DETAILED ACTION
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 .
Response to Amendment
It is noted that Applicant’s amended claim set filed 19 September 2025 is non-compliant inasmuch as it does not include markings to indicate all of the changes made thereto relative to the immediate prior set of claims. Note at least amended claims 2, 5, 7-9, 12, 16 and 18-20 include changes made thereto without all of the required markings with respect to the immediate prior set of claims.
Drawings
2. The drawings are objected to because the lead line for the “left” side reference character 108A in Fig. 5(A) is not directed to a spoke as described.
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 § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 5, 7, 8, 16, 18 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding each of claims 5, 7, 8, 16, 18 and 19, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
6. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
7. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claims 1, 2, 4, 5, 7-13, 15, 16 and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Renner et al. (US 2016/0193869 A1; hereinafter “Renner”) in view of Adrian (WO 98/13219 A2) and Hess et al. (WO 2013/026880 A1; hereinafter “Hess”).
Regarding claim 1, Renner discloses a carbon fibre wheel 1 for a vehicle (paragraph [0018]), the carbon fibre wheel comprising: a wheel body comprising a rim portion 2 and a face portion 3, the rim portion comprises an annulus structure (comprised of 10, 11, 12, 13, 14, 15, 16) configured to receive and seat a tyre (evident from Fig. 1), the face portion including a hub at 5 configured to fix the wheel to the vehicle (evident from Fig. 1), and a connection structure 4 that extends between and interconnects the hub and the rim (Fig. 1), the wheel body having an inner side (best shown in Fig. 2) configured to face a wheel mount of the vehicle (evident from Fig. 2), and an outer side (best shown in Fig. 1) configured to face outwardly when connected to the wheel mount of the vehicle (evident from Fig. 1), and the wheel body being formed from a first carbon fibre composite composition (paragraphs [0016] and [0040]) comprising a carbon fibre layup infused with a first resin (“epoxy resin” per paragraphs [0016] and [0040]).
Renner fails to disclose a fascia layer attached to and in a cooperating configuration with at least a portion of the face portion of the outer side of the wheel body including cooperating contours to the connection structure, the fascia layer being formed from a second fibre composite composition comprising a selected fibre layup infused with a second resin, wherein the first resin has a different composition to the second resin, and wherein the fascia layer has a thickness in a range of 100 to 800 microns.
Adrian, however, teaches a wheel 12 which includes a fascia layer 14 attached to and in a cooperating configuration with at least a portion at 16, 18 of the face portion of the outer side of the wheel body including cooperating contours to the connection structure at 18 (Figs. 1 and 2; lines 6-12 of page 4), the fascia layer being formed from a second fibre composite composition (lines 4-21 of page 5) comprising a selected fibre layup infused with a second resin (“polyester” per line 21 of page 5), and wherein the fascia layer has a thickness in a range of 100 to 800 microns (claim 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon fibre wheel of Renner by including the claimed fascia layer having a thickness in a range of 100 to 800 microns, such as taught by Adrian, as a well-known fascia layer arrangement that would have a reasonable expectation of success in protecting the outer surface of the wheel while providing desired aesthetics. Further, such a modification would result in the first resin having a different composition to the second resin.
Regarding claims 1 and 2, although Adrian discloses the fascia layer comprises a fibre composite layer at 14 (lines 4-5 and 15-20 of page 5), Renner, as modified by Adrian, fails to disclose the fibre composite layer being moulded to the wheel body such that the fascia layer is moulded to the wheel body as an overmoulded fibre composite layer. Instead, Adrian teaches the fascia layer/fibre composite layer being adhesively attached to the wheel body (lines 11-12 of page 4).
Hess, however, teaches a fascia layer 5 comprising a fibre composite layer (See the second paragraph on page 3 of the English language machine translation which states, in part, that “Also suitable as a material for the diaphragm are so-called organic sheets, ie continuous fiber-reinforced thermoplastic flat semi-finished products, or individual preimpregnated thermoplastic tapes”; See the third paragraph on page 3 of the English language machine translation which states, in part, that “Suitable polymers for the wheel body and for the diaphragm are, for example, natural and synthetic polymers or their derivatives, natural resins and synthetic resins and their derivates”; See the fifth paragraph on page 4 of the English language machine translation which states, in part, that “The polymer material is preferably reinforced. In particular, the polymer material is fiber-reinforced. For reinforcement, any, known in the art..reinforcement conventional fiber can be used. Suitable fibers are, for example, glass fibers, carbon fibers…”) that can be attached to the wheel body 9 in a number of different ways including by adhesive or by overmoulding the fibre composite layer onto at least a portion of the face portion of the outer side of the moulded wheel body (See second paragraph on page 7 of the English language machine translation which states, in part, that “it is also possible first to produce the diaphragm, insert it into a mold for producing the wheel body and then to overmold or encase the diaphragm with the polymer material for the wheel body, whereby the wheel body and diaphragm are connected to form an integral component”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon fibre wheel of Renner, as modified by Adrian, by overmoulding the second fibre composite layer onto the wheel body, such as taught by Hess, as a well-known alternative attachment means that would have a reasonable expectation of success in adequately securing the fascia layer to the face portion of the moulded wheel body in a desired position.
Regarding claim 4, Renner further discloses the first resin is based on epoxy (paragraphs [0016] and [0040]) and Adrian further discloses the second resin is based on unsaturated polyester (lines 20-21 of page 5).
Regarding claim 5, Adrian further discloses at least the second resin having an aesthetically acceptable cured colour comprising at least one of: clear, transparent, translucent, glassy or pellucid (lines 5-9 of page 6).
Regarding claim 7, Renner further discloses the first resin comprises a thermal performance structural resin (“epoxy resin” per paragraphs [0016] and [0040]).
Regarding claim 8, Adrian further discloses the second resin comprises a structural resin (“polyester” per line 21 of page 5).
Regarding claim 9, Adrian further discloses the selected fibre layup is formed from at least one fibre selected from the group consisting of: carbon fibre, aramid fibre, para-aramid fibre, glass fibre, polyester fibre and aluminised glass fibre (lines 4-21 of page 5).
Regarding claim 10, Adrian further discloses the fascia layer is attached to at least one of: the face portion 16, 18 of the outer side of the wheel body; or at least part of the rim portion 20 of the outer side of the wheel body (Fig. 1; lines 6-12 of page 4).
Regarding claim 11, Renner discloses a method of forming a carbon fibre wheel 1, comprising: forming a moulded wheel body from a first carbon fibre composite composition (paragraphs [0016] and [0040]) comprising a first carbon fibre layup infused with a first resin (“epoxy resin” per paragraphs [0016] and [0040]), the moulded wheel body comprising a rim portion 2 and a face portion 3, the rim portion comprising an annulus structure (comprised of 10, 11, 12, 13, 14, 15, 16) configured to receive and seat a tyre (evident from Fig. 1), the face portion including a hub at 5 configured to fix the wheel to the vehicle (evident from Fig. 1), and a connection structure 4 that extends between and interconnects the hub and the rim (Fig. 1), the wheel body having an inner side (best shown in Fig. 2) configured to face a wheel mount of the vehicle (evident from Fig. 2), and an outer side (best shown in Fig. 1) configured to face outwardly when connected to the wheel mount of the vehicle (evident from Fig. 1).
Renner fails to disclose forming a fascia layer on the outer side of the moulded wheel body from a second fibre composite composition comprising a selected fibre layup infused with a second resin, the selected fibre layup comprising at least one fibre layer covering at least a portion of the face portion of the outer side of the moulded wheel body, the selected fibre layup having a cooperating configuration with the outer side of the wheel body including cooperating contours to the connection structure, wherein the first resin has a different composition to the second resin, and wherein the fascia layer has a thickness in a range of 100 to 800 microns.
Adrian, however, teaches forming a fascia layer 14 on the outer side of the wheel body 12 (Figs. 1 and 2; lines 6-12 of page 4) from a second fibre composite composition comprising a selected fibre layup (lines 4-21 of page 5) infused with a second resin (“polyester” per line 21 of page 5), the selected fibre layup comprising at least one fibre layer covering at least a portion of the face portion at 16, 18 of the outer side of the wheel body (Figs. 1 and 2; lines 6-12 of page 4), and the selected fibre layup having a cooperating configuration with the outer side of the wheel body including cooperating contours to the connection structure at 18 (Figs. 1 and 2; lines 6-12 of page 4), and wherein the fascia layer has a thickness in a range of 100 to 800 microns (claim 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of forming the carbon fibre wheel of Renner by including the claimed fascia layer having a thickness in a range of 100 to 800 microns, such as taught by Adrian, as a well-known fascia layer arrangement that would have a reasonable expectation of success in protecting the outer surface of the wheel while providing desired aesthetics. Further, such a modification would result in the first resin having a different composition to the second resin.
Regarding claims 11 and 12, although Adrian discloses the fascia layer comprises a fibre composite composition layer at 14 (lines 4-5 and 15-20 of page 5) formed using a resin transfer moulding (RTM) process (lines 17-20 of page 5) and attached on the outer side of the wheel body (Fig. 1), Renner, as modified by Adrian, fails to disclose the fibre composite composition layer being moulded to the wheel body such that the second fibre composite composition is overmoulded onto the outer side of the moulded wheel body using a resin transfer moulding (RTM) process. Instead, Adrian teaches fascia layer/fibre composite composition being adhesively attached to the wheel body (lines 11-12 of page 4).
Hess, however, teaches a fascia layer 5 comprising a fibre composite composition layer (See the second paragraph on page 3 of the English language machine translation which states, in part, that “Also suitable as a material for the diaphragm are so-called organic sheets, ie continuous fiber-reinforced thermoplastic flat semi-finished products, or individual preimpregnated thermoplastic tapes”; See the third paragraph on page 3 of the English language machine translation which states, in part, that “Suitable polymers for the wheel body and for the diaphragm are, for example, natural and synthetic polymers or their derivatives, natural resins and synthetic resins and their derivates”; See the fifth paragraph on page 4 of the English language machine translation which states, in part, that “The polymer material is preferably reinforced. In particular, the polymer material is fiber-reinforced. For reinforcement, any, known in the art..reinforcement conventional fiber can be used. Suitable fibers are, for example, glass fibers, carbon fibers…”) that can be attached to the wheel body 9 in a number of different ways including by adhesive or by overmoulding the fibre composite layer onto at least a portion of the face portion of the outer side of the moulded wheel body (See second paragraph on page 7 of the English language machine translation which states, in part, that “it is also possible first to produce the diaphragm, insert it into a mold for producing the wheel body and then to overmold or encase the diaphragm with the polymer material for the wheel body, whereby the wheel body and diaphragm are connected to form an integral component”) using a resin transfer moulding (RTM) process (process described in the second paragraph on page 7 of the English language machine translation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon fibre wheel of Renner, as modified by Adrian, by overmoulding the second fibre composite composition onto the outer side of the moulded wheel body using a resin transfer moulding process, such as taught by Hess, as a well-known alternative attachment means that would have a reasonable expectation of success in adequately securing the fascia layer to the face portion of the moulded wheel body in a desired position.
Regarding claim 13, Adrian further discloses the fascia layer is formed on the face portion at 16, 18 and at least part of the rim portion 20 of the outer side of the wheel body (Figs. 1 and 2; lines 6-12 of page 4).
Regarding claim 15, Renner further discloses the first resin is based on epoxy (paragraphs [0016] and [0040]) and Adrian further discloses the second resin is based on unsaturated polyester (lines 20-21 of page 5).
Regarding claim 16, Adrian further discloses at least the second resin having an aesthetically acceptable cured colour comprising at least one of: clear, transparent, translucent, glassy or pellucid (lines 5-9 of page 6).
Regarding claim 18, Renner further discloses the first resin comprises a thermal performance structural resin (“epoxy resin” per paragraphs [0016] and [0040]).
Regarding claim 19, Adrian further discloses the second resin comprises a structural resin (“polyester” per line 21 of page 5).
Regarding claim 20, Adrian further discloses the selected fibre layup is formed from at least one fibre selected from the group consisting of: carbon fibre, aramid fibre, para-aramid fibre, glass fibre, polyester fibre and aluminised glass fibre (lines 4-21 of page 5).
Regarding claim 21, Adrian further discloses the cooperating configuration further includes at least part of the rim portion at 20 of the outer side of the wheel body (Fig. 1).
Regarding claim 22, Renner further discloses the hub includes a plurality of recesses (unlabeled, but clearly shown in Figs. 1 and 2) spaced apart about a central axis of the wheel body, and Adrian further discloses the cooperating configuration further includes cooperating contours of the hub at 16 of the wheel body (Fig. 1).
Regarding claim 23, Adrian further discloses the connection structure comprises a plurality of annularly spaced apart spokes 4 (Figs. 1 and 2).
9. Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Renner in view of Adrian and Hess, as applied to claims 1 and 11 above, and further in view of Choi et al. (US 2019/0127569 A1; hereinafter “Choi”).
Renner, as modified by Adrian and Hess, fails to expressly disclose the second resin comprising a UV resistant resin.
Choi, however, teaches a fascia layer 20 comprising a UV resistant resin (paragraph [0021] teaches the thermoplastic transparent resin composition can include a “UV stabilizer”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second resin so that it is a UV resistant resin, such as taught by Choi, with a reasonable expectation of success in protecting the fascia layer from the damaging effects of ultraviolet radiation.
10. Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Renner in view of Adrian and Hess, as applied to claims 1 and 23 above, and further in view of Bruner (US 1,009,642; newly cited).
Regarding claim 24, although Renner further discloses each of the annularly spaced apart spokes 4 comprises an elongate arm 4 connected to the hub at 5 at one end and the rim portion 2 at another end (Figs. 1 and 2), Renner fails to disclose the elongate arm tapers from the hub toward the rim portion.
Bruner, however, teaches a wheel which comprises a plurality of annularly spaced apart spokes 4 with each spoke comprising an elongate arm 4 connected to the hub 11 at one end and the rim portion 7 at another end and tapers from the hub toward the rim portion (lines 72-73 of page 1; Fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the spokes of Renner so that elongate arm of each spoke tapers from the hub toward the rim portion, such as taught by Bruner, as a well-known spoke configuration that would have a reasonable expectation of success in providing the wheel with a desired rigidity while also minimizing the weight of the wheel.
Response to Arguments
11. Applicant's arguments filed 19 September 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “it would defeat the purposes of both Adrian (to leave the shape of the wheel unaltered) and Hess (for the design of the wheel to result exclusively from the wheel covering) to combine these references”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As noted above in Section 8, Hess was merely used as teaching that it is well-known in the art that the so-called “fascia layer” can be attached to the outer side of the wheel body in a number of ways, including being overmoulded to the wheel body as claimed. It is further noted that Applicant has failed to provide any evidence that modifying the carbon fibre wheel of Renner, as modified by Adrian, by overmoulding, instead of adhesively attaching, the second fibre composite layer onto the wheel body, such as taught by Hess, would not allow the wheel cover to fit snugly over the wheel and leave the shape of the wheel substantially unaltered.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's arguments against the Hess reference individually that it does not disclose the claimed “cooperating contours to the connection structure”, 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). As noted above, Adrian clearly discloses the fascia layer 14 being attached to and in a cooperating configuration with at least a portion at 16, 18 of the face portion of the outer side of the wheel body including cooperating contours to the connection structure at 18 (Figs. 1 and 2; lines 6-12 of page 4). Again, it is noted that Hess was merely used as teaching that it is well-known in the art that the so-called “fascia layer” can be attached to the outer side of the wheel body in a number of ways, including being overmoulded to the wheel body as claimed. Nonetheless, assuming arguendo that Hess is also required to disclose the claimed limitation of the fascia layer being in a cooperating configuration with at least a portion of the face portion of the outer side of the wheel including cooperating contours to the connection structure, Fig. 1 of Hess clearly shows the fascia layer 5 being in a cooperating configuration with at least a portion of the face portion of the outer side of the wheel 3 including cooperating contours to the connection structure at 9 inasmuch as the cover or fascia layer 5 directly engages the contours of the spoked portion or connection structure at 9. The Examiner notes that the limitation requiring the fascia layer to have “cooperating contours to the connection structure” does not preclude the presence of a “gap” between a portion of the fascia layer and the connection structure as alleged by Applicant.
In response to Applicant’s argument that “it would defeat the purposes of Hess to overmould a layer that does not provide Hess’s required additional reinforcement of the wheel”, the Examiner first notes that Applicant has not provided any evidence that providing the fascia layer of Hess with the claimed thickness would not provide additional reinforcement of the wheel. Nonetheless, the Examiner again notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As noted above, Hess was merely used as teaching that it is well-known in the art that the so-called “fascia layer” can be attached to the outer side of the wheel body in a number of ways, including being overmoulded to the wheel body as claimed. Adrian discloses the fascia layer can have a thickness in the claimed range of 100 to 800 microns (claim 3).
Conclusion
12. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615