDA
____________

Appeal 2009-011452
Application 11/524,306
Technology Center 3600
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kisho Yasuda (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 7, 9, and 101 under 35 U.S.C. § 103(a)

1 We have removed claim 8 from the Examiner’s listing of claims rejected
under 35 U.S.C. § 103(a) over Miyaoh and Udagawa on the top of page 3 of
the Answer because claim 8 was cancelled by Appellant.
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Application 11/524,306

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as unpatentable over Miyaoh (U.S. Patent Application Publication No.
2003/0085530 A1, published May 8, 2003) and Udagawa (U.S. Patent No.
4,861,046, issued Aug. 29, 1989). Appellant cancelled claims 1-6 and 8.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to the combination of an engine and a
metal laminate gasket installed in the engine.
Claim 7, reproduced below, with emphasis added, is representative of
the subject matter on appeal.
7. A combination comprising:
an engine having a head block, a cylinder
liner and a cylinder block, and
a metal laminate gasket installed in the
engine, said metal laminate gasket comprising:
a first metal plate including a base portion, a
curved portion extending from the base portion to
define a combustion chamber, a flange extending
from the curved portion in a direction away from
the combustion chamber, and a damper bead
formed in the base portion and located entirely
outside the flange,
a second metal plate laminated with the base
portion outside the flange so that the damper bead
is located between the second metal plate and the
flange, and
an annular shim formed independently from
the first and second metal plates and clamped only
between the flange and the base portion without
extending outside the flange,
wherein a part of the base portion outside
the damper bead and the second metal plate form a
first laminate portion clamped between the
cylinder block and the head block,
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the flange, a part of the base portion above
the flange and the shim form a second laminate
portion clamped between the cylinder liner and the
head block, and
the damper bead forms a connecting portion
between the first and second laminate portions for
allowing the second laminate portion to follow
movements of the cylinder liner.

OPINION
Issues
The determinative issue in this appeal is:
Whether the combination of Miyaoh and Udagawa discloses a damper
bead capable of allowing the second laminate portion to follow the
movements of the cylinder liner.
Analysis
Appellant contends that claim 7 is patentable over the combination of
Miyaoh and Udagawa for failure to disclose, teach, or suggest all of the
recited claim features. App. Br. 6. Appellant asserts that the claimed
damper bead 5 is distinguished from Udagawa’s bead G31a because the
location of the claimed damper bead 5 between the outside edge of the
flange 11a and the inside edge of the second metal plate 12 allows the
second laminated portion 3 to follow movements of the cylinder liner 21,
whereas Udagawa’s bead G31a cannot follow movements of the cylinder
liner Z because plate G30 covers bead G31a. App. Br. 7 and Reply Br. 3. In
response to the Examiner’s statement that “Udagawa teaches to configure
Miyaoh[‘s] flange 13 to be shorter and not to cover the damper bead 11,”
(Ans. 5) Appellant contends that the Examiner’s proposed modification
would make Miyaoh’s gasket inoperable for its intended purpose because
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Miyaoh requires that the flange 13 cover the bead 11. Reply Br. 3.
Appellant also contends that since Miyaoh’s gasket includes a second
surface plate 20 parallel to the metal plate 10, the gasket does not have
flexibility between the folded back portion or flange 13 and the portion
outside the folded back portion and thus, is not capable of allowing the
second laminate portion to follow movements of the cylinder liner. Reply
Br. 4.
The Examiner finds that Miyaoh discloses the invention substantially
as claimed, except that Miyaoh “fails to disclose that the damper bead is
located entirely outside the flange and the cylinder block having a liner so
that the second part is clamped between the cylinder block and the liner.”
Ans. 3-4. The Examiner alleges that Udagawa discloses a cylinder liner Z
and a damper bead G31a located entirely outside the flange G31c. Ans. 4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify Miyaoh to have a cylinder liner and to locate the
damper bead entirely outside the flange as taught by Udagawa in order for
the liner to provide protection for the cylinder block and for the bead to
provide reduced surface pressure. Id. In response to Appellant’s arguments
that the plate G30 of Udagawa prevents the bead G31a from following the
movement of the liner, the Examiner alleges that Udagawa is only being
used to teach “the liner and the flange being made shorter so as not to cover
the damper bead of Miyaoh.” Ans. 5. The Examiner also alleges that since
Miyaoh’s paragraph [0057] discloses that the edge 14 of the flange 13 and
the edge 34 of the shim 30 are aligned, a person of ordinary skill in the art
would also shorten Miyaoh’s shim 30 in accordance with the shortening of
the flange 13. Id. In response to Appellant’s argument that the plate 20 of
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Miyaoh would cause the gasket to not have the flexibility of the present
invention, the Examiner alleges that since claim 7 recites “comprising” and
is therefore, open ended, the proposed combination may have additional
structure than is recited in the claim. Ans. 6.
We agree with Appellant that the combination of Miyaoh and
Udagawa does not render claim 7 unpatentable. The Examiner has not
provided sufficient evidence that a person of ordinary skill in the art would
have found it obvious to shorten Miyaoh’s folded back portion or flange 13
and shim 30 by the teachings of Udagawa so as not to cover Miyaoh’s bead
11. Indeed, Miyaoh explains in paragraph [0005] that the purpose of folding
back one of the surface plates is “to protect the first and second beads from a
combustion gas of a high temperature.” Accordingly, in the Figure 1(a)
embodiment of Miyaoh, both beads 11 and 31 must remain covered by the
folded back portion or flange 13 in order to be protected from high
temperature combustion gas in the cylinder bore 50 and a person of ordinary
skill in the art would not consider shortening the folded back portion or
flange 13 of Miyaoh. In Udagawa’s Figure 10 embodiment, the flange G31c
need not cover the bead G31a because plate G30 covers bead G31a to
provide protection from high temperature combustion gases.
Moreover, even assuming arguendo that a person of ordinary skill in
the art would consider shortening the flange and shim of Miyaoh in order to
uncover the bead 11 as suggested by the Examiner, a shortening of Miyaoh’s
flange 13 and shim 30 would still not render the bead 11capable of allowing
the second laminate portion to follow the liner. The presence of the second
surface plate 20 in Miyaoh would prevent the second laminate portion from
being capable of following the cylinder liner.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over
Miyaoh and Udagawa.

CONCLUSIONS
The combination of Miyaoh and Udagawa does not disclose a damper
bead capable of allowing the second laminate portion to follow the
movements of the cylinder liner.

DECISION
We reverse the Examiner’s rejection of claims 7, 9, and 10 under 35
U.S.C. § 103(a) as being unpatentable over Miyaoh and Udagawa.

REVERSED

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