Ex Parte Meggiolan et al

Patent Trial and Appeal Board

Feb 28, 2017

12568137 (P.T.A.B. Feb. 28, 2017)

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.
12/568,137 09/28/2009 Mario Meggiolan CAM3-PT065.1 5801
3624 7590 03/02/2017
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
ROBITAILLE, JOHN P
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO MEGGIOLAN
and MAURIZIO PASSAROTTO
Appeal 2015-002578
Application 12/568,137
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1—19. A hearing was held on February 14, 2017.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Independent claims 1 and 14 are reproduced below from the Claims
Appendix of the Appeal Brief dated July 2, 2014 (“App. Br.”). The limitations at
issue are italicized.
Appeal 2015-002578
Application 12/568,137
1. A method for making a bicycle rim comprising the steps of:
a) providing a mold shaped for forming the bicycle rim, at least
one first element for forming walls that define at least one radially
inner circumferential chamber and at least one second element for
forming walls that include tire coupling wings;
b) providing at least one reinforcement element including
unidirectional structural fibers;
c) arranging a composite material having structural fibers
incorporated in a polymeric material in the mold about the at least one
first element and partially about the at least one second element;
d) arranging the at least one reinforcement element
circumferentially in a space defined at an intersection of the walls,
such that the unidirectional structural fibers extend substantially
parallel to a circumferential direction of the bicycle rim;
e) subjecting the mold, the at least one first element and the at
least one second element to a pressure and temperature sufficient to
cause curing of the polymeric materi al, formation of the at least one
reinforcement element to complement the space defined at the
intersection of the walls, and formation of a molded bicycle rim
within the mold;
f) removing the molded bicycle rim from the mold; and
g) removing the at least one second element from the molded
bicycle rim.
App. Br. 22—23.
14. A method for making a bicycle rim comprising the steps of:
a) providing a mold shaped for forming the bicycle rim;
b) providing at least one first element for forming walls that
define a radially inner circumferential chamber and at least one
second element for forming walls that include tire coupling wings;
c) providing at least one reinforcement element including
unidirectional structural fibers;
cl) embedding the unidirectional structural fibers of the at least
one reinforcement element in a gluing substance that hinders sliding;
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Application 12/568,137
d) arranging a composite material having structural fibers
incorporated in a polymeric material that is different from the gluing
substance in the mold about the at least one first element and partially
about the at least one second element;
e) arranging the at least one reinforcement element in a space
defined at an intersection of the walls;
f) subjecting the mold to a pressure and temperature sufficient
to cause curing of the polymeric material and formation of a molded
bicycle rim within the mold;
g) removing the molded bicycle rim from the mold; and
h) removing the at least one second element from the molded
bicycle rim.
App. Br. 26—27.
The claims on appeal stand rejected as follows:
(1) claims 1, 5—10, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Meggiolan1 in view of Gross et al.;2 and
(2) claims 2-4, 11, and 14—19 under 35 U.S.C. § 103(a) as unpatentable
over Meggiolan in view of Gross, and further in view of Woelfel.3
B. DISCUSSION
1. Rejection (1)
The Examiner finds Meggiolan discloses a method for making a bicycle rim.
See Ans. 2—3.4 Meggiolan Figure 9, reproduced below, illustrates a phase of the
disclosed method.
1 US 2002/0108249 Al, published August 15, 2002 (“Meggiolan”).
2 US 5,650,229 A, issued July 22, 1997 (“Gross”).
3 US 4,376,749, issued March 15, 1983 (“Woelfel”).
4 Examiner’s Answer dated November 7, 2014.
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Application 12/568,137
l
A
Meggiolan Fig. 9 depicts a phase of the molding method.
As for claim 1, the dispositive issue on appeal is whether the combination of
Meggiolan and Gross renders obvious the following italicized limitation in step e):
e) subjecting the mold [e.g., mold elements 8 and 9 in Meggiolan
Figure 9], the at least one first element [e.g., inflatable bag 13 in
Meggiolan Figure 9] and the at least one second element [e.g., core 14
in Meggiolan Figure 9] to a pressure and temperature sufficient to
cause curing of the polymeric material [e.g., in layers A, B, and C in
Meggiolan Figure 9 5\ formation of the at least one reinforcement
element to complement the space defined at the intersection of the
walls, and formation of a molded bicycle rim within the mold.
App. Br. 22 (emphasis added).
Meggiolan discloses that element D (i.e., a reinforcement element)
comprises layers of structural fiber based fabric that are wound to fill the side
regions of the outer wall of the rim. Meggiolan 144. Claim 1 recites that the
5 Layers A, B, and C in Meggiolan Figure 9 are each structural fiber based fabric
(e.g., carbon fiber fabric) incorporated in a plastic material matrix. See Meggiolan
137.
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Application 12/568,137
reinforcement element includes “unidirectional structural fibers” and the
reinforcement element is arranged “such that the unidirectional structural fibers
extend substantially parallel to a circumferential direction of the bicycle rim.”
App. Br. 22. The Examiner finds Meggiolan does not disclose “the direction of the
unidirectional fibers in relation to the nascent bicycle rim.” Final 3. Thus, the
Examiner turns to Gross and finds Gross discloses unidirectional structural fibers
extending in the claimed direction. Final 3.
The Appellants argue that “Gross discloses a unidirectional fiber filler but
fails to disclose formation of the at least one reinforcement element to complement
the space defined at the intersection of the walls as recited by claim 1.” App. Br.
16 (emphasis omitted). Referring to step e) in claim 1, the Appellants argue:
Gross discloses a preformed filler 15 in which a bundle of fibers 26
are inserted into a mold 27 with a cavity 28 shaped to match the gap
to be filled. . . . Gross’s mold and fibers are placed in an oven to
dissolve any residual solvent which are used to treat the fibers. . . .
After heating, the bundle of fibers is formed in a stabilized condition
in the shape of the mold cavity. The bundle in Gross is preformed,
and retains its shaped condition when added to a gap. . . . The
preformed bundle is added to a gap in its preformed state. . . . Gross
fails to disclose inserting the unformed unidirectional fibers of the
reinforcement element into a space defined by the intersection of
walls of the rim for later formation as required by [step e) in] claim 1.
App. Br. 17 (citations omitted).
In response, the Examiner concludes that claim 1 does not exclude the
preformed filler of Gross. More specifically, the Examiner concludes that the
reinforcement element is not required to be cured at step e). Rather, according to
the Examiner, step e) merely requires that “the temperature and pressure are
sufficient to do so.” Ans. 4.
The Appellants argue:
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Application 12/568,137
Claim 1 recites the pressure and temperature are sufficient to cause
three things: (A) curing of the polymeric material, (B) formation of
the at least one reinforcement element to complement the space
defined at intersection of walls of the bicycle rim components, and (C)
formation of a molded bicycle rim within the mold. It is obvious that
the temperature and pressure may not just be abstractly “sufficient” to
make those things as the Examiner appears to argue .... Instead, the
mold and the first and second elements must be actually subject to
such a temperature and pressure that those three things actually
happen. This is self-evident when considering element (C) above, the
formation of a molded bicycle rim within the mold because if it was
not actually formed in step e), then it could not exist in step f).
Reply Br. 6—7.6
The Appellants’ arguments are persuasive of reversible error. Step e) in
claim 1 recites that the mold and the first and second elements are subjected to a
pressure and temperature that causes three things to occur: “[1] curing of the
polymeric material, [2] formation of the at least one reinforcement element to
complement the space defined at the intersection of the walls, and [3] formation of
a molded bicycle rim within the mold.” App. Br. 22. On this record, the Examiner
has failed to show that Gross’ preformed filler7 is capable of being formed to
complement the space defined in claim 1 under the pressure and temperature
disclosed in Meggiolan. For that reason, the § 103(a) rejection of claims 1, 5—10,
12, and 13 based on the combination of Meggiolan and Gross is not sustained.
2. Rejection (2)
a. Claims 2-4 and 11
Claims 2-4 and 11 depend, either directly or indirectly, from claim 1. The
Examiner does not rely on Woelfel to cure the deficiencies in the § 103(a) rejection
6 Reply Brief dated January 7, 2015.
7 See Gross, col. 4,11. 10-36.
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Application 12/568,137
of claim 1 identified above. Therefore, the § 103(a) rejection of claims 2-4 and 11
based on the combination of Meggiolan, Gross, and Woelfel is not sustained for
the reasons set forth above.
b. Claims 14—19
The Examiner finds Meggiolan “does not teach embedding the
unidirectional structural fibers of the at least one reinforcement element in a gluing
substance” as recited in step cl) in claim 14. Final 8. The Examiner, however,
finds Woelfel “teaches embedding the unidirectional structural fibers of the at least
one reinforcement element in a gluing substance which hinders sliding and is
different from the polymeric material” as recited in claim 14.8 Final 8 (citing
Woelfel, col. 4,11. 40-55).
The Appellants argue that “Woelfel discloses a fiber-reinforced material
including the following layers (in order): (1) a sheet of polyethylene film 14; (2) a
first thin layer of paste 25; (3) chopped fibers 24; (4) continuous fibers 30; and (5)
a second thin layer of paste 35.” App. Br. 18—19 (citing Woelfel, col. 2,1. 40-col.
3,1. 7). The Appellants argue that “Woelfel is completely silent regarding
embedding either layers of paste 25, 35, with its unidirectional fibers 30.” App.
Br. 19-20.
Woelfel discloses that a thermosetting resin paste is metered onto a
polyethylene film. Fibers fall by gravity onto the paste layer in a substantially
random pattern. At a second process stage, Woelfel discloses that continuous
fibers are laid upon the paste layer in a parallel equally spaced unidirectional
8 The Examiner also finds Gross teaches embedding unidirectional fibers in a
gluing substance. Final 10. In Gross, a fiber bundle is submerged in a stabilizer
solution, wherein the stabilizer “is preferably a compatible resin to that which will
ultimately be used in the part.” Gross, col. 3,11. 21—23, 52—55; Gross Fig. 3.
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Application 12/568,137
pattern over the random fibers.9 A second layer of paste identical to the first layer
of paste is metered onto a second polyethylene film, and a sandwich is formed
whereby the continuous fibers are disposed between layers of paste. Woelfel, col.
2,1. 40-col. 3,1. 7. The Appellants have failed to explain, in any detail, why the
continuous fibers of Woelfel which are sandwiched between layers of paste are not
embedded in a gluing substance that hinders sliding as claimed. In that regard, we
note that the Appellants do not direct us to any definition of “embedding,” let alone
a definition of “embedding” that excludes the sandwich structure disclosed in
Woelfel.10
The Appellants also argue that “the Examiner failed to substantiate how and
where Woelfel would suggest a paste/gluing substance that is different from a
polymeric material that would incorporate the structural fibers.” Reply Br. 8; see
also App. Br. 19 (portion of Woelfel relied on by Examiner* 11 “is completely silent
regarding . . . arranging a composite material having structural fibers incorporated
in a polymeric material that is different from the gluing substance in the mold”).
The Appellants’ argument is persuasive of reversible error. The portion of
Woelfel relied on by the Examiner states, in relevant part: “In every case, the
number of spiral plies required depends upon the number of different types of sheet
molding compound needed and the thickness of each sheet.” Woelfel, col. 4,11.
42-45 (emphasis added). Woelfel discloses that the phrase “different types of
sheet molding compound” refers to “having differing fiber orientations,” not a
9 In one embodiment of the invention, Woelfel discloses that only continuous
parallel strands may be used. Woelfel, col. 3,11. 53—56.
10 We also note that the words “embed” or “embedding” do not appear in the
Appellants’ original disclosure.
11 Woelfel, col. 4,11. 40-55.
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polymeric material that is different from a gluing substance as claimed. Woelfel,
col. 4,11. 39—41 (“different types of sheet molding compound, i.e. having differing
fiber orientations”).
In sum, the Examiner’s finding that Woelfel teaches embedding
unidirectional structural fibers in a gluing substance that “is different from the
polymeric material” is not supported by a preponderance of the evidence.12 See
Final 8. Therefore, the § 103(a) rejection of claims 14—19 based on the
combination of Meggiolan, Gross, and Woelfel is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
12 See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the
initial burden of presenting a prima facie case of unpatentability).
9