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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2026 has been entered.
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.
Claim 21 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 16 of U.S. Patent No. 12077107. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed limitation of the present application are claimed by U.S. Patent No. 12077107.
18/777,873
US 12,077,107
21. A license plate cover system, comprising: a base plate defining a first surface configured to face a vehicle, a second surface configured to face away from the vehicle,
1. A license plate cover system, comprising: a base plate defining a first surface configured to face a vehicle, a second surface configured to face away from a vehicle
a side surface connecting the first surface with the second surface
a first side surface and a second side surface connecting the first surface with the second surface
wherein the base plate includes at least one protrusion extending therefrom, and is configured to retain a license plate between the base plate and the vehicle
wherein the base plate includes a plurality of protrusions extending from each of the first side surface and the second side surface, wherein the first side surface and the second side surface define at least one open channel configured to face a vehicle, the at least one open channel configured to expose an upper end or a lower end of a license plate arranged in the base plate such that a license plate is positionable between the base plate and a vehicle;
wherein the cover plate includes at least one recess configured to receive the at least one protrusion of the base plate therein, wherein the cover plate is configured to be removably coupled with the base plate.
a cover plate defining a first surface configured to face the second surface of the base plate, a second surface configured to face away from a vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate,
wherein the base plate is configured to be removably coupled with the vehicle (claim 1, lines 5-6).
2. The license plate cover system of claim 1, further including at least two orifices defined through the first surface and the second surface of the base plate, wherein the at least two orifices are configured to secure the base plate to a vehicle.
18777873
US 12077107
21. (Currently Amended) A license plate cover system, comprising: a base plate defining a first surface configured to face a vehicle, a second surface configured to face away from the vehicle,
15. A license plate cover system, comprising: a base plate defining a first surface configured to face a vehicle, a second surface configured to face away from a vehicle,
a side surface connecting the first surface with the second surface
a first side surface and a second side surface connecting the first surface with the second surface,
wherein the base plate includes at least one protrusion extending therefrom, and is configured to retain a license plate between the base plate and the vehicle
wherein the base plate includes at least one protrusion extending from each of the first side surface and the second side surface, wherein the first side surface and the second side surface define at least one open channel configured to expose an upper end or a lower end of a license plate arranged in the cradle between the base plate and a vehicle
a cover plate defining a first surface configured to face the second surface of the base plate, a second surface configured to face away from the vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate
a cover plate defining a first surface configured to face the second surface of the base plate, a second surface configured to face away from a vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate,
wherein the cover plate includes at least one recess configured to receive the at least one protrusion of the base plate therein, wherein the cover plate is configured to be removably coupled with the base plate.
the cover plate includes at least one recess configured to receive the at least one protrusion therein, wherein the cover plate is configured to be removably coupled with the base plate by securing the at least one protrusion with the at least one recess.
wherein the base plate is configured to be removably coupled with the vehicle (claim 1, lines 5-6).
16. The license plate cover system of claim 15, further including at least two orifices defined through the first surface and the second surface of the base plate, wherein the at least two orifices are configured to secure the base plate to a vehicle.
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.
Claims 21, 22, 29, 33, and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over to US 20080098629 to Graham et al. (Graham) in view of US 5081777 to Kim.
Regarding claim 21, Graham semi-locking license plate holder comprising: a base plate (rear frame 10) defining a first surface (rear surface) configured to face a vehicle, a second surface (rear frame face 12) configured to face away from the vehicle, and a side surface (rear frame side edge 18, figure 3A) connecting the first surface with the second surface, wherein the base plate (10) includes at least one protrusion (pin 152) extending therefrom, wherein the base plate (10) is configured to be removably coupled with the vehicle (¶0025); and a cover plate (frame cover 40) defining a first surface (rear surface) configured to face the second surface (rear frame face 12) of the base plate (10), a second surface (frame cover face 43) configured to face away from the vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate, wherein the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), wherein the cover plate (40) includes at least one recess (one pin hole 42) configured to receive the at least one protrusion of the base plate therein, wherein the cover plate is configured to be removably coupled with base plate.
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Graham teaches the cover plate (40) includes at least one recess (one pin hole 42) configured to receive the at least one protrusion of the base plate therein. Graham does not teach the cover plate comprising at least one recess formed in the interior-facing surface of the lip configured to receive the at least one protrusion of the base plate therein.
Kim teaches a picture frame comprising a base plate (rigid back panel 22) defining a first surface (rear surface), a second surface (front surface), and a side surface, wherein the base plate (rigid back panel 22) includes at least one protrusion (pin 152) extending therefrom; and a cover plate (annular frame member 12) defining a first surface (rear surface) configured to face the second surface (front surface) of the base plate (22), a second surface (front surface), and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate, wherein the cover plate (12) includes at least one recess (dimple or depression 38 formed integrally in the inside wall of frame member flange 12a) configured to receive the at least one protrusion (nub 36) of the base plate (22) therein, wherein the cover plate (12) is configured to be removably coupled with base plate (22).
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to substitute the locking engagement means comprising the pin and pin hole taught by Graham with locking engagement means comprising a protrusion (pin) and recess as taught by Kim with a reasonable expectation of success to provide an alternate means for securing the cover to the base/back of the frame. Such a modification would have involved a simple substitution of one known attachment means for another to obtain predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ 2D 1385 (2007).
Although not shown or disclosed, the license plate holder taught by Graham is configured to retain a license plate between the base plate and the vehicle. The license plate P has the ability to be positioned between the base plate and the vehicle and the license plate P can be secured to the vehicle using fastener 30 extending through the apertures 9 in the license plate and apertures 11 in the base plate (10).
Regarding claim 22, Graham teaches at least two orifices (apertures 11) defined through the first surface and the second surface of the base plate (rear frame 10), wherein the at least two orifices (11) are configured to removably secure the base plate (10) to the vehicle (¶0025).
Regarding claim 29, Graham teaches the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), a lip (frame cover side edge 44) projecting from the first surface of the cover plate (40), wherein the lip (44) is configured to wrap around the base plate (10) to removably secure the cover plate (40) with the base plate (10).
Regarding claim 33, Graham teaches the second surface of the cover plate defines at least one decorative feature (outer surface color or texture) facing away from the vehicle.
Regarding claim 35, Graham teaches wherein the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), wherein the lip is defined circumferentially around an entirety of the inner side surface of the cover plate.
Regarding claim 36, Graham teaches the at least one recess faces an opposing surface of the lip.
Regarding claim 37, Graham teaches wherein the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), wherein the lip projects toward a central area of the cover plate, and the at least one recess opens toward the central area.
Claims 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over US 20080098629 to Graham et al. (Graham) in view of US 5081777 to Kim as applied to claim 21 and in further view of Kluck, US Patent 3315394.
Regarding claim 23, Graham does not teach the frame/cover plate having at least two recesses is configured to receive a corresponding head of a connecting member connecting the based plate with the vehicle.
Kluck teaches a license plate frame comprising a frame body (12) provided with a pair of integral flaps (16 and 18) which project inwardly from the frame (12) in a plane parallel to the face of the license plate (22) in overlying relationship to the ends of the fasteners 20 utilized to secure the license plate (22) to a vehicle a portion of a vehicle which is indicated at (24). The integral flaps (16 and 18) are provided with concave recesses (28 and 30) on their inwardly facing (first surface) portions adapted to receive the headed ends of the fasteners (20).
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct a cover plate (frame cover 40) of the license plate holder taught by Graham with at least a pair of recess on the inward facing surface to provide a means to receive the head of a fastener/connecting member as taught by Kluck to provide a means to protect the head of the fastener/connecting member.
Regarding claim 24, Graham teaches the fastener/connecting member comprising a screw, bolt or nail with a head (31; ¶0029).
Regarding claim 25, Graham teaches a cradle defined by the first surface (12) of the base plate (10), wherein the cradle is configured to receive a license plate (P) therein, and wherein the orifices (11) of the at least two orifices defined through the first surface and the second surface of the base plate (10) are configured to be aligned with at least two corresponding license plate orifices (9) when the license plate is arranged in the cradle.
Regarding claim 26, Graham teaches the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), a lip (44) projecting from the first surface of the cover plate (40), wherein the lip (44) is configured to wrap around the base plate (10) to removably secure the cover plate 40 with the base plate 10. (¶0032, figure 4).
Regarding claim 27, Graham teaches the lip (44) is defined circumferentially around at least a portion of the inner side surface of the cover plate (P). (¶0032, figure 4).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over US 20080098629 to Graham et al. (Graham) in view of US 5081777 to Kim as applied to claim 1 and in further in view of Маскаев, RU 183546 U1.
Graham et al. does not teach a metal or plastic base plate and a silicon cover plate.
Маскаев teaches a vehicle license plate frame comprising an rigid plastic insert or base (2) and an elastomer frame or cover plate (1), wherein the elastomer base can be rubber or silicone.
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct a cover plate (frame cover 40) and the base plate of the license plate holder taught by Graham of silicone and plastic as taught by Маскаев to provide a license plate frame which reduces the risk of corrosion.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over US 20080098629 to Graham et al. (Graham) in view of US 5081777 to Kim and US Patent 3315394 to Kluck as applied to claim 27 above and in further view of Parnell, US Patent 9916779.
Regarding claim 28, Neither Graham et al. nor Kluck teach the lip of the cover plate comprising a material different from a material included in the cover plate.
Parnell teaches a sign mounting assembly (80) anchored to a vehicle. The assembly (80) comprising: a base plate (backing plate 94) defining a first surface configured to face a vehicle, a second surface (98) configured to face away from the vehicle, and a side surface (outer edge 99) connecting the first surface with the second surface; and a cover plate (display frame 86) defining a first surface configured to face the second surface of the base plate, a second surface configured to face away from the vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate, wherein the cover plate (86) is configured to be removably coupled with base plate (94) by a plurality of display assembly retaining pins 100 (Figure 8, column 9, line 62-column 10, line 40). Parnell also teaches the cover plate (display frame 86) is held in place against the base plate (backing plate 94), with the display frame inner face in contact with the base plate (backing plate 94) outer edge (99). The base plate outer edge (99) may further comprise a layer of rubber, silicone, or other similar material in order to prevent moisture from seeping through the point of contact between the base plate outer edge (99) and the display frame inner face. The display assembly (80) may be further configured so that the cover plate (86) can be detached from the base plate (94), further allowing the sign insert (92) to be removed, as well as be replaced with a different sign insert. Parnell teaches the cover plate (display frame 86) and base plate (backing plate 94) can be made from plastic or lightweight metal (column 6, lines 19-21).
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct the lip of the cover plate of the license plate holder taught by Graham et al. comprising a different material such as a layer of rubber, silicone, or other similar material in order to prevent moisture from seeping through the point of contact between the base plate and the cover plate.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (Graham) in view of US 5081777 to Kim as applied to claim 1 above, and in further view of Parnell, US Patent 9916779.
Regarding claim 31, Graham et al. teach wherein the cover plate (40) includes a lip (frame cover side edge 44) projecting from an inner side surface (face opposite the frame cover face 43), and the lip (43) defining an interior-facing surface (surface facing the outer/exterior surface of the rear frame side edge 18) and an exterior-facing surface (surface facing outward, see annotated figure below), wherein the lip of the cover plate comprising a material different from a material included in the cover plate.
Parnell teaches a sign mounting assembly (80) anchored to a vehicle. The assembly (80) comprising: a base plate (backing plate 94) defining a first surface configured to face a vehicle, a second surface (98) configured to face away from the vehicle, and a side surface (outer edge 99) connecting the first surface with the second surface; and a cover plate (display frame 86) defining a first surface configured to face the second surface of the base plate, a second surface configured to face away from the vehicle, and an inner side surface connecting the first surface of the cover plate with the second surface of the cover plate, wherein the cover plate (86) is configured to be removably coupled with base plate (94) by a plurality of display assembly retaining pins 100 (Figure 8, column 9, line 62-column 10, line 40). Parnell also teaches the cover plate (display frame 86) is held in place against the base plate (backing plate 94), with the display frame inner face in contact with the base plate (backing plate 94) outer edge (99). The base plate outer edge (99) may further comprise a layer of rubber, silicone, or other similar material in order to prevent moisture from seeping through the point of contact between the base plate outer edge (99) and the display frame inner face. The display assembly (80) may be further configured so that the cover plate (86) can be detached from the base plate (94), further allowing the sign insert (92) to be removed, as well as be replaced with a different sign insert. Parnell teaches the cover plate (display frame 86) and base plate (backing plate 94) can be made from plastic or lightweight metal (column 6, lines 19-21).
It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct the lip of the cover plate of the license plate holder taught by Graham et al. comprising a different material such as a layer of rubber, silicone, or other similar material in order to prevent moisture from seeping through the point of contact between the base plate and the cover plate.
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (Graham) in view of US 5081777 to Kim as applied to claim 1 above, and in further view of Shen, US Patent 5383294.
Regarding claim 33, Graham does not teach the cover plate defines at least one decorative feature.
Shen teaches a variable number plate fixing frame comprising a frame body (10), a pair of symmetric side brackets (20A and 20B), and a cavity (11) conforming to the shape of each side bracket (20A and 20B) respectively so that the brackets can be removably inserted therein. Shen also teaches a recess (13) disposed at the upper and lower edges of said main frame body for mounting of decoration stickers (15).
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It would have been obvious to one having ordinary skills in the art before the effective filing date of the claimed invention to construct the frame of the license plate holder taught by Graham with at least one recess and a decorative bracket or sticker as taught by Shen to provide a means to enhance the aesthetic appearance of the license plate holder
Regarding claim 34, Shen teaches the at least one decorative feature includes a first recess (11) and a second recess (13) defined in the front surface of the frame (10), wherein the first and second recess is configured to removably receive a first and second decorative insert (20 and 15), respectively, therein.
Response to Arguments
Applicant's arguments filed September 9, 2026 have been fully considered but they are not persuasive.
The rejection of claims 21, 29, 33, 35-37 under 35 U.S.C. 102(a)(1) as being anticipated by EP 0087024 to Christensen is withdrawn in view of the applicant amendment and arguments.
Regarding the rejection of claims 21, 22, and 29 under 35 U.S.C. 103 as being unpatentable over to US 20080098629 to Graham et al. (Graham) in view of US 5081777 to Kim, “independent claim 21 is amended to recite, in part, a license plate cover system "wherein the base plate is configured to be removably coupled with the vehicle and is configured to retain a license plate between the base plate and the vehicle."” The applicant argues “Graham fails to teach that the rear frame 10 (i.e., the asserted base plate) is configured to retain the license plate P between the asserted base plate 10 and the vehicle”.
The examiner disagrees.
Although not shown or disclosed, the license plate holder taught by Graham is configured to retain a license plate between the base plate and the vehicle. The license plate P taught by Graham has the ability to be positioned between the base plate and the vehicle. The license plate P can be secured between the base plate and the vehicle using fastener 30 extending through the apertures 9 in the license plate and apertures 11 in the base plate (10). There is nothing in Graham to prevent the license plate P from being positioned behind the base plate and then secured to the vehicle. The rejection of claim 21 is maintained. The rejections of claims 22-29 and 31-37 are also maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASSANDRA DAVIS whose telephone number is (571)272-6642. The examiner can normally be reached Monday-Friday 8:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CASSANDRA DAVIS/ Primary Examiner, Art Unit 3631
