Ex Parte Kleber et al

Patent Trial and Appeal Board

Feb 21, 2014

12433245 (P.T.A.B. Feb. 21, 2014)

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.
12/433,245 04/30/2009 Richard M. Kleber P004120-R &D-MJL 8672
104102 7590 02/24/2014
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
02/24/2014 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, RAVI VERMA,
and MICHAEL J. LUKITSCH
____________

Appeal 2012-002637
Application 12/433,245
Technology Center 3600
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002637
Application 12/433,245

2
STATEMENT OF THE CASE
Richard M. Kleber, Ravi Verma, and Michael J. Lukitsch (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 15, 20, and 26 are independent. Claim 1 illustrates the
subject matter on appeal and is reproduced below.
1. A product comprising:
a wheel having a wheel rim comprising magnesium, the
wheel rim having at least one flange constructed and arranged
to seat a bead portion of a tire; and
a wear resistant coating located over the at least one
flange on at least a part of a section of the at least one flange
opposing the bead portion of the tire.

REJECTION
I. Claims 1-4, 8, 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kaufold (US 6,872,425 B2, iss. Mar. 29,
2005) and Archibald (US 6,158,820, iss. Dec. 12, 2000). Ans. 5.
II. Claims 5, 7, 9 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaufold, Archibald, and Kapourchali (US 7,279,078 B2,
iss. Oct. 9, 2007). Id.
III. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kaufold, Archibald, and Rau. Id.
IV. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaufold, Archibald, and Kapourchali. Id.
Appeal 2012-002637
Application 12/433,245

3
ANALYSIS
I. Claims 1-4, 8, 10, 11, 13, and 14
Claims 1-4, 8, 10, 11, 13, and 14 stand or fall together. App. Br. 7-10.
We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
The Examiner finds that Kaufold teaches all of the limitations of
claim 1, including a wear-resistant coating on a portion of a wheel rim
“made of any material suitable for motor vehicles,” but does not expressly
disclose the use of magnesium for the wheel rim. Final Rej. 2-3 (quoting
Kaufold, col. 3, ll. 35-37). The Examiner finds, however, that Archibald
teaches a magnesium wheel rim. Final Rej. 3 (citing Archibald, col. 1, ll.
16-18). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have modified the
product of Kaufold by utilizing Archibald’s magnesium wheel to achieve
desired physical and material properties such as high strength and low
weight.
Appellants define the issue on appeal as “whether one of ordinary
skill in the wear-resistant-coating for tire-and-wheel assembly field would
have found it obvious to use the magnesium alloy of Archibald et al. as the
material for the wheel rim of Kaufold.” App. Br. 8. Appellants argue that
Kaufold “leads away from” using the magnesium alloy of Archibald
because, after listing examples of suitable coatings for its forged aluminum
wheel, Kaufold cautions against improper selection of a coating that can lead
to “adhesion failure between the coating and the vehicle wheel.” App. Br. 9
(citing Kaufold, col. 4, ll. 56-60). Appellants contend that one skilled in the
art, considering the teaching of Kaufold, “would understand the important
Appeal 2012-002637
Application 12/433,245

4
relationship between the materials of the vehicle wheel 10 and the wear and
corrosion resistant coating 14, and particularly the importance of adhesion
between the two and the risk of failure and resulting inoperativeness of the
coating.” Id. Appellants argue that the Examiner’s proposed reason for
combining Kaufold and Archibald, to achieve high strength and low weight,
is faulty because it ignores Kaufold’s concern regarding adhesion failure
problems. According to Appellants, “[t]he desire for high strength and low
weight would not have prompted one of ordinary skill in the art to use the
magnesium alloy of Archibald et al. as the material for the wheel rim of
Kaufold et al., because the desire would not surpass the need for adhesion”
of the coating. App. Br. 10.
The Examiner responds that Kaufold provides no teaching that
criticizes, discredits, or otherwise discourages modifying its wheel rim to
comprise magnesium, and indeed teaches that its “wheel rim 12 may be
made of any material suitable for motor vehicles.” Ans. 5 (quoting Kaufold,
col. 3, ll. 35-38). Archibald teaches that magnesium is known to be such a
suitable material. Ans. 5-6 (citing Archibald, col. 1, ll. 16-21). According
to the Examiner, one skilled in the art “would understand the important
relationship between the materials of the vehicle wheel 10 and the wear and
corrosion resistant coating 14, and particularly the importance of adhesion
between the two and the risk of failure and resulting inoperativeness of the
coating.” Ans. 6. The Examiner notes that Appellants have not provided
any evidence suggesting that one skilled in the art would not use magnesium
for Kaufold’s wheel due to potential adhesive failure between the wear
resistant coating and wheel and, in fact, the Examiner notes that Archibald’s
Appeal 2012-002637
Application 12/433,245

5
magnesium wheel includes a protective (wear resistant) coating. Id. (citing
Archibald, col. 6, ll. 21-25).
In response to Appellants’ argument that the Examiner’s proposed
reason to combine ignores Kaufold’s concern regarding adhesion failure, the
Examiner finds that Kaufold expressly teaches selecting a wear resistant
coating that (1) provides wear and corrosion resistance, (2) has sufficient
adhesive properties, (3) does not affect the mechanical properties of the
wheel rim, and (4) has similar matching of coefficients of thermal expansion
with the wheel rim to prevent premature coating adhesion failure. Ans. 7-8
(citing Kaufold, col. 4, ll. 37-55). We agree with the Examiner that, from
these teachings, one skilled in the art would be capable of selecting a wear
resistant coating that would be suitable for use on a magnesium wheel.
Kaufold’s disclosure implies that selection of a proper coating was within
the knowledge of one skilled in the art. Further, Appellants have not
provided any evidence that one skilled in the art would be unable to select a
suitable wear-resistant coating for a magnesium wheel due to potential
adhesion failure problems. Ans. 8.
In response to Appellants’ argument that Kaufold does not disclose a
wheel comprising magnesium alloy and Archibald does not disclose a wear
resistant coating, the Examiner explains that non-obviousness cannot be
shown by attacking references individually when the rejection is based on a
combinations of references. Ans. 6-7 (citations omitted). We agree with the
Examiner. Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appeal 2012-002637
Application 12/433,245

6
For the reasons set forth above, we sustain the rejection of
independent claim 1. Claims 2-4, 8, 10, 11, 13, and 14 fall with claim 1.
II. Claims 5, 7, 9, and 12
Appellants present no separate arguments regarding the patentability
of claims 7, 9 and 12. App. Br. 11-12. Thus, for the reasons set forth above
regarding claims 1 and 11, we sustain the rejection of claims 7, 9, and 12.
Regarding claim 5, which recites the wear resistant coating
comprising titanium nitride, Appellants argue that one skilled in the art
would not use Kapourchali’s titanium nitride for a wear resistant coating to
achieve “the desired physical and material properties, such as durability and
strength,” because Kapourchali is directed to using titanium nitride for
adding a colored pattern, and not for wear resistance. App. Br. 12.
The Examiner responds that Kapourchali’s coating provides the
claimed wear resistance because it adds “increased durability to the rim” and
provides “resistance to the elements.” Ans. 8 (quoting Kapourchali, col. 2,
ll. 38-40). We agree with the Examiner. While Kapourchali’s coating has
an aesthetic purpose, it also is disclosed to protect the underlying wheel rim
from the elements, which is a type of wear resistance. Thus, for the reasons
set forth above, we sustain the rejection of claim 5.
III. Claim 6
Appellants present no separate arguments regarding the patentability
of claim 6. App. Br. 13. Thus, for the reasons set forth above regarding
claim 1, we sustain the rejection of claim 6.
Appeal 2012-002637
Application 12/433,245

7
IV. Claim 15
Appellants argue that claim 15 is patentable for the same reason that
claims 1 and 5 are patentable. App. Br. 13. For the reasons set forth above
regarding claims 1 and 5, we sustain the rejection of claim 15.
DECISION
We AFFIRM the rejection of claims 1-4, 8, 10, 11, 13, and 14 under
35 U.S.C. § 103(a) as unpatentable over Kaufold and Archibald.
We AFFIRM the rejection of claims 5, 7, 9 and 12 under 35 U.S.C. §
103(a) as unpatentable over Kaufold, Archibald, and Kapourchali.
We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Kaufold, Archibald, and Rau.
We AFFIRM the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Kaufold, Archibald, and Kapourchali.
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

mls