Ex Parte Allen

Board of Patent Appeals and Interferences

Sep 22, 2004

09522023 (B.P.A.I. Sep. 22, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KIRK R. ALLEN
____________
Appeal No. 2004-1844
Application No. 09/522,023
____________
ON BRIEF
____________
Before COHEN, ABRAMS and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 13-19
and 21-26. Claim 20, the only other claim pending in this application, stands objected
to as depending from a rejected claim but is otherwise indicated as containing allowable
subject matter.
We REVERSE.
Appeal No. 2004-1844
Application No. 09/522,023
Page 2
W e derive our understanding of this application from the English language translation provided
1
by appellant with Paper No. 11.
BACKGROUND
The appellant’s invention relates to a bolt-on wheel cover that is integrally
retained to, but thermally isolated from, lug nuts of a vehicle wheel (specification, page
1). A copy of the claims under appeal is set forth in the appendix to the appellant’s
brief.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Toth 5,520,445 May 28, 1996
Inaba JP 63-87301 Apr. 18, 19881
(Japanese patent document)
The following rejections are before us for review.
Claims 24-26 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Inaba.
Claims 13-19 and 21-26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Toth.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and answer (Paper Nos. 18 and 23) for the examiner's complete reasoning in
Appeal No. 2004-1844
Application No. 09/522,023
Page 3
support of the rejections and to the brief and reply brief (Paper Nos. 22 and 24) for the
appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn our attention first to the rejection of claims 24-26 as being anticipated by
Inaba. Each of these claims recites, inter alia, means for establishing a predetermined
preload between the wheel cover and the wheel, the predetermined preload being
applied proximate a radially outer portion of the wheel cover and the wheel (claims 14
and 26) or means for establishing a preload on a radially outer portion of the plastic
wheel cover (claim 25) and at least one thermal isolator integrally mounted to an
elongated tubular extension of the wheel cover. Appellant argues that neither of these
features is disclosed by Inaba.
We share the examiner’s view that Inaba’s bushing 41 thermally isolates the
wheel cover from the wheel nut and from the wheel (see page 3 of the translation) and
thus responds structurally to the thermal isolator recited in appellant’s claims 24-26.
Appellant’s argument on page 10 of the brief attempting to differentiate between
thermal isolation and thermal delay is unconvincing. The “heat insulating effect”
Appeal No. 2004-1844
Application No. 09/522,023
Page 4
(translation, page 3) of Inaba’s bushing 41, while, as in all real-world applications, not a
complete block to the transmission of heat, would be considered to be a thermal
isolator by those skilled in the art.
It is puzzling to us that, notwithstanding that the means for establishing a
predetermined preload is one of the features in dispute in this appeal, neither appellant
nor the examiner has specifically identified the structure in appellant’s underlying
disclosure which corresponds to the means recitation so as to determine whether Inaba
discloses that structure or an equivalent thereof in accordance with 35 U.S.C. § 112,
sixth paragraph. We understand the corresponding structure in appellant’s underlying
disclosure to be the contour of the wheel cover 60 relative to the contour of the wheel
20 and lug nuts 40, wherein the bottom or apical portion of the lug tower 66 of the cover
60 when placed against the wheel 20 prior to tightening the lug nuts is spaced from its
position after tightening so as to create a drawdown, as indicated by arrow A in Figure
1. In other words, the wheel cover is shaped so that it will be deformed inwardly when
tightened against the wheel by the lug nuts.
While the examiner is correct that Inaba discloses that such a pre-load
arrangement was known in the prior art (Figure 1(C) and translation, page 2), Inaba
also teaches that such an arrangement is problematic, in that, as a result of creep in the
plastic material, the force pulling to the right in Figure 1(C) gradually diminishes and
ceases to be effective, causing “squeal/squeak/hum” if a gap C forms, and pre-load
Appeal No. 2004-1844
Application No. 09/522,023
Page 5
stress and vibration/shock stress concentrations are created in the region of the bottom
11 of the cover. Thus, instead of the pre-load arrangement known in the prior art, Inaba
discloses provision of a bushing 41 which both slows the transmission of heat from
braking to the cover and provides elasticity to the wheel cover taper hole to allow for
expansion and contraction and absorb vibrations. The examiner’s determination that
“[t]he cover is of the same construction as that shown in figures 1A-D” (final rejection,
page 2) and that “[t]he difference between the prior art wheel cover and the inventive
wheel cover of Inaba is the heat-resistant bushing” (answer, page 4) is speculative at
best, as Inaba never states that the “pre-expanded” cover of prior art Figure 1(C) is
used in the inventive wheel assembly. It is well established that an anticipation
rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a
reference relied on to prove anticipation must be so clear and explicit that those skilled
in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d
893, 899, 134 USPQ 355, 360 (CCPA 1962). In fact, Inaba’s teaching that the pre-
loaded cover arrangement is problematic because of the resulting stress concentrations
appears to us to teach against using such an arrangement.
For the foregoing reasons, we cannot sustain the examiner’s rejection of claims
24-26 as being anticipated by Inaba.
Appeal No. 2004-1844
Application No. 09/522,023
Page 6
W e note, at the outset, that the examiner has not followed the procedure outlined in Section
2
706.02(j) of the Manual of Patent Examining Procedure (MPEP) for setting forth an obviousness rejection
under 35 U.S.C. § 103 by expressly identifying a difference between the claimed subject matter and the
disclosure of Toth or proposing a modification of Toth to arrive at the claimed invention. The examiner’s
statement on page 3 of the final rejection that “it is obvious that thermal isolation of the cover from the
wheel would be achieved ...” more closely resembles a statement of inherency than a proposed
modification of the reference.
We turn next to the rejection of claims 13-19 and 21-26 as being unpatentable
over Toth. The very same features mentioned above, the means for establishing a2
preload and the thermal isolator, are in dispute with regard to this rejection. While the
disclosure in column 3, line 67, to column 4, line 9, of Toth appears to be directed to a
preload arrangement of the type disclosed by appellant, the examiner’s position that the
skirt 63, illustrated in Figure 5, is a thermal isolator is unsound. The skirt 63 overlies the
nut body flange 64 and extends through the aperture 28 in the wheel cover 12 and
comprises a substantially U-shaped axially extending channel 60 with an outwardly
turned edge 62 to prevent withdrawal of the lug nut from the wheel cover. While it
does, by engaging the periphery of the aperture 28 of the wheel cover, space the wheel
cover from the wheel, we find no teaching or suggestion in Toth that the skirt 63
provides any thermal isolation function. It follows that we cannot sustain the examiner’s
rejection of claims 13-19 and 21-26 as being unpatentable over Toth.
Appeal No. 2004-1844
Application No. 09/522,023
Page 7
CONCLUSION
To summarize, the decision of the examiner to reject claims 24-26 under 35
U.S.C. § 102 and claims 13-19 and 21-26 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/jlb
Appeal No. 2004-1844
Application No. 09/522,023
Page 8
VANOPHEM & VANOPHEM, PC
REMY J VANOPHEM, PC
51543 VAN DYKE
HELBY TOWNSHIP, MI 48316-4447