FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Sep 10, 2020

15494781 - (D) (P.T.A.B. Sep. 10, 2020)

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.
15/494,781 04/24/2017 Neal Koenig 83782118 4350
121691 7590 09/10/2020
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEAL KOENIG

Appeal 2020-001239
Application 15/494,781
Technology Center 3600
____________

Before JOHN C. KERINS, KEVIN F. TURNER, and
JEREMY M. PLENZLER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, 9–13, and 15–20, the only
claims currently pending in the application. As detailed below, claims 3, 6,
7, and 9–11 are no longer subject to any rejection on appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ford Global Technologies LLC, as the
real party in interest. Appeal Br. 3.
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Application 15/494,781

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a system and method of connecting a
wheel attachment to a vehicle wheel hub. Claim 1 is illustrative, and is
reproduced below:
1. A system for connecting a vehicle wheel attachment,
comprising:

a wheel hub fabricated of a first material and including an
interiorly threaded bore; and

at least one threaded insert fabricated of a second material that is
different from the first material and having an exteriorly threaded
surface adapted to mate with the interiorly threaded bore;

wherein the at least one threaded insert includes an interiorly
threaded surface adapted to mate with an exteriorly threaded
flange carried by the vehicle wheel attachment.

THE REJECTIONS
The Examiner rejects:
(i) claims 4, 10, 15, 16, and 17 under 35 U.S.C. § 112(b) as being
indefinite;2 and

2 This ground of rejection was withdrawn as to claims 3, 6, 7, 9, and 11 in
the Examiner’s Answer. Ans. 5. The inclusion of claim 10 in the grouping
of the claims for which the rejection was withdrawn appears to be an
inadvertent error, in that claim 10 depends from canceled claim 8, and the
Examiner maintains the indefiniteness rejection as to claims 4, 15, and 17 on
that same basis. We thus regard claim 10 as being subject to this rejection.
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(ii) claims 1, 5, 12, 13, and 15–20 under 35 U.S.C. § 103 as being
unpatentable over Panter (GB 2341, issued Oct. 14, 1909) in view of
Schumacher (US 4,376,554, issued Mar. 15, 1983).3

ANALYSIS
Claims 4, 10, 15, 16, and 17--§ 112(b)--Indefiniteness
Claims 4, 10, 15, and 17 are rejected as being indefinite on the basis
that each of these claims, as presented on appeal, depends from a canceled
claim. Final Act. 4. Appellant does not respond substantively to this
rejection, nor has Appellant amended these claims to overcome this defect.
The rejection is summarily sustained.
Claims 16 and 17 are rejected on an additional indefiniteness ground.
The Examiner indicates that independent claim 12, from which claims 16
and 17 depend, recites a method of connecting a wheel attachment to a
vehicle wheel hub that includes the step of mating a central interiorly
threaded bore with at least one threaded insert having an exteriorly threaded
surface. Ans. 6. The Examiner further observes that claims 16 and 17 each
require a plurality of threaded inserts, and that applying this further
limitation to the method of claim 12 results in a method in which a plurality
of threaded inserts are mated with the central interiorly threaded bore. Id. at
7. The Examiner finds it unclear as to how a plurality of threaded inserts
would be capable of being mated with the centrally interiorly threaded bore,
especially in view of the absence in the Specification of any disclosure of

3 This ground of rejection was withdrawn as to claims 3, 4, 6, 7, and 9–11 in
the Examiner’s Answer. Ans. 6.
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Application 15/494,781

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how two or more of the plurality of inserts could be simultaneously mated
with the wheel hub. Id.
Appellant argues that claims 16 and 17 do not require the
simultaneous use (mating with the wheel hub) of two or more of the plurality
of inserts. Appeal Br. 11. Appellant asserts that the claims require only “a
plurality of threaded inserts, albeit interchangeably usable one at a time.” Id.
Addressing, in addition, the requirement in claim 16 that each of the
plurality of threaded inserts has an exterior diameter that is different from at
least one other of the plurality of threaded inserts, Appellant takes the
position that this clearly would be understood as providing a plurality of
inserts that may be fit (one at a time) into wheel hubs of differing interior
diameters. Id. at 11–12.
The Examiner, in withdrawing the rejection of claims 3, 6, 7, 9, and
11 on this same ground, implicitly draws a distinction between system-type
claims, as are independent claims 1 and 6, from which claims 3, 7, and 9,
depend, and method claims, the category to which claims 12, 16, and 17
belong. In the system-type claims currently pending, the Examiner appears
to take the position that the recitation of a plurality of threaded inserts and a
wheel hub sufficiently and clearly connotes that one or more of the plurality
of threaded inserts will not be mated to the recited wheel hub at any given
point in time.
Method claim 12, in contrast, recites the affirmative operative step of
mating the bore of the wheel hub with the recited at least one threaded insert.
We agree with the Examiner that it is unclear how this mating step would be
accomplished with the plurality of threaded inserts required by dependent
claims 16 and 17, in that the wheel hub includes only one central interiorly
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threaded bore. This is even more so the case, when considering that claims
16 and 17 require that each of the inserts have an exterior diameter that is
different from at least one of the other of the plurality of threaded inserts. It
appears from this claim requirement that one or more of the plurality of
threaded inserts would not be of a proper size to be mated with the bore of
the wheel hub. As such, the language of these claims is unclear in
describing and defining the claimed invention. In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014).
The rejection of claims 16 and 17 as being indefinite on this basis is
also sustained.

Claims 1, 5, 12, 13, and 15–20 --§ 103--Panter/Schumacher
Claims 1, 5, 12, 13, 15, and 18–20
Appellant presents the same arguments for independent claims 1 and
12, and does not separately argue dependent claims 5, 13, 15, and 18–20.
We select claim 1 as representative of this group of claims, and claims 5, 12,
13, 15, and 18–20 stand or fall with claim 1. Appellant presents additional
arguments directed to dependent claims 16 and 17, which we address
separately below.
The Examiner relies on Panter as disclosing a wheel hub B having an
interiorly threaded bore, and a threaded insert A having an exteriorly
threaded surface adapted to mate with the interiorly threaded bore, and a
vehicle wheel attachment H. Final Act. 5. The Examiner finds that Panter
discloses that the insert has a second exteriorly threaded surface configured
to mate with an interiorly threaded surface of vehicle wheel attachment H, in
contrast to the claimed insert having an interior thread and the vehicle wheel
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attachment having a mating exterior thread. Id. The Examiner points out
that Panter discloses that the vehicle wheel attachment may be alternatively
fixed by other easily removable connections. Id., citing Panter, p. 2, ll. 12–
13. Figure 1 of Panter, reproduced below for convenient reference,
illustrates the axle and wheel hub bearing assembly, together with the
reference letters used in the discussion herein.

Figure 1 of Panter, above, is a cross-sectional view of a wheel hub bearing
assembly.
The Examiner additionally relies on Schumacher as teaching a system
and method for connecting a vehicle wheel attachment 142 to a wheel hub
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112 via a threaded insert 128, in which the threads of the insert are on an
interior surface, with the threads of the mating vehicle wheel attachment
being on its exterior surface. Final Act. 5. The Examiner concludes that it
would have been obvious to modify Panter in view of the teachings of
Schumacher so that the end of the Panter insert that is to couple with the
vehicle wheel attachment would include threading on its interior surface, and
the vehicle wheel attachment would have mating threads on its exterior
surface. Id. The Examiner takes the position that this reversal of thread
positioning is a well-known alternative connection as evidenced by
Schumacher, and would provide predictable results in securing the vehicle
wheel attachment to the threaded insert in the Panter arrangement. Id. at 5–
6.
Appellant first argues that the Schumacher insert is not threaded, but
is welded in place, and that the Examiner has not shown “how Schumacher’s
exteriorly unthreaded ‘insert’ could be incorporated into Panter’s wheel
hub.” Appeal Br. 12. The argument is not responsive to the rejection as
articulated, which does not propose to modify Panter to bodily incorporate
the Schumacher insert into the Panter construction, as confirmed by the
Examiner in the Answer. See Ans. 7. The argument is not indicative of
error in the rejection.
Appellant argues that the proposed reversal of the positioning of the
threads in Panter, such that the insert would include threading on its interior
surface, would potentially interfere with free travel of spring D and piston E
positioned within the insert, such that “the modification would not be
favored by the skilled artisan.” Appeal Br. 13. The argument does not point
to error in the rejection. The piston in Panter is located well inboard of the
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threaded end portion of the insert, which would remain the case were the
threaded connection brought to the interior of the insert. Figure 1 of Panter
additionally illustrates ample clearance between spring D and the interior
wall of the insert, which clearance would also seemingly remain in the
proposed modification. In addition, an unthreaded interior surface of the
wheel attachment would overlie the interiorly-disposed insert threads in the
proposed modification, and interference with movement of the spring would
thus not appear to be an issue.
Appellant additionally argues that the reversal of the position of the
threaded sections of the insert and vehicle wheel attachment would provide
escape routes for lubricant to travel from space F, around piston E, into
space occupied by spring D, thereby likely rendering the Panter construction
unsuitable for its intended purpose. Appeal Br. 13. First, as above, the
threaded connection in the proposed modification would be well outboard of
piston E, provided that the length of the threaded connection remains the
same in the modified structure. Thus, the same danger of leakage past piston
E exists in both the unmodified and modified Panter constructions. We note
as well that, if there is leakage past piston E, the lubricant would find, in
both the unmodified and modified constructions, a tortuous path through a
threaded connection in order to completely exit the region enclosed by the
vehicle wheel attachment.
As such, Appellant’s arguments do not apprise us of error in the
rejection of claim 1. We sustain the rejection. Claims 5, 12, 13, 15, and 18–
20 fall with claim 1.
Claims 16 and 17
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Appellant argues, for claims 16 and 17, that the combination of Panter
and Schumacher does not disclose or suggest the provision of a plurality of
threaded inserts. Appeal Br. 16–17. Having determined that these claims
are indefinite, as discussed in the preceding section, we cannot sustain the
rejection of these claims under 35 U.S.C. § 103 because to do so would
require speculation as to the scope of the claims. See In re Aoyama, 656
F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming
an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859,
862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a) because the rejection was
based on speculative assumptions as to the meaning of the claims). It should
be understood, however, that our decision in this regard is based solely on
the indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

DECISION
The rejection of claims 4, 10, 15, 16, and 17 as being indefinite is
affirmed.
The rejection of claims 1, 5, 12, 13, 15, and 18–20 as being
unpatentable over Panter and Schumacher is affirmed. The rejection of
claims 16 and 17 as being unpatentable over Panter and Schumacher is
reversed, pro forma.

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Application 15/494,781

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4, 10, 15,
16, 17
112(b) Indefiniteness 4, 10, 15,
16, 17

1, 5, 12,
13, 15–20
103 Panter,
Schumacher
1, 5, 12,
13, 15,
18–20
16, 17
Overall
Outcome
1, 4, 5,
10, 12,
13, 15–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED