Ex Parte Houten

Patent Trial and Appeal Board

Dec 4, 2012

10932903 (P.T.A.B. Dec. 4, 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.
10/932,903 09/02/2004 Garry Van Houten LAC003 P345 4372
277 7590 12/04/2012
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
MORANO IV, SAMUEL J
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
12/04/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte GARRY VAN HOUTEN
____________________

Appeal 2010-009046
Application 10/932,903
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009046
Application 10/932,903
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
8, 10-21 and 23-45. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The claims are directed to a vehicle wheel, an overlay (or cover) for
the wheel, and an adhesive layer between the wheel and the overlay. The
structures of the wheel and the overlay are said to cooperate to conceal any
excess adhesive and give the visible impression that the outboard surface of
the overlay is the outboard surface of the wheel. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A wheel and overlay assembly comprising:
a wheel having an outboard surface, said wheel further
having a disk portion and a rim portion circumscribing said disk
portion, said rim portion having a rim flange circumscribing
said rim portion, said rim flange terminating in a flange lip
defining a radially outermost edge, said flange lip having an
outboard surface;
an overlay having an outboard surface, said overlay being
attached to said outboard surface of said wheel, said overlay
further having a web portion, and a peripheral flange
circumscribing said web portion and terminating in a rim
flange, said rim flange having a radially outermost lip aligned
within a predetermined margin of said radially outermost edge
of said flange lip of said wheel such that said rim flange of said
overlay does not radially extend beyond said outermost edge of
said flange lip of said wheel regardless of tolerance variations
of said overlay and said wheel, whereby said overlay gives a
visible impression that said outboard surface of said overlay is
actually said outboard surface of said wheel and not a
separately attached component of said wheel and overlay
assembly;
Appeal 2010-009046
Application 10/932,903
3
an adhesive deposited between said overlay and said
outboard surface of said wheel, said adhesive attaching said
overlay to said outboard surface of said wheel, and wherein
only a portion of said radially outermost lip of said overlay
contacts said flange lip of said wheel thereby creating a space
therebetween, and wherein any excess adhesive deposited
between said overlay and said outboard surface of said wheel is
received within said space between said radially outermost lip
of said overlay and said flange lip of said wheel.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Funato US 5,922,431 Jul. 13, 1999
Chase US 2002/0093242 A1 Jul. 18, 2002

REJECTIONS
Claims 1-8, 10-21 and 23-45 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chase and Funato. Ans. 4.

OPINION
Appellant states that independent claims 14, 27, and 40 recite
limitations similar to claim 1. Dependent claims 2-8, 10-13, 15-21, 23-26,
28-39 and 41-45 are said to be in condition for allowance for the same
reasons as their parent claims. App. Br. 15. Likewise, the Examiner has not
stated separate grounds of rejections for the independent claims. Ans. 4-8.
Therefore, all of the claims on appeal stand or fall with claim 1.
Appellant asserts that the modification of Chase in view of Funato
proposed by the Examiner would not have been obvious to one of ordinary
skill in the art at the time the invention was made. App. Br. 8, last paragraph.
App
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Appeal 2010-009046
Application 10/932,903
5
axially outboard direction. Figure 4 of Chase depicts the rim flange area of
the vehicular wheel assembly. While the disclosure of Figure 4 of Chase is
quite similar to Figure 4 of the present application, it describes a flush
surface at the interface 56/38 where the present invention includes a space,
shown as 180, between the radially outermost lip of the overlay and the
flange lip of the wheel to receive excess adhesive.
Recognizing this difference between Chase and the claimed invention,
the Examiner correctly found that Funato describes the use of a
circumferential groove 140a to receive excess foamed adhesive during
assembly of a plastic molding to a base. Ans. 6-7. Funato describes that the
groove 140a receives excess foamed material, if any, and provides a seal
(Ans. 7; Funato, col. 6, ll. 20-32) and also reduces “flash in the plastic
molding thus produced.”1 Ans. 7; Funato, col. 9, ll. 26-37. Funato further
describes that an objective of these seals is keeping the foaming material off
of the outer surface of the outer skin. Funato, col. 8, ll. 26-34 and col. 10, ll.
56-62.
Appellant argues that the problems addressed by each reference are
considerably different from the problem solved by the present invention
(App. Br. 12, last paragraph); that the Examiner has misinterpreted the
purpose of the grooves 140a of Funato (App. Br. 13, last paragraph); and
that Funato is non-analogous art to the wheel assemblies of Chase and the
present invention (App. Br. 15, first full paragraph). No evidence of
secondary considerations of non-obviousness has been entered in the record.
App. Br. 10.

1 “Flash,” in this context, would be understood to refer to excess foaming
material that has spilled out beyond the seal and into, for example, the area
between the halves of the mold 530/590 in Figure 13 of Funato.
Appeal 2010-009046
Application 10/932,903
6
We generally agree with the Examiner.
First, Appellant argues that the purpose of the grooves 140a of Funato
is to provide engaging projections 260. App. Br. 10, last paragraph; 12, last
paragraph. In response, the Examiner correctly states that the grooves 140a
collect material “if the foaming material 230 penetrates” and states that the
grooves reduce internal pressure and reduce flash. Ans. 13-14. As the
foaming material does not necessarily penetrate to the groove 140a, and as
one purpose of the groove is to eliminate flash, the material that gathers in
140a is excess. As stated by the Examiner, “[w]hile the word ‘excess’ does
not appear in the Funato et al patent, it stands to reason that any foam which
escapes the cavity is not needed to fill the cavity and thus could be
considered to be ‘excess’ foam.” Ans. 14.
Second, Appellant argues that combining the teachings of Chase and
Funato would lead one of ordinary skill in the art to use a recessed groove
within the area of the foam cavity to anchor the foam. App. Br. 14. The
Examiner counters that Funato shows the grooves to be in the side wall on
the peripheral rim of the mold, and that there would be no reason to move
them to the cavity. Ans. 19. We note that Funato depicts two grooves 140a
in each of Figures 4 and 13. One of the grooves 140a (to the left in Figure 4)
is within the molding cavity 130 and is labeled as forming a projection 260
which does, as argued by Appellant, serve to hold the foam in place.
Funato, col. 6, l. 30. The other of the grooves, to the right in Figure 4, is
past where the side walls and skin would contact. It is not labeled as 260 and
would not meaningfully hold the element 230 in place were it to be filled
with the foam given that it is physically separated from the remainder of
element 230. Therefore, Funato teaches both a groove within the molding
cavity and a groove outside the cavity. The Examiner has provided a proper
Appeal 2010-009046
Application 10/932,903
7
rationale for adding a groove outside the molding cavity even though the
evidence also supports, and the claim does not preclude, adding a second
groove within the molding cavity. The fact that unclaimed subject matter
may be obvious in view of the applied prior art does not demonstrate
nonobviousness of the claimed subject matter.
Third, Appellant argues that Funato is non-analogous art to Chase and
the present invention. Funato is said to be directed to an interconnect panel
molding, while the present invention (and by implication Chase) are directed
to wheel assemblies. App. Br. 14, last paragraph. This is not persuasive.
While Funato addresses automobile instrument panels, it is explicitly not so
limited. See Ans. 10-12.
Two criteria have evolved for determining whether prior art is
analogous: (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.
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve. If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that reference in
an obviousness rejection.
In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992)
The problem addressed by the present invention relates to adhesive
squeeze out. Spec. p. 11, para [0022]. As noted above, Funato reduces “flash
Appeal 2010-009046
Application 10/932,903
8
in the plastic molding thus produced.” Ans. 7; Funato, col. 9, ll. 26-37.
Funato further describes that an objective of these seals is keeping the
foaming material off of the outer surface of the outer skin. Funato, col. 8, ll.
26-34 and col. 10, ll. 56-62. Funato describes known problems in the art and
solutions including grooves 140a that avoid flash, or leakage, when molding
adhesive foam. Ans. 6; Funato, col., ll. 20-35. We therefore find that Funato
logically would have commended itself to an inventor’s attention when
confronted with the problem of adhesive squeeze out, and, as such, is
properly considered analogous art.

DECISION
The Examiner’s rejection of claims 1-8, 10-21 and 23-45 is affirmed.

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

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