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 .
Examiner Notes
Claims 16-18 and 20-33 are currently pending of which claims 24-29 are withdrawn. Claims 16 and 17 have been amended, claim 19 has been cancelled and claims 30-33 are newly added.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16 and 17 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Ottinger et al. (US 2008/0149322).
Regarding claim 16, Ottinger discloses a graphite sheet impregnated with resin and comprising a metal coating (0013 and 0014).
Ottinger does not teach that the metal-coated graphite sheet is a seal for flange connections however, this is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ottinger discloses an impregnated and coated graphite sheet as presently claimed, it is clear that the impregnated and coated graphite sheet of Ottinger would be capable of performing the intended use, i.e. as a seal for flange connections, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 17, Ottinger teaches expanded graphite (0003).
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.
Claims 16-18, 20-23, and 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al. (US 5,992,857) and further in view of Tabata et al. (US 2010/0295254) and Leinfelder et al. (US 2009/0302552).
Regarding claims 16-17 and 30-32, Ueda discloses a gasket comprising a pair of expanded graphite sheets (1a and 1b) and a reinforcement (2) between (Fig. 1, column 2, lines 10-15 and 15-20) the outer surfaces having an impregnation and a coating of sealing material (16, 17a,b) (Fig. 5-6, column 6, lines 40-45).
Ueda does not teach the sealing material comprising a fatty soap, or that a density of each layer of the graphite foil has a density of substantially 0.7 g/cm3.
Tabata, in the analogous field of seals (0001), teaches an elastic sealing member comprising a rubber composition containing a metal soap (0008). Metal soaps including sodium and potassium salts or magnesium stearate (0031 and 0033).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the seal material of Ueda to include a metal soap as taught by Tabata, providing excellent adhesion and control of the coefficient of friction of the sealing member (0030).
Leinfelder, in the analogous field of seals (0002), teaches a sealing material composed of at least two layers of graphite foil the density of the graphite foil ranging from 0.40 to 1.60 g/cm3 (0024), overlapping the claimed density of substantially 0.7 g/cm3 (MPEP 2144.05).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for each graphite foil of Ueda to of have a density ranging from 0.40 to 1.60 g/cm3 as taught by Leinfelder, providing a seal with improved structure and low leakage rates (0014).
Regarding claim 18, Ueda teaches the seal material including paraffin (column 2, lines 60-63).
Regarding claims 20 and 21, Ueda teaches the reinforcement being a metal insert including sheet metal or expanded metal (column 2, lines 10-15).
Regarding claim 22, Ueda teaches the reinforcement having a thickness of 0.05 mm (50 µm), anticipating the claimed thickness of 50 to 150 µm (MPEP 2131.03).
Regarding claim 23, Ueda teaches the reinforcement including stainless steel, copper, aluminum, titanium, iron (column 2, lines 10-15).
Regarding claim 33, Tabata teaches a fatty soap as discussed above. Ueda teaches the seal may comprise nonadhesive substances including graphite (column 3, lines 3-5).
Response to Arguments
Applicant’s arguments filed 02/12/2026 have been fully considered but they are not persuasive.
With regards to Ottinger, applicant argues that claim 16 has been amended to recite that the graphite foil has a density of substantially 0.7 g/cm3, which is not taught in Ottinger.
The examiner respectfully disagrees because the claim has not been amended as argued by applicant. The claims recite two embodiments of a seal one having “a layer of impregnated and coated graphite foil” and a second embodiment of “a composite of at least two layers of impregnated and coated graphite foil.” As amended, the claims recite “a density of each layer of the graphite foil” suggesting that the density is further limiting the second/composite embodiment. The first embodiment claims a single layer, thus “each layer” does not make any sense in further defining the first embodiment.
Applicant argues that Ottinger discloses an extremely thin metal coating prohibiting its use as a seal for a flange connection.
The claims do not recite a thickness nor is a specific thickness a required structure of a seal. As Ottinger teaches the seal structure as claimed the prior art is capable of preforming the intended use as claimed.
Applicant argues over Ueda that the seal material is a coating or an impregnation but cannot be both. Applicant further argues that the impregnation of Ueda sealing material does not penetrate into the microscopic structure of the underlying substrate.
A coating and an impregnation are not mutually exclusive. Ueda teaches the sealing material coating the surface and impregnating into the slits (see e.g., Fig. 6), thus proving for a composite having both an impregnation and a coating.
Applicant does not define impregnation in the specification. “Impregnate” is defined as “to fill the interstices, opening or cells of” (see dictionary.com). Impregnation does not require microscopic penetration as argued by applicant. Clearly, the sealing material of Ueda is filling the slits and thus impregnates the graphite sheet.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781