Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6 May 2025 has been considered by the examiner.
The lined through reference is a duplicate listing, having already been cited in a prior IDS.
Drawings
The drawings were received on 2 July 2025. These drawings are not approved, due to the fact that newly proposed Figure 7 constitutes new matter. Namely, proposed Figure 7 shows the location of a mold line 23. However, such a feature was not originally shown in the drawings; and the specification fails to set forth a specific location for the mold line. Therefore, the addition of the mold line 23 in Figure 7 is new matter unsupported by the originally filed drawings and specification.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the wheel including a “demolding surface” meeting the limitations set forth in lines 12-15 of claims 11 and 20; must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 11-12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanazawa et al (GB 2249063) in view of Breyton (DE 102005026829).
Per claims 11 and 20, Kanazawa et al discloses a motor vehicle wheel made of aluminum alloy, and a method of its manufacture by casting (abstract; pages 5-11; and Figures 1-3), in which the wheel and method of its manufacture include the following:
Providing a casting mold (52,54) with a casting mold cavity (56) defining a wheel 10 having a rim well 14 delimited on opposite sides by an outer flange 18 and an inner flange 16, a hub 28 with a central recess (i.e. aperture) and a pitch circle diameter, as well as a wheel center 12 connecting the rim well 14 and the hub 28 to one another offset in the longitudinal direction. The wheel 10 is manufactured in one piece and continuously in a casting mold (52,54) by casting of a casting material (molten aluminum alloy); and cooling and removing the one-piece wheel 10 from the casting mold cavity (56) of the casting mold (52,54), wherein the wheel 10 has a demolding surface running in an axial direction and/or in a radial direction with respect to a longitudinal central axis. The wheel 10 includes a plurality of spokes (located between decoration holes 30) having a wall thickness. Kanazawa et al does not disclose a specific thickness for the wall(s) of the spokes. However, one of ordinary skill in the art would have recognized that the wheel would selectively be provided with one or more of a wall thickness of at most 15 mm at least in sections, a radius of curvature of at most 4 mm, and with a plane enclosing an angle of between 0° and 4° with the longitudinal central axis, since design of a wheel (e.g. shape/size thereof) would be determined based at least on vehicle weight and other dimensions. In this instance, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to modify the structure of the wheel, since modification of shape is merely a design choice. In the absence of persuasive evidence to the contrary, any change in shape is merely a matter of choice which a person of ordinary skill in the art would have found obvious. See MPEP 2144.04(IV)(B) and referring to In re Dailey, 357 F.2d 669, 149 USPQ 7 (CCPA 1966). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 12, Kanazawa et al does not explicitly disclose that the motor vehicle rim is manufactured with a first wall thickness greater than 5 mm and in regions with a second thickness corresponding to the (small?) thickness, one of ordinary skill in the art would have recognized that design of a wheel (e.g. shape/size) would be determined based at least on vehicle weight and other dimensions. Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 11 and 20, Kanazawa et al does not specify that the type of casting used to produce the wheel being vacuum casting. Breyton teaches the use of vacuum casting in the manufacture of a motor vehicle wheel. therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to produce the wheel of Kanazawa et al by vacuum casting, as a substitute equivalent manufacturing process, dependent upon cost, and the desired physical and chemical properties of the wheel.
Claim(s) 13-19 and 21-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanazawa et al in view of Breyton as applied to claims 11-12 and 20 above, and further in view of Ichikawa et al (9,327,548).
Regarding claims 13-19 and 21-30, Kanazawa et al as modified by Breyton does not disclose the shape of the spokes. Ichikawa et al teaches the use of a motor vehicle wheel 16 having a plurality of spokes, wherein the spokes includes support walls 33b having a first wall thickness and an ornamental wall 33a having a second wall thickness, with the first wall thickness being greater than the second wall thickness (see Figure 4). The support walls 33b and ornamental wall 33a are formed at an angle with respect to one another.
Regarding claims, 15-19, the spokes are formed of multiple bars (33a and 33b), with a plurality of bars (33b) having the “slight” wall thickness. Bars 33b include free ends. The bars 33b are spaced apart from one another and connected to bar 33a to form a U-shape enclosing a cavity. The depth of the cavity is at least the thickness of the support 33b or ornamental wall 33a.
Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to form the spokes of the wheel of Kanazawa et al as modified by Breyton in the manner taught by Ichikawa et al, for the purpose of reducing the weight of the wheel without sacrificing strength.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11, 13, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12, 14, and 20, respectively, of U.S. Patent No. 12,420,582 (assigned Patent number for application 17/778,126 allowed on 28 May 2025). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claim(s) is/are fully encompassed by the patented claims. Therefore, it is obvious that the Applicant is claiming the same invention in different and/or broader terms.
Response to Arguments
Applicant's arguments filed 2 July 2025 have been fully considered but they are not persuasive. The Applicant argues that the “drawings were alleged not to include a ‘demolding surface’”. The Applicant then argues that “no new matter has been added by the amendment to the figures” (namely newly proposed Figure 7). However, this is not the case, given the fact that the “demolding line” added in Figure 7 is new matter, due to the fact that neither the claims nor the specification provide explicit or sufficient details of the actual location of the demolding surface with respect to the other features of the wheel.
The Applicant argues that Kanazawa shows a light alloy cast wheel “which does not have blow holes occur [sic] in a rim flange during casting”. First, it is unclear what the Applicant is actually arguing with this statement. Second, it is unclear how this statement is related to the rejection of the claims under Kanazawa.
The Applicant argues that Kanazawa discloses a “standard low-pressure casting technique”, which “does not apply a vacuum”. However, it should be noted that the rejection is an obviousness-type rejection, with Breyton teaches a vacuum casting technique. The Applicant argues that “it does not appear appropriate to modify Kanazawa to use a technique that it does not teach and which it shows no evidence of being compatible with, in order to have the resulting wheel have different geometry, for no apparent reason that is actually demonstrated in Kanazawa”. First, regarding the argument of no teaching to combine the references, see section 11 below. Second, the Applicant has failed to provide any evidence, in the form of a declaration or affidavit filed under 37 CFR 1.131 or 1.132, to support these arguments. Third, it is unclear what the Applicant is arguing with the phrase “in order to have the resulting wheel have different geometry”. It appears that this phrase may imply an argument of a literal combination of the references, which is not the case. Namely, Kanazawa et al shows claimed physical structure, which Breyton teaches vacuum casting. On the other hand, if the Applicant is arguing against Kanazawa et al being capable of meeting the various claimed dimensions, the Applicant has failed to provide any evidence, in the form of a declaration or affidavit filed under 37 CFR 1.131 or 1.132, to support any criticality thereof.
The Applicant appears to argue that the claimed dimensions do not fall under “routine optimization”, and that the Office action makes “conclusory statements” in the rejection thereof. However, this is not the case. Furthermore, the Applicant has failed to provide any evidence, in the form of a declaration or affidavit filed under 37 CFR 1.131 or 1.132, to support any criticality or uniqueness of the claimed dimensions.
The Applicant argues that the wheel of Kanazawa cannot be manufactured by vacuum casting due to the difference in “certain specific constraints” for each manufacturing method. The Applicant then argues that the wheel of Kanazawa et al would require “substantial reconstruction or redesign” in order to be suitable to be manufactured by vacuum casting. However, it should be noted that the Applicant cited US Patent 5,311,918 to Scott, which discloses the functional equivalence of low-pressure casting and vacuum (counter-pressure) casting. Therefore, absent actual evidence, in the form of a declaration or affidavit filed under 37 CFR 1.131 or 1.132, to support these arguments.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Both Kanazawa et al and Breyton set forth casting techniques (low-pressure casting and vacuum casting, respectively), which are substitute equivalents of each other. Therefore, it would have been obvious to one of ordinary skill in the art (prior to the effective filing date of the claimed invention, and with a reasonable expectation of success) to form the wheel of Kanazawa et al using a vacuum casting technique, dependent upon the cost, and the desired physical and chemical properties of the wheel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON R BELLINGER whose telephone number is (571)272-6680. The examiner can normally be reached M-F 9-4.
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/JASON R BELLINGER/ Primary Examiner, Art Unit 3615