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 .
Claims 13-15 and 18 are objected to because of the following informalities: In each of claims 13-15, line 1 of each, “fastener” should be plural. In claim 18, line 1, “between first fastener” is ungrammatical. Appropriate correction is required.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In claim 1, lines 15-17, “wherein each of the one or more second fasteners is releasably couplable to a different one of the one or more first fasteners” is indefinite as to how it occurs because one only of the first fastener and second fastener cannot releasably couple to a different fastener.
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.
Claims 2-3 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 2, line 1, “the first end” and line 2, “the second end” are each indefinite, as claim 1 has defined first and second body and strap ends, rendering the terms in claim 2 indefinite as to which they are referencing.
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.
Claims 1-6, 10-13 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spater et al. (7,478,723)(Figures 6A-6B). Claims 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGlade et al. (2007/0148401). Each discloses a tire cover comprising a body (2-4-2; 10) having a longitudinal axis, a first body end (one smaller side of the body; 16), a second body end (other smaller side of the body; 17) a first body side (one 2; 14) extending from the first body end to the second body end, and a second body side (other 2; 15) opposite and spaced apart from the first body side, wherein the body defines a first channel (the top channel where top straps 26 extend through; upper 18) extending along the first body side from the first body end to the second body end and a second channel (the bottom channel where bottom straps 26 extend through; lower 18) extending along the second body side from the first body end to the second body end, a first strap (top 26; upper 19) and a second strap (bottom 26; lower 19), each of the first strap and the second strap having a first strap end and a second strap end opposite and spaced apart from the first strap end, wherein the first strap (top 26; upper 19) extends through the first channel and the second strap (bottom 26; lower 19) extends through the second channel, wherein the first strap ends of the first strap and the second strap are coupled to the first body end and the second straps of the first strap and the second strap are coupled to the second body end, one or more first fasteners (left fasteners 28 and clips 26; 20 and 21) coupled adjacent the first body end, and one or more second fasteners (right fasteners 28 and clips 26; 22) coupled adjacent the second body end, wherein each of the one or more second fasteners is releasably couplable to a different one of the one or more first fasteners.
As to claim 2, Spater et al. disclose a first strip (left end portion of strip 4) coupled to the first end and a second strip (right end portion of strip 4) coupled to the second end.
As to claim 3, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) coupled to the first strip and the one or more second fasteners (right fasteners 28 and clips 26) coupled to the second strip.
As to claim 4, Spater et al. and McGlade et al. each disclose the first strap (26; upper 19) and the second strap (26; lower 19) each comprise an elastically deformable material (see column 8, lines 13-27; see paragraph 0021).
As to claim 5, McGlade et al. disclose the body (body of 10) has a body length as measured along the longitudinal axis wherein the first strap (upper 19) and the second strap (lower 19) each have a strap length in a relaxed position wherein the body length is longer than the strap length.
As to claim 6, Spater et al. disclose the first strap (top 26) and the second strap (bottom 26) comprise an inelastic material (see column 9, lines 60-67 and column 10, lines 1-13).
As to claim 10, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) and the one or more second fasteners (right fasteners 28 and clips 26) comprise snap buttons (see column 7, lines 44-67).
As to claim 11, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) and the one or more second fasteners (right fasteners 28 and clips 26) comprise zipper portions (see column 7, lines 44-67).
As to claim 12, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) and the one or more second fasteners (right fasteners 28 and clips 26) comprise buckles (see column 7, lines 44-67).
As to claim 13, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) and the one or more second fasteners (right fasteners 28 and clips 26) comprise hook and loop fasteners (see column 7, lines 44-67).
As to claim 16, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) coupled to the first body end (Figure 6A, the left end of the tire cover) and the one or more second fasteners (right fasteners 28 and clips 26) coupled to the second body end (Figure 6A, the right end of the tire cover).
As to claim 17, Spater et al. disclose the one or more first fasteners (left fasteners 28 and clips 26) coupled to the first end of the first strap and the one or more second fasteners (right fasteners 28 and clips 26) coupled to the second end of the second strap.
As to claim 18, Spater et al. disclose a length of the first strap and the second strap each being adjustable (see column 9, lines 60-67 and column 10, lines 1-13).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Spater et al.. Spater et al. does not disclose the body length being 81.5 inches or more, 86 inches or more, or 91 inches or more. However, it has been held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device is not patently distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F. 2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Spater et al. in view of Page (6,273,159). Spater et al. disclose a protrusion portion (one of the protruding adjusting means of column 7, lines 44-67), but not in the extending manner recited. However, Page discloses a tire cover wherein one or more fasteners (28, 30) comprise a protrusion portion (30) configured to extend around a tire to couple the first body end to the tire. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tire cover of Spater et al. with a fastener with a protrusion portion in the manner of Page as claimed, as such a modification would predictably provide a previously known fastener structure as evidenced by Page.
As to claim 15, Page further discloses the protrusion portion (30) extending through a loop (28).
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 1-5 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,285,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the subject matter of the patented claim 1 of the parent application.
Claims 6, 10-13 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 4, 5, 6, 7, 8, and 9, respectively, of U.S. Patent No. 12,285,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the subject matter of the indicated corresponding patented claim of the parent application.
Claims 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, and 11,, respectively, of U.S. Patent No. 12,285,999. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the subject matter of the indicated corresponding patented claim of the parent application.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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