12581320 (P.T.A.B. Dec. 22, 2016)

Ex Parte Kleber et al

Patent Trial and Appeal BoardDec 22, 2016

12581320 (P.T.A.B. Dec. 22, 2016)

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. 12/581,320 10/19/2009 Richard M. Kleber P001589-R&D-MJL 2353 104102 7590 BrooksGroup 48685 Hayes Shelby Township, MI 48315 12/22/2016 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 12/22/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD M. KLEBER and RAVI VERMA Appeal 2015-001510 Application 12/581,3201 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35U.S.C. § 134 from the Examiner’s decision rejecting claims 1—23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, “[t]he real party in interest is General Motors LLC.” Appeal Br. 3. Appeal 2015-001510 Application 12/581,320 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 14, 17, and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A product comprising: a wheel assembly comprising a center wheel portion comprising a first material; and an outer wheel portion comprising a second material different from the first material, wherein the center wheel portion is attached to the outer wheel portion and galvanically isolates the outer wheel portion from a wheel hub to which the wheel assembly is to be attached and from lug nuts that attach the wheel assembly to the wheel hub. Rejections Claims 1—21 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zulauf (US 4,487,456, iss. Dec. 11, 1984) and Stach (US 6,024,415, iss. Feb. 15, 2000). Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over Zulauf, Stach, and Schwerdhofer (US 3,695,729, iss. Oct. 3, 1972). ANALYSIS The Appellants argue that the combination of teachings from Zulauf and Stach lacks a teaching of a center wheel portion and an outer wheel portion made of different materials “wherein the center wheel portion . . . galvanically isolates the outer wheel portion from a wheel hub to which the wheel assembly is to be attached and from lug nuts that attach the wheel assembly to the wheel hub,” as recited in claim 1. Appeal Br. 8—9; see also 2 Appeal 2015-001510 Application 12/581,320 Reply Br. 4—6. Independent claims 14, 17, and 23 include limitations that are similar to some of the limitations of claim 1. See also Appeal Br. 9—10. The Examiner finds that Zulauf discloses a prefabricated rim (i.e., outer wheel portion) made from magnesium. Final Act. 2; Zulauf, col. 1, 11. 63—65. Moreover, Stach discloses that a vehicle wheel having at least two shell parts (e.g. a rim well 2a and rim spider 3a) “may be made of various materials, for example, of an aluminum alloy, a magnesium alloy or a titanium alloy, in which case the individual shell parts can be combined in the various materials.” Stach, col. 3,11. 4—8 (emphasis added), 52—53; see Final Act. 2. The Appellants contend that: [although column 3, lines 5—7 of Stach indicate that the shell parts may be comprised of an aluminum alloy, a magnesium alloy, or a titanium alloy, when reading Stach as a whole, it is clear that not only does Stach not teach having two shell parts made of different materials but also teaches away from this feature .... Specifically, column 3 of Stach goes on to state that the connection of the two shell parts may “[b]e carried out by means of a welding process.” One of ordinary skill in the art would recognize that a welding process would not be used between two pieces of the different material and therefore the first and second shell parts of Stach are not made of different materials. Appeal Br. 8—9. Notably, however, the Appellants’ contention fails to persuasively account for Stach’s description that “individual shell parts can be combined in the various materials.” As for the Appellants assertion that Stach teaches away from the claimed feature of using different materials for a wheel assembly because “[o]ne of ordinary skill in the art would recognize that a welding process would not be used between two pieces of the different 3 Appeal 2015-001510 Application 12/581,320 material,” this assertion is not persuasive. Among other things, the Appellants do not provide evidence that all types of welding requires the same material. And, as pointed out by the Examiner, Stach discloses joining shell parts together through welding and gluing. Ans. 6 (citing Stach, col. 3, 11. 10-13). As such, there is no reason to believe that Stach discloses only combining two shell parts of the same material. For the foregoing reasons, we determine that Stach does not teach away, because it does not criticize, discredit, or otherwise discourage investigation into the invention claimed. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed”) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Further, we also note that a person of ordinary skill in the art would understand that the requirement of claim 1 concerning galvanic isolation is a natural result flowing from the combination of teachings from Zulauf and Stach. See Ans. 6—7 (the Examiner explains that “the magnesium rim of Zulauf would be galvanically isolated by a steel wheel hub by an aluminum center disc portion as set forth in the rejection.”). The Appellants also argue that the combination of teachings from Zulauf and Stach is improper. Appeal Br. 6; see also Reply Br. 3—5. The Appellants point out that Zulauf discloses a manufacture of its vehicle wheels by using a die cast that contains a prefabricated rim and introduces molten metal — forced under pressure — to form around the die faces and the prefabricated rim. Appeal Br. 6, 7. And, the Appellants acknowledge that Stach discloses a manufacture of its vehicles wheels based on joining 4 Appeal 2015-001510 Application 12/581,320 two shelled pieces — a rim well and rim spider (i.e., spokes) — to form a single rim. See id. at 7, 11. The Appellants’ contention is based on a premise that the combination of different manufacturing methods is bizarre because it would negatively affect Zulauf s use of a prefabricated rim. Id. at 6—7. Based on this premise, the Appellants contend that the combination of teaching from Zulauf and Stach would remove Zulauf s prefabricated rim, frustrate the purpose of the system, and change the principle of operation. Id. at 6—8. The Appellants’ argument is not persuasive because the premise of the Appellants’ argument is inaccurate. The Examiner’s rejection does not rely on a teaching from Stach to significantly change the process of manufacturing of Zulauf s vehicle wheels. In other words, the Examiner’s rejection does not change the use of a die cast that contains a prefabricated rim and introduces molten metal — forced under pressure — to form around the die faces and the prefabricated rim. Rather, the effect of Examiner’s reliance on Stach’s teachings is two fold: first, to change the molten material to be a different material than the material used for the prefabricated rim (i.e., outer wheel portion); and second, to change Zulauf’s die cast mold to create spokes. See Final Act. 2, Ans. 5. Thus, the Examiner’s rejection of claims 1—21 and 23 as unpatentable over Zulauf and Stach is sustained. The Appellants rely on similar arguments for the rejection of claim 22 as those presented for claim 1. See Appeal Br. 10. Thus, we also sustain the Examiner’s rejection of claim 22. 5 Appeal 2015-001510 Application 12/581,320 DECISION We AFFIRM the Examiner’s decision rejecting claims 1—23. 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)(l)(iv). AFFIRMED 6