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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/30/2026 has been entered.
Status
This Office Action is in response to the remarks and amendments filed on 03/30/2026. The previous objections to the claims have been withdrawn. Furthermore, the previous 35 USC 112 rejections have also been withdrawn. Claims 1-7 remain pending for consideration.
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 1-5 and 7 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.
In claim 1, Applicant has added the limitation “the catches are configured to positively engage by catching onto corresponding edge portions of the heating plate”. However, on paragraph [0006] of the originally filed specification, Applicant discloses “each catch catches on the corresponding fragment of the profiled edge of the heating plate”. There is nothing in the originally filed claims, specification or drawings to support this newly added limitation. Thus, the newly added limitation is deemed to be NEW MATTER.
In claim 7, Applicant has added the limitation “the catches elastically engage the corresponding edge portions”. However, on paragraph [0006] of the originally filed specification, Applicant discloses “each catch catches on the corresponding fragment of the profiled edge of the heating plate”. There is nothing in the originally filed claims, specification or drawings to support this newly added limitation. Thus, the newly added limitation is deemed to be NEW MATTER.
In claim 7, Applicant has added the limitation “wherein the protrusions and the catches are distributed along opposite side regions and/or around port openings of the gasket body and are spaced apart from one another to provide multi-point stabilization of the gasket relative to the heating plate”. However, on paragraph [0015] of the originally filed specification, Applicant discloses “The protrusions (1A) and the catches (1B) are located longitudinally the sides of the heating plate (2) of the gasketed heat exchanger and/or along port holes (6) in the heating plate (2) of the gasketed plate heat exchanger at a distance of not less than 15 mm from each other”. There is nothing in the originally filed claims, specification or drawings to support this newly added limitation. Thus, the newly added limitation is deemed to be NEW MATTER.
Claims 2-5 are also rejected due to dependency.
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 1-5 are 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.
Claim 1 recites the limitation “the corresponding openings” in line 14. There is insufficient antecedent basis for this limitation in the claim.
For examination purposes, the phrase “the protrusions are press-fit into the corresponding openings” will be interpreted as -- the protrusions are press-fit into corresponding openings --
Claim 1 recites the limitation “assembly/disassembly” in line 22. There is insufficient antecedent basis for this limitation in the claim.
For examination purposes, the phrase “at the same time improving stability of the gasket position in the heating plate during assembly/disassembly” will be interpreted as -- at the same time improving stability of the gasket position in the heating plate during the assembly/disassembly --
Claims 2-5 are also rejected due to dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hyuk (KR200344180Y1).
Regarding claim 7, Hyuk teaches a gasket (gasket 200 Fig. 4) for a plate-type gasketed heat exchanger (paragraph [0020]), comprising: a gasket body (body of gasket 200 Fig. 4) configured to be seated in a channel (coupling groove 130 Fig. 5 and paragraph [0038]) of a heating plate (heat transfer plate 100 Fig. 5); a plurality of protrusions (protruding pieces 213 Figs. 4-5) extending from a surface of the gasket body (bottom surface of gasket 200 Fig. 6), each protrusion configured for press-fit insertion (paragraph [0043]) into a corresponding opening (fitting holes 140 Fig. 5) in the heating plate (Fig. 6); and a plurality of catches (holding pieces 214 Figs. 4-5) extending from the gasket body (Fig. 6) and configured to positively engage corresponding edge portions of the heating plate (protruding portion 125 Fig. 6 and paragraphs [0042] to [0044] where it is disclosed that holding pieces 214 are inserted into protruding portions 125 to prevent lateral separation between the heat transfer plate and the gasket), wherein the protrusions and the catches are positioned relative to one another such that, during installation of the gasket onto the heating plate (corresponds to the installation process described in paragraphs [0039] to [0044]), the protrusions are press-fit into the corresponding openings (paragraph [0043]) while the catches elastically engage the corresponding edge portions (paragraph [0042]), thereby cooperatively securing the gasket to the heating plate (paragraph [0044]), and wherein the protrusions and the catches are distributed along opposite side regions (Fig. 4) or around port openings of the gasket body (open passages 260 Fig. 4) and are spaced apart from one another (Figs. 4-6) to provide multi-point stabilization of the gasket relative to the heating plate (Figs. 5-6).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hyuk.
Regarding claim 1, Hyuk teaches a gasket (gasket 200 Fig. 4) for a plate-type gasketed heat exchanger (paragraph [0020]), the gasket comprises: a gasket body (body of gasket 200 Fig. 4) configured to be seated in a channel (coupling groove 130 Fig. 5 and paragraph [0038]) of a heating plate (heat transfer plate 100 Fig. 5); at least two protrusions (protruding pieces 213 Figs. 4-5) in a fixed position (Figs. 4-5) extending perpendicular from a surface of the gasket body (bottom surface of gasket 200 Fig. 6); and at least two catches (holding pieces 214 Figs. 4-5) configured on the gasket body to extend beyond a plane of the heating plate (Fig. 6) and the catches are configured to positively engage by catching onto corresponding edge portions of the heating plate (protruding portion 125 Fig. 6 and paragraphs [0042] to [0044] where it is disclosed that holding pieces 214 are inserted into protruding portions 125 to prevent lateral separation between the heat transfer plate and the gasket), wherein the at least two protrusions and the at least two catches are each independent from each other (paragraph [0044] where it is understood that projecting pieces 213 and holding pieces 214 are functionally independent since the former prevent vertical separation and the later prevent lateral separation), spaced apart from each other (Fig. 6), and are located longitudinally along sides of the gasket body (Fig. 4) or along port holes (open passages 260 Fig. 4) arranged corresponding to port holes (the port holes of heat transfer plate 40 Fig. 4) in the heating plate of the gasketed plate heat exchanger (Fig. 4), and positioned relative to one another such that, during installation of the gasket onto the heating plate (corresponds to the installation process described in paragraphs [0039] to [0044]), the protrusions are press-fit into corresponding openings (fitting holes 140 Fig. 5 and paragraph [0043]) while the catches engage the corresponding edge portions (paragraph [0042]), thereby cooperatively securing the gasket to the heating plate (paragraph [0044]), and wherein the at least two protrusions and the at least two catches are each fully functional apart from each other to keep the gasket securely in place (paragraph [0044] where it is understood that projecting pieces 213 and holding pieces 214 are fully functional apart since the former prevent vertical separation and the later prevent lateral separation) thereby enabling an assembly/disassembly of the gasket to the heating plate (paragraphs [0039] to [0044] and Figs. 5-6) with a press-in (paragraphs [0043] and [0044]) and a catch on method (paragraphs [0042] and [0044]) at the same time.
Hyuk teaches the invention as described above but fails to explicitly teach “said press-in and catch on method improving stability of the gasket position in the heating plate during the assembly/disassembly as well as during operation of the plate-type gasketed heat exchanger and reduces a risk of internal and/or external leakage”.
However, Hyuk teaches a gasket (gasket 200 Fig. 4) for a plate-type gasketed heat exchanger (paragraph [0020]) that comprises: at least two protrusions (protruding pieces 213 Figs. 4-5) and at least two catches (holding pieces 214 Figs. 4-5) configured to enable an assembly of the gasket to the heating plate (Fig. 6) with a press-in (paragraphs [0043] and [0044]) and a catch on method (paragraphs [0042] and [0044]) at the same time. Therefore, given that Hyuk is teaching a gasket with a structure that is similar to the one disclosed in the specification, it is the Examiner's position that the gasket taught by Hyuk would inherently have the instantly claimed function of “said press-in and catch on method improving stability of the gasket position in the heating plate during the assembly/disassembly as well as during operation of the plate-type gasketed heat exchanger and reduces a risk of internal and/or external leakage”. Since PTO cannot conduct experiments the proof of burden is shifted to the Applicants to establish a nonobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 5, Hyuk teaches wherein the gasket comprises on the surface of the gasket body: at least 4 protrusions (Figs. 4-5) and at least 3 catches (Figs. 4-5) that allow hybrid installation of the gasket in the heating plate of the plate-type gasketed heat exchanger (Fig. 6 and paragraph [0044]), wherein the at least 3 catches extend beyond the plane of the heating plate (Fig. 6), wherein the heating plate has at least 4 cutouts (fitting holes 140 Figs. 5-6) for the at least 4 protrusions (Figs. 5-6) and at least 3 fragments of a profiled edge (protrusions 125 Figs. 5-6) for the at least 3 catches (Figs. 5-6), and wherein the at least 4 protrusions and the at least 3 catches are located longitudinally to sides of the heating plate of the plate-type gasketed heat exchanger (Figs. 5-6) or along the port holes in the heating plate of the plate-type gasketed heat exchanger and are spaced apart from each other (Figs. 5-6).
Regarding claim 6, Hyuk teaches a method of hybrid installation (the method described in paragraph [0044]) of a gasket (gasket 200 Fig. 4) in a heating plate (heat transfer plate 100 Figs. 5-6) of a plate-type gasketed heat exchanger (paragraph [0020]) comprising: catching on by catches of the gasket (holding pieces 214 Figs. 4-6 and paragraph [0042]) of a corresponding fragment of a profiled edge of the heating plate (protrusions 125 Figs. 5-6) perpendicular to an axis of the heating plate (Figs. 5-6 where the axis of the heating plate is a line parallel to groove 130), the catches configured to extend beyond a plane of the heating plate (Fig. 6), and pressing in protrusions of the gasket (protruding pieces 213 Figs. 4-5 and paragraph [0043]) into a corresponding cutout (fitting holes 140 Figs. 5-6) in the heating plate, the protrusions extending perpendicular from a surface of the gasket (bottom surface of gasket 200 Fig. 6) in a fixed position (Figs. 5-6), wherein the protrusions and the catches are each spaced apart from each other (Figs. 4-5), are independent from each other (paragraph [0044] where it is understood that projecting pieces 213 and holding pieces 214 are functionally independent since the former prevent vertical separation and the later prevent lateral separation), are located longitudinally along sides of the heating plate of the gasketed heat exchanger (Figs. 4-5) or along port holes (open passages 260 Fig. 4) arranged in the heating plate of the gasketed plate heat exchanger (Fig. 4).
Hyuk teaches the invention as described above but fails to explicitly teach “wherein said method improves a stability of the gasket position in the heating plate during an assembly/disassembly as well as during work of the plate type gasketed heat exchanger reducing a risk of internal and/or external leakage, wherein the stability of the gasket position facilitates a discharge of dirtiness during the disassembly of the heating plate”.
However, Hyuk teaches a gasket (gasket 200 Fig. 4) for a plate-type gasketed heat exchanger (paragraph [0020]) that comprises: at least two protrusions (protruding pieces 213 Figs. 4-5) and at least two catches (holding pieces 214 Figs. 4-5) configured to enable an assembly of the gasket to the heating plate (Fig. 6) with a press-in (paragraphs [0043] and [0044]) and a catch on method (paragraphs [0042] and [0044]) at the same time. Therefore, given that Hyuk is teaching a gasket with a structure that is similar to the one disclosed in the specification, it is the Examiner's position that the gasket taught by Hyuk would inherently have the instantly claimed function of “wherein said method improves a stability of the gasket position in the heating plate during an assembly/disassembly as well as during work of the plate type gasketed heat exchanger reducing a risk of internal and/or external leakage, wherein the stability of the gasket position facilitates a discharge of dirtiness during the disassembly of the heating plate”. Since PTO cannot conduct experiments the proof of burden is shifted to the Applicants to establish a nonobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hyuk as applied to claim 1 above, and further in view of Luca (WO2010092556A1), and Xu et al. (CN2112699U, herein after referred to as Xu).
Regarding claim 2, Hyuk teaches the invention as described above but fails to explicitly teach “wherein the protrusions and the catches are spaced apart from each other by at least 15 mm”.
However, Hyuk does disclose a distance separating the protrusions from the catches (Figs. 4-6).
Thus, a distance between the protrusions and the catches is recognized as a result-effective variable, i.e., a variable which achieves a recognized result. In this case, the recognized result is “wherein the protrusions and the catches are spaced apart from each other by at least 15 mm”.
Therefore, since the general conditions of the claim, i.e., protrusions and catches separated by a distance, was disclosed in the prior art by Hyuk, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to provide “wherein the protrusions and the catches are spaced apart from each other by at least 15 mm”.
Hyuk teaches the invention as described above but fails to explicitly teach “wherein the stability of the gasket position facilitates a discharge of dirtiness during the disassembly of the heating plate”.
However, as already established in the above rejection of claim 1, Hyuk teaches a gasket (gasket 200 Fig. 4) for a plate-type gasketed heat exchanger (paragraph [0020]) that comprises: at least two protrusions (protruding pieces 213 Figs. 4-5) and at least two catches (holding pieces 214 Figs. 4-5) configured to enable an assembly of the gasket to the heating plate (Fig. 6) with a press-in (paragraphs [0043] and [0044]) and a catch on method (paragraphs [0042] and [0044]) at the same time. Therefore, given that Hyuk is teaching a gasket with a structure that is similar to the one disclosed in the specification, it is the Examiner's position that the gasket taught by Hyuk would inherently have the instantly claimed functions of “improving stability of the gasket position in the heating plate during the assembly/disassembly” as disclosed in claim 1 but also “wherein the stability of the gasket position facilitates a discharge of dirtiness during the disassembly of the heating plate” as disclosed in claim 2. Since PTO cannot conduct experiments the proof of burden is shifted to the Applicants to establish a nonobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Hyuk teaches the invention as described above but fails to explicitly teach “wherein the gasket is made of a NBR material, with a maximum operating temperature of 110°C”.
However, Luca teaches wherein the gasket (the disclosed “gaskets” in line 9 of page 2 correspond to the gasket of Hyuk) is made of a NBR material (page 2 lines 7-13), with a maximum operating temperature of 110°C (page 2 lines 7-13 where the temperature range is disclosed as
-
25
o
C
t
o
180
o
C
) to ensure a useful lifetime of the gasket in the range of two to five years (page 2 lines 7-13).
Therefore, it would have been obvious to a person skilled in the art before the effectively filed date to modify the apparatus of Hyuk to include “wherein the gasket is made of a NBR material, with a maximum operating temperature of 110°C” in view of the teachings of Luca to ensure a useful lifetime of the gasket in the range of two to five years.
The combined teachings teach the invention as described above but fail to explicitly teach “the gasket has an overall width of 155 mm, and an overall length of 350 mm”.
However, Xu teaches the gasket (gasket 6 Fig. 1 corresponds to the gasket of Hyuk) has an overall width of 155 mm (page 6 paragraph [5]), and an overall length of 350 mm (page 6 paragraph [5]).
Therefore, it would have been obvious to a person skilled in the art before the effectively filed date to modify the apparatus of the combined teachings to include “the gasket has an overall width of 155 mm, and an overall length of 350 mm” in view of the teachings of Xu to provide a gasket long and wide enough to seal the plates of the heat exchanger.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hyuk as applied to claim 1 above, and further in view of Luca.
Regarding claim 3, Hyuk teaches the invention as described above but fails to explicitly teach “wherein the gasket is made of varieties of NBR material or types of EPDM, FKM, or various plastics, or composite materials”.
However, Luca teaches wherein the gasket (the disclosed “gaskets” in line 9 of page 2 correspond to the gasket of Hyuk) is made of varieties of NBR material (disclosed “mixtures of NBR” page 2 lines 7-13) or types of EPDM (disclosed “mixtures of EPDM” page 2 lines 7-13) to ensure a useful lifetime of the gasket in the range of two to five years (page 2 lines 7-13).
Therefore, it would have been obvious to a person skilled in the art before the effectively filed date to modify the apparatus of Hyuk to include “wherein the gasket is made of varieties of NBR material or types of EPDM” in view of the teachings of Luca to ensure a useful lifetime of the gasket in the range of two to five years.
Regarding claim 4, Hyuk teaches the invention as described above but fails to explicitly teach “wherein the plate-type gasketed heat exchanger has heating plates with port holes and gaskets forming a heating plate package which is mounted on a leading beam of a plate-type gasketed heat exchanger frame and screwed with screws and cover plates, wherein components of the heating plates are made of stainless steel, titanium, titanium alloys or various metals or alloys of metals or non- metals or plastics or composite materials”.
However, Luca teaches wherein the plate-type gasketed heat exchanger (PHE Fig. 11 of Luca corresponds to the plate-type gasketed heat exchanger of Hyuk) has heating plates (plates 1 Fig. 11 and page 13 lines 3-8) with port holes (through holes 2 Fig. 11) and gaskets (annular sealing gaskets 8 Fig. 11 and page 13 lines 3-8) forming a heating plate package (Fig. 11) which is mounted on a leading beam (upper plate-guide beam 20 Fig. 11 of Luc) of a plate-type heat exchanger frame (listel 20 Fig. 11) and screwed with screws (tie rods 12 and tightening nuts 13 Fig. 11) and cover plates (lateral plates 10 and 11 Fig. 11), wherein components of the heating plates (understood to be the components of plates 1 Fig. 11) are made of stainless steel (page 8 lines 5-10) or titanium (page 8 lines 5-10).
Therefore, it would have been obvious to a person skilled in the art before the effectively filed date to modify the apparatus of Hyuk to include “wherein the plate-type gasketed heat exchanger has heating plates with port holes and gaskets forming a heating plate package which is mounted on a leading beam of a plate-type gasketed heat exchanger frame and screwed with screws and cover plates, wherein components of the heating plates are made of stainless steel, titanium, titanium alloys or various metals or alloys of metals or non- metals or plastics or composite materials” in view of the teachings of Luca to provide a fully assembled plate type heat exchanger.
Response to Arguments
Applicant's arguments filed on 03/30/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument 1 on pages 6-7 that Hyuk does not teach “at least two catches configured on the gasket body to extend beyond a plane of the heating plate and the catches are configured to positively engage by catching onto corresponding edge portions of the heating plate” as recited by amended claim 1, Examiner disagrees.
For clarity purposes, the rejection of claim 1 is repeated down below:
Regarding claim 1, Hyuk (KR200344180Y1) teaches at least two catches (holding pieces 214 Figs. 4-5) configured on a gasket body (body of gasket 200 Fig. 4) to extend beyond a plane of a heating plate (heat transfer plate 100 Figs. 5-6) and the catches are configured to positively engage by catching onto corresponding edge portions of the heating plate (protruding portion 125 Fig. 6 and paragraphs [0042] to [0044] where it is disclosed that holding pieces 214 are inserted into protruding portions 125 to prevent lateral separation between the heat transfer plate and the gasket).
Although not mentioned in the provided disclosure, Applicant is defining the term “Positive Engagement” as “a design where components are secured in a way that they will not disengage under normal operational forces or vibrations”. Based on that definition, Hyuk is teaching a positive engagement between holding pieces 214 and protruding portions 125 since their coupling prevent lateral separation between the heat transfer plate and the gasket (paragraph [0044]).
Therefore, Applicant’s arguments are not persuasive and the rejections are maintained.
Regarding Applicant’s argument 2 on pages 6-8 that Hyuk does not teach “wherein the at least two protrusions and the at least two catches are each independent from each other, … the at least two protrusions and the at least two catches are each fully functional apart from each other to keep the gasket securely in place thereby enabling an assembly/disassembly of the gasket to the heating plate with a press-in and a catch on method at the same time” as disclosed in amended claim 1, Examiner disagrees.
For clarity purposes, the rejection of claim 1 is repeated down below:
Regarding claim 1, Hyuk teaches wherein at least two protrusions (protruding pieces 213 Figs. 4-5) and at least two catches (holding pieces 214 Figs. 4-5) are each independent from each other (paragraph [0044] where it is understood that projecting pieces 213 and holding pieces 214 are functionally independent since the former prevent vertical separation and the later prevent lateral separation), … the at least two protrusions and the at least two catches are each fully functional apart from each other to keep the gasket securely in place (paragraph [0044] where it is understood that projecting pieces 213 and holding pieces 214 are fully functional apart since the former prevent vertical separation and the later prevent lateral separation) thereby enabling an assembly/disassembly of a gasket (gasket 200 Fig. 4) to a heating plate (paragraphs [0039] to [0044] and Figs. 5-6 where heat transfer plate 100 corresponds to the heating plate) with a press-in (paragraphs [0043] and [0044]) and a catch on method (paragraphs [0042] and [0044]) at the same time.
Additionally, Applicant is also reminded that it has been held that making separable what was made integral has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04 V. C. In the case at hand the expected result is to provide a gasket employing both a pressing and catching methods to engage a heating plate. Both methods are taught by Hyuk as shown above.
Therefore, Applicant’s arguments are not persuasive and the rejections are maintained.
Regarding Applicant’s argument 3 on pages 8-9 that Hyuk’s holding pieces “are not presented as an independent fastening system, but rather as part of a single fastening configuration that supplements the press-fit engagement” as disclosed in amended claim 1, Applicant is reminded that making separable what was made integral has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04 V. C. In the case at hand the expected result is to provide a gasket employing both a pressing and catching methods to engage a heating plate. Both methods are taught by Hyuk as shown above.
Therefore, Applicant’s arguments are not persuasive and the rejections are maintained.
Regarding Applicant’s argument 4 on pages 9-10 that Hyuk’s structure “cannot be as stable as the claimed invention” as disclosed in amended claim 1, Examiner disagrees.
Applicant is reminded that a recitation with respect to the manner in which a claimed apparatus is intended to be does not differentiate the claimed apparatus from a prior art apparatus satisfying the structural limitations of the claims, as is the case here. While features of an apparatus may be recited either structurally or functionally, the claims are directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
Furthermore, Examiner disagrees with Applicant’s assertion that “One of ordinary skill in the art would recognize that the holding piece 214 may only possibly keep the gasket from sliding horizontally”. Referring to paragraph [0044], Hyuk discloses that holding pieces 214 prevent “lateral separation” between the heating plate and the gasket. Hyuk is in essence teaching that the gasket is affixed in the lateral direction to the heating plate by holding pieces 214.
Therefore, Applicant’s arguments are not persuasive and the rejections are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMBA NMN GAYE whose telephone number is (571)272-8809. The examiner can normally be reached Monday-Thursday 4:30AM to 2:30PM.
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/SAMBA NMN GAYE/Examiner, Art Unit 3763
/JERRY-DARYL FLETCHER/Supervisory Patent Examiner, Art Unit 3763
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