Ex Parte Kliskey

Board of Patent Appeals and Interferences

May 22, 2012

11404527 (B.P.A.I. May. 22, 2012)

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.
11/404,527 04/14/2006 Roger Kliskey KTL.P.US0020 1236
26360 7590 05/22/2012
RENNER KENNER GREIVE BOBAK TAYLOR & WEBER
FIRST NATIONAL TOWER, SUITE 400
106 SOUTH MAIN STREET
AKRON, OH 44308-1412
EXAMINER
GRANT, ALVIN J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
05/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER KLISKEY
____________

Appeal 2010-005068
Application 11/404,527
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20 and 22-25. Claim 21 has been cancelled. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-005068
Application 11/404,527

2
REJECTIONS
Claims 1-5, 7-20, and 22-25 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hreha (US 5,695,172, issued Dec. 9, 1997).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hreha.
Claims 1-20 and 22-25 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-3 and 5-11 of copending US patent application 11/499,229.

CLAIMED SUBJECT MATTER
The claimed subject matter pertains to a tool that helps users
manipulate the retaining ring of a solid tire, including an install end 15, a
separating end 30, a lift end 40, and a removal end 50, wherein the ends 15,
30, 40, and 50 may be formed on separate tools 10 or combined on one or
more tools. Spec. 1: 27-28, Spec. 6: 18-19, Spec. 8: 12-14, Spec. 9: 9-10,
Spec. 10: 10-12, Spec. 11: 6-7; figs. 1, 8.
Claims 1, 10, 14, 20, 22, 23, and 25 are the independent claims on
appeal. Claim 25 is illustrative of the subject matter on appeal and recites1:
25. A tire ring tool kit comprising:
a handle, an install end, a removal end, a lifting end, and
a separating end supportable on said handle;
said install end including an arm extending radially
outward from said handle, a body portion extending further
radially outward in the same direction from said arm and
terminating in a tip adapted for insertion between the rim and
the lock ring, wherein said body portion defines a notch that

1 Claim 25 has been reformatted and emphasized to facilitate understanding
of specific limitations.
Appeal 2010-005068
Application 11/404,527

3
extends axially outward relative to said tip between said arm
and said tip;
said removal end including a body portion having a first
portion extending axially outward and radially outward from
said handle and a second portion extending axially outward and
radially inward from said first portion, wherein a joint is formed
by the connection of said first and second portions, said joint
extending radially outward of said handle, and wherein said
second portion terminates in a tip adapted to be inserted
between the lock ring and the retaining ring;
said separating end including an arm extending from said
handle, a body portion extending from said arm and having a
substantially linear outer radial edge that extends from said arm
and terminates in a tip at its axial and radial outer extremity,
wherein said outer radial edge has a notch defined therein, said
notch being proximate to said tip and opening axially outward;
said lifting end having a body portion that curves-axially
inward as it extends radially outward and terminates in a tip,
and a projection extending radially outward from said tip
wherein said projection has a lesser lateral dimension than said
tip, and wherein said tip extends laterally outward of said
projection to form a shoulder.
OPINION
Rejections of claims 1-5, 7-20, and 22-25 as anticipated by Hreha, and
claim 6 as unpatentable over Hreha
Claims 1, 22, and 25
Claims 1 and 22 recite a tire ring tool and claim 25 recites a tire ring
tool kit, and each claim includes an install end including a body portion
“wherein said body portion defines a notch that extends axially outward
relative to said tip between said arm and said tip.”
Hreha discloses a pry bar including a panel lifter 18 having a beveled
tip 32 on an outer end portion 34 and an inwardly extending V-shaped notch
Appeal 2010-005068
Application 11/404,527

4
38.2 Col. 3, ll. 22-30, 33-40; figs. 4-6. The Examiner finds that Hreha’s
notch 38 corresponds to the claimed notch, and flat surface 40 corresponds
to the claimed tip, as recited in claims 1, 22, and 25. Ans. 3. The Appellant
contends that Hreha’s flat surface 40 is not a tip. See Br. 8. We agree.
Further, the Appellant contends that notch 38 extends “inwards relative to
the tip.” We agree. Notch 38 extends towards bevel tip 32. See Fig. 5. As
such, notch 38 extends “inwards relative to the tip”, and not “axially
outward relative to said tip” as recited in claims 1, 22, and 25.
Claim 10, 23, and 25
Claims 10 and 23 recite a tire ring tool and claim 25 recites a tire ring
tool kit, and each claim includes a separating end including “a body portion
extending from said arm and having a substantially linear outer radial edge
that extends from said arm . . . wherein said outer radial edge has a notch
defined therein, said notch being proximate to said tip and opening axially
outward.”
The Examiner finds that Hreha’s panel lifter 18 defines a notch 38.
See Ans. 3. Although this finding was specifically directed to independent
claim 1, we have no reason to believe that the Examiner’s finding would be
applied inconsistently with respect to the other independent claims. See
Ans. 3-4.

2 Hreha’s Figure 5 and column 3, line 34 describes reference number 40 as a
notch on the panel lifter end 18. We understand this to be a typographical
error because element number 40 is also described as a flat surface at
column 3, lines 39, 42, and depicted as a flat surface in Figure 7. The
correct reference number for the notch in Figure 5 and column 3, line 34 is
reference number 38. See col. 3, l. 38.
Appeal 2010-005068
Application 11/404,527

5
The Appellant contends that “the notch 40 [sic 38] in Hreha is on the
broad body portion 18, and therefore is not defined by a substantially linear
outer radial edge.” Br. 8. The Appellant’s contention is persuasive because
notch 38 is not at a substantially linear outer radial edge. More specifically,
the lateral sides of panel lifter 18, e.g., the side of the pry bar depicted in
Figure 4, could be considered a substantially linear outer radial edge, and
notch 38 is not located at either side. Compare, Br. 2, Spec. 2:30-32, and
Fig. 8 (disclosing that notch 38 is on axial outward wall 39).
Claims 14 and 25
Claim 14 recites a tire ring tool and claim 25 recites a tire ring tool kit,
and each claim includes a lifting end “terminates in a tip, and a projection
extending radially outward from said tip wherein said projection has a lesser
lateral dimension than said tip, and wherein said tip extends laterally
outward of said projection to form a shoulder.”
As discussed supra, Hreha discloses a beveled tip 32. Hreha does not
disclose a projection extending radially outward from said tip. See also Br.
8.
Claim 20
Claim 20 recites a tire ring tool comprising a removal end including
“a stop projection extending radially outward from said second portion of
said body portion axially inward of said tip.”
The Examiner finds that Hreha’s panel lifter 18 corresponds to the
body portion having a second portion, including “a protrusion extending
axially inward from the second portion.” Ans. 3. The Appellants contend
that Hreha “teaches that nothing extends radially outward from the body
Appeal 2010-005068
Application 11/404,527

6
portion 18, let alone a stop projection.” Br. 8. We agree. Hreha does not
disclose a radial projection extending outward from the panel lifter 18.
Thus, for the reasons provided above, the rejection of claims 1-5, 7-
20, and 22-25 as anticipated by Hreha is not sustained.
Claim 6
The rejection of claim 6, based on Hreha, relies on the same erroneous
finding as discussed supra with respect to claim 1. Ans. 4. Thus, the
rejection of claim 6 as unpatentable over Hreha is not sustained.

Provisional Rejection of claims 1-20 and 22-25 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-3, and 5-11 of US Patent Application Serial Number 11/499,229
Claims 1-20 and 22-25 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-3, and 5-11 of US Patent Application Serial Number 11/499,229.
However, US Patent Application Serial Number 11/499,229 went abandoned
on September 14, 2011. Thus, we dismiss as moot the Examiner’s
provisional obviousness-type double patenting rejection of claims 1-20 and
22-25.

DECISION
We REVERSE the rejections of claims 1-20 and 22-25.
We DISMISS the rejection of claims 1-20 and 22-25 on the ground of
nonstatutory obviousness-type double patenting.

REVERSED

Klh