Ex Parte Krueger

Board of Patent Appeals and Interferences

Jan 30, 2012

12356660 (B.P.A.I. Jan. 30, 2012)

UNITED STAlES P A lENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/356,660 0112112009 Robert L. Krueger
44331 7590 02101/2012
HISCOCK & BARCLAY, LLP
2000 HSBC PLAZA
100 Chestnut Street
ROCHESlER, NY 14604-2404
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3035870 9270
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
02/0112012 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail addressees):
RochesterIP@hblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT L. KRUEGER
________________

Appeal 2012-001425
Application 12/356,660
Patent US 7,360,846 B2
Technology Center 3600
________________

Before STEVEN D.A. McCARTHY, MICHAEL C. ASTORINO and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant
1
seeks reissue of Krueger (US 7,360,846 B2, issued 2
Apr. 22, 2008). Krueger issued from Application Serial No. 11/157,296 (the 3
“'296 application”), filed June 21, 2005. The Examiner has allowed claims 4
1-29. The Appellant cancelled Claims 44-58, 60 and 61 in a “Second5

1
The real party in interest is the Appellant, Robert L. Krueger.
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Amendment After Final” filed on July 19, 2011 and entered by the Examiner 1
after the Appellant filed the Reply Brief. (See Communication mailed Oct. 2
21, 2011 at 2). The Appellant appeals under 35 U.S.C § 134 from the 3
Examiner’s final decision rejecting claims 30-43 and 59. We have 4
jurisdiction under 35 U.S.C. § 6(b). 5
We sustain the rejection of claims 30-43 and 59 under 35 U.S.C. 6
§ 251 as being an improper recapture of broadened claims subject matter 7
surrendered in the '296 application.
2
8
We do not sustain the rejections under 35 U.S.C. § 103(a) of claims 9
30, 32, 35-37, 43 and 59 as being unpatentable over Zarlengo (US 10
4,179,162, issued Dec. 18, 1979) and Tully (US 4,387,195, issued Jun. 7, 11
1983); of claims 31, 38-41and 59 as being unpatentable over Zarlengo, Tully 12
and Nowaczyk (US 7,168,142 B2, issued Jan. 30, 2007); of claims 33 and 34 13
as being unpatentable over Zarlengo, Tully and Heffernan (US 6,129,797, 14
issued Oct. 10, 2000); and of claim 42 as being unpatentable over Zarlengo, 15
Tully , Nowaczyk and Lara-Curzio (US 6,322,889 B1, issued Nov. 27, 16
2001). 17
Claim 30 is the sole independent claim on appeal: 18
30. A method of balancing a wheel assembly 19
comprising the steps of: 20
disposing a balancing material comprising a 21
predetermined amount of hydrophobic ceramic 22
beads with continuously rounded surfaces in a 23
cavity formed by a tire and wheel, 24

2
The Examiner in the Answer rejected claims 57 and 58 under 35
U.S.C. § 112, second paragraph, as being indefinite. (Ans. 5). This
rejection is moot in view of the cancellation of claims 57 and 58. The other
rejections are re-written to exclude cancelled claims 44-58, 60 and 61.
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pressurizing the tire with a gas; and 1
rotating the tire whereby a portion of the 2
ceramic beads migrates within the inner periphery 3
of the tire to assume one or more positions so as to 4
counterbalance an imbalance in the wheel 5
assembly. 6
7
ISSUES 8
The Appellant does not argue the rejection of any of claims 30-43 and 9
59 under § 251 separately from the others. (See App. Br. 6-13; Reply Br. 3-10
4 and 6-7). Claim 30, the sole independent claim on appeal, is 11
representative of the scope of protection sought in claims 30-43 and 59. 12
Only issues and findings of fact contested by the Appellants will be 13
addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 14
This appeal raises three issues: 15
First, does claim 30 recapture subject matter surrendered 16
during the prosecution of the '296 application? (See App. Br. 6-17
13; Reply Br. 3-4 and 6-7). 18
Second, do the evidence and technical reasoning 19
underlying the rejection of independent claim 30 adequately 20
support the conclusion that a method of balancing a wheel 21
assembly including the step of disposing a balancing material 22
comprising a predetermined amount of hydrophobic ceramic 23
beads with continuously rounded surfaces in a cavity formed by 24
a tire and wheel would have been obvious? (App. Br. 13-15; 25
Reply Br. 4-5 and 7-9). 26
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Third, do the teachings of the tertiary references cited by 1
the Examiner remedy deficiencies in the combined teachings of 2
Zarlengo and Tully? (App. Br. 15-16). 3
4
FINDINGS OF FACT 5
The record supports the following findings of fact (“FF”) by a 6
preponderance of the evidence. 7
8
Zarlengo 9
1. Zarlengo describes a wheel-tire assembly 10. The wheel-tire 10
assembly 10 includes a conventional steel wheel drum 12; a conventional 11
tubeless tire 14 mounted on the wheel drum 12; and a plurality of mass 12
elements 24 disposed within the tire 14. (Zarlengo, col. 3, ll. 15-18 and 24-13
25). Figures 2 and 3 of Zarlengo depict the mass elements as being disposed 14
in a cavity formed by the tire 14 and the wheel drum 12. 15
2. Zarlengo discloses making the mass elements 24 of ceramic 16
material. (Zarlengo, col. 3, ll. 29-32). The mass elements 24d are 17
ellipsoidal in shape. (Zarlengo, col. 4, ll. 55-58). 18
3. Zarlengo teaches that rotation the tire 14 will cause a portion of 19
the mass elements 24 to migrate within the inner periphery of the tire 14 to 20
assume one or more positions so as to counterbalance any imbalance in the 21
wheel-tire assembly 10. (See Zarlengo, col. 3, ll. 50-60). 22
4. Zarlengo does not describe the mass elements 24 as being made 23
of a hydrophobic ceramic material. 24
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Tully 1
5. Tully describes providing hydrophobic ceramic “wares.” 2
(Tully, col. 1, ll. 60-61). Tully describes these wares as having water-3
repellant surface characteristics which are preserved despite chipping or 4
other physical trauma. (Tully, col. 2, ll. 1-5). 5
6
Nowaczyk 7
6. Nowaczyk describes a method for surface finishing a titanium 8
substrate. (Nowaczyk, col. 3, ll. 21-23). The method includes treating the 9
article using ceramic beads. (Nowaczyk, col. 3, ll. 34-36). 10
7. Nowaczyk describes beads suitable for use in the treatment as 11
comprising a fused zirconium silica material including zirconia and silica in 12
a weight ratio of greater than 2:1. (Nowaczyk, col. 3, ll. 38-46; see also 13
Ans. 8). 14
15
Heffernan 16
8. Heffernan describes balancing a tire through mass damping, 17
using a mixture of balancing media including small, dense beads and large, 18
dense beads. (Heffernan, col. 2, ll. 16-27). 19
9. Heffernan teaches forming the large dense beads from a 20
ceramic such as alumina having a density in the range of 2-5 g/cc. 21
(Heffernan, col. 2, ll. 55-57). This range overlaps the range of densities 22
greater than 2.6 g/cc. (See Ans. 9). 23
10. Heffernan teaches inserting the balancing media into the tire by 24
pouring the balancing media into the tire while the tire is off the rim; 25
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pouring the balancing media into the valve stem; or mixing the balancing 1
media with the air used to pressurize the tire. (Heffernan, col. 4, ll. 36-41). 2
11. Heffernan teaches that the small particles used in a balancing 3
system of the type described by Heffernan tend to be hydroscopic. 4
Heffernan further teaches that the particles may agglomerate in the presence 5
of moisture. Heffernan teaches that the agglomeration of particles may 6
cause a dramatic reduction in balancing efficiency. Heffernan addresses the 7
problem of agglomeration by adding a desiccant, silica gel, to the mixture of 8
balancing media. (Heffernan, col. 3, ll. 18-22). 9
10
Lara-Curzio 11
12. Lara-Curzio describes a multilayer interfacial coating including 12
at least three oxide interface layers disposed within a fiber-reinforced 13
ceramic matrix composite C. (Lara-Curzio, col. 4, ll. 61-64). 14
Representative compounds for the three oxide interface layers include silica, 15
alumina, zirconia, yttria, hafnia and combinations of those materials. (Lara-16
Curzio, col. 5, ll. 14-18). 17
18
Fogal 19
13. Fogal (US 6,249,971 B1, issued June 26, 2001) describes 20
incorporating a compensating material to reduce the radial and lateral forces 21
acting on a wheel/tire assembly. (Fogal, col. 6, ll. 19-24). 22
14. More specifically, Fogal describes introducing the 23
compensating material into a tire in the form of at least one self-contained 24
batch. (Fogal, col. 9, ll. 12-18). A batch of compensating material such as 25
metal shot is introduced in a container such as a bag. (Fogal, col. 11, ll. 29-26
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32 and col. 12, ll. 18-20). The bag is produced with an initially open top, 1
which is later sealed. (Fogal, col. 11, ll. 43-48). The compensating material 2
is introduced into the tire by placing the bag containing the compensating 3
material into the tire and then mounting the tire on the wheel to complete the 4
wheel/tire assembly. (Fogal, col. 12, ll. 29-33). The bag is designed to 5
abrade, tear or shred to release the compensating material when the 6
wheel/tire assembly is rotated. (Fogal, col. 11, ll. 33-35 and 36-41). 7
8
The '296 Application 9
15. The '296 application was filed on June 21, 2005. Claims 1 and 10
21 were independent. Claims 1, 4 and 10 as originally filed read as follows: 11
1. A method for treating a tire to balance 12
a wheel comprising the steps of: 13
providing a container with an opening at one 14
end and holding a quantity of balancing material; 15
temporarily closing the ends of the 16
container; 17
inserting the temporarily closed container 18
into a tire; 19
mounting the tire on a wheel; and 20
impacting the wheel to open the container 21
and thereby release the beads into the inside of the 22
tire. 23
4. The method of claim 1 comprising the 24
further step of placing a removable resilient clip on 25
the container at a location on the container spaced 26
from the open end of the container and at least as 27
far from the open end as the mild adhesive. 28
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10. The method of claim 1 wherein the 1
balancing material comprises ceramic beads. 2
16. In a Non-Final Office Action mailed March 16, 2007, the 3
Examiner rejected independent claims 1 and 21 under 35 U.S.C. § 102(b) as 4
being anticipated by Fogal; dependent claims 4 and 22 under 35 U.S.C. 5
§ 112, second paragraph, as being indefinite; and dependent claims 10 and 6
25 under § 103(a) as being unpatentable over Fogal and Heffernan. (Non-7
Final Office Action mailed Mar. 16, 2007 at 4, 6 and 8). The Examiner 8
indicated that the subject matter of claim 4 would be allowable if rewritten 9
in independent form to overcome the rejection under § 112, second 10
paragraph. (Id. 9). 11
17. In a “Response to Office Action” dated June 18, 2007, the 12
Appellant amended claim 1 to insert the limitations of dependent claim 10 13
into claim 1 (and to insert similar limitations of dependent claim 25 into 14
independent claim 21). (Id. 10). This amendment limited the recited 15
“balancing material” to “ceramic balancing material.” 16
18. In the “Response to Office Action” dated June 18, 2007, the 17
Appellant made two arguments to overcome the rejection of the subject 18
matter of claim 10 (now incorporated into claim 1) and claim 25 (now 19
incorporated into claim 21) as obvious from the teachings of Fogal and 20
Heffernan. 21
19. First, the Appellant argued that 22
Heffernan specifically discloses and distinguishes 23
its invention over that of Fogal, and therefore 24
would understand the method of inserting the 25
balancing agent as taught by Fogal. Instead of 26
using a container to insert the beads, Heffernan 27
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teaches pouring the beads into the tire. Therefore, 1
Heffernan teaches away from using a container to 2
introduce the beads into the tire, which is taught by 3
both Fogal and disclosed by [the Appellant]. 4
(Id. 14). 5
20. Second, the Appellant distinguished Heffernan’s teaching to 6
use balancing material comprising a mixture of atomized metal, glass beads, 7
vermiculite and silica gel from the Appellants’ teaching to use a single type 8
of balancing medium. (Id. 14-15). In making this argument, the Appellant 9
asserted that the subject matter of amended claim 1 10
reduces the need for multiple types of beads as the 11
ceramic beads claimed by [the Appellant] 12
overcome the problems of the prior art which 13
require the use of multiple types of materials (i.e. 14
[the Appellant’s] balancing materials are less 15
corrosive, withstand clumping in humidity, durable 16
in extreme temperatures; Heffernan teaches using 17
vermiculite as a portioning agent, silica gel as a 18
desiccant; and glass beads as the balancing agent). 19
(Id 14-15). It is at least partly due to the hydrophobic properties of the 20
Appellant’s preferred material that the balancing material is less corrosive 21
and able to withstand clumping in humidity. (See App. Br. 6; Krueger 22
(original patent), col. 3, ll. 17-29). 23
21. In a Final Office Action mailed September 4, 2007, the 24
Examiner rejected amended claims 1 and 21 under § 103(a) as being 25
unpatentable over Fogal and Zarlengo. (Final Office Action mailed 26
September 4, 2007 at 2). The Examiner continued to indicate that the 27
subject matter of claims 4 and 22 would be allowable if rewritten. (Id. 6). 28
22. In a second “Response to Office Action” dated November 5, 29
2007, the Appellant amended claim 1 to insert the limitations of dependent 30
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claim 4 into claim 1 (and to insert similar limitations of dependent claim 22 1
into independent claim 21). (Id. 7). The amendments introduced the 2
limitations “wherein the container has a removable resilient clip on the 3
container at a location on the container spaced axially between the open end 4
of the container and an adhesive, and at least as far from the open end as the 5
adhesive” into twice-amended method claim 1 (see id. 2) and “a removable 6
resilient clip on the container at a location on the container spaced axially 7
between the open end of the container and the adhesive and, at least as far 8
from the open end as the adhesive” into twice-amended apparatus claim 21 9
(see id. 4). 10
23. The Examiner allowed the '296 application, including twice 11
amended independent claims 1 and 21. (Notice of Allowance mailed Nov. 12
27, 2007). Claim 1 as allowed in the '296 application read: 13
1. A method for treating a tire to balance 14
a wheel comprising the steps of: 15
providing a container with an opening at one 16
end and holding a quantity of ceramic
3
balancing 17
material; 18
wherein the container has a removable 19
resilient clip on the container at a location on the 20
container spaced axially between the open end of 21
the container and an adhesive, and at least as far 22
from the open end as the adhesive; 23
temporarily closing the ends of the 24
container; 25
inserting the temporarily closed container 26
into a tire; 27

3
Claim 1 as printed in the issued patent omits the term “ceramic.” (See
Krueger, col. 6, l. 28). Claim 1 as allowed in the reissue application corrects
this discrepancy.
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mounting the tire on a wheel; and 1
impacting the wheel to open the container 2
and thereby release the balancing material into the 3
inside of the tire. 4
ANALYSIS 5
First Issue 6
The recapture rule 7
prevents a patentee from regaining through reissue 8
the subject matter that he surrendered in an effort 9
to obtain allowance of the original claims. Under 10
this rule, claims that are “broader than the original 11
patent claims in a manner directly pertinent to the 12
subject matter surrendered during prosecution” are 13
impermissible. 14
In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)(quoting Mentor Corp. 15
v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993))(citation omitted). 16
Our reviewing court applies a three step test in determining whether a 17
claim in a reissue application seeks to recapture subject matter surrendered 18
in the original application. As to the first step: 19
Application of the recapture rule begins with 20
a determination of whether and in what respect the 21
reissue claims are broader than the original patent 22
claims. A reissue claim that does not include a 23
limitation present in the original patent claims is 24
broader in that respect. 25
Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998) 26
(citation omitted). The Examiner correctly concludes that the Appellant 27
broadened appealed claim 30 in comparison with claim 1 of the issued 28
patent by omitting the limitation “wherein the container has a removable 29
resilient clip on the container at a location on the container spaced axially 30
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between the open end of the container and an adhesive, and at least as far 1
from the open end as the adhesive.” (See Ans. 6). 2
As to the second step: 3
[U]nder the recapture rule we next examine 4
whether these broader aspects relate to surrendered 5
subject matter. “To determine whether an 6
applicant surrendered particular subject matter, we 7
look to the prosecution history for arguments and 8
changes to the claims made in an effort to 9
overcome a prior art rejection.” 10
Id. (quoting Clement, 131 F.3d at 1469)(citation and emphasis omitted). 11
The Appellant added the limitation “wherein the container has a 12
removable resilient clip on the container at a location on the container 13
spaced axially between the open end of the container and an adhesive, and at 14
least as far from the open end as the adhesive” to claim 1 during the 15
prosecution of the '296 application to overcome the rejection of claim 1 16
under § 103(a) as being unpatentable over Fogal and Zarlengo. (FF 21-23). 17
By adding this limitation to overcome the rejection under § 103(a), the 18
Appellant surrendered any method of balancing a wheel assembly which 19
does not provide a container having a removable resilient clip on the 20
container at a location on the container spaced axially between the open end 21
of the container and an adhesive, and at least as far from the open end as the 22
adhesive.
4
See Hester Indus., 142 F.3d at 1481 (“ [C]laim amendments are 23
relevant because an amendment to overcome a prior art rejection evidences 24

4
During the prosecution of the '296 application, claim 1 was amended
to include the subject matter of claim 10. the Examiner initially rejected the
subject matter of claim 10 under § 103(a) as being unpatentable over Fogal
and Heffernan. (FF 15 and 16). Heffernan describes inserting balancing
material into a tire by, among other techniques, pouring the balancing
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an admission that the claim was not patentable.”). Since appealed claim 1 1
omits this limitation entirely, the Examiner correctly concludes that appealed 2
claim 1 is broader than claim 1 of the issued patent in an aspect related to the 3
surrendered subject matter. (See Ans. 10). 4
During the prosecution of the '296 application, the Appellant initially 5
amended claim 1 to limit the balancing material to “ceramic balancing 6
material.” (FF 17; see FF 23; see also App. Br. 13). The Appellant seeks to 7
further limit the balancing material in appealed claim 30 to “hydrophobic 8
ceramic beads with continuously rounded surfaces.” Appealed claim 30 is 9
narrower in this respect than claim 1 as allowed in the '296 application. As 10
the Examiner points out at page 11 of the Answer, this narrowing of 11
appealed claim 30 does not imply that the appealed claim is not broader in 12
an aspect surrendered during the prosecution of the '296 application, 13
however. 14
As to the third step: 15
[W]e must next determine whether the 16
surrendered subject matter has crept back into the 17
asserted reissue claims. When the surrender 18
occurs by way of claim amendment or 19

material into the tire through the stem. (FF 10). The Appellant sought to
distinguish the subject matter of original claim 1 by arguing, in part, that
Heffernan taught away from inserting the balancing material using a
container such as a bag by reciting alternative techniques for inserting the
balancing material. (FF 18 and 19). Although not cited by the Examiner,
this exchange supports the Examiner’s finding that the Appellant
surrendered any method of balancing a wheel assembly which does not
provide a container having a removable resilient clip on the container at a
location on the container spaced axially between the open end of the
container and an adhesive, and at least as far from the open end as the
adhesive.
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cancellation, “comparing the reissue claim with the 1
cancelled claim is one way to do this.” 2
Hester Indus., 142 F.3d at 1482 (quoting Clement, 131 F.3d at 1469)(citation 3
omitted). 4
The Appellant entirely omits from appealed claim 30 a limitation 5
added to claim 1 of the issued patent in order to overcome a rejection under 6
§ 103(a). The Appellant correctly points out that appealed claim 30 also 7
includes a limitation, namely, the step of “disposing a balancing material 8
comprising a predetermined amount of hydrophobic ceramic beads with 9
continuously rounded surfaces in a cavity formed by a tire and wheel,” not 10
recited in claim 1 of the issued patent. In this respect, appealed claim 30 is 11
narrower than claim 1 of the issued patent. 12
Nevertheless, 13
the recapture rule is violated when a limitation 14
added during prosecution is eliminated entirely, 15
even if other narrowing limitations are added to the 16
[reissue] claim. If the added limitation is modified 17
but not eliminated, the claims must be materially 18
narrowed relative to the surrendered subject matter 19
such that the surrendered subject matter is not 20
entirely or substantially recaptured. 21
In re Mostafazadeh, 643 F.3d 1353, 1361 (Fed. Cir. 2011). The Appellant 22
correctly points out that the step of “disposing a balancing material 23
comprising a predetermined amount of hydrophobic ceramic beads with 24
continuously rounded surfaces in a cavity formed by a tire and wheel” is 25
relevant to subject matter surrendered during the prosecution of the '296 26
application, namely, the subject matter surrendered when the subject matter 27
of original dependent claim 10 was incorporated into original claim 1. (See 28
App. Br. 13; see also FF 16-18 and 20). The step is not relevant to the 29
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limitation “wherein the container has a removable resilient clip on the 1
container at a location on the container spaced axially between the open end 2
of the container and an adhesive, and at least as far from the open end as the 3
adhesive,” however. The step relates to the composition of the balancing 4
material and not to the manner in which the balancing material is inserted 5
into the tire. Therefore, the Appellant’s addition of the step to appealed 6
claim 30 does not narrow appealed claim 30 in comparison to claim 1 of the 7
issued patent relative to the surrendered subject matter as to which appealed 8
claim 30 has been broadened in comparison with claim 1 of the issued 9
patent. 10
The Appellant entirely eliminates the limitation “wherein the 11
container has a removable resilient clip on the container at a location on the 12
container spaced axially between the open end of the container and an 13
adhesive, and at least as far from the open end as the adhesive” from 14
appealed claim 30. This limitation broadens appealed claim 30 in 15
comparison to claim 1 of the issued patent. The Appellant does not 16
persuasively explain how the addition of the step of “disposing a balancing 17
material comprising a predetermined amount of hydrophobic ceramic beads 18
with continuously rounded surfaces in a cavity formed by a tire and wheel” 19
to appealed claim 30 materially narrows appealed claim 30 relative to the 20
surrendered subject matter as to which claim 30 has been broadened such 21
that the surrendered subject matter is not entirely or substantially eliminated. 22
The surrendered subject matter has crept back into appealed claim 30. 23
In Mostafazadeh, our reviewing court acknowledged that the 24
recapture rule may not be triggered if the subject matter of the reissue claim 25
is “wholly unrelated” to the subject matter surrendered during prosecution. 26
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Id., 643 F.3d at 1360. The court suggested that such a situation might arise 1
if the reissue claim recites additional inventions, embodiments or species not 2
originally claimed, that is, overlooked aspects of the invention as disclosed. 3
Id. (construing MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) 4
§ 1412.02(I)(C)). 5
Appealed claim 30 claims a “new method of balancing a wheel 6
assembly.” Claim 1 of the original patent claims a “method of treating a tire 7
to balance a wheel.” The Examiner correctly concluded that the limitation 8
of the “ceramic balancing material” recited in claim 1 as allowed in the '296 9
application (see FF 17 and 23) to “hydrophobic ceramic beads with 10
continuously rounded surfaces,” in the context of the claims as a whole, does 11
not result in a different invention or embodiment, per se. (See Ans. 10). 12
The Appellant provides no reason why the subject matter of appealed claim 13
30 might relate to a method separate from that recited in claim 1 of the 14
original patent, or to steps within a method of balancing a wheel assembly 15
separate from those steps recited in claim 1, such that claim 30 might not 16
protect the subject matter surrendered during the prosecution of the '296 17
application. See, e.g., B.E. Meyers & Co. v. United States, 56 USPQ2d 18
1110, 1116 (Ct. Fed. Cls. 2000)(example of a case, cited in § 1412.02 of the 19
MPEP, illustrating when the subject matter of the reissue claim might be 20
“wholly unrelated” to the subject matter surrendered during prosecution). 21
Therefore, the subject matter of appealed claim 30 is not so wholly unrelated 22
to the subject matter of claim 1 of the issued patent that the recapture rule is 23
not triggered.
5
24

5
In addition, we give little weight to the Appellant’s argument that the
hydrophobic property of the ceramic balancing material was overlooked as
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We sustain the rejection of claims 30-43 and 59 under 35 U.S.C. 1
§ 251 as being an improper recapture of broadened claims subject matter 2
surrendered in the '296 application. 3
4
Second and Third Issues 5
Claim 30 recites a method including the step of “disposing a 6
balancing material comprising a predetermined amount of hydrophobic 7
ceramic beads with continuously rounded surfaces in a cavity formed by a 8
tire and wheel.” (Emphasis added.) Zarlengo does not describe a method 9
using a balancing material including mass elements made of a hydrophobic 10
ceramic material. (FF 4). Tully describes providing hydrophobic ceramic 11
“wares” (FF 5) but does not suggest the use of these wares in wheel/tire 12
balancing. 13
The Examiner concludes that it would have been obvious “to form the 14
ceramic material of Zarlengo in the manner taught by Tully to become 15
hydrophobic, for the purpose of preventing moisture from damaging the 16
balancing weights of Zarlengo.” (Ans. 7-8). Nothing in Zarlengo or Tully 17
suggests that one of ordinary skill in the art would have been aware of 18
problems which moisture might cause balancing weights or mass elements 19
such as those described by Zarlengo. Even were we to find that one of 20
ordinary skill in the art would have known of such problems, we would not 21
find by a preponderance of the evidence that the use of hydrophobic 22

an invention during the prosecution of the '296 application. (See, e.g., App.
Br. 8 and 11). Although not pointed out by the Examiner, the Appellant
argues the advantages contributed to the balancing material by the
hydrophobicity of the ceramic beads in an attempt to distinguish the
teachings of Heffernan during the prosecution of the '296 application. (FF
20).
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Application No. 12/356,660

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balancing material was a known solution to such problems. We do not 1
sustain the rejection of claims 30, 32, 35-37, 43 and 59 under § 103(a) as 2
being unpatentable over Zarlengo and Tully. 3
The Examiner does not cite any of the tertiary references, Nowaczyk, 4
Heffernan or Lara-Curzio, for any teaching that might remedy the 5
deficiencies in the combined teachings of Zarlengo and Tully. (See Ans. 8 6
and 9). In particular, the Examiner cites Heffernan as teaching “the use of 7
ceramic bead material having a density greater than 2.6 gm/cc (see column 8
2, lines 55-57)” (Ans. 9) and not for any teaching relating to the 9
agglomeration of balancing media in the presence of moisture (see FF 11). 10
We do not sustain the rejections of claims 31, 38-41and 59 under § 103(a) 11
as being unpatentable over Zarlengo, Tully and Nowaczyk; of claims 33 and 12
34 as being unpatentable over Zarlengo, Tully and Heffernan; or of claim 42 13
as being unpatentable over Zarlengo, Tully , Nowaczyk and Lara-Curzio. 14
15
DECISION 16
We AFFIRM the Examiner’s decision rejecting claims 30-43 and 59. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 19
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AFFIRMED 21
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Klh 23