Ex Parte Wilson

Patent Trial and Appeal Board

Aug 26, 2013

11214355 (P.T.A.B. Aug. 26, 2013)

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.
11/214,355 08/29/2005 Larry J. Wilson 4660/7026 2587
757 7590 08/27/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
08/27/2013 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 LARRY J. WILSON
____________

Appeal 2011-002833
Application 11/214,355
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002833
Application 11/214,355

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STATEMENT OF THE CASE
Larry J. Wilson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 26-34 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement and
under 35 U.S.C. § 112, second paragraph, for being indefinite. Br. 4-5.
Claims 1-10 have been canceled and claims 11-25 have been withdrawn.
Br. 3. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “wheel nuts or bolts for securing a
vehicle wheel, i.e., a tire and rim, on a motor vehicle.” Spec. 1, ll. 4-5 and
fig. 14.
Claim 26, the sole independent claim, is representative of the claimed
invention and reads as follows:
26. A decorative cap and wheel fastener
assembly for a vehicle, comprising:
(a) a fastener body is provided with a head and a
base,
i) the base that includes threads encircling
an axis of the fastener body;
(b) the head includes a first end, a second end, a
first section, and a second section;
i) the first section is located adjacent to the
first end and is provided with an external
polygonal surface, the external polygonal surface
of the first section is provided with a polygonal
cross-sectional shape;
(ii) the second section is located between the
first section and the second end of the head, and is
provided with a flange and an external cylindrical
surface, the external cylindrical surface is provided
with a substantially circular cross-sectional shape;
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Application 11/214,355

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(c) a cap that includes a first portion and a second
portion;
i) the first portion includes a wall segment,
ii) the wall segment is provided with an
internal polygonal surface with a polygonal cross-
sectional shape;
(d) the external polygonal surface of the first
section and the internal polygonal surface of the
wall segment are provided with latitudinal cross-
sectional dimensions;
(e) the latitudinal cross-sectional dimensions of the
internal polygonal surface of the wall segment are
at least as large as the latitudinal cross-sectional
dimensions of the external polygonal surface of the
first section;
(f) the cap further includes a second portion
provided with an internal cylindrically-shaped
surface;
(g) the internal cylindrically-shaped surface is
provided with a circular cross-sectional shape;
(h) the head of the body and the cap being pressed
together to form a frictional engagement between
the external polygonal surface of the first section
and the internal polygonal surface of the wall
segment;
(i) the frictional engagement, at least in part,
retains the cap on the first end of the head of the
fastener body when the fastener body is torqued;
(j) the internal cylindrically-shaped surface of the
second portion and the flange are dimensioned so
that, after assembly, the cap is, at least in part,
retained on the fastener body;
(k) a spherical section is disposed between the
flange and the second end,
i) the spherical section is adapted to seat in a
wheel rim aperture;
(l) the cap is configured to frictionally engage, at
least in part the first end of the head;
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(m) the cap includes a flared end that extends
around at least a portion of the flange and reveals a
portion of the external cylindrical surface of the
second section, the external cylindrical surface
axially separates the flared end of the cap and the
second end of the head of the fastener body; and
(n) the head of the fastener body is free of welding.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The Lack of Written Description Rejection
The Examiner found that the original disclosure fails to support the
limitation of a “frictional engagement” between the polygonal surfaces of
the fastener body and the cap, as called for by paragraph (h) of independent
claim 26. Ans. 4. According to the Examiner, because Appellant’s
Specification describes that hex-shaped sidewall segment 453 of cap 414
“slips easily” over hex-shaped section 424 of insert body 421, a frictional
engagement cannot exist. Ans. 8-9 (citing to Spec. 9, ll. 20-22).1
In response, Appellant takes the position that because Appellant’s
Specification “makes clear that the cap is secured to the fastener body and
torqued,” Appellant’s Specification “inherently discloses a frictional
engagement between the polygonal surfaces of the cap and the head of the

1 The Examiner also found that because cylindrical surface 431 is
interposed between the end of bolt insert 412 and polygonal surface 424, the
original disclosure fails to support “the first section [of the head] is located
adjacent the first end [of the head],” as called for by paragraph (b) of
independent claim 26. Ans. 4. However, the Examiner withdrew this
rejection. Ans. 6.
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Application 11/214,355

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fastener body so that the cap is retained on the head when the fastener
assembly is torqued.” App. Br. 7; Reply Br. 5. Thus, according to
Appellant, “[w]ithout any frictional engagement between the cap and he
head, the fastener assembly could not be torqued at all.” Id.
We are not persuaded by Appellant’s position because Appellant’s
Specification clearly states that when insert 412 is pressed into cap 414,
cylindrical wall 455of cap 414 undergoes elastic deformation forming an
interference fit with cylindrical surface 435 of bolt insert 412. Spec. 9, ll.
10-11 and 23-27. Thus, cap 414 is retained on the head of insert 412 by the
interference fit of cylindrical surfaces 435, 455. Although we agree with
Appellant that the fastener assembly of claim 26 cannot be torqued without a
frictional engagement between the cap and the head, nonetheless, because an
interference fit (frictional engagement) is present between cylindrical
surfaces 435, 455, the fastener assembly can be torqued without inherently
requiring a frictional engagement between hex-shaped surfaces 453, 424, as
Appellant contends.
Lastly, we note that in the amendment to the Specification filed June
27, 2006, the amendment merely states that “[t]he first end of the head 425
is configured to frictionally engage, at least in part, the cap 414 so that the
cap 414 is retained on the head 425 of the bolt body 421 when the bolt body
is torqued.” Page 3, ll. 6-8. Therefore, the amendment fails to disclose a
frictional engagement between the hex-shaped surfaces of the head and the
cap, as called for by paragraph (h) of independent claim 26.
We thus conclude that Appellant’s Specification does not reasonably
convey to those skilled in the art that Appellant had possession of the subject
matter of claims 26-34 as of the filing date of the present application.
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Therefore, we sustain the rejection of claims 26-34 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement.

The Indefiniteness Rejection
The Examiner found that paragraphs (e) and (h) of independent claim
26 contradict each other. Ans. 5. According to the Examiner, because the
internal dimension of the polygonal portion of the cap is at least as large as
the external dimension of the polygonal portion of the insert, as called for by
paragraph (e), a frictional engagement cannot exist, as called for by
paragraph (h). Id.
We do not agree with the Examiner that if a frictional engagement is
provided as called for by paragraph (h), the dimensional relationship of
paragraph (e) would not be satisfied. See Ans. 9. For example, when the
internal dimension of the polygonal portion of the cap is the same as the
external dimension of the polygonal portion of the insert, a frictional
engagement is formed between these polygonal surfaces. Hence, we agree
with Appellant, that although the cap slips easily over the insert head, this
“does not render the cap and the head entirely frictionless.” App. Br. 6.
Therefore, we do not sustain the rejection of claims 26-34 under 35
U.S.C. § 112, second paragraph, for being indefinite.

SUMMARY
The Examiner’s rejection of claims 26-34 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement, is
affirmed.
Appeal 2011-002833
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The Examiner’s rejection of claims 26-34 under 35 U.S.C. § 112,
second paragraph, for being indefinite, is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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