Aaron Dahl

Patent Trials and Appeals Board

Jan 1, 2021

2020002585 (P.T.A.B. Jan. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/696,142 04/24/2015 Aaron Dahl 510453 5581
53609 7590 01/01/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
01/01/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON DAHL
Appeal 2020-002585
Application 14/696,142
Technology Center 3600
Before JENNIFER D. BAHR, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–13, and 15–19, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as GKN Armstrong
Wheels, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a wheel assembly with a locking
arrangement having a substantially reduced profile.” Spec. ¶ 6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A wheel assembly, comprising:
a rim configured to receive a tire;
a flange member slidably received on said rim, the flange
member having a flange portion with a terminal end defining a
first axial extent of the flange member, the flange portion
integrally formed with the flange member;
a locking ring radially and axially interposed between
said rim and flange member;
a locking arrangement mounted between the rim and the
flange member and having a second axial extent, wherein the
second axial extent is substantially adjacent to the first axial
extent in an axial direction;
wherein the locking arrangement includes a radially outer
locking bar, a radially inner locking bar, and a locking key
received by both of the radially outer and inner locking bars
such that rotation of the outer locking bar relative to the inner
locking bar is prevented; and
wherein the radially outer locking bar is fixedly attached
to the flange portion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gerbeth US 3,599,697 Aug. 17, 1971
Loeber US 4,706,723 Nov. 17, 1987
Yamoto US 5,107,914 Apr. 28, 1992

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REJECTIONS
Claims 1–7 and 9–11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Yamato and Loeber.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Yamato, Loeber, and Gerbeth.
Claims 13 and 15–19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gerbeth.
OPINION
Obviousness—Yamoto and Loeber
Claims 1, 4–7, and 9–11
The Examiner finds that Yamoto discloses a wheel assembly having
most of the features recited in claim 1, including, in relevant part, a flange
member (bead seat band 26) and a flange (side ring 27a), but that Yamoto
does not show the flange integrally formed with the flange member.
Non-Final Act. 3–4. The Examiner finds, however, that Loeber teaches a
wheel assembly comprising a flange member (generally straight, horizontal
base portion 80A) having an integrally formed flange (radially extending
portion 80B). Id. at 4 (citing Loeber, Fig. 2). The Examiner determines it
would have been obvious “to form the flange and flange member of Yamoto
. . . as a single element, for the purpose of reducing the number of parts of
the assembly, thus reducing complexity.” Id.
Appellant argues that Yamoto uses free-floating side rings to allow
different side rings to be used for tires having differing bead portion shapes,
etc., and that, if the side rings were integrally formed with Yamoto’s bead
seat band, the entire bead seat band would need to be replaced to
accommodate a tire having a different bead portion. Appeal Br. 5–6.
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Further, Appellant argues that modifying Yamoto to form the bead seat band
and side rings integrally as a single element as the Examiner proposes
“would be a fundamental change in the principle of operation of Yamoto,”
and, thus, would not have been obvious. Id. at 6. Appellant cites the
Declaration of Aaron Dahl,2 dated February 5, 2019 (hereinafter “Dahl
Declaration” or “Dahl Decl.”) as evidence in support of Appellant’s
argument.3 Id. at 6–7 (citing Dahl Decl. ¶¶ 4–6).
The Examiner correctly points out that, contrary to what Declarant
Dahl avers in the Dahl Declaration, Yamoto lacks any mention of using
free-floating side rings to allow different side rings to be used for tires
having differing bead portion shapes and, indeed, “is completely silent
regarding the purpose of separate side rings/flanges [27a and 27b] beyond
the fact that these side rings/flanges retain the beads of a tire on the wheel
rim.” Ans. 4. Yamoto describes the side rings as “a pair of side rings 27a
and 27b each holding a bead portion of the tire from an axially outer side
thereof.” Yamoto 3:62–64; see id. 2:33–35 (disclosing same); id. 1:18–20,
31–32 (broadly mentioning side rings in prior art rims). Nevertheless, even
accepting Dahl’s averments in paragraphs 4–6 as evidence of what a person
having ordinary skill in the art would understand or infer about why Yamoto
provides side rings 27a and 27b discrete from bead seat band 26, we are not

2 Dahl is the named inventor in the present application, and we see no reason
not to credit him as a person of ordinary skill in the art of wheels and wheel
rims. See Dahl Decl. ¶ 1 (stating that Dahl has over 18 years in the industry
and has “good knowledge of the art to which the present invention is
drafted”).
3 The Dahl Declaration was submitted in the present application on February
11, 2019.
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persuaded, for the reasons that follow, either that the Examiner’s reasoning
in support of the proposed modification is flawed or that the proposed
modification would fundamentally change the principle of operation of
Yamoto.
Our reviewing court has recognized that a given course of action often
has simultaneous advantages and disadvantages, and the existence of
disadvantages does not necessarily negate a proposed combination. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if
there are tradeoffs involved regarding features, such things do not
necessarily prevent the proposed combination); Winner Int’l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). In the present case, even if modifying
Yamoto to form bead seat band 26 and side ring 27a or 27b integrally as a
single element as the Examiner proposes might be disadvantageous in terms
of not as easily accommodating differing tires having differing bead portion
shapes, the modification would provide the advantage of reducing the
number of parts to be assembled, thereby reducing complexity. The fact that
the motivating benefit (i.e., reducing the number of parts to be assembled,
thereby reducing complexity) might come at the expense of another benefit
(capability of changing out the side rings without changing out the entire
integral flange member/flange portion) does not undermine the Examiner’s
rationale.
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The “principle of operation” referred to by Appellant relates to the
“basic principles” under which the prior art device was designed to operate.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination
of references would require a substantial reconstruction and redesign of the
elements shown in [the primary reference] as well as a change in the basic
principles under which the [primary reference] construction was designed to
operate.”) (emphasis added). Under Ratti, “a change in the basic principles”
refers to change that is fundamental in scope so as to relate to scientific or
technical principles under which the invention is designed to operate.
The fact that the named inventor avers that the proposed
“modification would be a fundamental change in the principle of operation
of Yamoto” (Dahl Decl. ¶ 6) does not necessarily make it so. Yamoto
describes the purpose of side rings 27a and 27b as “holding a bead portion
of the tire from an axially outer side thereof.” Yamoto 3:62–64. Yamoto’s
side rings 27a and 27b would hold a bead portion of a tire from an axially
outer side thereof whether they are integrally formed with bead seat band 26
or formed as discrete elements. Thus, the proposed modification would not
fundamentally change the principle of operation of Yamoto. Indeed, given
Yamoto’s silence regarding any purpose or advantage of forming the side
rings separately from the bead seat ring to accommodate tires having
different shaped beads, it is difficult to conclude that this was the principle
of operation of Yamoto.
For the above reasons, after weighing all of the evidence, including
the evidence of obviousness and the evidence of non-obviousness, we
conclude that the evidence of obviousness outweighs the evidence of non-
obviousness. Accordingly, Appellant does not apprise us of error in the
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Examiner’s conclusion that the subject matter of claim 1 would have been
obvious in view of the combined teachings of Yamoto and Loeber. Thus,
we sustain the rejection of claim 1, and of claims 4–7 and 9–11, for which
Appellant does not present any separate arguments and which thus fall with
claim 1, as unpatentable over Yamoto and Loeber. See Appeal Br. 5–8;
37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to
decide the appeal as to a single ground of rejection of a group of claims
argued together).
Claims 2 and 3
Claim 2 depends from claim 1 and recites that the “first and second
axial extents [(i.e., the axial extent of the flange member and the axial extent
of the locking arrangement)] are axially spaced less than 10 millimeters from
one another.” Appeal Br. 21 (Claims App.). Claim 3 depends from claim 1
and recites that “the first and second axial extents are axially spaced 2
millimeters from one another.” Id.
The Examiner finds that Yamoto does not disclose the distance that
the first and second axial extents are spaced from one another. Non-Final
Act. 4. The Examiner determines, however, that it would have been obvious
“to form the first and second axial extents to be within a predetermined axial
distance from each other, for the purpose of preventing damage to the
locking arrangement during use, which could cause failure of the wheel and
unintended demounting of the wheel during use.” Id.
Appellant contends that the Examiner does not point to a teaching in
any reference to support this determination and that “the only teaching of the
particular axial extent spacing limitations of claims 2 and 3 comes from the
instant application.” Appeal Br. 9 (citing Spec. ¶¶ 3, 4, 25, 38–42). Thus,
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Appellant asserts that the Examiner’s “rejection of claims 2 and 3 is
erroneously predicated on hindsight bias.” Id. at 10.
In response, the Examiner recites the legal principle that any
reconstruction based on hindsight reasoning in judging obviousness is proper
“so long as it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made, and does not
include knowledge gleaned only from the Appellant’s disclosure.” Ans. 5–6
(citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). However, the
Examiner does not point to any teaching or other indication that those skilled
in the art at the time of Appellant’s invention recognized that minimizing the
axial spacing of the first and second axial extents was significant in
preventing damage to the locking arrangement or demounting of the wheel
during use. Rather, the only teaching regarding minimizing the axial
spacing of the first and second axial extents in the record before us appears
to come from Appellant’s Specification. See Spec. ¶¶ 3–4, 25, 38, 39, 40,
42. Thus, Appellant’s contention that the Examiner’s reasoning is
predicated on impermissible hindsight bias is persuasive.
The Examiner states that Appellant’s Specification “fails to provide
any criticality for these dimensions.” Ans. 6. This statement is not correct.
Appellant’s Specification discloses that a problem with prior art wheel
locking arrangements is that “[t]he locking arrangement on each wheel
protrudes to such an extent axially beyond the axial outermost surface of the
flange that it may become caught on adjacent objects” and could “become
entirely sheared off of the flange and rim.” Spec. ¶ 3. Further, strikes from
rocks and other debris “can also lead to failure in the field.” Id. According
to the Specification, locking arrangements in contemporary off-the-road
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(OTR) wheel designs “typically protrude axially beyond an axial outermost
edge of the flange by 20-30 millimeters.” Id. ¶ 4. The Specification further
discloses that the wheel assembly of the present invention “overcomes
existing problems in the art by presenting a low profile locking arrangement
which has a substantially decreased axial protrusion than prior designs.” Id.
¶ 25. Appellant’s Specification describes a “low profile design” as one in
which the axial extent of the locking arrangement “is substantially adjacent
to an outermost axial extent of [the] flange member . . . in the axial
direction,” meaning that “there is less than a 20 millimeter (mm) distance
taken in the axial direction.” Id. ¶ 38. The Specification further discloses
that the axial extents are axially spaced less than 10 mm from one another
and, more preferably, 2 mm from one another, “but in all cases [the axial
spacing] is significantly less than [the aforementioned] prior designs.” Id.
¶ 40.
For the above reasons, the Examiner’s stated rationale in determining
that the axial spacing recited in claims 2 and 3 would have been obvious
lacks the requisite factual underpinning to establish a sustainable case of
obviousness. Accordingly, we do not sustain the rejection of claims 2 and 3
as unpatentable over Yamoto and Loeber.
Obviousness—Yamoto, Loeber, and Gerbeth
In contesting the rejection of claim 12, Appellant argues only that
“[t]he addition of Gerbeth does not rectify [the purported] deficiency” in the
rejection of claim 1. Appeal Br. 10. For the reasons discussed above,
Appellant fails to apprise us of error in the rejection of claim 1 and, likewise,
fails to apprise us of error in the rejection of claim 12. Accordingly, we
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sustain the rejection of claim 12 as unpatentable over Yamoto, Loeber, and
Gerbeth.
Obviousness—Gerbeth
The Examiner finds that Gerbeth discloses a wheel assembly having
most of the features recited in claim 13, including, in pertinent part, a
locking arrangement (driver assembly 2) including an outer locking bar (lugs
15, 16) having tapered portions and a radially inner locking bar (member
10). Non-Final Act. 5–6. The Examiner finds that Gerbeth teaches “the
radially outer locking bar [(lugs 15, 16)] having tapered portions, which
taper axially inwardly from the axially outer faces thereof,” but that
“Gerbeth does not show the radially inner locking bar also having tapered
portion[s].”4 Id. at 6. The Examiner determines that it would have been
obvious “to form both of the locking bars of Gerbeth with tapered portions,
as a substitute equivalent configuration, for the purpose of providing the
locking bars with a differential stiffness, thus preventing warpage when
welded to the rim and flange member, and further to provide a uniform
configuration.” Id. at 6–7.
Appellant “submits the Examiner’s articulated reason for making the
[modification] is unsupported by rational underpinnings” because, according
to Appellant, “Gerbeth fails to teach that one would modify a continuous
locking bar with tapered end portions to prevent warpage when welded to
the rim and the flange member and to provide a uniform configuration.”

4 This finding is incorrect, as it appears to overlook Gerbeth’s teaching,
discussed further below, that “member 10 shown in FIGS. 1 and 2 may also
be tapered at each end in the same manner as the members 24 and 25
[(shown in Figure 8)] for better stress distribution throughout the rim base
3.” Gerbeth 3:32–35.
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Appeal Br. 12. Appellant asserts that Gerbeth uses tapered portions only
with locking bars that are open and that “Gerbeth recognizes that such
tapered portions in the context of open locking bars allow for differential
stiffness and flexing to avoid stress concentrations.” Id. (citing Gerbeth
2:30–32, 3:18–35; Fig. 2).
Appellant cites the Dahl Declaration as evidence supporting
Appellant’s characterization of the teachings of Gerbeth. Id. at 13–16 (citing
Dahl Decl. ¶¶ 7–12). Appellant also cites the Dahl Declaration as
supporting the position that the proposed modification would change
Gerbeth’s principle of operation. Id. at 13. In particular, the Dahl
Declaration states that “Gerbeth teaches the tapers only with discontinuous,
separated lugs and not on a single continuous closed bar as claimed.” Dahl
Decl. ¶ 9 (citing Gerbeth 2:59–61). Further, the Dahl Declaration states that
Gerbeth teaches that when non-tapered portions on a continuous member are
utilized, “the bead seat band in the region of its weld has a uniform stiffness
which can create stress concentrations . . . that eventually weaken[] the band
seat band to the point that [it] will crack under continued use.” Id. (citing
Gerbeth 2:61–69). Thus, according to the Dahl Declaration, Gerbeth’s
continuous inner locking bar (member 10) “does not have a tapered portion
and Gerbeth never discloses or suggests its bar 10 could be modified with
only tapered portions.” Id. The Dahl Declaration then discusses the
embodiment shown in Figure 8 of Gerbeth, which shows, instead of slotted
member 10, a pair of bracket members 24 and 25, “which include tapered
portions[,] but which are separated, that is, made discontinuous as
evidence[d] by space 27.” Id. ¶ 10. Thus, the Dahl Declaration avers that
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“Gerbeth teaches the use of tapered portions only in the context of open
locking bars.” Id.
Appellant’s arguments are not persuasive. Appellant’s assertion, and
the averments in the Dahl Declaration, that Gerbeth teaches providing
tapered portions only on separated, discontinuous lugs, and not on a
continuous bar, are patently incorrect. In addition to teaching the use of a
pair of separated bracket members 24 and 25, instead of slotted member 10,
in the embodiment illustrated in Figure 8, Gerbeth expressly teaches that,
alternatively, “member 10 shown in FIGS. 1 and 2 may also be tapered at
each end in the same manner as the members 24 and 25 for better stress
distribution throughout the rim base 3.” Gerbeth 3:18–20, 32–35. Thus,
Gerbeth recognizes that even tapering alone, on a continuous bar member,
offers the advantage of improving stress distribution throughout the rim base
to which the continuous bar is welded. Further, Gerbeth explains why
tapering provides this advantage, in the context of the radially outer portion
of driver assembly 2. In particular, Gerbeth states:
The purpose of the tapered contour of the lugs and of extending
the weld seams beyond the end of the lugs is to provide a
gradual transition in stiffness in the bead seat band between the
thickest portion of each lug and the portion of the bead seat
band extending beyond the end of each lug. This gradual
transition of stiffness is desirable since it eliminates the
problem encountered in the prior art device shown in FIGS. 4
and 5 in which a continuous slotted driver member 20 having a
pocket 21 therein is welded to a bead seat band 22.
Gerbeth 2:52–61.
In other words, although Gerbeth explains this in the context of a
device which is not only tapered but discontinuous, Gerbeth teaches that the
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tapering provides the advantage of gradually transitioning the stiffness.
Thus, considering Gerbeth’s teachings as a whole, although Gerbeth
suggests that dividing the member into individual parts, in addition to
tapering the outer ends of those parts (see id. 1:16–35), may provide more
optimized benefits in reducing stress concentrations, one having ordinary
skill in the art would recognize from Gerbeth’s teachings that even tapering
alone would provide a gradual transition in stiffness that would improve
stress distribution. Further, one skilled in the art would appreciate that the
advantage afforded by tapering would be applicable to both the portion of
driver assembly 2 fixed to the rim base (i.e., the radially inner locking
member) and the portion of driver assembly 2 fixed to the bead seat band
(i.e., the radially outer locking member).
For the above reasons, the Examiner’s reasoning that “one of ordinary
skill in the art would look at the Gerbeth reference and[,] for the same
reasons as set forth in column 2, lines 51-61 therein, find it obvious to form
the lower/inner continuous bar 10 with tapered surface[s]” (Ans. 7) has
rational underpinnings. Further, Appellant does not explain, nor is it
apparent, why the modification proposed by the Examiner would change
Gerbeth’s principle of operation, as Appellant asserts on page 13 of the
Appeal Brief. Although Appellant submits that the Dahl Declaration
supports this position, we find no mention in paragraphs 7–12 of the Dahl
Declaration of a change in Gerbeth’s principle of operation.
For the above reasons, after weighing all of the evidence, including
the evidence of obviousness and the evidence of non-obviousness, we
conclude that the evidence of obviousness outweighs the evidence of non-
obviousness. Appellant fails to apprise us of error in the rejection of claim
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13. Accordingly, we sustain the rejection of claim 13, and of claims 15–17,
for which Appellant does not present any separate arguments and which thus
fall with claim 13, as unpatentable over Gerbeth. See Appeal Br. 11–17;
37 C.F.R. § 41.37(c)(1)(iv).
Claims 18 and 19
Claim 18 depends from claim 13 and recites that “a first axial extent
of the flange member is axially spaced from a second axial extent of the
locking arrangement by less than 10 millimeters from one another.” Appeal
Br. 23 (Claims App.). Claim 19 depends from claim 18 and recites that “the
first and second axial extents are axially spaced 2 millimeters from one
another.” Id.
The Examiner finds that Gerbeth does not disclose the spacing
between the first and second axial extents, but determines, similar to the
rejection of claims 2 and 3 discussed above, that it would have been obvious
“to form the first and second axial extents to be within a predetermined axial
distance from each other, for the purpose of preventing damage to the
locking arrangement during use, which could cause failure of the wheel and
unintended demounting of the wheel during use.” Non-Final Act. 6.
Appellant’s arguments contesting this reasoning as lacking evidentiary
support in the record and being based on impermissible hindsight, and the
Examiner’s responses thereto, are substantially similar to those discussed
above in regard to the rejection of claims 2 and 3. See Appeal Br. 18–19;
Ans. 8–9.
For essentially the reasons set forth above in discussing the rejection
of claims 2 and 3, the Examiner’s reasoning in determining that the axial
spacing recited in claims 18 and 19 would have been obvious lacks the
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requisite factual underpinning to establish a sustainable case of obviousness.
Accordingly, we do not sustain the rejection of claims 18 and 19 as
unpatentable over Gerbeth.
CONCLUSION
The Examiner’s decision to reject claims 1–7, 9–13, and 15–19 is
AFFIRMED as to claims 1, 4–7, 9–13, and 15–17 and REVERSED as to
claims 2, 3, 18, and 19.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 9–11 103 Yamoto, Loeber 1, 4–7, 9–11 2, 3
12 103 Yamoto, Loeber,
Gerbeth
12
13, 15–19 103 Gerbeth 13, 15–17 18, 19
Overall
Outcome
1, 4–7, 9–
13, 15–17
2, 3, 18, 19

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART