COMMISSIONER' S DECISION
UNOBVIOUS : In View of Prior Art Teaching;
Commercial Success.
The success of applicants superior construction, obtaining
advantages unattainable by the 60-year-old prior art
construction, indicates presence of a degree of ingenuity
which was the result of thought and experiment, and the
fulfillment to some degree of a "long felt want" over the
old construction.
FINAL ACTION : Reversed.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action
dated July 9, 1973 on application 048,296 (Class 301-36).
The application was filed on April 10, 1969 in the name
of Leonard J. Verhoff and is entitled "Auxiliary Wheel
Attaching Means."
The Patent Appeal Board held a Hearing on the rejection on
September 11, 1974 at which Mr. A.L. Grove and Mr. Kirk
represented the applicant. They were accompanied by the
inventor Mr. L.J. Verhoff.
This application relates to apparatus for detachably
mounting an auxiliary wheel coaxially to a vehicle wheel.
Independently releasable clamps secure the auxiliary wheel
rim to the vehicle wheel rim and a spacer ring is inserted
therebetween.
In the prosecution terminated by the Final Action the Examiner
refused the application on the ground that it was obvious in
view of the teachings of t he following references:
United States Patents
3,237,992 Kiesau et al
3,223,455 Hammer
French Patents
411, 455 Lefaix
402,261 Savoye
In the Final Action the Examiner stated (in part):
Kiesau et al disclose a dual rim assembly having a
first rim attached to the axle by lugs with hook en-
gaging means, a spacer ring, and an auxiliary rim.
The patent also discloses attaching means including
a plurality of independently releasable and longitud-
inally adjustable connecting devices which engage the
hook engaging means at one end with hook portions
and adjustably secure to strip means which engage the
auxiliary rim.
The alleged invention as disclosed and claimed differs
slightly from the device by Kiesau et al since
applicant's clips extend to engage the terminal end
flange of the auxiliary rim.
However the French patents disclose that it is common
knowledge in the art to provide independent attaching
devices having hook means to engage the extremity of
the auxiliary rim. It is considered but expected skill
to extend flanges 42 to 45 of Kiesau et al to engage
the rim in the manner shown by the French patents.
On page 1 of the above letter applicant emphasizes the importance
of having his strip or hook means supported by the auxiliary
rim. No particular advantage can be seen in this arrange-
ment, but in any case Savoye et al and Hammer show such
means supported by the auxiliary rim. It is true that the
French patents do not have "rims with axially outwardly
extending terminal rim edge flanges", but the type of rim
is held to be of no patentable significance. The rims
of the French patents happen to turn inwardly at their
extremities but the function of hooks is the same no matter
what the configuration of the rims.
The Hammer patent is cited to show that toggle means are
known in the art and it is held that no inventive ingenuity
is exercised in substituting such means for bolt and nut
arrangements. In fact Figs. 8 and 9 of the instant application
are further evidence that these alternatives would readily
occur to one skilled in the art.
The Applicant in his response dated December 18, 1973 to the
Final Action stated (in part):
The present invention embodies a simplicity and an
economy which is clearly advantageous and does so by
means of apparatus which, as claimed, is clearly
different from that of the Kiesau patent.
...
SUMMARY OF THE DISTINCTIONS BETWEEN CLAIM 1 AND KIESAU
1. The connecting devices of the applicant are in-
dependent of the rim and of each other. The connecting
devices of Kiesau are all associated with one another
through the presence of a large unitary square frame to
which they are all attached.
2. The auxiliary rim engaging means comprises a
flat strip having a claimed relationship with the
auxiliary rim while the auxiliary rim engaging means of
Kiesau is a large square frame having flanges welded
thereto which engage the rim in a manner that is different
from the manner claimed in the application.
A secondary reference contemplated by the Examiner is the
United States Patent to Hammer number 3,223,455. This
Patent is directed to similar subject matter but discloses
an arrangement wherein the clamping members are mounted
on and carried by the auxiliary rim through the medium
of brackets 60 which are, presumably, welded to the inner
surface of the auxiliary rim and which then carry the
toggle mechanism by means of which hooks 48 can engage
rings on the main tractor wheel. In view of the foregoing
discussion of Kiesau, the distinctions between the
invention claimed herein and that disclosed in Hammer will
be apparent.
SUMMARY OF THE DISTINCTIONS BETWEEN CLAIM 1 AND HAMMER
1. The connecting devices of claim 1 are said to be
independent of the rim and each other. Hammer's connecting
devices are not independent of the rim since they are
secured thereto and they are not independent of each other
since they are all welded to the same common element,
namely, the auxiliary rim.
2. Element (B) of claim 1 is not to be found at all
in Hammer since there is no flat strip means engaging
the rim nor extending axially of the tire bead seat flange
nor does Hammer disclose a hook for engaging the outer
rim flange of the auxiliary rim.
In addition to the two United States patents cited, the
Examiner has referred to French patents 402,261 and 411,455,
both for the purposes of showing that devices for
accomplishing a similar purpose are known in which the
auxiliary rim clamping member does engage the axial extremity
of the rim. It is acknowledged that the French patents
do, indeed, disclose such an apparatus. However,
neither of the French patents discloses a device which
could be used in combination with either Hammer or
Kiesau and, accordingly, since no combination between the
references is possible, the relevance of the isolated
showing of one feature of the applicant's claim is not
understood. Neither of the French patents disclose a
device which could be used in association with tractor
wheels having the solid disc type hub which is disclosed
by Kiesau, Hammer and the applicant. The device of French
patent 402,261 is so different from that of the present
application that discussion of it appears to be unnecessary.
Apart from being directed to a similar problem, the
similarity is non-existent. The device of patent 411,455
is, we submit, hopelessly impractical and, in all
probability, inoperative. A study of figure 1 will disclose
that as the nut is tightened to clamp the two rims
together, a bending moment will be developed with regard to
clamp f which will tend to pry it off the rim. As soon as
a vehicle using this arrangement begins to move,
particularly over rough ground, it is believed that the
clamp would be disengaged from the rim in a matter of only a
few revolutions of the wheel.
In the light of the discussion of the individual patents
given above, it is not seen how a rejection of obviousness
can be maintained. The feature that the clamping devices
or connecting devices are to be independent of the rim
and of each other is not to be found in Kiesau or in Hammer
as pointed out above. The nature of the auxiliary rim
engaging member is not to be found in any reference. The
limitations as set forth in paragraph (B) of claim 1 are not
found in Kiesau, they are not found in Hammer, and they
are not found in either of the French patents.
Our first consideration is the scope and content of the prior art
cited.
Both the Kiesau and the Hammer references relate to devices for mount-
ing an auxiliary wheel coaxially on a farm tractor wheel. A spacer
ring is inserted between the two wheels and the fastening apparatus
comprise elongated "J" bolts. The hook end of the bolts fit into
mounting rings on the vehicle wheel and the threaded portion engage
the auxiliary rim retaining means. In Kiesau the auxiliary rim is
held in position by a welded square frame having protruding corner
lugs which engage the outer annular stepped shoulder of the rim.
The threaded portion of the "J" retaining bolts extend through each
corner of the frame to maintain it in operative position. Hammer
uses lugs welded to the inner surface of the auxiliary rim and
these lugs anchor a toggle lever arrangement coupled to the
threaded end of the "J" bolts.
French patents 402,261 dated 1909 and 411,455 dated 1910 disclose
apparatus for attaching an auxiliary wheel to a vehicle wheel. A
spacer ring is used between the two wheels and a hook arrangement
is used to engage the inturned rim flange of the auxiliary wheel.
A cross sectional view of the rim used in these patents is somewhat
similar to a modified letter "C". The tire is contained within the
ends of the "C" and this is the area where the hooks engage.
The question the Board must determine is whether the applicant
has made a patentable advance in the art. Claim 1 reads:
In combination with a dual rim assembly of the type wherein an
auxiliary rim is spaced by a cylindrical ring means from
a main rim of a vehicle wheel having a plurality of clamp
lugs with hook engaging means thereon near its rim, and
said auxiliary rim includes inner and outer axially out-
wardly extending terminal rim edge flanges and therebetween
a central base portion and a stepped portion on each side
of the central base portion including an axially extending
tire bead seat flange, the improvement comprising a plurality
of releasable and longitudinally adjustable connecting
devices independent of said rim and each other and extending
between and releasably engaging each hook engaging means
and said auxiliary rim, each device comprising:
A) link means having a hook portion for
attachment to one of said hook engaging
means on the main vehicle wheel,
B) a flat strip means bridging said axially
extending tire bead seat flame and
supported by and parallel to the central
base portion of said auxiliary dim, said
strip means having a hook portion at one
end for removably engaging the outer axially
extending terminal rim edge flange of said
auxiliary rim, and
C) adjustable means secured to said link means
and engaging said flat strip means near its
other end for varying the length of said
link means.
it is observed that the applicant secures the auxiliary rim
to the vehicle wheel by means of contoured flat strips, which
are supported by the rim base, in conjunction with a hook
to engage the axial extremity of the rim. A spacer ring is
incorporated between the vehicle rim and the auxiliary rim.
Mounting rings on the vehicle wheel serve as an anchor for
elongated "J" bolts which hold the flat strips by means of a
nut on the threaded end in assembled or operative position.
At the Hearing the applicant emphasized three limitations
found in the broad claim which he maintains distinguishes
the claim from the prior art, namely:
(1) the flat strip means - won't separate from the rim,
(2) the flat strip means closely conforms to rim contour-
strength, and
(3) the flat strip is supported by the centre portion of
the rim - strength.
The applicant argued that "in order to sustain the high stress
forces developed by modern tractors these characteristics were
essential to derive the required strength for the auxiliary wheel."
In addition he maintains that "the close contour fit of the
strips is necessary to prevent the possibility of debris lodging
under the strips, and thereby causing disengagement thereof."
It is noted that the type of rim the applicant is using has a
different configuration from that of the two French patents.
A cross-sectional view from the flange to the centre line of
the modern tractor rim shows the edge is outwardly turned, and
this is followed by one or two stepped rings in which the
inner step portion forms the horizontal base. This type of rim
is known as a "drop center" rim.
There is little doubt that the arrangement found in the French patents
will not transmit a load of such magnitude as that of the
applicant's device. Also, due to the inwardly turned rim flange
it would appear that the hooks will disengage under high torque.
Attachment of the auxiliary rims in both Kiesau and Hammer
represent the different approach that each has taken. Unlike the
French patents these are capable of transmitting high torque load
which is obtained by welding a lug on the auxiliary wheel or by
making a frame to fit the auxiliary wheel. Claim 1, which is the
broad claim, requires clamping devices which are "independent of
the rim and of each other." Kiesau's frame requires clamping as
a unit. Hammer welds the holding lugs on the auxiliary rim. In
addition the claim requires "a flat strip means bridging said
axially extending tire bead seat flange and supported by and
parallel to the central base portion of said auxiliary rim, said
strip means having a hook portion at one end for removably engaging
the outer axially extending terminal rim edge flange of said
auxiliary rim." Neither of these patents shoe any flat strip
means or the necessary hook support arrangement.
If the teaching of the French Patents is used in making the present
device, the applicant would have to modify the hook arrangement
in order to fit the rim edge in use today. Further modification
to the inner portion of the hook strap would also be required in
order to derive support from the rim base for the necessary strength.
To achieve this necessary strength applicant has used a flat strip
which hooks at the rim edge, and which follows the rim contour with
substantially no clearance, as it is in contact with the rim base.
It is the width of hook plus the contact with the base that makes the
transmission of the high torque possible. Close rim fit to prevent
the lodging of debris, which could disengage the hook, does not
appear to have been of concern in the French patents as the
clearance there is substantial.
At the Hearing the applicant also emphasized that "his device has
been commercially successful" as evidenced by sales, and by the
fact that it has almost completely replaced Hammer's device,
which by the way is also sold by the applicant's distributor.
While evidence of commercial success by itself does not
necessarily demonstrate invention, the step taken by the
applicant indicates that it must have fulfilled to some degree
"a long felt want," for the French patents are over 60 years old.
On the matter of commercial success, it was stated by Thorson, P.
in the King v American Optical Co., 11 Fox Pat. C. 62 at 89
(Ex. Ct. 1950):
... I agree ... that the main reason for its success
was that it was superior to the older constructions
,... Under the circumstances I am of the view that
commercial success of ... (the invention) is strong
evidence teat its production was the result of an
inventive step ....(emphasis added.)
The Board is therefore satisfied that there is present a degree
of ingenuity which was the result of thought and experiment on
the part of the applicant. The Board recommends that the
decision of the examiner to refuse the application be withdrawn.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and withdraw
the Final Action. The application is returned to the examiner
for resumption of prosecution.
A.M. Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec,
this 24th, day of October,
1974.
Agent for Applicant
Ridout & Maybee
101 Richmond Street
Toronto, Ontario
MSH 2J7