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 .
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.
Claim(s) 1-12 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claus et al. (US 10982769).
Regarding claims 1, 9 and 15, Claus et al. discloses a gasket Fig. 3A for an exhaust system of a vehicle, comprising: a first plate 20; and a second plate 10, wherein the first plate overlaps the second plate, wherein the first plate and the second plate have a central hole 22a, wherein the first plate includes a first bead inclined portion 27’, wherein the first plate includes a first bead flat portion 21 extending parallel to the first plate from the first bead inclined portion to form the central hole, wherein the second plate includes a second bead inclined portion 17, wherein the second plate includes a second bead flat portion 14 extending parallel to the second plate from the second bead inclined portion to form the central hole, wherein the first plate and the second plate have an asymmetric cross-section shape, and wherein the first bead flat portion and the second bead flat portion forming the central hole overlap at least partially. However, Claus et al. fails to explicitly disclose wherein the first plate and the second plate include different materials. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material composition of the layers according to an environment in which the gasket is placed and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended used as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) Regarding claims 2 and 14, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first plate or the second plate includes a first material, and wherein the first material includes 0.1 to 0.15 parts by weight of carbon, 0.30 to 0.75 parts by weight of silicon, 0.50 to 2.0 parts by weight of manganese, 0.01 to 0.045 parts by weight of phosphorus, 0.0001 to 0.03 parts by weight of sulfur, and 16.0 to 18.0 parts by weight of chromium, 6.0 to 8.0 parts by weight of nickel, and a first balance of iron based on a first total 100 parts by weight of the first plate or the second plate. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material composition of the layers according to an environment in which the gasket is placed and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended used as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
Regarding claims 3 and 16-17, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first plate includes the first material and the second plate includes a second material or wherein the second plate includes the first material and the first plate includes the second material, and wherein the second material includes 0.08 to 0.1 parts by weight of carbon, 0.15 to 0.40 parts by weight of silicon, 2.0 to 4.0 parts by weight of manganese, 0 to 0.03 parts by weight of phosphorus, 17.0 to 19.0 parts by weight of chromium, 3.0 to 4.0 parts by weight of nickel, 0.2 to 0.3 parts by weight of nitrogen, and a second balance of iron based on a second total 100 parts by weight of the first plate or the second plate. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material composition of the layers according to an environment in which the gasket is placed and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended used as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
Regarding claims 4, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first bead inclined portion and the second bead inclined portion have different lengths. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Regarding claims 5 and 18, Claus et al. as modified discloses wherein the first bead flat portion 21 and the second bead flat portion 14 have different lengths.
Regarding claim 6, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first bead inclined portion and the second bead inclined portion have different inclination angles. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angles of the inclined portions to any number of ranges disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, Claus et al. as modified discloses wherein the first plate 20 includes a half bead part 27’ or the second plate 10 includes a half bead part 17.
Regarding claim 8, Claus et al. as modified discloses wherein the first plate 20 includes a full bead part 21 or the second plate 10 includes a full bead part 14.
Regarding claim 10, Claus et al. discloses wherein the second first-plate flat portion 21 and the second second-plate flat portion 14 have different lengths.
Regarding claims 11 and 19, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first first-plate inclined portion 27’ and the first second-plate inclined portion 17 have different lengths. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Regarding claims 12 and 20, Claus et al. as modified discloses the invention as claimed above but fails to explicitly disclose wherein the first angle is different than the second angle. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Regarding claim 18, Claus et al. as modified discloses wherein the second first-plate flat portion 29 and the second second-plate flat portion 14 have different lengths.
Regarding claim 19, Claus et al. as modified discloses wherein the first first-plate inclined portion and the first second-plate inclined portion have different lengths.
Response to Arguments
Applicant's arguments filed 10/1/25 have been fully considered but they are not persuasive. Applicant argues that the Claus reference does not disclose or suggest the fact that the first plate and the second plate are made of different materials and it not obvious to a person of ordinary skill in the art. This is not persuasive. The Claus reference substantially discloses the claimed invention including discloses a gasket Fig. 3A for an exhaust system of a vehicle, comprising: a first metal plate 20; and a second metal plate 10, wherein the first plate overlaps the second plate, wherein the first plate and the second plate have a central hole 22a, wherein the first plate includes a first bead inclined portion 27’, wherein the first plate includes a first bead flat portion 21 extending parallel to the first plate from the first bead inclined portion to form the central hole, wherein the second plate includes a second bead inclined portion 17, wherein the second plate includes a second bead flat portion 14 extending parallel to the second plate from the second bead inclined portion to form the central hole, wherein the first plate and the second plate have an asymmetric cross-section shape, and wherein the first bead flat portion and the second bead flat portion forming the central hole overlap at least partially. Although Claus et al. fails to explicitly disclose the layer materials are different, Claus et al. does disclose wherein one or more of the layers are metal layers, and at least recognize that the materials of the gasket as well as other characteristic of the layers such as thickness differences, material and manufacturing tolerances may differ in order to ensure a reliable seal even in a hot gas region of an internal combustion engine. (Also see Col. 3, Ln. 66 – Col. 4, Ln. 12)
Conclusion
THIS ACTION IS MADE FINAL. 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 EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675