Jens Werner et al.

Patent Trials and Appeals Board

Aug 21, 2019

15103964 - (D) (P.T.A.B. Aug. 21, 2019)

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.
15/103,964 06/13/2016 Jens WERNER 140360P30US 1873
121764 7590 08/21/2019
ThyssenKrupp North America, Inc.
IP Services
111 W. Jackson Blvd.
Suite 2400
Chicago, IL 60604
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
tkna.ip-docket@thyssenkrupp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JENS WERNER, CHRISTIAN KOEHLER,
SANDRO MAEKE, MICHAEL DRESSLER, and
ANDRE BARTSCH
__________

Appeal 2019-001447
Application 15/103,964
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection2 of claims 19–23, 26, 27, 29, 30, 33, 36, and 37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 THYSSENKRUPP CARBON COMPONENTS GMBH (“Appellant”) is
the applicant as provided under 37 C.F.R. § 1.46 and is identified as the real
party in interest. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated Apr. 12, 2018.
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STATEMENT OF THE CASE
Claim 19, reproduced below as the sole independent claim on appeal
with disputed limitations italicized for emphasis, is exemplary of the subject
matter on appeal.
19. A wheel comprising a wheel rim and a wheel disc, wherein
the wheel rim comprises a rim base made of fiber composite
material and the wheel disc can be connected to the wheel rim by
a connecting element designed and associated with the rim base
in such a way that the connected wheel disc is not in contact with
the rim base, the connecting element being neither a part of the
wheel rim nor a part of the wheel disc.

THE REJECTIONS3, 4
I. Claim 26 stands rejected under 35 U.S.C. § 112(b) as indefinite.
II. Claims 19–23, 26, 27, 29, 30, 33, 36, and 37 stand rejected under
35 U.S.C. § 103 as unpatentable over Tashiro (US 2003/0038527 A1;
published Feb. 27, 2003) and Huidekoper (US 9,573,414 B2; issued Feb. 21,
2017).

3 “Claims 28, 31 and 32 are objected to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims.” Final Act. 6.
4 The Examiner’s objection to the drawings is a petitionable, not appealable,
matter (see Final Act. 2–3; see also 37 C.F.R. § 1.181; Ex parte Frye, 94
USPQ2d 1072, 1077–78 (BPAI 2010) (precedential)).
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ANALYSIS
Rejection I
Regarding dependent claim 26, the Examiner finds the phrase “at least
similar to” indefinite because “the [S]pecification does not provide a
standard for ascertaining the requisite degree, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the invention.” Final
Act. 4. The Examiner concludes that “it is unclear what would be
encompassed by the limitation.” Id.
Appellant contends that the Specification discloses that “examples of
materials which have a thermal coefficient of expansion that is at least
similar to the coefficient of expansion of the fiber composite material of the
rim base include steel alloys which are known under the names Invar® and
Pernifer®.” Appeal Br. 6 (citing Spec. 6:22–24). As such, Appellant argues
that “[b]ased on these provided examples of materials one of ordinary skill
in the art can readily ascertain whether or not a material has a thermal
coefficient of expansion that is at least similar to the coefficient of expansion
of the fiber composite material of the rim base.” Id.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). When a “word of
degree” is used, the patent application must provide a standard for
measuring that degree. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1332 (Fed. Cir. 2010), quoting Seattle Box Co. v. Indus. Crating &
packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The definiteness of a
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term of degree is problematic if its baseline for comparison is unclear to
those of ordinary skill in the art. Liberty Ammunition, Inc. v. United States,
835 F.3d 1388, 1395 (Fed. Cir. 2016).
Addressing Appellant’s reliance on the Specification as providing a
standard for measuring the degree of the claim phrase “at least similar to,”
indeed, the Specification discloses that “the connecting element consists of a
material which has a thermal coefficient of expansion which is at least
similar (in relation) to the thermal coefficient of expansion of the fiber
composite material of the rim base” and that “[s]uch properties are held e.g.
by special steel alloys. They are known for example by the names Invar® or
Pernifer®.” Spec. 6:16–23. Appellant does not provide the thermal
coefficients of expansion for special steel alloys, including Invar® and
Pernifer® steel alloys; however, we agree with Appellant that the thermal
coefficients of expansion Invar® and Pernifer® steel alloys, which are
disclosed in the Specification supra as materials having “such properties”
(i.e., relatively similar thermal coefficients of expansion) provides, as
exemplary, a standard by which to assess the meaning of the claim phrase
“at least similar to,” as set forth supra.
Further, the Specification discloses that
[a]s a result, if the wheel is in use and being subjected to a
thermal load (e.g. from brake heat), approximately equal thermal
expansion properties of the connecting element and the rim base
are generated.
As a result of the approximately equal thermal expansion
properties of connecting element and rim base, a compensatory
deformation of both components is achieved, as a result of which
tensions in the rim base that can lead to cracks in the fiber
composite material of the rim base are avoided.
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Spec. 6:23–33. Thus, the Specification also discloses that relative thermal
expansion properties between the connecting element and rim base materials
that do not lead to cracks are “at least similar to,” as claimed. Thus, we find
that the meaning of the phrase “at least similar to” definite.
Accordingly, we do not sustain the rejection of claim 26 under
35 U.S.C. § 112(B) as indefinite.

Rejection II
Claims 19–21, 23, 26, 27, 29, 36, and 37
Appellant does not present arguments for dependent claims 20, 21, 23,
26, 27, 29, 36, and 37 apart from the arguments presented for independent
claim 19. Appeal Br. 6–11. We select claim 19 as representative, and
claims 20, 21, 23, 26, 27, 29, 36, and 37 stand or fall with claim 19. See
37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 19, the Examiner finds, inter alia, that
Tashiro discloses a wheel comprising a wheel rim (i.e., rim 103) and a wheel
disc (i.e., radial disk portion 101, annular projection 105), wherein the wheel
rim comprises a rim base and the wheel disc can be connected to the wheel
rim by a connecting element (i.e., elastic rubber body 106, annular wall
member 107a, retainer plate 109) designed and associated with the rim base
in such a way that the connected wheel disc is not in contact with the rim
base, the connecting element being neither a part of the wheel rim nor a part
of the wheel disc, as claimed. Final Act. 5 (citing Tashiro, Fig. 10). The
Examiner also points out that the connecting element is “considered to be
either comprised of [components] 106, 107a and 109 under a first
interpretation of Tashiro . . . or consisting of [component] 106 under an
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alternative interpretation of Tashiro for the rejection of claims 19, 30 and
33.” Ans. 6 (emphasis added).
The Examiner acknowledges that “Tashiro is silent as to the material
of its rim base,” i.e., Tashiro does not disclose “a rim base made of fiber
composite material,” as claimed. Final Act. 6. The Examiner finds that
Huidekoper discloses this missing limitation and concludes that it would
have been obvious to modify the wheel of Tashiro “by forming its rim base
from fiber composite material” as taught by Huidekoper, to “provide a high
strength-to-weight ratio.” Id. (citing Huidekoper 3:1–60).
Appellant contends that
the Examiner takes the (apparently conflicting) positions that the
connecting element shown in Fig. 10 of TASHIRO comprises the
parts 106, 107a and 109 (page 5, last paragraph of the April 12,
2018 Final Office Action) and consists of part 106 (see sentence
bridging pages 5 and 6 of the April 12, 2018 Final Office Action).
Appeal Br. 6–7. As such, Appellant submits that the Examiner’s different
positions in regard to the component(s) of Tashiro’s wheel that the Examiner
considers as corresponding to the connecting element is in error. See also
Reply Br. 2.
Appellant’s argument is unpersuasive. Claim 19 does not require the
connecting element to be constructed as a single piece, but allows for either
alternative interpretation of Tashiro as relied on by the Examiner supra.
Appeal Br. 14 (Claims App.). In support, claim 37, which depends from
independent claim 19, expressly recites that “the connecting element
comprises several parts” (Appeal Br. 15 (Claims App.)), and thus, the
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“connecting element” recited in claim 19 may be a comprised of a single or
several parts.5
Appellant argues that Tashiro’s “elastic rubber body 106 is a part of
the wheel disc,” and thus cannot be a “connecting element [that is] neither a
part of the wheel rim nor a part of the wheel disc,” as claimed. Appeal Br. 7.
Appellant points to Tashiro disclosing “[a]n annular elastic member, such as
an elastic rubber body 106, extends axially on either side of the projection
105 and is attached to the projection 105 through, for example,
vulcanization.” Id. (quoting with emphasis, Tashiro ¶ 103); see also id.
(citing Tashiro ¶ 104). According to Appellant, Tashiro’s “elastic rubber
body 106 [is] permanently attached to and thus, an integral part of, the wheel
disc of TASHIRO,” “the annular wall members 107a and 107b are in turn
permanently attached to the rubber body 106,” and thus, “these wall
members are also a part of this wheel disc, forming together a single
structure that comprises the parts 101, 105, 106, 107a and 107b.” Id.; see
also id. at 8 (arguing that “a tire which is vulcanized or otherwise
permanently secured to a rim can no longer be considered to be a tire as such
because it can no longer be used as a tire.”).
This argument is also unpersuasive. As the Examiner explains,
“independent claim 19 does not preclude a connecting member from being
attached, either removably or permanently, such as by vulcanization, to the

5 See Bradford Co. v. ConTeyor North America, Inc., 603 F.3d 1262, 1271
(Fed. Cir. 2010) (citing Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d
1182, 1186 (Fed. Cir. 1998) (“The doctrine of claim differentiation create[s]
a presumption that each claim in a patent has a different scope.”)).
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wheel disc.” Ans. 6. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). The Examiner further explains that
Tashiro’s elastic rubber body 106, annular wall member 107a, and retainer
plate 109 are “clearly shown and described to be a separate component(s)
(i.e., separately formed) from the wheel disc (comprised of [components]
101 and 105) that is later attached to the wheel disc during assembly of the
wheel.” Ans. 6 (citing Tashiro ¶¶ 103, 104, Fig. 10). The Examiner also
points out that Tashiro’s assembly of components is similar to Appellant’s
connecting element as disclosed in the Specification. Id. at 6–7 (citing Spec.
12:40–13:16, Figs. 1a, 1b). We agree with the Examiner because the
Specification discloses that “[t]he detachable connection between the
connecting element 5 and the rim base 2 and that between the wheel disc 3
and the connecting element 5 can in each case be supplemented by a material
connection, for example by gluing the components together, which increases
the strength of the connections.” Spec. 13:11–16 (emphasis added). In other
words, gluing or vulcanizing a first component to a second component does
not mean, in this context, that the first component becomes the second
component.
Appellant also argues that “the disassembly (e.g., involving removing
screw 112) would result in essentially two (main) parts: (1) a rim 103 . . .
corresponding to the wheel rim . . ., and (2) a part consisting of parts 101,
105, 106 . . ., 107a and 107b, . . . corresponding to the wheel disc.” Appeal
Br. 7. Appellant argues that in contrast, removing the screw 9 shown in
Appellant’s Figures 1a and 1b would result in three main parts. Appeal Br.
7–8; see also Reply Br. 3. Appellant’s contention does not apprise us of
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error in the Examiner’s findings for the reasons discussed supra. Further,
claim 19 does not recite a screw or disassembling the wheel such in a
particular manner that would result in three main components. See Ans. 7.
Appellant further argues that just because Huidekoper mentions that a
rim base can be made from fiber composite material does not render that
feature obvious with respect to the embodiment shown in Tashiro’s Figure
10 and that there is no evidence that an ordinary artisan would have been
motivated to make the proposed modification. Appeal Br. 8–9. Appellant
submits that to arrive at the claimed wheel, an ordinary artisan starting from
the wheel of Tashiro would have to take certain steps, which are not merely
a simple substitution of material because metal and fiber composite
materials “are apparently very different materials with at least in part very
different characteristics.” Id. at 9–10; see also Reply Br. 3.
These arguments are unpersuasive. First, Appellant does not explain
why replacing the material of Tashiro’s rim with fiber composite would
render Tashiro’s wheel inoperable. Further, the Examiner determines that it
would have been obvious to modify the wheel of Tashiro “by forming its rim
base from fiber composite material” as taught by Huidekoper, to “provide a
high strength-to-weight ratio.” Final Act. 6. We note that
evidence of a motivation to combine need not be found in the
prior art references themselves, but rather may be found in “the
knowledge of one of ordinary skill in the art or, in some cases,
from the nature of the problem to be solved.” When not from the
prior art references, the “evidence” of motive will likely consist
of an explanation of the well-known principle or problem-
solving strategy to be applied.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1366 (Fed. Cir. 2006) (citation omitted, quoting In re Dembiczak,
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175 F.3d 994, 999 (Fed. Cir. 1999)). The Supreme Court has emphasized
that “the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As noted by the Court in KSR, “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” Id. at 421. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. See also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Nothing in the record before
us suggests that the Examiner’s proposed combination of known prior art
elements according to their known functions would involve more than
routine engineering efforts––rather, the record suggests that the proposed
modification would yield predictable results. We also note that the
Examiner does not modify the wheel of Tashiro by simple substitution of
equivalent materials; rather, the Examiner provides a reason for using a rim
base made of fiber composite material as taught by Huidekoper, that is, to
“provide a high strength-to-weight ratio.” Final Act. 6. Appellant does not
provide persuasive argument or evidence that Tashiro teaches away from
using fiber composite materials in its wheel. In other words, we find
Appellant’s arguments, lacking supporting evidence, insufficient to rebut the
express teaching of fiber reinforced polymer in a rim (see Huidekoper, 3:1–
60). See In re Geisler, 116 F.3d at 1470 (“[A]ttorney argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness”).
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Appellant argues that with a fiber composite material, “it is not
possible to form the annular stopper 108 and the projections and recesses in
the rim base for forming a clamping connection with the annular wall
members 107a and 107b, the rubber body 106 and the retainer plate 109 of
the embodiment of Fig. 10 of TASHIRO” because “the fiber composite
material of the rim base would likely experience excessive stress in the areas
with local discontinuities and reductions in cross-section, which stress would
result in damage to, or even failure of, the material of the rim base in these
areas.” Appeal Br. 10.
This argument also lacks merit for the same reasons discussed supra.
As the Examiner points out, “no evidence has been supplied by Appellant to
support these opinions.” Ans. 9. Further, to the extent that Appellant is
arguing that, once some modification of Tashiro is made based on a bodily
incorporation into Tashiro of one or more specific teachings in Huidekoper,
such as in using a fiber composite rim base, further modification is needed to
result in the invention set forth in claim 19, this argument is unpersuasive.
The test for obviousness is not, however, whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . .”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 19, and claims 20, 21, 23, 26, 27, 29, 36, and 37 depending therefrom,
as being obvious over Tashiro and Huidekoper.

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Claim 22
Claim 22 depends from claim 19 and recites “the rim base comprises a
drop center and the connecting element is associated with the rim base in an
area of the drop center.” Appeal Br. 14 (Claims App.).
The Examiner finds that Tashiro’s drop portion 119 corresponds to the
claimed “drop center.” Final Act. 5 (citing Tashiro, Fig. 10).
Appellant argues that “Fig. 10 of TASHIRO shows that the
‘connecting element’ assumed by the Examiner is located in an area of the
rim 103 which does not comprise the drop center 119 (or at least a part
thereof),” “[n]or has the Examiner explained what would allegedly have
motivated one of ordinary skill in the art to arrange the alleged connecting
element in the area of the drop center 119.” Appeal Br. 11; see also Reply
Br. 4.
These arguments are unpersuasive because, as the Examiner explains,
“the features upon which applicant relies (i.e., the connecting element being
located in an area of the rim which comprises the drop center) are not recited
in the rejected claim(s)” but “[i]nstead, claim 22 requires the connecting
element to be ‘associated with the rim base in an area of the drop center’”
and that “Fig. 10 of Tashiro clearly shows the connecting element being
‘associated’ (i.e., connected to) the rim base via part 107b in an area (i.e.,
the radially outwardly extending wall of the drop center 119) of the drop
center 119.” Ans. 9–10.6 We also note that it does not appear that the term

6 We note that the term “associated” is defined as “related.”
https://www.merriam-webster.com/dictionary/associated (last accessed Aug.
6, 2019). The Specification does not provide a special definition of
“associated.” See Spec., passim. In fact, the Specification applies this term
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“drop center” is recited in the Specification and therefore, not defined by the
Specification nor the claims.
Accordingly, we sustain the Examiner’s rejection of claim 22 as being
obvious over Tashiro and Huidekoper.
Claims 30 and 33
Claims 30 and 33 depend from claim 19, claim 30 recites
“the connecting element and/or an optional separation layer arranged in a
connecting area between the rim base and the connecting element or in a
connecting area between the connecting element and the wheel disc consists
of an electrically insulating material” and claim 33 recites “the connecting
element consists of a material which has a thermal resistance that is greater
than a thermal resistance of the material of the wheel disc.” Appeal Br. 15
(Claims App.).
As discussed above, for these claims and for claim 19, the Examiner
takes an alternative position, finding that Tashiro’s elastic rubber body 106
corresponds to the claims’ “connecting element.” Final Act. 5–6; Ans. 6–7.
Appellant intimates that the Examiner’s different interpretations as to
which component(s) of Tashiro’s wheel the Examiner considers as
corresponding to the connecting element is in error. Appeal Br. 11–12; see
also Reply Br. 4.

in a broad sense (see Spec. 6:2 disclosing that “the connecting element is
designed and associated with the rim base”) and does not define the term to
require direct association (see Spec. 23:7–8 disclosing that “ring component
42a and the pin components 42b are directly associated with the fiber
material”; as such, the term “direct” further modifies the term “associated”).
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This argument is unpersuasive for the reasons discussed above. In
other words, we are not apprised of error in the Examiner’s application of
alternative interpretations of Tashiro to the claims.
Accordingly, we sustain the Examiner’s rejection of claims 30 and 33
as being obvious over Tashiro and Huidekoper.

DECISION
The Examiner’s decision rejecting claim 26 under 35 U.S.C. § 112(b)
is AFFIRMED.
The Examiner’s decision rejecting claims 19–23, 26, 27, 29, 30, 33,
36, and 37 under 35 U.S.C. § 103 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).

AFFIRMED