Ex Parte Andersen et al

Patent Trial and Appeal Board

Jul 31, 2013

95001677 (P.T.A.B. Jul. 31, 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.
95/001,677 07/19/2011 James H. Andersen 11-0758 9260
27479 7590 08/01/2013
COCHRAN FREUND & YOUNG LLC
2026 CARIBOU DR
SUITE 201
FORT COLLINS, CO 80525
EXAMINER
STORMER, RUSSELL D
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/01/2013 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
____________________

JAMES H. ANDERSEN and TRU-BALANCE, LLC,
Patent Owner, Appellant

v.

ALCOA, INC.,
Third-Party Requestor, Respondent
____________________

Appeal 2013-005416
Inter partes Reexamination Control 95/001,677
Patent US 7,178,880 B21
Technology Center 3900
____________________

Before JOHN C. KERINS, STEVEN D. A. McCARTHY and
DANIEL S. SONG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

1 Patent US 7,178,880 B2 (hereinafter “the ’880 patent”) issued February 20,
2007, to James H. Andersen.
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STATEMENT OF THE CASE
Claims 1-13 of the ’880 patent are the subject of the present appeal.
Claim 14 of the ’880 patent was canceled during this reexamination
proceeding. Patent Owner appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner’s rejections, as set forth in the Right of Appeal Notice (RAN)2, of
these claims under 35 U.S.C. § 103(a) and 35 U.S.C. § 112, second
paragraph, and relies on its Appeal Brief (hereinafter “App. Br.”) in support
of its positions. The Third Party Requestor relies on a Respondent Brief
(hereafter “Resp. Br.”) in support of the Examiner’s decision. We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
The following proceeding has been identified as being related to
subject ’880 patent (App. Br. 1; Resp. Br. 1):
Tru-Balance, LLC, v. Alcoa, Inc., Case No. 11-cv-01127-CMA (D.
Colo.), which is characterized by the Patent Owner as a suit for patent
infringement.
We AFFIRM-IN-PART.

2 The Examiner’s Answer mailed December 10, 2012, merely incorporates
by reference the RAN mailed June 4, 2012. The RAN, in turn, refers to the
Action Closing Prosecution (ACP) mailed March 2, 2012, in noting that the
RAN maintains all rejections as set forth in the ACP, and incorporates by
reference those rejections and the responses to arguments therein. RAN 6.
We will cite to the RAN and/or ACP herein, as appropriate.
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THE INVENTION
The ’880 patent is directed to a wheel centering pin assembly. Claim
1, reproduced below, is representative (Claims Appendix, emphasis added):
1. A wheel centering pin assembly comprising:

three wheel centering pins at selected
circumferentially spaced positions on a hub,
having a plurality of circumferentially spaced
bolts, having external threads, each said pin
including,

a hollow main body portion having an exterior
surface of uniform diameter and sized to slide into
one of a plurality of apertures on a wheel when
said wheel is mounted on said hubs said main body
portion having a radial dimension sufficient to
substantially fill a space between the outside of an
associated bolt and the inside of an associate wheel
aperture, said main body portion terminating in an
open first end, said main body portion having
internal threads that are complementary to and
mate with said external threads to enable said main
body portion to be threaded on one of said bolts
and,

a tool engageable portion at a second end of said
main body portion opposite said first end that is
engaged by a tool for rotating said tool engageable
portion to thread and un-thread said main body
portion,

whereby upon the installation of said three pins on
selected of three of said circumferentially spaced
bolts said wheel is centered on said hub and a nut
is tightened on each remaining of said bolts to
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fasten said wheel to said hub after which said pins
are removed.

THE REJECTIONS
Patent Owner appeals from the Examiner’s rejections of the claims as
follows:
(i) claims 1-3, 5, 6, 9 and 12 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Interdonato (US 4,097,979, issued July 4, 1978);
(ii) claims 4, 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Interdonato in view of Mathieu (FR 2 547 247 A1,
published Dec. 14, 1984)3;
(iii) claims 4, 10 and 11stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Interdonato in view of Kohler (US 4,625,385,
issued Dec. 2, 1986) and Tien (US 4,646,594, issued Mar. 3, 1987);
(iv) claims 7, 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Interdonato in view of Petrak (US 6,626,502 B1,
issued Sep. 30, 2003);
(v) claims 1-6 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mathieu in view of Interdonato;
(vi) claims 7, 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mathieu in view of Interdonato and Petrak;

3 Reference to the text of the Mathieu French patent application is to a
certified English-language translation dated June 30, 2011, and prepared by
Legal Advantage, LLC.
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(vii) claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Interdonato in view of Patent Owner’s Admitted Prior Art
(hereafter “APA”); and
(viii) claim 11 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Patent Owner regards as the
invention.
PRINCIPAL ISSUE
Does a proper claim construction of the claims on appeal require that
a wheel be centered on a hub when nuts are tightened to fasten the wheel to
the hub?
ANALYSIS
Claim Construction
The “whereby” clause italicized in representative claim 1 above is the
center of focus in the dispute between Patent Owner and Requestor in this
appeal. Independent claims 10, 11 and 12 contain essentially the same
clause.
As a threshold issue, it is not entirely clear whether or not the
Examiner considers this clause to limit the scope of the claim, in that there
are no explicit findings or reasoning addressing the language presented in
the clause. See ACP, pp. 4-5 and 16-21. Requestor, however, does not
argue that the “whereby” clause should not be afforded patentable weight,
and its arguments directed to claim construction essentially acknowledge
that the limitations in the clause are to be given weight, and argues instead
the meaning to be given to the language. Resp. Br. 3. Given that the
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arguments for and against patentability hinge on the language in the
“whereby” clause (see, e.g., App. Br. 9-12), that clause states a condition
that is material to patentability which is not to be ignored. Hoffer v.
Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005).
The principal issue as to the construction to be given to the “whereby”
clause is whether the language therein, taken in context with the remainder
of the claim, and as informed by the disclosure in the ’880 patent, infers that
there is a temporal relationship between the centering of a wheel on a hub
with three wheel centering pins, on the one hand, and the mounting or
fastening of the wheel to the hub by tightening nuts on bolts which do not
have centering pins thereon, on the other hand. Stated more directly, Patent
Owner advocates that the only reasonable interpretation of the claim
language is that “the wheel is centered on the hub when the wheel is fastened
to the hub.” App. Br. 9 (italics added).
Requestor points out that “the term ‘when’ is not an element of claim
1.” Resp. Br. 3. Requestor further points out that the claim language sets
forth that “‘said wheel is centered on said hub and a nut is tightened on each
remaining of said bolts to fasten said wheel to said hub.’” Id. Requestor
maintains that, in view of this language, “centering the wheel on the hub and
tightening the nuts on the bolts are separate acts” and that there is nothing in
the “whereby” clause that infers or suggests “that the wheel being centered
on the hub must occur simultaneously when a nut is tightened on the bolts to
fasten the wheel to the hub.” Id.
Were we to agree with Requestor’s proposed claim construction, the
claim would be sufficiently broad as to cover the mounting of wheels to
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hubs in a condition in which the wheel is not centered relative to the hub.
However, Requestor’s position fails to take into account the entirety of the
“whereby” clause, in particular, the effect of the limitation that the centering
pins are removed after the wheel is fastened to the hub. As discussed below,
Requestor’s proposed construction is seen as being unreasonable.
We construe the language at issue as requiring the installation of the
three centering pins on three of the bolts, which has the effect of centering
the wheel on the hub. Claims Appendix, claim 1 (“whereby upon the
installation of said three pins . . . said wheel is centered on said hub”). So
long as the centering pins are installed, the wheel is centered on the hub.
The “whereby” clause calls for the pins to be removed only after nuts are
tightened on the remaining bolts so as to fasten the wheel to the hub. Id. (“a
nut is tightened on each remaining of said bolts to fasten said wheel to said
hub after which said pins are removed”). As such, the clause has the effect
of requiring that the wheel be centered on the hub, as Patent Owner puts it,
“when” the wheel is fastened to the hub.4 This is wholly consistent with the
stated purpose of Patent Owner’s invention, that is, “to center the wheel on
the hub during wheel mounting.” ’880 patent, col. 1, ll. 24-26.

Claims 1-3, 5, 6, 9 and 12--Anticipation-- Interdonato
Interdonato discloses the use of guide tools, preferably three guide
tools 30 on standard American five-stud wheels, which operate to center a
wheel with respect to the studs. Interdonato, col. 3, ll. 41-45, Fig. 1. The

4 We do not view this as importing the term “when” into the claim, as
Requestor might argue, but rather the language actually present in the claim
produces that result or effect.
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centering of the wheel with respect to the studs has the effect of preventing a
mounting plate 23 of the wheel 20 from contacting the threads of the studs
15 along the outer ends thereof as the wheel is slid onto the studs, thereby
preventing deformation of the stud threads and/or scoring of the stud holes
in the mounting plate. Id. at col. 3, ll. 55-64; col. 1, ll. 17-20.
The Examiner and Requestor take the position that Interdonato’s
centering of the wheel with respect to the studs also has the effect of
centering the wheel with respect to the hub. ACP 17; Resp. Br. 4. Patent
Owner acknowledges that while the wheel is sliding along the surface of the
guide tools in Interdonato, the wheel is aligned with the center of the hub.
App. Br. 11. Patent Owner stresses, however, that at the time the wheel in
Interdonato is fastened to the hub by the tightening of lug nuts (termed
“lugs” in Interdonato), the wheel is no longer in contact with the centering
guide tools. App. Br. 11-12. Interdonato expressly states that “[t]he wheel
20 is then slid back along the guide tools 30 and off the rear ends thereof
until the mounting plate [of wheel 20] rests on the threads at the base of the
studs 15” and “[w]ith the wheel thus positioned on the studs 15, the lugs can
be threaded onto the two studs 15 which do not have the guide tools
mounted thereon.” Interdonato, col. 3, ll. 58-67.
Patent Owner maintains that when the mounting plate of the wheel
rests directly on the threads, the wheel is no longer centered on the hub.
App. Br. 11. Requestor, without providing any evidence or argument
contesting this position, criticizes Patent Owner’s position as improper
attorney argument not supported by testimony of a person of ordinary skill
in the art. This fails to persuade us of error in Patent Owner’s contention.
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Further, to the extent that Patent Owner’s position is not self-evident, Patent
Owner cites to Figure 2 of Interdonato as evidencing that, when considering
that the wheel is centered relative to the hub while the mounting plate of the
wheel is in contact with the cylindrical surfaces of the Interdonato guide
tools, the threads of the studs on which the mounting plate rests when the lug
nuts are installed are not on the same diameter as are the outer surfaces of
the guide tools, but are instead located radially inwardly from those surfaces.
The wheel would thus move to an off-center position relative to the hub once
the mounting plate engages the stud threads.
Therefore, the Interdonato patent has not been shown to disclose the
limitations set forth in the “whereby” clause in independent claims 1 and 12,
which have the effect of requiring the wheel to be centered on the hub when
nuts are tightened to fasten the wheel to the hub. The rejection of claims 1
and 12, and of claims 2, 3, 5, 6 and 9 depending from claim 1, as anticipated
by Interdonato is not sustained.

Claims 4, 10 and 11--Obviousness--Interdonato/Mathieu
In this rejection, Mathieu is relied on solely for the disclosure of a tool
engageable portion having a hexagonal head, with the Examiner concluding
that it would have been obvious to form the tool engaging portion of the
Interdonato guide tools as a hexagonal shape. ACP 5-6. Claim 4 depends
from claim 1 and thus includes the “whereby” clause limitations discussed
above. Independent claims 10 and 11 include essentially the same
“whereby” clause limitations. The Examiner does not rely on Mathieu to
remedy the deficiency of the Interdonato reference as discussed above. As
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such, the Examiner’s application of Interdonato and Mathieu in this rejection
falls short of rendering obvious the subject matter of claims 4, 10 and 11.
The rejection is thus not sustained.

Claims 4, 10 and 11--Obviousness--Interdonato/Kohler/Tien
The Examiner cites to Kohler and Tien essentially for the same
reasons as was Mathieu cited to in the foregoing rejection. The Examiner
does not rely on Kohler or Tien to remedy the deficiency of the Interdonato
reference as discussed above. As such, the Examiner’s application of
Interdonato, Kohler and Tien falls short of rendering obvious the subject
matter of claims 4, 10 and 11. The rejection is thus not sustained.

Claims 7, 8 and 13--Obviousness--Interdonato/Petrak
Claims 7 and 8 depend from claim 1 and thus contain the limitations
in the “whereby” clause as discussed above. Independent claim 13 is a
method claim requiring the steps of threading three centering pins on wheel
bolts, mounting the wheel on the hub with the pins centering the wheel on
the hub, threading nuts onto the bolts not having pins thereon, removing the
centering pins, and threading nuts onto those bolts. App. Br., Claims
Appendix. Thus, claim 13 is seen as having effectively the same
requirement as that set forth in the “whereby” clause of claim 1, namely that
the wheel is to be centered on the hub when the wheel is mounted to the hub.
The Examiner does not rely on Petrak to remedy the deficiency of the
Interdonato reference as discussed above. As such, the Examiner’s
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application of Interdonato and Petrak falls short of rendering obvious the
subject matter of claims 7, 8 and 13. The rejection is thus not sustained.

Claims 1-6 and 9-12--Obviousness--Mathieu/Interdonato
The Examiner takes the position that Mathieu teaches all limitations
set forth in these claims with the exception that is uses only one and not
three centering pins. ACP 10-12. The Examiner relies on Interdonato as
disclosing the use of three centering pins to obtain optimum centering of the
wheel with respect to the lug bolts. Id. at 11. The Examiner concludes that
it would have been obvious to use three of the Mathieu centering pins to
obtain optimum centering of the wheel on the hub, and to hold the wheel in a
centered position better than canthe single pin described by Mathieu. Id. at
11-12.
Patent Owner takes the position that “[t]here is no disclosure,
suggestion or teaching of using the guide of Mathieu for the purpose of
centering the wheel on the hub when the wheel is fastened to the hub.” App.
Br. 23, see also, App. Br. 25. As noted in the foregoing claim construction
analysis, this is essentially what is required in the “whereby” clauses in the
claims. The Examiner has made no specific findings that the use of three of
the Mathieu guiding devices will effect the centering of the wheel on the hub
while nuts are tightened to fasten the wheel to the hub.
As noted by Patent Owner, Mathieu is directed to providing a guiding
device for facilitating alignment of the holes on a wheel with bolts on the
hub to place the wheel on the bolts. App. Br. 22-23. Mathieu states that
“the wheel 8 is brought closer to the plate [hub] 4 by following the guide
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formed by the shank 11 until the hole 6 successively passes around the
conical part 10 and then the cylindrical part 2 of the body 1” and that, once
all of the holes are aligned, “the wheel 8 may then be pushed and
definitively installed on the bolts 3 against the plate 4.” Mathieu, p. 4, ll. 19-
22 and 37-39 (emphasis added). In addition, while not shown in exacting
detail, in Figure 3 of Mathieu, the base portion of the bolt 3 is seen
extending from hub or plate 4, even with the guiding device body 1 installed
thereon. Indeed, Figure 3 of Mathieu appears to show that the bolts 3 are not
threaded completely along their lengths and thus the guiding device bodies
may not be capable of extending all the way to the hub or plate 4.
In view of the description and illustrations in Mathieu, it appears that
the guiding device therein likely operates in a manner similar to the
Interdonato guide tool, namely that it centers the wheel on the studs or bolts
while the wheel is pushed onto the hub, but that the wheel is pushed past the
guiding device onto the bolts, such that it is no longer centered relative to the
hub. At a minimum, it would be speculative at best to assert that the guiding
device of Mathieu, even if three are used, would operate to center the wheel
relative to the hub while nuts are tightened to fasten the wheel to the hub.
As noted by Patent Owner, Interdonato is of no aid in this respect, in that it
explicitly discloses that the wheel is to be pushed off the guide tools onto the
bolts. App. Br. 24.
The rejection of claims 1-6 and 9-12 as being obvious over Mathieu
and Interdonato is not sustained.

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Claims 7, 8 and 13--Obviousness--Mathieu/Interdonato/Petrak
The Examiner does not rely on Petrak to remedy the deficiency of the
combination of the Mathieu and Interdonato references as discussed above.
As such, the Examiner’s application of Mathieu, Interdonato and Petrak falls
short of rendering obvious the subject matter of claims 7, 8 and 13. The
rejection is thus not sustained.

Claims 7 and 13--Obviousness--Interdonato/APA
The Examiner does not rely on APA to remedy the deficiency of the
Interdonato reference as discussed above with respect to claim 1. As such,
the Examiner’s application of Interdonato and APA falls short of rendering
obvious the subject matter of claims 7 and 13. The rejection is thus not
sustained.

Claim 11--35 U.S.C. § 112, second paragraph
Patent Owner identified, in the Notice of Appeal filed July 3, 2012,
that a rejection of claim 11 under 35 U.S.C. § 112, second paragraph, was
being appealed (Ground 13 in the ACP). However, Patent Owner
affirmatively states in the Appeal Brief that the rejection is not challenged.
App. Br. 6-7. The rejection is therefore summarily sustained.

CONCLUSION
The rejection of claims 1-3, 5, 6, 9 and 12 as being anticipated by
Interdonato is REVERSED.
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The rejection of claims 4, 10 and 11 as being unpatentable over
Interdonato in view of Mathieu is REVERSED.
The rejection of claims 4, 10 and 11 as being unpatentable over
Interdonato in view of Kohler and Tien is REVERSED.
The rejection of claims 7, 8 and 13 as being unpatentable over
Interdonato in view of Petrak is REVERSED.
The rejection of claims 1-6 and 9-12 as being unpatentable over
Mathieu in view of Interdonato is REVERSED.
The rejection of claims 7, 8 and 13 as being unpatentable over
Mathieu in view of Interdonato and Petrak is REVERSED.
The rejection of claims 7 and 13 as being unpatentable over
Interdonato in view of the APA is REVERSED.
The rejection of claim 11 under 35 U.S.C. § 112, second paragraph, is
AFFIRMED.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART

peb
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Patent Owner:
William W. Cochran
Cochran Freund & Young, LLC
2026 Caribou Drive
Suite 201
Fort Collins, CO 80525

Third Party Requester:

Barry Schindler, Esq.
GREENBURG TRAURIG, LLP
200 Park Avenue
Florham Park, NJ 07932