Ex Parte 7334846 et al

Patent Trial and Appeal Board

Nov 26, 2014

95001125 (P.T.A.B. Nov. 26, 2014)

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.
95/001,125 11/26/2008 7334846 2202214.121US4 8734
24395 7590 11/26/2014
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006
EXAMINER
REIP, DAVID OWEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/26/2014 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
____________

SPECIALIZED BICYCLE COMPONENTS, INC.
Requester and Appellant

v.

Patent of K.G. MOTORS, Inc.
Patent Owner and Respondent
____________

Appeal 2014-002865
Reexamination Control 95/001,125
Patent 7,334,846 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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This is a decision under 37 C.F.R. § 41.77(f). In a Decision on
Appeal mailed February 28, 2012, Appeal No. 2011-010680 (hereinafter
“Original Decision” or “Orig. Dec.”), we reversed the Examiner’s decision
not to adopt Requester’s proposed grounds of rejection of claims 1-29 over
certain prior art and designated the proposed grounds as new grounds of
rejection pursuant to 37 C.F.R. § 41.77(b). (“Orig. Dec.” 2, 5, 6, 25–26.) In
response, Patent Owner K.G. Motors, Inc. filed a Request to Reopen
Prosecution under 37 C.F.R. § 41.77(b)(1) on May 29, 2012 (hereinafter
“Request” or “PO Req.”).
The Request presented new evidence in the form of a Declaration
under 37 C.F.R. § 1.132 of Mr. Martin Sacks (hereinafter “Sacks
Declaration”), a Declaration under 37 C.F.R. § 1.132 of Mr. Stanley
Koziatek (hereinafter “Koziatek 132 Declaration”), a Declaration under 37
CFR § 1.131 of Mr. Stanley Koziatek (hereinafter “Koziatek 131
Declaration”), and a Declaration under 37 C.F.R. § 1.132 of Ms. Marie-
Hélène Prémont (hereinafter “Prémont Declaration”). (PO Req. 2.)
Third Party Requester Specialized Bicycle Components, Inc. filed
comments under 37 C.F.R. § 41.77(c) on June 28, 2012 (hereinafter “Req’r
Resp.”), including a Declaration under 37 C.F.R. § 1.132 of Mr. Jeremy
Thompson (hereinafter “Thompson Declaration”) and a Declaration under
37 C.F.R. § 1.132 of Mr. Joseph Buckley (hereinafter “Buckley
Declaration”), urging that the new evidence did not overcome the new
ground of rejection.
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In the Examiner’s Determination pursuant to 37 C.F.R. § 41.77(d), the
Examiner determined that the Board’s analysis with respect to obviousness
was maintained and that the evidence of secondary considerations was
insufficient to outweigh the evidence of obviousness (Examiner’s
Determination mailed November 19, 2012, hereinafter “Ex. Det.”, at 6-8).
The Examiner determined that the Declaration under 37 C.F.R. § 1.131 was
insufficient to antedate prior art applied in the rejections. (Ex. Det. 8-15.)
Both Patent Owner and Requester filed comments under 37 C.F.R.
§ 41.77(e). (Patent Owner Comments filed December 19, 2013 (hereinafter
“PO 1st 41.77(e) Comments”) and January 9, 2014 (hereinafter “PO 2nd
41.77(e) Comments”); Requester Comments filed December 10, 2013
(hereinafter “Req’r 1st 41.77(e) Comments”) and January 16, 2014
(hereinafter “Req’r 2nd 41.77(e) Comments”).)
We have reconsidered the matter based on all the relied-upon
arguments and evidence, including the new evidence and comments related
thereto. Having done so, we REVERSE the Examiner’s decision to maintain
the new grounds of rejection set forth in the Original Decision. See 37
C.F.R. § 41.77(f).

STATEMENT OF THE CASE
In the Original Decision, we reversed the Examiner’s decision not to
reject claims 1-29, and as a result entered the following grounds of rejection
by operation of 37 C.F.R.§ 41.77(b):
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II. Claims 1–3, 7, 8, 12, 20–26, 28, and 29 under 35 U.S.C.
§ 103(a) as being obvious over Okajima ’3071 in view of
Okajima ’766;2
III. Claims 4, 5, 9, 10, and 27 under 35 U.S.C. § 103(a) as being
obvious over Okajima ’307 in view of Chen3 and Veux,4 or
Okajima ’307 in view of Okajima ’766 in view of Chen;
IV. Claims 6 and 19 under 35 U.S.C. § 103(a) as being obvious
over Okajima ’307 in view of Okajima ’766, further in view of
Chen;
V. Claim 11 under 35 U.S.C. § 103(a) as being obvious over
Okajima ’307 in view of Tien5 or Veux, or Okajima ’307 in
view of Okajima ’766, further in view of Veux;
VI. Claim 13 under 35 U.S.C. § 103(a) as being obvious over
Okajima ’307 in view of Chen or Okajima ’307 in view of
Okajima ’766 further in view of Chen or Veux; and
VII. Claims 14–18 under 35 U.S.C. § 103(a) as being obvious over
Okajima ’307 in view of Okajima ’766 or Veux.
(Orig. Dec. 5-6.)
For convenience, we reproduce claim 1 below:
1. A bicycle wheel rim onto which a tubeless tire can be
mounted, comprising:

1 Okajima ’307 US 7,090,307 B2 Aug. 15, 2006
2 Okajima ’766 US 6,568,766 B1 May 27, 2003
3 Chen US 6,402,255 B1 June 11, 2002
4 Veux US 7,104,300 B2 Sep. 12, 2006
5 Tien US 6,752,187 B1 June 22, 2004
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a base portion having a proximal surface engageable with
a spoke member and an opposing distal surface engageable with
a surface of a tire bead of the tubeless tire, wherein the distal
surface has a trough, and, in cross sectional profile, a flat bead
seat immediately adjacent and contiguous with the trough to an
intersection point with a respective sidewall surface such that
the tire bead rests on the flat bead seat when mounted; and
an integral sidewall extending from an intersection of the
proximal surface and the distal surface, wherein a most distal
point of the sidewall extends no further than 0.200 inches above
the flat bead seat of the distal surface of the rim,
wherein the bead seat is horizontally disposed with
respect to an axial direction of the rim so that when the tire is
mounted, the tire bead is pressed between the flat bead seat and
the sidewall to provide a ball and socket fit.

(Req. App. Br. 59, Claims App’x.)

Claim 23 recites a bicycle wheel rim having a sidewall between 0.150
inches to 0.175 inches. (Req. App. Br. 61, Claims App’x.)

ISSUE
In the rejections set forth in the Original Decision, we noted that
Okajima ’307 was silent as to the sidewall heights recited in the independent
claims, that Okajima ’766 disclosed sidewall heights significantly
overlapping the range of claim 1, and that the difference between the lowest
endpoint of the range disclose in Okajima ’766 and the upper endpoint of the
range disclosed in claim 23 was 0.0002 inches. (Orig. Dec. 16–17.) We
agreed with Requester that it would have been obvious for one of ordinary
skill in the art to have turned to Okajima ’766 for guidance in determining
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an appropriate sidewall height for the sidewalls of the rims disclosed in
Okajima ’307. (Orig. Dec. 16.)
Patent Owner contends that the Koziatek 131 Declaration antedates
Okajima ’307 and, therefore, Okajima ’307 is not available as prior art. (PO
Req. 3.) Patent Owner contends further that the Sacks Declaration, citing
International Standard ISO 5775-1 for bicycle tires and rims (hereinafter
“Standard”) provides evidence that one of ordinary skill in the art would not
have combined the teachings of Okajima ’307 with Okajima ’766 to arrive at
the bicycle wheel rims having the features recited in the claims. (PO Req.
4–14.) Patent Owner argues that the Koziatek 132 Declaration provides
evidence of secondary considerations, particularly commercial success, and
unexpected results. (PO Req. 14–17.)
Requester contends that Patent Owner’s own evidence proves that the
invention was conceived after the filing date of Okajima ’307. (Req’r Resp.
4–9.) Requester contends further that the secondary considerations evidence
and arguments provided are factually deficient or irrelevant to overcome the
obviousness analysis, relying on the Thompson Declaration for support.
(Req’r Resp. 9–14.) Requester argues that Patent Owner’s evidence of
secondary considerations is inadequate to outweigh the evidence of
obviousness, citing to the Thompson Declaration and Buckley Declaration.
(Req’r Resp. 15–25.)
The Examiner considered Patent Owner’s arguments including all
declarations and maintained the rejections. (Ex. Det. 6.)
Assuming that Okajima ’307 is available as prior art, the dispositive
issue is:
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Is Patent Owner’s Declaration evidence under 37 C.F.R. § 1.132 when
viewed with the prior art of record sufficient to weigh in favor of a
conclusion of non-obviousness?
ANALYSIS
Ground II-Combination of Okajima ’307 and Okajima ’766
We are unpersuaded by Patent Owner’s evidence that one of ordinary
skill in the art would not have turned to Okajima ’766 in order to determine
an appropriate sidewall height for the rims disclosed in Okajima ’307.
Patent Owner, through reference to the Sacks Declaration and the
Standard, contends that the rim disclosed in Okajima ’766 is considered to
be a crochet style rim, one of the three rim design categories disclosed in the
Standard, and that the rim of Okajima ’307 does not fall within one of such
rim design categories. (PO Req. 4–5; Sacks Declaration paras 26–30; see
also PO 1st 41.77(e) Resp., 12–17.) Thus, Patent Owner contends that one
of ordinary skill in the art would not have turned to Okajima ’766 to select a
sidewall height for use in Okajima ’307, because Okajima ’766 is directed to
a crochet style rim as defined by the Standard, while Okajima ’307 deviates
from the Standard. (PO Req. 9, 10; Sacks Declaration para. 43.)
We do not agree with Patent Owner’s argument. As argued by
Requester, the Standard cited by Patent Owner provides recommendations
for purposes of designing standard rims and tires to fit with one another, but
the Standard is not always followed in designing rims, as evidenced by
Okajima ’307. (Req’r Resp. 10; Thompson Declaration, para. 4.) Therefore,
one of ordinary skill in the art, in selecting a sidewall height to apply to the
rims of Okajima ’307, would not be compelled necessarily to follow the
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Standard, because one of ordinary skill in the art would have understood that
Okajima ’307 does not follow the Standard, the Standard providing only
recommendations for bicycle rims.
Moreover, we are not persuaded by Patent Owner’s argument that the
dimensions D1 and D2 in Okajima ’766 are interrelated and taught to act in
concert, such that one of ordinary skill in the art would not have selectively
relied on only the dimension of D2 to apply to Okajima ’307, because that
dimension is actively tied to the tire receiving recess. (PO Req. 7–9.)
For convenience, we reproduce FF6 from the Original Decision (Orig.
Dec. 12–13):

6. Figure 5 of Okajima ‘766 is reproduced below:

Figure 5 above depicts a partial cross-sectional view of the
outer portion of a bicycle rim 24 with annular side portions 50,
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with imaginary line L1 passing through a pair of outer corners
62a, imaginary line L2 passing through the outer peripheral
edges of the annular side portions 50, where L1 and L2 are
spaced apart by distance D2 of about 4.5 to about 6.5
millimeters. (Col. 4, ll. 1–6; col. 7, ll. 16–33.)

Specifically, Patent Owner argues that at the time of the ’846 Patent,
the general thought was to use a higher sidewall height (D2) or a deeper
recess (D1) to give ample room for the tire bead, such that if the bead seat is
flat with no recess, then the height of the sidewall would have been
increased correspondingly. (PO Req. 10; Sacks Declaration para. 46.)
Patent Owner argues further that one of ordinary skill in the art would have
considered a sidewall height of 0.200 inches to be extremely short and
making the bead seat area even smaller by not providing an angled bead seat
was unheard of in the industry according to the Sacks Declaration. (PO Req.
10–11; Sacks Declaration para. 46–47.)
However, Requester has provided evidence that Okajima ’766 does
not require that the bead seat and the short sidewall to be taken together and
that although dimension D1 nor D2 act in concert, neither dimension D1 nor
D2 requires a slanted bead seat. (Req’r Resp. 11–12; Thompson Declaration
paras. 5–7; Req’r 2nd 41.77(e) Comments 9-10.) In addition, the Thompson
Declaration states that there are several ways to adjust the drop center depth
(D1) without angling the bead seat, which were well known prior to 2003.
(Thompson Declaration para. 6.) In response to Patent Owner’s declaration
evidence that short sidewalls had not previously been used in combination
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with flat bead seats prior to the ’846 Patent, Requester cites to Okajima ’766
for the position that short sidewalls had been used with flat bead seats.
(Req’r Resp. 12–13; Thompson Dec. 7.) Thus, according to Requester the
sidewall height of the rims in Okajima ’307 would be a matter of design
choice for the bicycle wheel rim. KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (“When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.”)
We acknowledge that Mr. Sacks has significant experience in the
bicycle industry, and is qualified to opine as to the knowledge of one of
ordinary skill in the art in the field of bicycle rims. (Sacks Declaration,
paras. 3–16.) We also find that Mr. Thompson has sufficient experience in
the bicycle wheel rim field and is qualified to opine as to the knowledge of
one of ordinary skill in the art in the field of bicycle rims. (Thompson
Declaration para 1.)
In view of the evidence of record, we credit the explanations of the
Thompson Declaration over the explanations set forth in the Sacks
Declaration. Particularly, Okajima ’307 is acknowledged to be a rim that
does not fall within a category of rims cited in the Standard. One of
ordinary skill in the art would have had to rely on the knowledge in the art
regarding sidewall heights in bicycle rims, for guidance, including rims of a
different “type” according to the Standard, e.g., Okajima ’766, for sidewall
heights to employ in the rims disclosed in Okajima ’307. We, therefore,
agree with Requester that it would have been obvious to one of ordinary skill
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in the art, starting with Okajima ’307, to have turned to the sidewall height
of Okajima ’766 in the rim of Okajima ’307. (Req’r Resp. 10; Thompson
Declaration, para. 7; Req’r 2nd 41.77(e) Comments 9.)
We have considered Patent Owner’s other arguments, including that
line D2 in Okajima ’766 is imaginary and does not corresponds to sidewall
height, but find them to be without merit. (See Orig. Dec. 16–17; Thompson
Declaration, para. 5.)

Secondary Considerations
Patent Owner contends that rims having the features of the claims
exhibit commercial success due to significant sales, such that there is a
presumed nexus between the claimed features, a position that is further
supported by praise from multiple articles. (PO Req. 14; PO 1st 41.77(e)
Comments 21–24.) Patent Owner has presented evidence that purports to
show unexpected results in the form of tests comparing a “NoTubes ZTR
Olympic rim” with a “prior art style rim” allegedly showing an unexpected
criticality for the claimed heights and combination of elements. (PO Req.
15–17; PO 1st 41.77(e) Comments 24–25.)
Requester contends that the evidence of sales is inadequate and that
the Koziatek 132 Declaration does not establish a nexus between the alleged
commercial success and the claims. (Req’r Resp. 15.) Specifically,
Requester contends that Patent Owner offers only gross sales numbers, and
has not shown the sales of the rims in relation to the market, and that such
sales are not out of the ordinary for the market at the time. (Req’r Resp. 16;
Req’r 2nd 41.77(e) Comments 13–14.) In addition, Requester argues that a
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portion of the sales relied on by Patent Owner are directed to sales of rims
that fall outside the claims of the ’846 Patent. (Req’r Resp. 16.) Requester
contends that the Buckley Declaration establishes that the patented features
have no bearing on the sales of the product, and that factors such as the
overall market increase in demand for bicycle rims, as well as marketing
contributed to the increase in sales. (Req’r Resp. 17–19.) Further,
Requester argues that the publications cited by Patent Owner do not tie the
sales to the patented features. (Req’r Resp. 18; Req’r 2nd 41.77(e)
Comments 14–15.)
As to Patent Owner’s evidence of unexpected results, Requester
argues that the C-clamp test results are insufficient because: the results do
not compare the closest prior art; there is insufficient evidence as to the
relevancy of the C-clamp test; Patent Owner’s contention that a rim with a
higher sidewall will hold a tire better is not correct; and a horizontal bead
seat would have been expected to hold a tire better. (Req’r Resp.19–23.)
Requester further contends that Patent Owner’s declaration evidence is
opinion evidence that is entitled to little weight and is insufficient to
overcome the evidence of obviousness on the record. (Req’r Resp. 25.)
The Examiner agreed with and incorporated by reference Requester’s
arguments, determining that Patent Owner’s evidence fails to outweigh the
evidence of obviousness. (Ex. Det. 7–8.)

PRINCIPLES OF LAW
Once a prima facie case of obviousness has been established,
objective evidence of secondary considerations must be considered in
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making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1538-39 (Fed. Cir. 1983). See also In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990).
A “nexus” must be established between the merits of the claimed
invention and the evidence of secondary considerations in order for the
evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). The scope of the “objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA
1971); see also In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).
Further, in order to prove unexpected results, the invention must be
compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991).

Commercial Success
Patent Owner relies on the Koziatek 132 Declaration, which sets forth
a Table of rims sold between 2003 and 2011. (Koziatek 132 Declaration
para. 6.) The Koziatek 132 Declaration states that the growth of sales since
2004, when the patented rims were first sold, has been substantial, totaling
350,000 rims. (Id.) According to the Koziatek 132 Declaration, the
compound annual growth rate from 2005, the first full year after launching
the patented rims, until 2011, was 43.25%, and for 2012, the continued
growth was approximately 59.62% compared to January to April 2011.
(Koziatek 132 Declaration para. 7.) The Koziatek 132 Declaration identifies
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the rims accounting for the sales data from 2004–2011 and identifies each of
the features recited in claims 1 and 23 in the rims sold. (Koziatek 132
Declaration para. 11, Ex. A–L.) The Koziatek 132 Declaration asserts that
the sales data pertains only to sales of the rims such that there is a nexus
between the commercial success and the patented invention. (Koziatek 132
Declaration para. 12.) Accordingly, we are persuaded that the sales of the
rims in the “UNITS SOLD OF PATENTED RIMS” column in paragraph 6
of the Koziatek 132 Declaration correspond to rims having the features
recited in claims 1 and 23.
Requester presented evidence of sales of their “Control Rim” over the
time period of 2009–2012, which is alleged to be a rim was accused of
infringing the ’846 Patent, and that beginning in the model year 2010 had a
sidewall height of 0.209 inches and a flat bead seat oriented 3 degrees from
horizontal. (Buckley Declaration paras. 4-5.) According to the Buckley
Declaration, rim sales from the Control Rim increased by 48% both from
2009 to 2010 and 2010 to 2011. (Buckley Declaration para. 5.) From 2011
to 2012, sales of the Control Rim increased by 83%. Id.
Comparing the percentage growth of rim sales of the Control Rim
with rims of the Patent Owner having the features recited in claims 1 and 23,
the percentage growth of the Control Rim sales is similar to the percentage
growth of the sales of the rims of the Patent Owner having the features
recited in claims 1 and 23. Both Patent Owner and Requester provide
statements that the success of the rims has not been due to the amount of
advertising employed to market the respective rims. (Koziatek 132
Declaration paras. 13–15; Buckley Declaration, para. 6.) Although the
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percentage growth of the Control Rim and rims of the Patent Owner having
the features recites in claims 1 and 23, the amount of units sold of the rims
having the features recited in claims 1 and 23 is substantially more than the
amount of Control Rim units sold, with 129,903 units sold compared to 3376
of Control Rim units sold in 2011 alone.
We are not persuaded by Requester’s argument that the publications
cited by Patent Owner do not tie the sales to the patented features. (Req’r
Resp. 18.) In our view, the evidence provided by Patent Owner is sufficient
to relate the success of the rims to the features recited in claims 1 and 23.
Although the excerpt from Exhibit M to the Koziatek 132 Declaration, an
article from Dirt Rag Magazine, characterizes the sidewall height of “2-3
mm lower than traditional rims which is said to reduce pinch flats” as a
“fringe benefit,” and certain portions of Exhibits N, P, and R discuss other
features, such as hub and spoke options, the weight of the rims, and wide
bead shelves, the evidence as a whole sufficiently relates the success of the
rims to the height of the sidewalls.
For example, Exhibit N to the Koziatek 132 Declaration, an article
from Bike Magazine states: “Compared to standard tube rims, the Flow’s
[ZTR Flow Rim, Exhibit J to the Koziatek 132 Declaration, having the
recited features of claim 1] sidewalls are a few millimeters lower, making
them lighter and a little stiffer.” (Koziatek 132 Declaration para. 18; Ex. N.)
Thus, while Requester is correct that the Bike Magazine article discusses the
weight of the rim, it does so in relation to the sidewall height, which the
article agreed reduces pinch flats, decreases rolling resistance, and allows
the tire to be run at lower tire pressures. (Id.)
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Exhibit O to the Koziatek 132 Declaration, an excerpt from New
Zealand Mountain Biker relating to the ZTR Olympic Rim, Exhibit G to the
Koziatek 132 Declaration and having the features of claims 1 and 23, states:
“Stan NoTubes proprietary design with Bead Socket Design allow[s] a much
lower sidewall that locks the tyre’s bead in place and creates an airtight seal
due to the rim’s inner curve.” (Koziatek 132 Declaration para. 18; Ex. O.)
Further, Exhibit T to the Koziatek 132 Declaration, an article from
SingleTrack.com states: “Before anyone else in the industry thought to even
consider the concept, Koziatek was making rims with short sidewalls and
minimal bead hook, specifically for tubeless tires setups.” (Koziatek 132
Declaration para. 23; Ex. T.) Similar statements regarding the sidewall
height appear in the other exhibits to the Koziatek 132 Declaration. (See
Exs. Q, R, S, and U.)
We are of the view that the evidence of record supports the position
that the success of the rims relates to the features recited in claims 1 and 23,
particularly the sidewall height, which is the feature missing from Okajima
’307.

Unexpected Results
As evidence of unexpected results, Patent Owner performed a “c-
clamp” test, allegedly comparing the ability of a rim falling within claims 1
and 23, the ZTR Olympic Rim, Exhibit G to the Koziatek 132 Declaration
and having the features of claims 1 and 23, with a rim “very similar to
Okajima ’766” employing a rim with an angled bead seat and a sidewall
height of 0.238 inches. (Koziatek Declaration, paras. 31–38; Exs. G, V, W.)
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The c-clamp test allegedly demonstrates that the rims according to the
claims unexpectedly do not cause tires to lose air and become dislodged
from the rim. (Koziatek Declaration, paras. 35–38.)
However, we agree with Requester, that the c-clamp test fails to
compare the closest prior art. (Req’r. Resp. 20–21.) That is, as discussed
above, Patent Owner stresses the difference between the crochet-style rims
of Okajima ’766 and the rims of Okajima ’307. (See, e.g., Sacks Declaration
paras. 43, 47.) Thus, according to Patent Owner’s other evidence, the rims
of Okajima ’307, therefore, would constitute the closest prior art for
comparing the rims recited in claims 1 and 23. In this regard, Patent
Owner’s statement that the rim of Okajima ’307 was not chosen due to the
lack of disclosure of sidewall height is not persuasive. (Koziatek 132
Declaration, para. 33.) Patent Owner relies on other evidence regarding
what one of ordinary skill in the art would have done in order to determine
the sidewall heights with respect to Okajima ’307. (See, e.g., Sacks
Declaration paras. 47, 49.) That Okajima ’307 is silent as to sidewall height,
does not justify relying on a different rim as the closest prior art.
Therefore, the c-clamp test does not provide strong evidence of
unexpected results of the rims recited in the claims.

Weighing the Evidence as a Whole
After having discussed the evidence both for and against the
obviousness of claims 1 and 23, on balance, we are of the view that the
evidence against the obviousness of claims 1 and 23 outweighs the evidence
in favor of obviousness of the claims. That is, although the evidence of
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record both for and against whether one of ordinary skill in the art would
have combined Okajima ’307 with Okajima ’766, weighs in favor of
supporting the combination, the evidence of commercial success sufficiently
outweighs the balance of evidence in favor of the combination. Specifically,
the significant sales of rims having the features recited in claims 1 and 23,
coupled with the articles emphasizing the features recited in the claim, in
particular the sidewall height, the very point of the combination Okajima
’307 with Okajima ’766, are of sufficient weight to render the claims non-
obviousness.

Grounds III-VII
Because all of the new grounds of rejection rely on the combination of
Okajima ’307 and Okajima ’766, we reverse the Examiner’s decision to
maintain Grounds III-VII for the same reasons. In this regard, the other
references do not add any additional disclosure to change the weighing of
evidence as discussed supra.

Okajima ‘307 as Prior Art
Patent Owner has submitted a Declaration under 37 C.F.R. § 1.131 of
Mr. Koziatek in an effort to antedate Okajima ’307. (PO Req. 3.) In view of
our conclusion with respect to obviousness discussed above, we find it
unnecessary to reach the issue of whether Okajima ’307 is prior art.

Appeal 2014-002865
Reexamination Control 95/001,125
Patent 7,334,846 B2

19
CONCLUSION
On this record, we find that the evidence of secondary considerations
outweighs the evidence in support of obviousness.

DECISION
The Examiner’s Decision to maintain the new grounds of rejection set
forth in the Original Decision is reversed.
Requests for extensions of time in the inter partes reexamination
proceedings are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

REVERSED

Appeal 2014-002865
Reexamination Control 95/001,125
Patent 7,334,846 B2

20
PATENT OWNER:
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006

THIRD-PARTY REQUESTER:

KEVIN P. MORAN
MICHAL BEST & FRIEDRICH LLP
100 EAST WISONSIN AVE.
MILWAUKEE, WI 53202