DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,148,578. Although the claims at issue are not identical, they are not patentably distinct from each other because both the immediate application and the patent claim:
A mounting tab for an automotive component, the mounting tab comprising: a cover; wherein the cover comprises a first piece and a second piece for sandwiching the mounting tab portion of the automotive component; wherein the first piece and the second piece are complimentary male and female pieces that fully encase all edges and surfaces of the mounting tab portion protruding from the automotive component; wherein the first piece and the second piece are secured directly to one another; and a mounting feature extending from the cover in a first direction, the mounting feature including a hole having a central axis substantially perpendicular to the first direction; wherein an external surface and/or an internal surface of the cover has a form factor that is substantially rectangular, substantially square, substantially cylindrical, or substantially pyramidal; wherein an external surface and/or an internal surface of the cover comprises a complex form factor conforming to a complex shape of the mounting tab portion of the automotive component; wherein the first piece has at least one hole configured to align with a boss of the mounting tab portion of the automotive component when the first piece and the mounting tab portion are mated; wherein the second piece has at least one hole configured to align with a boss of the first piece when the first piece and the second piece are mated; wherein the first piece and the second piece are hinged together; wherein the cover comprises at least three external walls oriented substantially perpendicular to a plane; wherein the cover further comprises at least one securement extension for receiving means for fixing the cover to the automotive component; wherein the securement extension is configured to at least partially wrap at least two surfaces of the automotive component; wherein the securement extension forms a substantially linear slot; wherein the substantially linear slot is open at one end or both ends; wherein the securement extension comprises a plurality of mounting holes; wherein an external wall of the cover abuts a wall of the automotive component in an end-to-end configuration, thereby forming a substantially planar contiguous surface; wherein the mounting feature comprises one or more structural supports; and wherein the automotive component is selected from the group consisting of a vehicle headlight casing, a vehicle tail light casing, an interior light casing, a dashboard, a glove box, a compartment hatch, a steering wheel, a shift knob, a sensor module and a sun visor.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,535,148. Although the claims at issue are not identical, they are not patentably distinct from each other because both the immediate application and the patent claim:
A mounting tab for an automotive component, the mounting tab comprising: a cover for receiving a mounting tab portion of the automotive component, wherein the cover comprises a first piece and a second piece for sandwiching the mounting tab portion of the automotive component, wherein the first piece and the second piece are complimentary male and female pieces that fully encase all edges and surfaces of the mounting tab portion protruding from the automotive component; and wherein the first piece and the second piece are secured directly to one another; wherein an external surface and/or an internal surface of the cover has a form factor that is substantially rectangular, substantially square, substantially cylindrical, or substantially pyramidal; wherein an external surface and/or an internal surface of the cover comprises a complex form factor conforming to a complex shape of the mounting tab portion of the automotive component; wherein the first piece has at least one hole configured to align with a boss of the mounting tab portion of the automotive component when the first piece and the mounting tab portion are mated; wherein the second piece has at least one hole configured to align with a boss of the first piece when the first piece and the second piece are mated; wherein the first piece and the second piece are hinged together; wherein the cover comprises at least three external walls oriented substantially perpendicular to a plane; wherein the cover further comprises at least one securement extension for receiving means for fixing the cover to the automotive component; wherein the securement extension is configured to at least partially wrap at least two surfaces of the automotive component; wherein the securement extension forms a substantially linear slot; wherein the substantially linear slot is open at one end or both ends; wherein the securement extension comprises a plurality of mounting holes; wherein an external wall of the cover abuts a wall of the automotive component in an end-to-end configuration, thereby forming a substantially planar contiguous surface; wherein the automotive component is selected from the group consisting of a vehicle headlight casing, a vehicle tail light casing, an interior light casing, a dashboard, a glove box, a compartment hatch, a steering wheel, a shift knob, a sensor module, a sun visor, a fog light, fascia, a bumper, a bumper cover, a bumper energy absorber, an air dam, a grill, a wheelhouse liner, a sensor housing, a camera housing, an engine shield, an engine cover, an engine sideshield, an undershield, a silencer undershield, an underbody shield, a radiator, a module housing, a module cover, an electrical trough, a fuse box, a false floor, a false floor cover, a load floor system, a load floor cover, a control module cover, a control module housing, a battery cover, a battery tray, a bezel, trim molding, garnish molding, step pads, a washer fluid bottle, a radiator overflow bottle and a coolant reservoir; wherein the first piece, the second piece or both comprise a retaining feature and/or a receiving feature; wherein the retaining feature is selected from the group consisting of a flanged pin, a hook, and a non-removable fastener; wherein the receiving feature is selected from the group consisting of an opening, a slot, a detent, a ratchet surface, and an integrated retaining nut; further comprising a mounting feature extending from the cover or disposed within an external wall of the cover; wherein the mounting feature comprises one or more structural supports.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-11, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huber et al (US 7,540,550). Huber discloses:
With regard to claim 1 - A mounting tab for an automotive component, the mounting tab comprising:
a cover for 18 receiving a portion of the automotive component,
and a mounting feature 130 extending from the cover.
With regard to claim 2 - wherein an external surface and/or an internal surface of the cover has a form factor that is substantially rectangular.
With regard to claim 3 - wherein an external surface and/or an internal surface of the cover 80,82 comprises a complex form factor conforming to a complex shape of the portion of the automotive component 40,60 (see Figs. 6-8; the term “complex form factor is broad”).
With regard to claim 4 - wherein the cover comprises a first piece 82 and a second piece 80 for sandwiching the portion of the automotive component 14,16.
With regard to claim 5 - wherein the first piece 82 has at least one hole 102a configured to align with a boss of the portion 40,60 of the automotive component 14,16 when the first piece and the portion 40,60 are mated.
With regard to claim 6 - wherein the second piece 80 has at least one hole 92d configured to align with a boss 102c of the first piece 82 when the first piece and the second piece are mated.
With regard to claim 7 - wherein the first piece and the second piece are hinged together (see Fig. 16).
With regard to claim 8 - wherein the first piece and the second piece are complimentary male and female pieces (see detent 102c and bore 92d).
With regard to claim 9 - wherein the cover comprises at least three external walls 90c oriented substantially perpendicular to a plane.
With regard to claim 10 - wherein the cover 18 further comprises at least one securement extension for receiving means for fixing the cover to the automotive component 14,16 (with regard to Fig. 16, see the facia support portion 980 of second piece 80).
With regard to claim 11 - wherein the securement extension 90 is configured to at least partially wrap at least two surfaces 44,58 of the automotive component.
With regard to claim 16 - wherein the mounting feature comprises one or more structural braces 104.
Claim(s) 1-5, 8-13, 15-17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uken et al (US 2015/0251605). Uken discloses:
With regard to claim 1 - A mounting tab for an automotive component, the mounting tab comprising:
a cover for 18, 26a receiving a portion 24 of the automotive component 22,
and a mounting feature 20 extending from the cover.
With regard to claim 2 - wherein an external surface and/or an internal surface of the cover 18,26a has a form factor that is substantially rectangular (Fig. 15).
With regard to claim 3 - wherein an external surface and/or an internal surface of the cover 18,26a comprises a complex form factor conforming to a complex shape of the portion of the automotive component 22 (see Figs. 3A-B).
With regard to claim 4 - wherein the cover comprises a first piece 18 and a second piece 26a for sandwiching the portion of the automotive component.
With regard to claim 5 - wherein the first piece 18 has at least one hole configured to align with a boss 24b of the portion 24 of the automotive component 22 when the first piece and the portion are mated (Figs. 3A-B).
With regard to claim 8 - wherein the first piece 18 and the second piece 26a are complimentary male and female pieces. In this regard, the first piece 18 fits into the opening of the second piece 26a much in the same way as Applicant’s invention.
With regard to claim 9 - wherein the cover comprises at least three external walls 90c oriented substantially perpendicular to a plane (see the three walls extending substantially perpendicular to the flat main surface of the second portion 26a of the cover in Fig. 5A).
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With regard to claim 10 - wherein the cover further comprises at least one securement extension 26b for receiving means for fixing the cover to the automotive component 22 (Fig. 5B).
With regard to claim 11 - wherein the securement extension 26b is configured to at least partially wrap at least two surfaces of the automotive component 22 (Fig. 5C).
With regard to claim 12 - wherein the securement extension 26b forms a substantially linear slot 26c.
With regard to claim 13 - wherein the substantially linear slot 26c is open at one end or both ends (slot 26c is intended to assist air flow through the cover and around the camera module to assist in reducing or dissipating heat generated during operation of the camera and is thus open at both ends).
With regard to claim 15 - wherein an external wall (top wall of first piece 18) of the cover abuts a wall 24b of the automotive component in an end-to-end configuration, thereby forming a substantially planar contiguous surface (Fig. 3B).
With regard to claim 16 - wherein the mounting feature 20 comprises one or more structural braces (Applicant has failed to further describe what is intended by “structural braces”, either in the written specification or in the drawings).
With regard to claim 17 - wherein the automotive component 22 is a sensor module.
With regard to claim 18 - further comprising an insert 16 configured for placement opposite the cover.
With regard to claim 19 - wherein the cover, the insert or both comprise a retaining feature 17 and/or a receiving feature.
With regard to claim 20 - wherein the retaining feature 17 is a hook.
Claim Rejections - 35 USC § 103
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Uken in view of Lynam (US 6,250,148). Uken teaches the following:
“One or more cover elements 26a, 26b (FIGS. 5A-C, 12, 18, 22 and 26) may be provided that attaches or snaps or clips at the camera mounting bracket (and/or to the camera module, the mirror mount or the windshield attachment member) to substantially encase or house the camera module and camera mounting bracket so that the camera module and bracket are not readily viewable to a person viewing the construction at the windshield from inside the vehicle cabin.”
However, Uken fails to explicitly disclose wherein the securement extension comprises a plurality of mounting holes. Lynam teaches attaching one portion 30a of a cover to a second portion 14 of a cover via screws that require mounting holes. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the securement extension of Uken with the teaching of Lynam’s screws and mounting holes to ensure tight and reliable securement of the cover portions to one another.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY WILHELM whose telephone number is (571)272-6980. The examiner can normally be reached on Monday-Friday 8:30-5:30.
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/TIMOTHY WILHELM/ Examiner, Art Unit 3616 October 30, 2025