Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 1 is objected to because “pass” in the second to last line should be “passes”.
3. Claim 1 is objected to because “backlight” in the second to last line should be “backlit”.
4. Claim 1 is objected to because “tailight” in the last line should be “taillight”.
Claim Rejections - 35 USC § 112
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.
5. Claims 1-17 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.
6. In claim 1, it is unclear whether or not the insert, taillight, and vehicle are being claimed in combination or if only the subcombination securing device is being claimed. The claim still uses the functional language “for securing an insert to an automobile” which implies only the subcombination securing device is being claimed. The claim has been amended to include more details of the insert as well as the positive structural language “is securing over the taillight of the automobile” which starts to sound as if the insert, taillight, and automobile are being claimed in combination. For the purpose of examination, Examiner assumes that only the subcombination securing device is being claimed, per the preamble of the claim. The added language to the insert and taillight does need to be given weight despite being purely functional. For example, any prior art securing device applied against this claim would need to be capable of allowing light to pass from the taillight through the insert.
7. In claim 3, it is unclear whether or not the insert is being claimed in combination or if only the subcombination securing device is being claimed. The claim still uses the functional language “for securing an insert over the taillight of an automobile” which implies only the subcombination securing device is being claimed. The claim has been amended to include more details of the insert where the insert is a can holder or a firearm holster. For the purpose of examination, Examiner assumes that only the subcombination securing device is being claimed, per the preamble of the claim. The added language to the insert does need to be given weight despite being purely functional. For example, any prior art securing device applied against this claim would need to be capable of securing a can holder or firearm holster therein.
Claim Rejections - 35 USC § 102
8. 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.
9. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
10. Claims 1-7, 9, 11-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuvantrarai (US 7,834,752 B2).
Regarding claim 1, Kuvantrarai discloses a device (16/17) for securing an insert to an automobile (neither the insert nor the automobile currently being claimed in combination due to the functional language “for securing”, though Kuvantrarai does disclose an insert 19 and an automobile in Figure 1), said device comprising two (2) opposing sides (left and right sides of 17) and a bottom (bottom of 17) connecting the opposing sides (see Figure 3). The securing device of Kuvantrarai is capable of receiving an insert that comprises one or more apertures allowing light to pass through the insert and is capable of being secured over a taillight of the automobile so that when light passes through the insert apertures the insert is backlight by light from the taillight.
Regarding claim 2, Kuvantrarai discloses the device of claim 1 wherein the sides are mirror images of one another (see Figure 3).
Regarding claim 3, Kuvantrarai discloses a device (16/17) for securing an insert over the taillight of an automobile (none of the insert, taillight, nor automobile currently being claimed in combination due to the functional language “for securing”, though Kuvantrarai does disclose an insert 19 as well as a taillight and an automobile in Figure 1), said device comprising two (2) opposing sides (left and right sides of 17) and a bottom (bottom of 17) connecting the opposing sides (see Figure 4). The securing device of Kuvantrarai is capable of receiving an insert comprising either a can holder or a firearm holster. For example, there is no structure in Kuvantrarai that would physically prevent a user from inserting one of a can holder or a firearm holster having a base shaped like the insert (19) of Kuvantrarai within the device (16/17) of Kuvantrarai in the same manner Kuvantrarai shows his insert (19) being received therein.
Regarding claim 4, Kuvantrarai discloses the device of claim 1 wherein the device comprises one or more apertures (17a).
Regarding claim 5, Kuvantrarai discloses the device of claim 4 wherein the apertures are located in opposing corners of the device (see Figure 3).
Regarding claim 6, Kuvantrarai discloses the device of claim 1 wherein the apertures allow a fastener to pass through the device (fastener(s) not currently being claimed in combination, though Kuvantrarai shows fasteners 22).
Regarding claim 7, Kuvantrarai discloses the device of claim 1 wherein the device is reversibly secured to the automobile (secured using fasteners 22 and unsecured by removing fasteners 22).
Regarding claim 9, Kuvantrarai discloses the device of claim 6 wherein the device is reversibly secured to the automobile (secured using fasteners 22 and unsecured by removing fasteners 22).
Regarding claim 11, Kuvantrarai discloses the device of claim 3 wherein the device comprises one or more apertures (17a).
Regarding claim 12, Kuvantrarai discloses the device of claim 11 wherein the apertures are located in opposing corners of the device (see Figure 3).
Regarding claim 13, Kuvantrarai discloses the device of claim 3 wherein the apertures allow a fastener to pass through the device (fastener(s) not currently being claimed in combination, though Kuvantrarai shows fasteners 22).
Regarding claim 14, Kuvantrarai discloses the device of claim 3 wherein the device is reversibly secured to the automobile (secured using fasteners 22 and unsecured by removing fasteners 22).
Regarding claim 16, Kuvantrarai discloses the device of claim 13 wherein the device is reversibly secured to the automobile (secured using fasteners 22 and unsecured by removing fasteners 22).
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 8, 10, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kuvantrarai (US 7,834,752 B2) as applied above in view of Ryder (US D56,256 S) and Hollins (US 2,637,804 A).
Regarding claims 8, 10, 15, and 17, Kuvantrarai discloses the device of claims 4, 9, 12, and 16, but fails to disclose wherein the apertures include a rearward projection. Kuvantrarai never shows the rear side of the apertures (17a) and doesn’t describe any rearward projections. Ryder shows that it was already known in the art for a light frame like that of Kuvantrarai to include rearward projections at the fastener apertures (see Figure 2). Hollins teaches that providing rearward projections (44) at the location of fastener apertures helps with alignment during assembly (see col. 3 lines 25-35). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the fastener apertures of Kuvantrarai with rearward projections, as was already known in the art, as shown by Ryder, the motivation being to make it easier for a user to align the components during assembly, as taught by Hollins.
Response to Arguments
13. Applicant’s arguments filed 10/7/25 with respect to Law have been fully considered and are persuasive. While the insert is still not being claimed in combination, the Law device includes a solid rear wall which would not allow the backlighting of the insert as now functionally claimed. The corresponding Law rejections have been withdrawn.
14. Applicant’s arguments filed 10/7/25 did not address the Kuvantrarai rejections from the Non-Final rejection, which are still valid, and which have been added to in view of the claim amendments.
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Galperin (CA 2115790 A1) discloses a similar taillight insert securing device.
16. 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.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 11/5/25