Ex Parte Fischer

Patent Trial and Appeal BoardAug 23, 2017

13586924 (P.T.A.B. Aug. 23, 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. 13/586,924 08/16/2012 Erika Fischer 12079 1767 20879 7590 08/23/2017 EMCH, SCHAFFER, SCHAUB & PORCELLO CO PO BOX 916 ONE SEAGATE SUITE 1980 TOLEDO, OH 43697 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 08/23/2017 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 ERIKA FISCHER Appeal 2017-004472 Application 13/5 86,9241 Technology Center 3600 Before ERIC S. FRAHM, LARRY J. HUME, and AARON W. MOORE, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 2â€”7 and 11. Appellant has canceled claims 1 and 8â€”10. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Erika Fischer, Weilhelm/Teck, Germany. App. Br. 1. Appeal 2017-004472 Application 13/586,924 STATEMENT OF THE CASE2 The Invention Appellant's disclosed embodiments and claimed invention "relate[] to a wheel weight for installation on a motor vehicle wheel for balancing." Spec. 2,11. 10-11. Exemplary Claim Claim 11, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 11. Wheel weight (5) for installation on a motor vehicle wheel for balancing the wheel; wherein the wheel weight (5) is a rigid body (7); wherein the rigid body (7) is a ceramic; wherein the ceramic is an aluminum oxide ceramic that is highly compressed and sintered; and at least one fastening means for attaching the wheel weight (5) to the motor vehicle wheel. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Draskovich US 5,047,264 Sept. 10, 1991 Schmidt DE 195 27 204 A1 Jan. 30, 1997 Polyvas WO 99/00609 Jan. 7, 1999 2 Our decision relies upon Appellant's Appeal Brief ("Br.," filed Aug. 22, 2016); Examiner's Answer ("Ans.," mailed Nov. 3, 2016); Final Office Action ("Final Act.," mailed Apr. 15, 2016); and the original Specification ("Spec.," filed Aug. 16, 2012). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal 2017-004472 Application 13/586,924 Rejection on Appeal Claims 2â€”7 and 11 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Polyvas, Draskovich, and Schmidt. Ans. 2. CLAIM GROUPING Based on Appellant's arguments (Br. 3â€”8), we decide the appeal of the obviousness rejection of claims 2â€”7 and 11 on the basis of representative claim 11. ISSUE Appellant argues (App. Br. 3â€”8) the Examiner's rejection of claim 11 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Polyvas, Draskovich, and Schmidt is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a rigid body ceramic wheel weight, "wherein the ceramic is an aluminum oxide ceramic that is highly compressed and sintered," as recited in claim 11? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments Appellant could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claims 2â€”7 and 11 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in 3 Appeal 2017-004472 Application 13/586,924 the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claim 11 for emphasis as follows. Appellant contends, "[t]he inventive wheel balancing weight, consists of a highly densified ceramic which is made by isostatic pressing .... If anything, Draskovich teaches the exact opposite [because] Drasckovich [sic] piles on layers of bulky ceramic mixtures that are not isotatic [sic] pressed." Br. 3^4. Appellant further contends: Draskovich does not compact or densify, yet alone compact and density by isostatic pressing. Further, Draskovich is non-analogous art. Draskovich relates to ceramic turbines. Draskovich discloses a narrow purpose. There is no basis in fact or theory extending this scope into unrelated and wholly speculative uses. Applicants have identified a technical problem and provided a solution. Draskovich does not even recognize the problem, let alone teach a solution. Clearly, Draskovich is not even remotely pertinent to the particular problem faced by Applicant. Br. 4 (citing In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004); and In re Klein, 647 F.3d 1343 (Fed. Cir. 2011). Appellant continues the argument by stating none of the three prior art references teach or suggest the ceramic being an aluminum-oxide ceramic that is highly compressed and sintered. Br. 5. However, Appellant admits "Polyvas discloses a wheel weight for balancing vehicle wheels which wheel weights may be made of ceramic as mentioned at page 4, lines 1 to 3," but contend "nothing is said about the density or the specific weight or the 4 Appeal 2017-004472 Application 13/586,924 material," and further point out, "[t]he inventive wheel balancing weight, however, consists of a highly densified ceramic which is made by isostatic pressing." Id. Appellants argue: This is an important features [sic] which makes it possible to use ceramics instead of lead which usually is used for wheel balancing. Using regular ceramic will lead to very bulky and large balancing weights which will not be accepted in the market place. Using highly compactified ceramics produced by isostatic pressing, however, will provide balancing weights which will be accepted by the customers, Br. 5. Appellant's contention does not persuade us of error on the part of the Examiner because Appellant is responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We specifically note Appellant's challenge to the references individually is not convincing of error in the Examiner's position because all of the features of the secondary Polyvas and tertiary Schmidt references need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the 5 Appeal 2017-004472 Application 13/586,924 other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Moreover, we find Appellant has misconstrued the applicable precedent regarding non-analogous art of In re Bigio and In re Klein, quoted above. Appellant argues, "Draskovich does not even recognize the problem, let alone teach a solution . . . [and] is not even remotely pertinent to the particular problem faced by Applicant." App. Br. 7. Our reviewing court holds that two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). We find Draskovich and Polyvas are both reasonably pertinent to the claimed invention because the Draskovich reference is concerned with a method of dynamically balancing ceramic turbine wheels; Polyvas is concerned with using wheel weights to balance a vehicle wheel, while the claimed invention is directed to balancing wheels using ceramic weights. See Draskovich Title; and see Polyvas Abstract. Moreover, in response to Appellant's contention Draskovich does not recognize the problem purportedly solved by the claimed invention, our reviewing court holds, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). For aprima facie case of obviousness to be established, 6 Appeal 2017-004472 Application 13/586,924 the reference need not recognize the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 11, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 11, and grouped claims 2â€”7 which fall therewith. See Claim Grouping, supra. CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 2â€”7 and 11 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 2â€”7 and 11. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§41.50(f). AFFIRMED 7