Ex Parte Nemish

Patent Trial and Appeal Board

Nov 12, 2013

11621891 (P.T.A.B. Nov. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/621,891 01/10/2007 Steven C. Nemish 158 1995
27789 7590 11/12/2013
CHARLES C. MCCLOSKEY
13321 N. OUTER 40 RD. STE. 100
TOWN & COUNTRY, MO 63017
EXAMINER
KWOK, HELEN C
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
11/12/2013 PAPERPAPER
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 STEVEN C. NEMISH
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Appeal 2011-003378
Application 11/621,891
Technology Center 2800
____________

Before TERRY J. OWENS, PETER F. KRATZ, and JO-ANNE M.
KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003378
Application 11/621,891

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STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the final
rejection of claims 1, 3, 4, and 7-11. Claims 2, 5, and 6 have been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Appellant’s invention relates to a device for balancing a tire upon a
wheel. Claims 1 and 11 are representative of the subject matter on appeal,
and recite:
1. A device for balancing a tire upon a wheel, said device
locating upon a stand, said wheel having a hub generally
centered therein and rotating about an axis generally parallel
to a horizon, without marring said wheel and without the use
of hand tools, comprising:
an elongated threaded rod, said rod adapting to exceed
the length of said stand and,
two conically shaped members advancing upon said rod,
having lesser hardness than said hub, being of a material to
prevent marring, and securing said hub and said wheel
between said members.

1 The Appeal Brief states the real party in interest “includes the inventor,”
Steven C. Nemish. App. Br. 1.
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Application 11/621,891

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11. A device for balancing a tire upon a wheel, said device
locating upon a stand, said wheel having a hub generally
centered therein and rotating about an axis generally parallel
to a horizon, without marring said wheel and without the use
of hand tools, comprising:
an elongated threaded rod, said rod adapting to exceed
the length of said stand;
two conically shaped members advancing upon said rod,
having lesser hardness than said hub, being of a material to
prevent marring, and securing said hub and said wheel
between said members;
each of said members having an apex with a threaded
hole cooperating with said rod, a surface flaring outward
from said apex, a rim locating outwardly from said apex at
the maximum diameter of said surface and being parallel to
a longitudinal axis of said rod, and a base opposite said apex
and outwardly from said rim, said rim and said surface being
hollow, said apex being truncated, forming a flat surface
generally perpendicular to said rod, said flaring surface
having an outside angle from said apex to said rim, an inside
angle from said rim upon an interior of said flaring surface
to said apex, said inside angle and said outside angle are
forty five degrees, and said apex has an approximately seven
eighths of an inch outside diameter and said rim has an
approximately three and three eighths of an inch outside
diameter.

REJECTIONS
The following grounds of rejection are before us on appeal:
Claims 1, 3, 4, and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Thompson (U.S. 3,820,430, issued June 28, 1974).
Claims 7, 8, 10, and 11 are rejected under 35 U.S.C. §103(a) as being
obvious over Thompson in view of La Penta (U.S. 2,752,788, issued July 3,
1956).
Appeal 2011-003378
Application 11/621,891

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ISSUES
Did the Examiner reversibly err in finding that claims 1, 3, 4, and 9
are anticipated by the disclosures in Thompson?
Did the Examiner reversibly err in concluding claims 7, 8, 10, and 11
obvious over the teachings of Thompson in view of La Penta?

ANALYSIS
The rejection of claims 1, 3, 4, and 9 as anticipated by Thompson
In order for the Examiner to carry the burden to establish a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required in the claim, is found
in a single prior art reference, either expressly or under the principles of
inherency. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Thompson discloses “a rotary balancing machine for hubs, brake
drums, and other rotating members” comprising, among other things, a
“harmonically vibrating supporting structure” that “may be constructed from
suitable rigid material” such as structural steel. Thompson, col. 1, ll. 4-5 and
53-56; col. 3, ll. 7-10. Thompson further discloses an axle assembly
mounted on the supporting structure, and that the axle has threads that are
used with conical sections “shaped to fit the bearings of the wheel assembly”
to concentrically center a wheel assembly on the axle assembly. Id. at col. 3,
ll. 10-12 and 25-34. Thompson does not state any further properties of the
conical sections disclosed therein.
The Examiner finds that Thompson discloses a hub and drum
balancing machine comprising, among other things, two conically shaped
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Application 11/621,891

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members, which are of lesser hardness than the hub to prevent marring, that
are used to center the wheel on the axle assembly. Ans. 4. The Examiner
finds that the conical members having a lesser hardness than the hub to
prevent marring “is a mere characteristic of the material used for the
members and a mere statement of its characteristics without any substantial
basis” and that “one can consider and conclude that the material used to
construct the members suggested in the Thompson reference performs such
characteristics.” Id. The Examiner further finds that “there are a range of
materials used for making hubs for a wide range of wheels,” and that “if the
hub is made of a material having a greater hardness than the conically
shaped members, then the Thompson reference would meet the limitation of
the claim.” Id. at 7. Appellant responds that “Thompson states usage of
metal parts being of structural steel, c. 3 l. 10, which can mar wheels.” App.
Br. 8. Appellant argues that “the present invention has cones of lesser
hardness than steel, particularly nylon or polyethylene, which are non-
marring materials.” App. Br. 8 (citing Spec. 9, ll. 24-26).
Claim 1 recites two conically shaped members “having lesser
hardness than said hub, being of a material to prevent marring.” The
Examiner finds (without explicitly labeling it as such) that Thompson
inherently anticipates this limitation because
[s]ome hubs can be of material having a greater hardness than
the conically shaped members or a material having a lesser
hardness than the conically shaped members. Therefore, if the
hub is made of a material having a greater hardness than the
conically shaped members, then the Thompson reference would
meet the limitation of the claim, namely the conically shaped
members have a lesser hardness than the hub the prevent
marring.
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Ans. 7. “Inherent anticipation requires that the missing descriptive material
is ‘necessarily present,’ not merely probably or possibly present, in the prior
art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir.
2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). The
Examiner has not established that the conical sections disclosed in
Thompson necessarily have a “lesser hardness than said hub, being of a
material to prevent marring” as recited by claim 1, and therefore has not
established a prima facie case of anticipation. For these reasons, we reverse
the Examiner’s rejection of claim 1 as anticipated by Thompson.
The Examiner further finds that claims 3, 4, and 9 are anticipated by
Thompson. Ans. 4-5 and 7-8. These claims ultimately depend from claim 1.
We therefore reverse the Examiner’s rejection of claims 3, 4, and 9 as
anticipated by Thompson for the reasons set forth with respect to claim 1
above.
The rejection of claims 7, 8, 10, and 11 as obvious over
Thompson in view of La Penta
The Examiner concludes that claims 7, 8, 10, and 11 would have been
obvious over Thompson in view of La Penta. Ans. 5-6 and 9-11. The
Examiner’s obviousness rejection fails to cure the deficiencies described
above in the anticipation rejection. Therefore, we reverse the Examiner’s
rejection of claims 7, 8, 10, and 11 as being obvious over Thompson in view
of La Penta.

CONCLUSION
The rejection of claims 1, 3, 4, and 9 under 35 U.S.C. § 102(b) as
being anticipated by Thompson is reversed.
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Application 11/621,891

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The rejection of claims 7, 8, 10, and 11 under 35 U.S.C. § 103(a) as
being obvious over Thompson in view of La Penta is reversed.

DECISION
The decision of the Examiner is REVERSED.

REVERSED

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