COMMISSIONER'S DECISION
Indefinite Claims: Truing of Wheels
"Radial runout" of a vehicle wheel rim is accomplished by the
application of adhesive material. Some of the claims failed to
define the "centre of rotation" of the wheel as they were attempting
to cover both "radial and axial" runout.
Rejection - Affirmed.
This decision deals with a requeat for review by the Commissioner of
Patents of the Examiner's Final Action dated August 12, 1974, on
application 055,230 (Class 26-190). The application was filed on June
24, 1969, in the name of Edward J. Hayes et al, and is entitled "Method
Of Truing Bead Seats Of Wheels By Application Of Adhesive." The Patent
Appeal Board conducted a Hearing on September 24, 1975, at which Mr.
H.W. Rock represented the applicant.
The application relates to a method for forming a truly round or circular
surface for the rim bead seat section of a vehicle wheel rim.
In the Final Action the examiner rejected claims 15, 19, 23 and 25 through
38 as indefinite.
In that action the examiner stated (in part):
The amendments and arguments pertaining to claims 25 through
32 do not overcome the objections made in the last Office Action.
The rejection of these claims is maintained and the reason(s)
for such rejection are; that the said claims are indefinite in-
sofar as they attempt to define the ultimate shape and location of the
surface of the structural material upon which the tire bead will
be seated and that such definition is so broad as to include inoper-
able methods the performance of which will not prom de the expressed
object of "surfaces having a constant or uniform radius from the
center of rotation of the wheels".
Claim 25 refers to "a surface that is uniformly spaced from a surface
defined by a preselected geometric shape". This gives no indication
of the shape or location of the surface.
Claims 26 and 27 refer to "a surface that is symetrically arranged
relative to a predetermined portion of the wheel rim", This does
not define the shape of the surface or its location. The "pre-
determined portion of the wheel rim" could be any part of the
wheel but only certain parts may be selected to define the location
of the surface if the desired object is to be attained.
In regard to claims 25, 26 and 27, it must be recognized that to
attain the desired result of tire bead-seating surfaces having a con-
stant radius from the center of rotation of the wheel, it is
necessary to define the shape of the bead seat and the location of
the bead seat. The bead seat must be circular (i.e. of constant
radius) and it must also be concentric to the axis of rotation of
the wheel. A wheel having a bead seat which, though circular, is
located eccentrically to the axis of rotation, will not satisfy the
object of the invention since such a wheel will vibrate when rotated.
It cannot be assumed that a method which provides only a circular
bead seat will meet the object of the invention. The method defined
must also locate the circular bead seat concentric to the axis of
rotation. The geometric center of the bead seat is not necessarily
located at the center of rotation of the wheel and it is this
concentricity which must be provided to satisfy the object of the
invention.
Dependent claims 28 through 31 add no further definition relative
to the above objections.
Claim 32 refers to the structural material being applied "in a
manner such that said surface accommodates for the maximum runout area
of the wheel rim". To merely accommodate an imperfection does not
specifically define either the manner in which such accommodation is
performed or the structure attained. To attain the desired result
it is obligatory that the surface have a radius relative to the
axis of rotation, which is equal to or greater than the radius of the
maximum runout area relative to the axis of rotation. This is
the broadest definition, available to the applicant, of a surface
which will provide the desired result.
Claims 25 through 32 are rejected.
The applicant in his response dated February 10, 1975 made amendments to
some of the claims and the disclosure. We will comment on these amendments
later. In that response he also stated (in part):
The Examiner then went on to reject claims 25 to 32 with the main
objections being levied at claims 25, 26 and 27. The objection to
those claims is that the definition of the ultimate shape and
location of the surface of the structural material is so broad as
to include inoperable methods. Applicant is unable to agree with
the rejection of those claims under the grounds as stated. In
particular, it is pointed out that no prior art has been cited
against any of claims 25, 26 or 27 and no call for restriction has
been made on such grounds. Each of claims 25, 26 and 27 reads on
the invention as disclosed in the original disclosure. While the
exact terminology defining the material surface did not appear in
the disclosure it is clearly seen that the terminology utilized
defines the invention in equivalent terms. For example, in
claim 25 the terminology states that the material is "formed with
a surface that is uniformly spaced from a surface defined by a
preselected geometric shape". Such a shape could clearly involve
a cylinder which is coaxial with the axis of rotation of the wheel,
the material surface being uniformly spaced from the outer periphery
of such a cylinder. It is immaterial whether the surface be
real or imaginary. It is readily seen that the definition given in
claim 25 is fully the equivalent of a definition which relates
the material surface to the axis of rotation of the wheel.
In order to aid in clarifying the invention applicant has proposed
an amendment to the disclosure on page 2 wherein the equivalents
of the terminology in claim 25 is explicitly shown with respect
to the axis of rotation. Claim 25 fully defines the invention as
specified in the original disclosure and cannot be considered
overly broad in view thereof.
Applicant has proposed amendments to each of claims 26 and 27 which are
believed to remove them from the difficulties previously envisaged
by the Examiner. It is readily seen that the "predetermined portion
of the wheel" referred to in each of claims 26 and 27 as amended
includes the axis of rotation. Since the surface is "symmetrically
arranged relative to a predetermined portion of the wheel" it is
seen that the terminology is equivalent to stating that the surface is
at a constant or uniform radius from the axis of rotation. A wheel
is of necessity a body of revolution and hence symmetry in such
a device will relate to the centre of revolution, in this case the
axis of rotation. Applicant accordingly believes that claims 26
and 27, with the proposed amendments therein cannot be considered
as overly broad in view of the disclosure.
In view of the above comments it is applicant's strong belief as well
that each of claims 25, 26 and 27 meets each of the objects as
presented.
It is also applicant's belief that claims 28 to 32, dependent on
claim 27 add further definition to that claim which is appropriate
and explicit.
The Examiner has continued to reject claim 32 in view of the terminology
"accommodates for the maximum runout area". It would appear that
claim 32 is not being react in light of the definition given in claim 27.
Claim 32 further defines the imperfections in the wheel rim which are ob-
viated with the method according to claim 27. According to claim 27 the
method "compensates for dimensional irregularities in selected areas
of the rim upon which the material has been distributed". Claim 32
further defines those irregularities as "maximum runout areas" and
stipulates that the method will accommodate such runout areas. The
claim then goes on to include further definition of the steps intro-
duced in claim 27, which steps will result in a wheel which meets the
objects of the invention. Accordingly applicant also believes that
claim 32 is fully definitive of the invention when read in conjunction
with claim 27 on which it is dependent.
This application is for the method of truing a vehicle wheel bead seat by
applying a thermo-setting adhesive material. The wheel rim is centre mounted
on a support arrangement which is adapted to rotate. An adhesive dispenser
is located adjacent the wheel bead seat of the rim. As the wheel rotates an
adjustable trowelling tool serves to distribute the dispensed material to
form a surface of uniform radius with respect to the centre of rotation. Then
the wheel is placed in a drying oven to cure the material and effect a positive
bond to the wheel rim.
The question to be decided is whether or not claims 25 to 32 are indefinite.
Claim 25 reads:
In the method of manufacturing vehicle wheels comprising an
annular wheel rim having a rim bead seat section, the steps
which include: discharging a layer of structural material from
a source thereof; providing relative movement between the wheel
rim and the source of material to thereby apply the material to preselected
areas of the wheel rim adjacent the bead seat section and orienting
a material distributing means relative to the rim such that upon
relative rotational movement between the rim and the material dis-
tributing means the material is engaged by the distributing means
and the material is distributed to a position on the wheel rim where
it will ultimately be engaged by the bead of an associated tire,
(with the material being formed with a surface that is uniformly spaced
from a surface defined by a preselected geometric shape.)
The rejection of that claim by the examiner is based on the last two lines
which give "no indication of the shape or location of the surface." At the
hearing the applicant argued that a preselected geometric shape could clearly
involve a cylinder which is coaxial with the axis of rotation of the wheel
and that the material surface would be uniformly spaced from the outer peri-
phery of such a cylinder. An outline of the objects of the invention is
found on page 2 where it states: "... for manufacturing vehicle wheels that
have an extremely accurate degree of "roundness" or absence of eccentricity...
to define surfaces having a constant or uniform radius from the centre of
rotation of the wheels, with the result that the bead sections of the
associated tires will seat upon a truly circular surface." We agree that a
geometric shape in the form of a cylinder which is coaxial with the rotation
of the wheel would form a surface having a uniform radius from the centre of
rotation of the wheel. However, if the geometrical shaped cylinder is not
coaxial with the rotation of the wheel then the resulting surface produced
would be eccentric.
In the present situation we are concerned with Section 36(2) of the Patent
Act which reads:
The specification shall end with a claim or claims stating
distinctly and in explicit terms the things or combinations
that the applicant regards as new and in which he claims an
exclusive property or privilege.
In claim 25 the term "uniformly spaced from a surface defined by a preselect-
ed geometric shape" does not distinctly or explicitly indicate the location
or the configuration to be used. By the same token a problem arises as
to whether the disclosure of a specification supports an indefinite claim.
In Radio Corporation of America v. Raytheon Mfg. Co. (1956-60) Ex.C.R. 98
at 108 we find:
It is a cardinal principle of patent law that an inventor may not
validly claim what he has not described. In the patent law
jargon it is said that the disclosures of the specification must
support the claims. If they do not, the claims are invalid.
Moreover, there is a statutory duty of disclosure and description
that must be complied with if a claim for an invention is to stand.
In summary the requirements of valid claims may be stated in two general
propositions: (1) The claim must be framed in distinct and clear language;
(2) The claim must not embrace more than that which the patentee has invented
and has described in his specification. The Patent Act, as mentioned, provides
that the claim or claims shall state "distinctly" the matter that the applicant
regards as new. The claims, therefore, must be framed in language that is
specific, distinct and admits of no doubt of their meaning. It is also
settled law that the applicant may not claim what he has not adequately des-
cribed, in other words the disclosure of the specification must support the
claims (Vide: Radio Corporation v Raytheon, supra).
The problem of radial run-out due to "out of round" condition of the wheel rim
has been outlined in the disclosure. In order to overcome that problem the
applicant developed a means to form a surface of "constant radius" from the
centre of rotation of the wheel. The use of the term "from a surface defined by
a preselected geometrical shape" cannot be considered as a clear or distinct
alternative for the "centre of rotation", nor is that term adequately described
in the disclosure. Claim 25 therefore, in our view, fails to meet the
requirements of a valid claim as set out above.
The examiner rejected claims 26 and 27 as they refer to "a surface that is
symmetrically arranged relative to a predetermined portion of the wheel rim."
In his response the applicant proposed amending the claim by deleting the
word "rim" and states that the "predetermined portion of the wheel referred to
in each of claims 26 and 27 as amended includes the axis of rotation."
While it is true that a "predetermined portion of the wheel" may include the
axis of rotation, it may also include any portion in the central area of the
wheel and this would result in an eccentric surface with respect to the
"centre of rotation" of the wheel. The invention disclosed is for a surface
having a constant or uniform radius from the centre of rotation of the wheel
and the claims must be clear and distinct in this respect. Consequently, we
conclude claims 26 and 27 fail to comply with Section 36(2) of the Patent Act.
Claims 28 to 31, which depend directly on claim 27, specify the step of apply-
ing and curing the structural material. These do not further define the
requirement that the radius be constant with respect to the centre of rotation
and the remarks to refuse claim 27 are applicable to them.
Claim 32, which is dependent on claim 27, specifies "the step of applying the
material to the wheel rim in a manner such that the said surface accommodates
for the maximum runout area of the wheel rim." Placing of the material to
accommodate the maximum runout fails to spell out the essential disclosed feature
that the final bead surface is of uniform radius from the centre of rotation
and the remarks to refuse claim 27 also apply here.
We are satisfied that claims 25 to 32 as presently worded are not framed in
distinct and clear language (Section 26(2) of the Patent Act), and that the
subject matter of these claims is not fully described in the disclosure (Vide: Radio
Corporation v Raytheon, supra).
The Board recommends that the decision to refuse claims 25 to 32 be affirmed.
The amendments to claims 16, 19 and 23, which were requested by the examiner,
have been accepted. Due to a discussion at the hearing, however, we are of
the opinion that a further amendment to claims 19 and 23 is necessary. It
is observed that claims 19 and 23 state the "material defining a uniform
cylindrical surface the radius of which is no greater than the radius of
maximum runout area of the wheel rim." This indicates that a radius less than
that of the maximum runout areas could be used. When this condition is en-
countered the radius would not be uniform due to the fact that a portion of
the rim is of greater radius to begin with. Furthermore in order to operate
as disclosed there must be some indication that the radius is uniform about
the centre of rotation. In our view these features are essential and must be
included in claims 19 and 23.
The supplementary disclosure, which refers to an extension of the use of a
hardenable material for correcting axial run-out, is acceptable. The minor
amendments to lines 8, 9 and 12, are also acceptable. The amendment to line 11,
page 2 would be acceptable if amended to read: "...a uniform spacing from
the surface of an imaginary circular cylinder coaxial with the axis of
rotation of the wheel." The reason for this is that a "cylinder" may have
any closed shape. For the attainment of the object of the invention the
applicant must refer to "circular cylinder."
We recommend that claims 25 to 32 be refused as indefinite. We also recommend
that claims 19 and 23, and the amendment to line 11, page 2, be accepted if
amended according to the guide lines set out above.
J.F. Hughes
Assistant Chairman
Patent Appeal Board
I agree with the recommendations of the Patent Appeal Board. Accordingly,
I refuse claims 28 to 32 in their present form. I will accept claim 16 as amend-
ed and claims 19 and 23 if amended according to the recommended guide lines.
The amendment to page 2 will also be accepted if the proposed amendment is
made. The applicant has six months within which to delete claims 25 to 32,
submit the related proposed amendments, or to appeal this decision under the
provision of Section 44 of the Patent Act.
J. A. Brown
Acting Commissioner of Patents
Dated at Hull, Quebec
this 7th. day of
November, 1975
Agent for Applicant
A.E. MacRae & Co.,
Box 806, Station B,
Ottawa 4, Ont.