Ex Parte Scott

Patent Trial and Appeal Board

Oct 31, 2017

13019141 (P.T.A.B. Oct. 31, 2017)

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.
13/019,141 02/01/2011 Steven Richard Scott 60795-301201 9883
73744 7590 11/02/2017
Patent T aw Offiee of T arrv fTiiernsiev
EXAMINER
P.O. Box 720247
San Jose, CA 95172-0247
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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 address(es):
larrygpatent @ sbcglobal.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN RICHARD SCOTT
Appeal 2016-002298
Application 13/019,1411
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1, 4, and 6—15.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Motion Pro. Inc. App.
Br. 2.
2 Claims 2, 3, 5, and 16—21 were canceled by Appellant in amendments filed
October 1, 2013, March 25, 2014, and December 28, 2014.
Appeal 13/019,141
Application 2016-002298
CLAIMED SUBJECT MATTER
The claims are directed to a tool for assisting in the removal of a
motorcycle tire while protecting the wheel from scratches and gouges. Spec.
Tflf2, 14. Claim 1 is the sole independent claim. Claim 1 reproduced below,
is representative of the claimed subject matter:
1. A rim protector for use on a wheel having a central hub,
comprising:
a main body, including a front edge, and a rear edge, and
a raised strip bordering a recessed portion which comprises an
inclined channel which extends in a direction from said front
edge to said rear edge for guiding a tire iron.
Appeal Br. 15 (Claims App.) (emphasis added).
REJECTIONS3’4’
The Examiner made the following rejections:
I. Claims 1, 4, and 10-14 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Kliskey (US 2004/0244918 Al, pub. Dec. 9, 2004).
II. Claims 6—9 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kliskey.
3 The issue concerning clarity of the drawings under 37 C.F.R. § 1.84(p)(4)
presented in the Appeal Brief at pages 4—6 is not subject matter for appeal,
but is reviewable by way of petition to the Technology Center Director. See
MPEP § 1002.02(c) (Item 4: Petitions under 37 C.F.R. § 1.113 relating to
objections or requirements made by the Examiners). Accordingly, that issue
is not addressed here.
4 The Examiner withdrew the rejection of claims 1, 4, and 6—15 under
35 U.S.C. § 112, second paragraph. Ans. 3; see also App. Br. 15—16 (as
claims 16—21 are canceled, the indefiniteness rejection of these claims is
moot).
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Appeal 13/019,141
Application 2016-002298
OPINION
Rejection I
Appellant argues for the patentability of claims 1, 4, and 10—14 as a
group. Appeal Br. 7—12. We select claim 1 as representative, and claims 4
and 10—14 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Kliskey discloses all of the elements of this
claim including: a “rim protector capable of guiding a tire iron ... an
elevated stripe [raised strip] (14) that borders a recessed and inclined
channel [] 13 . . . and a heel.” Final Act. 4.
Appellant takes issue with the Examiner’s findings, arguing that
Kliskey “refers to [a] ‘foldover’ 14 . . . [not a] raised strip.” Appeal Br. 7.
Further, Appellant argues that the “foldover 14 is transverse to the direction
of travel of the tire iron I” and does not disclose “an inclined channel for
guiding a tire iron.” Id. at 7. In Appellant’s view, “there is no channel
between raised strips for guiding the implement I in this direction. Travel in
this direction is in fact blocked by the foldover 14.” Id. at 8. Appellant
argues that “[t]he use of the terms of reference, ‘front’ and ‘rear’ are clear
from the [Specification, with the front edge being closest to the center of
the wheel and the rear edge engaging the tire and rim,” thus forming a
“radial direction” between front and rear edges. Id. at 9; see also App. Br.,
App’x. C. Further, Appellant argues that “it is apparent that there is no
inclined channel in this radial direction in Kliskey'’'' and “it is apparent that
this channel runs in a transverse direction to the radial direction for guiding a
tire iron.” App. Br. 9; see also App. Br., App’x. A.
The Examiner maintains that “the portion [14 of Kliskey] does read
on a raised strip, clearly being in the form of a strip and being raised relative
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Appeal 13/019,141
Application 2016-002298
to the adjacent portions (13 and 20).” Ans. 4. Further, the Examiner reasons
that “Kliskey is in fact intended to ‘guide’ a tire iron [I] as seen in Figs. 5
and 6, with the tire iron contacting the inclined channel [13] in a manner that
may be considered to ‘guide’ the tire iron.” Id. In relation to drawings
created by Appellant, the Examiner states that the drawings support the
Examiner’s position in that the “[t]he channel is also shown as a planar
surface that extends in a direction from the front edge toward the rear edge.”
Id. at 5. A copy of Appellant’s “Appendix A,” annotated by the Examiner,
is included below to illustrate the “Alt. Front Edge” and “Alt. Rear Edge.”
'by tfsldovtr-
Id. at 6.
Examiner annotated copy of Appellant’s “Appendix A” shows the
position of the channel and “Alt. Front Edge” and “Alt. Rear Edge.”
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Appeal 13/019,141
Application 2016-002298
The Examiner’s position is clear. Below is a copy of Figure 6
annotated by the Board to illustrate the Examiner’s position.
Kliskey, Figure 6, annotated by the Board.
As stated above, according to the Examiner, the claimed “inclined
channel” is formed by body outer surface 13 and the claimed “raised strip” is
foldover 14 with the tire iron (implement I) guided by the channel to prevent
marring of the wheel W. Final Act. 4. The Examiner stated in the Answer
that “none of the claims define any specific orientation of the raised strip
relative to the channel or any intended orientation relative to a wheel or tire
iron, nor do the claims provide any guidance or requirements for how the
channel ‘guides’ the tire iron.” Ans. 4. Thus, the front and rear edges, as set
forth in the claim, do not foreclose the interpretation given to Kliskey. The
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Appeal 13/019,141
Application 2016-002298
Examiner then references Figure 6 of Kliskey. In describing the invention,
Kliskey states:
In some instances, to remove the bead B from the rim R, the
implement I must be rotated around the edge of the rim R to
cause the end E of the implement I to lift the bead B over the rim
R, as shown for example in FIG. 6. In these instances, a portion
of the implement I, such as its heel, may contact the finished
surface of the rim R for the well surface S of the wheel W. With
the pad 10 overlaying at least a portion of well surface S
corresponding to the point of contact P, where the implement I
would ordinarily contact the wheel W, the pad protects the wheel
W from any deformation or marring that the implement I might
otherwise cause.
Kliskey 138.
As shown in the annotated Figure 6 above, the heel of the implement
contacts channel 13 which is bordered by raised strip 14. Channel 13 is at
an angle of inclination relative to the wheel W as shown by the added
vertical and diagonal lines and the arrow in the lower left-hand portion of the
Figure. As annotated Figure 6 illustrates, the bead B is vertically in line
with the rim R and, as stated in paragraph 38, channel 13 will prevent
marring of wheel W when the implement I is rotated clockwise to separate
bead B from rim R.
According to Dictionary.com the word “guiding” has the following
meaning: “to force (a person, object, or animal) to move in a certain path.”
Dictionary.COM, http://www.dictionary.com/browse/guiding (last accessed
October 26, 2017). Channel 13 forces or “guides” the heel of implement I
such that it cannot mar the surface of wheel W. Accordingly, Appellant’s
arguments do not apprise us of error in the Examiner’s rejection.
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Appeal 13/019,141
Application 2016-002298
For the reasons set forth above, we sustain the Examiner’s decision
rejecting independent claim 1 as unpatentable over the teachings of
anticipated by Kliskey. Claims 4 and 10—14 fall with claim 1.
Rejection II
Claims 6—9 and 15
Claims 6—9 and 15 depend from claim 1. Appeal. Br. 15—16 (Claims
App.). Appellant does not separately contest the rejection of claims 6—9 and
15. Id. at 12—13. Rather, Appellant argues that these claims are patentable
based on their dependency from claim 1. We find no deficiencies in the
Examiner’s rejection of independent claim 1 as anticipated by Kliskey.
Accordingly, for the same reasons discussed above for claim 1, we sustain
the Examiner’s decision rejecting claims 6—9 and 15.
DECISION
The Examiner’s decision to reject claims 1, 4, and 10—14 under
35 U.S.C. § 102(b) is affirmed.
The Examiner’s decision to reject claims 6—9 and 15 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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