Appeal No. 2004-1844 Page 6
Application No. 09/522,023
We turn next to the rejection of claims 13-19 and 21-26 as being unpatentable
2
over Toth. The very same features mentioned above, the means for establishing a
preload and the thermal isolator, are in dispute with regard to this rejection. While the
disclosure in column 3, line 67, to column 4, line 9, of Toth appears to be directed to a
preload arrangement of the type disclosed by appellant, the examiner’s position that the
skirt 63, illustrated in Figure 5, is a thermal isolator is unsound. The skirt 63 overlies the
nut body flange 64 and extends through the aperture 28 in the wheel cover 12 and
comprises a substantially U-shaped axially extending channel 60 with an outwardly
turned edge 62 to prevent withdrawal of the lug nut from the wheel cover. While it
does, by engaging the periphery of the aperture 28 of the wheel cover, space the wheel
cover from the wheel, we find no teaching or suggestion in Toth that the skirt 63
provides any thermal isolation function. It follows that we cannot sustain the examiner’s
rejection of claims 13-19 and 21-26 as being unpatentable over Toth.
2W e note, at the outset, that the examiner has not followed the procedure outlined in Section
706.02(j) of the Manual of Patent Exam ining Procedure (MPEP) for setting forth an obviousness rejection
under 35 U.S.C. § 103 by expressly identifying a difference between the claim ed subject matter and the
disclosure of Toth or proposing a modification of Toth to arrive at the claimed invention. The exam iner’s
statement on page 3 of the final rejection that “it is obvious that therm al isolation of the cover from the
wheel would be achieved ...” more closely resembles a statement of inherency than a proposed
m odification of the reference.
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