DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/9/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claims 1 and 12 recite “substantially rigid”, the originally filed disclosure does not have support for “substantially rigid”.
Claims 2-11 are rejected for depending on a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claims 1 and 12 recite “substantially rigid”. It is unclear as to what is being claimed. Substantially rigid is a relative term and the claims do not define the rigidity by material or measurement. For the purposes of this examination, the examiner is interpreting the claims to be claiming that the gasket core can flex and also compress to allow for a seal to be made.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malus (US Pub. No. 2015/0330509) in view of Bander et al. (US Pub. No. 2015/0276105).
Regarding claim 1, the Malus reference discloses a gasket (10) for joining flanged connections (Fig. 2) comprising:
a gasket core (core of 10) of a substantially rigid material, said gasket core comprising:
a first gasket portion (14) having a top face with a top primary sealing area (top surface/area of 14) and a bottom face with a bottom primary sealing area (bottom surface/area of 14), wherein said top primary sealing area is configured with a sealing geometry pattern (20) and said bottom primary sealing area is configured with said sealing geometry pattern (Figs. 3-6)
a substantially central opening (opening at 16) having an exposed edge (e.g. inner edge of 10), wherein said gasket core at least partially defines said exposed edge (Figs. 3-6); and
a sealing material (22), wherein a first layer of said sealing material is disposed on said top primary sealing area (Figs. 3-6).
However, the Malus reference fails to explicitly disclose the gasket core composed of a non-metallic material.
The Bander et al. (hereafter Bander) reference discloses making a gasket core of metal or non-metallic material (Paras. [0028] and [0031]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the Malus reference to have a non-metallic core and provide geometry patterns in view of the Bander reference since Bander teaches that the materials are well known equivalents (Para. [0031]) that would provide optimal sealing pressure.
Regarding claim 2, the Malus reference, as modified in claim 1, discloses said non-metallic material is glass reinforced epoxy (Bander, Para. [0031]).
Regarding claim 3, the Malus reference, as modified in claim 2, discloses a second layer of said sealing material (Malus, 22) is disposed on said bottom primary sealing area (Malus, Figs. 3-6).
Regarding claim 4, the Malus reference, as modified in claim 3, discloses said sealing geometry pattern is serrations (Malus, Figs. 3-6).
Regarding claim 5, the Malus reference, as modified in claim 4, discloses said gasket core is substantially annular in shape (Malus, Fig. 1).
Regarding claim 6, the Malus reference, as modified in claim 5, discloses said sealing material is deformable (Bander, Para. [0028]).
Regarding claim 7, the Malus reference, as modified in claim 1, discloses said gasket core further comprises an outer guide portion (Malus, 12) positioned exterior relative to said first gasket portion (Malus, Figs. 3-6).
Regarding claim 8, the Malus reference, as modified in claim 7, discloses said non-metallic material is glass reinforced epoxy (Bander, Para. [0031]).
Regarding claim 9, the Malus reference, as modified in claim 8, discloses said sealing geometry pattern is serrations (Malus, Figs. 3-6).
Regarding claim 10, the Malus reference, as modified in claim 9, discloses a second layer of said sealing material (22) is disposed on said bottom primary sealing area (Malus, Figs. 3-6).
Regarding claim 11, the Malus reference, as modified in claim 10, discloses said sealing material is deformable (Bander, Para. [0028]).
Regarding claim 12, the Malus reference discloses a gasket (10) for joining flanged connections (Fig. 2) comprising:
a gasket core (core of 10) of a substantially rigid material, said gasket core comprising:
a first gasket portion (14) comprising:
a top face (top face of 10) with a top primary sealing area (area at 14) and a top outer area (area at 12);
a bottom face (bottom face of 10) with a bottom primary sealing area (area at 14) and a bottom outer area (area at 12), wherein said top primary sealing area is configured with a sealing geometry pattern (20) machined into said top primary sealing area and said bottom primary sealing area is configured with said sealing geometry pattern (20) machined into said bottom primary sealing area (Figs. 3-6), wherein said top outer area has a top surface geometry different from said sealing geometry pattern and said bottom outer area has a bottom surface geometry different from said sealing geometry pattern (Figs. 3-6);
a substantially central opening (opening at 16) having an exposed edged (Figs. 4-6), wherein said non-metallic material at least partially defines said exposed edge (Figs. 4-6); and
a sealing material (22), wherein a first layer of said sealing material is disposed on said top primary sealing area (Figs. 3-6).
However, the Malus reference fails to explicitly disclose the gasket core composed of a non-metallic material.
The Bander reference discloses making a gasket core of metal or non-metallic material (Paras. [0028] and [0031]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the Malus reference to have a non-metallic core and provide geometry patterns in view of the Bander reference since Bander teaches that the materials are well known equivalents (Para. [0031]) that would provide optimal sealing pressure.
Response to Arguments
Applicant's arguments filed 9/9/26 have been fully considered but they are not persuasive.
With regards to the applicant’s argument of the material combination, the argument is not persuasive. Both the Bander reference and the Malus reference are gaskets for pipe ends. The Malus reference teaches a metal core that is sandwiched by sealing material for use between pipe ends. The Bander reference is also a gasket that has a solid core that is sandwiched by sealing material. The Malus reference does teach a camber to aid in sealing. Although the Bander reference does not disclose the camber, it does disclose that different materials, especially non-metallic materials, can be used for the core. The cores in both references are for providing rigidity for the seal. Para. [0011] of the Malus reference clearly states that “the gasket may comprise a solid metal core.” Malus hints that other materials could be used other than solid metal. Clearly, even a “rigid” material such as a solid metal core will be capable of deforming even if the camber exists. Since the specific materials are not listed in the Malus reference, one of ordinary skill in the art, would look to the Bander reference, a gasket with a core, for known materials. Bander clearly recites that polyimide, glass reinforced epoxy, carbon steel, stainless steel, or a “sandwich” of steel with laminate material bonded on either side as being equivalents for the gasket core. It is unclear as to how the applicant has concluded that the materials of the Malus reference is too rigid for the Bander reference when the Bander reference clearly teaches that the core can be solid metal and materials listed in Bander would all have similar characteristics to each other.
In response to Applicant’s argument that there is no suggestion to combine the references, the Examiner recognizes that references cannot be arbitrarily combined and that there must be some reason why one skilled in the art would be motivated to make the proposed combination of primary and secondary references. In re Nomiya, 184 USPQ 607 (CCPA 1975). However, there is no requirement that a motivation to make the modification be expressly articulated. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILBERT Y LEE whose telephone number is (571)272-5894. The examiner can normally be reached Monday-Friday 8am-430pm.
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/GILBERT Y LEE/Primary Examiner, Art Unit 3675
