Ex Parte Bonaldi et al - Page 12



            Appeal 2007-1755                                                                                 
            Application 10/930,047                                                                           
            portion of the rim as required by claim 7 (Appeal Br. 5).  The Examiner found that               
            Fig. 1 of Yasushi shows the “disc portion of the wheel (the vertically extending                 
            portion that includes elements 40 & 41) is mounted to an inter[ior] portion of a rim             
            2b” (Answer 6).  Furthermore, the Examiner found that “[g]iven the fact that the                 
            radially outermost portion of the disc is located on a section of the rim 2b that                
            faces radially inwardly, Yasushi meets the limitation of the ‘wheel disc being                   
            mounted to an interior portion of the rim’” (Answer 6).  We sustain the Examiner.                
                   Interior is commonly defined as lying, occurring, or functioning within the               
            limiting boundaries (Finding of Fact 15).  The Specification does not provide any                
            special meaning to the term interior, nor does it utilize the term contrary to its               
            customary meaning (Finding of Fact 16).  As illustrated in Fig. 1 of Yasushi, the                
            outermost portion of the wheel disc is formed from/on an inwardly facing portion                 
            of the rim 2b which lies within the boundaries of the outermost limits of the rim 2b             
            (Finding of Fact 4).  Accordingly, the disc lies, occurs, or functions within the                
            limiting boundary of the rim 2b.  As such, we sustain the Examiner’s rejection of                
            claim 7 as unpatentable over Yasushi and Juhan.                                                  
                   Appellants argue claim 14 separately.  Claim 14, which depends from claim                 
            9, requires that the wheel include a wheel disc mounted to an inner surface of the               
            rim.  Appellants contend the wheel disc in Yasushi is “formed as part of the outer               
            portion 2b of the rim itself, forming a full face wheel,” not mounted to an inner                
            surface of the rim as required by claim 14 (Appeal Br. 6).  Although claim 14                    
            recites the phrase “inner surface” instead of “interior portion”, as recited in claim            
            7, we find no distinction in the Specification between the terms.  As such, we                   

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